FLSmidth A/S v Sepro Mineral Systems Corp
[2025] APO 16
•03 June 2025
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
FLSmidth A/S v Sepro Mineral Systems Corp. [2025] APO 16
Patent Application: 2021261058
Title:Particle separation by density
Patent Applicant: Sepro Mineral Systems Corp.
Requestor/Opponent: FLSmidth A/S
Delegate: Dr W.E. Guinea
Decision Date: 03 June 2025
Hearing Date: 11 November 2024, in Canberra, by videoconference, further submissions by the Applicant 14 February 2025
Catchwords: PATENTS – s59 – novelty – whole of contents novelty – some claims found to lack novelty – clarity – no claims found to lack clarity – s60(3)– support – Calix inconsistency between invention described and invention claimed – all claims found to lack support – opposition successful – costs – costs awarded against Applicant
Representation: Counsel for the Applicant: Clare Cunliffe
Patent Attorney for the Applicant: Mark Willams of Phillips Ormonde Fitzpatrick
Counsel for the Opponent: Ben Cameron
Patent attorney for the Opponent: Alistair McCowan of FPA Patent Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2021261058
Title:Particle separation by density
Patent Applicant: Sepro Mineral Systems Corp.
Date of Decision: 03 June 2025
DECISION
The opposition is successful. I am satisfied that claims 1, 2, 4, 5, 6, 8, 9, 11, 13, 14, 16, 19 and 20 lack novelty in view of D1 No other ground of opposition raised by the Opponent, FLSmidth A/S, has been upheld.
Pursuant to s60(3), I find that all of the claims lack support under s40(3).
I allow the Applicant two (2) months from the date of this decision to propose amendments overcoming the deficiencies identified in this decision. Noting that amendments have already been proposed, the Applicant should, within the two months indicated, advise the Commissioner whether it intends to rely upon the proposed amendments filed on 14 February 2025 or file further proposed amendments. If there is no response, the Commissioner will assume that the Applicant wishes to continue with the amendments proposed on 14 February 2025 and will proceed accordingly.
I award costs according to Schedule 8 of the Regulations against the Applicant, Sepro Mineral Systems Corp.
REASONS FOR DECISION
Background
1. Patent application 2021261058 (the “application”) entered national phase on 28 March 2022 from PCT/CA2021/050528. PCT/CA2021/050528 was filed on 19 April 2021 in the name of Sepro Mineral Systems Corp (the “Applicant”). The application has an earliest priority date of 21 April 2020.
2. On 6 July 2023 FLSmidth A/S (the “Opponent”) filed a notice of opposition to the application under s59 of the Patents Act 1990 (the “opposition”). The statement of grounds and particulars (“SGP”) for the opposition was filed on 6 October 2023.
3. The filing of evidence in support (“EIS”) was completed on 21 December 2023. This consisted of:
· a first declaration by Mr Michael John Fullam (“Fullam1”), dated 20 December 2023, with supporting annexures MJF-1 to MJF-5.
4. The filing of evidence in answer (“EIA”) was completed on 21 March 2024. This consisted of:
· a declaration by Mr Steven McAlister (“McAlister”), dated 15 March 2024, with supporting annexures SM-1 to SM-2.
5. The filing of evidence in reply (“EIR”) was completed on 21 May 2024 This consisted of:
· a second declaration by Mr Michael John Fullam (“Fullam2”), dated 29 April 2024, with supporting annexure MJF-6.
6. Both parties filed written summaries of submissions prior to the hearing. The Opponent filed their written summary of submissions (“OS”) on 28 October 2024. The OS was accompanied by claim chart showing alleged disclosure in WO 2021/094368 (“D1” or “Johansen”) of the invention as claimed based on Fullam1 and Fullam2 – I will refer to this as the “claim chart” where necessary. The Applicant filed its written summary of submissions (“AS”) on 4 November 2024.
7. On 5 December 2024, I wrote to the Applicant requesting submissions concerning a matter where I was minded exercising the Commissioner’s powers under s60(3), and providing the Applicant until 14 February 2025 to provide submissions (the “Delegate’s letter”). The Applicant filed these submissions on 14 February 2025 (the “further AS”), along with a proposed amendment to claim 1, these amendments also being formally proposed in separate correspondence of 14 February 2025. I further wrote to both parties on 19 February 2025 concerning the process to be followed regarding the proposed amendment to claim 1 (the “further Delegate’s letter”).
The Invention as Described
8. The invention for this application relates to particle separation by density, particularly with regard to centrifugal separators or concentrators that are used to separate particles based on this property.
9. The specification comprises a “Description of Related Art” section on page 1, lines 13 to 24 which reads as follows:
“Some systems for separating particles by density may cause particles to flow across riffles or dividers, such that higher density particles are stopped by the dividers and lower density particles pass over the dividers. The systems may include respective retainers or recesses for collecting the particles between the dividers. For example, some systems, such as centrifugal concentrators, may use rotating bowls having riffles or dividers disposed on inner surfaces of the bowls, such that particle flow upward and out of the bowl on an inner surface of the bowl is impeded by the dividers and high density particles may be retained in retainers or recesses therebetween. However, some known systems for separating particles may have features and/or geometry that may not facilitate efficient separation of particles by density.”
10. The “Summary” of the invention runs from page 1a, line 7 to page 4, line 25. This section simply comprises consistory statements that essentially reflect the claims with a smattering of boilerplate, so I will not provide any further elaboration on this section here.
11. There then follows a “Brief Description of the Drawings” and “Detailed Description” which comprise the remainder of the description. The nature of the invention described is best understood by reference to figures 1 and 2. An embodiment of a centrifugal separation system 10 is shown on figure 1, reproduced below. In figure 1, a mixture of particles and a fluid is provided by a particle source 20 to the input end 102 of a separator 12. A motor 16 drives a drive shaft 19 via a drive belt 18 so as to rotate the separator 12 about rotation axis 14.
12. On page 6, lines 16 to 20, it is noted that:
“In various embodiments, the particles may include high density particles, such as, for example, gold particles along with other particles of lower density, such as rocks, sand, and/or soil. In some embodiments, the separator 12 may be configured to separate the high density particles from the lower density particles 20 as the separator 12 rotates about the rotation axis 14.”
13. Figure 2, reproduced below, shows an enlarged view of portion 32 from figure 1 and provides further details concerning the separator 12. As can be seen from figure 2, the separator 12 comprises an inner surface 100 surrounding the axis of rotation 14, which defines a particle path from input end 102 to axially spaced output end 104 of the separator 12. The inner surface 100 comprises axially spaced dividers 120 to 140, which each have an inner (i.e. closest) position with respect to the rotation axis 14. As is apparent from figure 2, the axially spaced dividers 120 to 140 are annular and symmetrical about the rotation axis 14.
14. The axially spaced dividers 120 to 140 partially define a series of axially spaced retainers 152 to 170. That is, adjacent pairs of axially spaced dividers 120 to 140 partially define the axially spaced retainers 152 to 170. There may also be a retainer 150 which is not partially defined by pairs of dividers per se. In use the retainers 150 to 170 collect particles during rotation of the separator 12. The retainers 150 to 170 may comprise fluid inlets 180 that allow for fluidisation of particles during operation. In figure 2, each of the retainers 150 to 170 comprise two axially spaced rows of fluid inlets 180 in fluid communication with a fluid reservoir 200 that surrounds the separator 12.
15. Rotation of the separator 12 about axis of rotation 14 causes particles to be forced outwards towards sloped walls 220 of inner surface 100 and upwards from the input end 102 to the output end 104. These forces mean particles may enter and remain in retainer 150. Once retainer 150 is full, particles may then pass over divider 120 and become trapped in retainer 152. Once retainer 152 is full, particles may pass over divider 122 into retainer 154. The process may then continue with each retainer 150 to 170 being successively filled by particles, with those that make it over divider 140 exiting the system 10 via output slide 30 (figure 1).
16. On page 10, line 24 to page 11, line 3, it is stated that:
“In various embodiments, an ease or rate at which the particles pass over the divider 122 may depend at least in part on a divider slope relative to the rotation axis 14 between inner positions of the dividers 120 and 122. In some embodiments, the divider slope may be determined as a ratio of radial position difference over axial position difference for the inner positions of the dividers 120 and 122. In various embodiments, the radial position of the divider 120 may be the radial distance or measurement between the innermost surface of the divider 120 and the rotation axis 14. For example, in some embodiments, the innermost surface of the divider 120 may be about 440 mm from the rotation axis 14 and so the radial position of the divider 120 may be about 440 mm. The radial position of the divider 122 may be determined similarly to be about 466 mm.”
17. The above passage is rather reflective of what may be understood as the crux of the invention as described, as discussed earlier at page 8, line 12 to page 9, line 10:
“Referring still to Figure 2, in various embodiments, the dividers 120-140 of the separator 12 may be positioned and/or configured to facilitate separation of particles by density that may be effective for both large and small particles. For example, in some embodiments, a difference in inner positions over axial displacement or slope for adjacent dividers may be lower for adjacent dividers near the output end 104 than it is for adjacent dividers near the input end 102, as described in further detail below and this may, in some embodiments facilitate improved particle separation.
Referring to Figure 2, in some embodiments, for a first pair of adjacent dividers 120 and 122 and a second pair of adjacent dividers 122 and 124, the first pair nearer the input end 102 than the second pair, a first divider slope relative to the rotation axis between inner positions of the first pair of adjacent dividers 120 and 122 may be greater than a second divider slope relative to the rotation axis between inner positions of the second pair of adjacent dividers 122 and 124. In various embodiments, the first and second divider slopes may be zero or positive (i.e., not negative), such that the divider 124 is not closer to the rotation axis than the divider 122 and the divider 122 is not closer to the rotation axis than the divider 120.
In some embodiments, this reduction in divider slope may occur for respective pairs of adjacent dividers as they are considered from the input end 102 to the output end 104, as described in further detail below.
In some embodiments, this change in slope may allow the dividers near the input end 102 to separate or capture coarser high density particles while the dividers near the output end 104 separate or capture finer high density particles. In various embodiments, keeping the slope of the second pair of adjacent dividers zero or positive (i.e., not negative) may facilitate continued movement of the particles towards the output end, without excess build up of particles.”
18. Reasons why the divider slope, as outlined above, affects the separation process, are not explicitly pointed out in the description. However, page 17 line 1 to page 18, line 6 appears to provide some explanation regarding the divider slope:
“In some embodiments, centrifugal force generated by rotation of the separator 12 may push the particle slurry against the inner surface 100 shown in Figure 2 and create an interface between the particle slurry and the atmosphere inside the separator 12. In some embodiments, the angle of this interface may be between about 5 degrees and about 10 degrees from the vertical axis of rotation. The angle may depend at least in part on the size of the particles within the slurry and the solids density of the slurry. Coarser particles (e.g., 2.0mm) and higher solids density (e.g., 60% solids) may result in a higher angle (e.g. about 10 degrees in some embodiments). Finer particles (e.g., 0.1mm) and lower solids density (e.g., 20% solids) may result in a lower angle (e.g. 5 degrees).
In some embodiments, the separator 12 may facilitate effective recovery of both coarse and fine heavy mineral particles by changing divider slopes from the input end 102 to the output end 104 such that some divider slopes are greater than the angle of the interface or axially inside of the slurry face and some divider slopes are less than the angle of the interface or axially outside of the slurry face. In some embodiments, pairs of adjacent dividers having divider slopes greater than the angle of the interface may effectively recover relatively coarser heavy mineral particles and pairs of adjacent dividers having divider slopes less than the angle of the interface may effectively recover relatively finer heavy mineral particles.
Accordingly, in some embodiments, at least one pair of adjacent dividers may have a divider slope of greater than the angle of the interface, such as, for example, greater than about 10 degrees. In some embodiments, at least one pair of adjacent dividers may have a divider slope of much greater than 10 degrees, such as, for example greater than 20 degrees, to facilitate particle separation of coarser particles. For example, in some embodiments, the divider slope for the pair of adjacent dividers 120 and 122 may be greater than about 20 degrees. In some embodiments, at least one pair of adjacent dividers nearer the output end 104 of the separator 12 may have a divider slope of less than the angle of the interface, such as, for example, less than about 10 degrees. For example, in some embodiments, the divider slope for each of the pairs of adjacent dividers 134 and 136, 136 and 138, and 138 and 140 may be less than about 10 degrees. In some embodiments, a progression of divider slopes from greater than 20 degrees to less than 10 degrees may promote slurry flow from the input end 102 to the output end 104 of the separator 12.”
19. The description also discloses pairs of retainers 152 to 170 having a “retainer slope” defined similarly as for the “divider slope” discussed above and for similar reasons. This is apparent, for example, from page 20, lines 1 to 13:
“In some embodiments, the retainers 150-170 may include a first pair of adjacent retainers 152 and 154 and a second pair of adjacent retainers 154 and 156, the first pair of adjacent retainers nearer the input end 102 than the second pair of adjacent retainers, wherein a first retainer slope relative to the rotation axis between retainer positions of the first pair of adjacent retainers is greater than a second retainer slope relative to the rotation axis between retainer positions of the second pair of adjacent retainers and wherein the first and second retainer slopes are zero or positive. In some embodiments, this slope relationship may result in the retainers 152 and 154 sloping outwards more than the retainers 154 and 156. In various embodiments, this may allow the retainers to keep a consistent depth and may facilitate separation of larger particles near the input end 102 and separation of smaller particles near the output end 104.”
20. Whilst the “retainer slope” appears to provide similar advantages as for the “divider slope”, it does not appear to be the case that either of these features is dependent on the other. It is also apparent that the crux of the invention relates to the “divider slope” feature.
21. Other aspects of the invention as described, relevant for present purposes include:
· How the axial and radial positions of the dividers and retainers may be determined/defined;
· Equations defining the divider slope and retainer slope;
· The inner positions of the dividers lying on a parabolic path;
· Various divider and retainer slope angles;
· The divider slope comparison being defined by pairs of dividers comprising a common divider (e.g. 120, 122 and 122, 124) or pairs of distinct dividers (e.g. 120, 122 and 124, 126); and
· The retainer slope comparison being defined by pairs of dividers comprising a common retainer (e.g. 152, 154 and 154, 156) or pairs of distinct dividers (e.g. 152, 154 and 156, 158).
a)
The Claims
22. The application comprises 20 claims, with claim 1 being the only independent claim. Claim 1 is reproduced below; the full claim set can be found at Annex A to this decision. For convenience I have provided feature labels for claim 1 as per the claim chart at Annex B to the OS.
(1A) An apparatus for facilitating particle separation by density, the apparatus comprising:
(1B) a separator having an inner surface surrounding a rotation axis of the separator and defining a particle path from an input end of the separator to an axially spaced output end of the separator, (1C) wherein the inner surface includes a plurality of axially spaced dividers having respective inner positions, (1D) the dividers defining at least in part respective axially spaced retainers for collecting particles during rotation of the separator, (1E) each of the retainers including at least one fluid inlet for fluidizing particles in the retainer during operation;
(1F) wherein the plurality of dividers include a first pair of adjacent dividers and a second pair of adjacent dividers, the first pair of adjacent dividers nearer the input end than the second pair of adjacent dividers, (1G) wherein a first divider slope relative to the rotation axis between inner positions of the first pair of adjacent dividers is greater than a second divider slope relative to the rotation axis between inner positions of the second pair of adjacent dividers and (1H) wherein each of the first and second divider slopes is zero or positive; (1I) wherein the first divider slope is greater than about 10 degrees.”
The Opposition
23 In the SGP the Opponent pursued grounds under:
· s59(b) and s18(1)(b)(i) – the invention as claimed is not novel in view of the prior art base as it existed before the priority date of the claims;
· s59(b) and s18(1)(b)(ii) – the invention as claimed is not inventive in view of the prior art base as it existed before the priority date of the claims;
· s59(c) – the specification does not comply with s40(2)(a); and
· s59(c) – the specification does not comply with s40(3), in that the claims are not clear and succinct.
24 In the OS the Opponent only pursued grounds under lack of novelty of all claims and lack of clarity with respect to claims 1, 5, 8 and 16. Consequently, this decision is limited to the grounds pressed by the Opponent.
25 I do note, however, that the Opponent raised several “new” grounds/particulars at the hearing concerning support and clarity. As I indicated to the Opponent at the hearing, I would consider these for the purposes of s60(3), rather than the Opponent now seeking an amendment to the SGP. As I also indicated to the Applicant at the hearing, if I was minded to raise these new grounds/particulars I would write to the parties seeking their views on this.
Onus and Standard of Proof
26 The application was filed on 16 February 2017. Consequently, substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 apply to the 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. Notably it is the Opponent who bears the onus of proving their case to the requisite standard during opposition proceedings.
Who is the Skilled Addressee?
27 The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to possess the common general knowledge (“CGK”) in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”.
28 In my view the skilled addressee or person skilled in the art (“PSA”) is a person interested in the making, constructing or using of centrifugal separators, particularly as these relate to the gold mining industry. I did not take this formulation of the PSA to materially differ from the positions of the parties as put at the hearing. I have reviewed the declarations, and, where given, the CVs provided by each of the expert declarants and I am satisfied that each is able, at least in some way, to adequately represent the views of the skilled addressee as I have defined it. In this regard I note that:
· Mr Fullam has a bachelor’s degree of applied science in metallurgy and materials science and qualifications in mechanical engineering technology (MJF-2). He has many years experience in auditing systems involving the gravity recovery of gold (MJF-2). Although not made entirely clear in the evidence, as best understood I take gravity recovery of gold to include the use of centrifugal separators amongst other equipment; see (Fullam1 at [5]; McAlister at [20] and [39]). Mr Fullam also has considerable experience in the development and design of centrifugal separators (Fullam1 at [10] and [11]). Mr Fullam was employed by the Opponent or its predecessor from 1998 to 2018 and continued working in partnership with the Opponent from 2018 to August 2023 via Consep Pty Ltd, after which Mr Fullam entered partial retirement and provides consultant services on retainer to Consep Pty Ltd (Fullahm1 at [6] to [13]); and
· Mr McAlister has a bachelor’s degree in science with honours and has completed the course work component of a master’s program in construction management (SM-1). He began trialling the use of centrifugal concentrators for separating gold from alluvial material in the early 1980s and established Canadian Gold Centrifuge Company in 1983 to design and manufacture centrifugal concentrators (McAlister at [8] and [9]). Canadian Gold Centrifuge Company was bought by Falcon Concentrators Inc, which was eventually renamed in 2009 as Sepro Mineral Systems Corp i.e. the Applicant. Mr McAlister was the President, CEO and a director of predecessors to the Applicant from 1986 to 2009 and was on the board of directors of the Applicant from 2009 to 2024 (McAlister at [11] and [16]; SM-1). Throughout this time Mr McAlister gained significant knowledge and experience in the centrifugal concentrators and their design and manufacture (McAlister at [12], [14], [15], [17], [18], [20] and SM-1).
29 Both parties engaged in some sparring, both in their written submissions and at the hearing, over which of the experts, Mr Fullam or Mr McAlister, should be preferred in an evidentiary sense. The issue, as I understood it, was not whether either Mr Fullam or Mr McAlister could adequately represent the views of the PSA in a technical sense, but rather whether their respective evidence was somehow tainted by their association with the Opponent in Mr Fullam’s case and with the Applicant for Mr McAlister. For example, the OS at [13] points to Mr McAlister’s close association with the Applicant. The Applicant questioned Mr Fullam’s impartiality at [9] of the AS.
30. I generally accept that both Mr Fullam and Mr McAlister are able to represent what the PSA would know or do. I do not propose to make any general statements or conclusions here about the relative suitability of any of the experts to represent the skilled addressee, or the alleged lack of impartiality of either of the expert declarants. Suffice to state that, where the declarants disagree on a factual point that I intend to rely upon, or where I seek to make findings of fact based on the expert evidence, it will be up to me to weigh each declarant’s evidence accordingly, in view of the particular context concerned, their skills, knowledge, experience, and whether bias has affected any of the evidence concerned.
Clarity and claim construction matters
Rules of Construction
31. Rules of construction have been provided by the authorities to assist in determining the ambit of claims. These have been conveniently summarised in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (“Pfizer”) at [247] to [250]. At [249] Pfizer noted that the following principles arose from Re Décor Corporation Pty Ltd (Formerly Brian Davis and Company Pty Ltd) and Rian Tooling Industries Pty Ltd v Dart Industries Inc [1988] FCA 399):
“1. 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.
2. 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. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
3. Nevertheless, in approaching the task of construction, one must read the specification as a whole.
4. In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
5. If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
6. A patent specification should be given a purposive construction rather than a purely literal one.
7. In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.
8. The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.
9. Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
10. If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.”
32. Three additional construction principles were also cited in Pfizer (at [250]) as arising from Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56:
“1. There is a danger in considering the integers of a claim individually and in isolation. This could yield a literal rather than a purposive construction – see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243 (Lord Diplock).
2. The Court should avoid too technical or narrow a construction of claims.
3. A construction according to which the invention will work is to be preferred to one according to which it may not do so.”
33. As noted in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 at [73], the construction of patent claims and specifications is a question of law for the decision maker, rather than a question of fact to be determined via expert evidence:
“The role of expert evidence in construing the patent specification and the claims is limited. It is to place the Court in the position of the person acquainted with the surrounding circumstances as to the state of the art and manufacture as at the priority date: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24]; Myriad Genetics at [12]. Typically, the Court will read the specification with the benefit of expert evidence as to the meaning of words that are terms of art, or with an explanation of technical concepts relevant to the understanding of the invention as described and claimed. The question of construction remains with the Court.”
Clarity
34. The statutory basis for clarity is given at s40(3) of the Act which states that the claims must be clear and succinct. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute. As noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229 (“Austal Ships”)):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use … The consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, commonsense manner … Absurd constructions should be avoided…and mere technicalities should not defeat the grant of protection…”
35. Where terms in claims are unclear, recourse may be made to the specification to resolve the ambiguity; see Interlego AG v Toltoys Pty Ltd [1973] HCA 1 at [14] as per Barwick CJ and Mason J;; (1974) 130 CLR 461 at 479 (“Interlego”):
“If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification…”
The Opponent’s clarity arguments
36. At [90] to [96[ of the OS the Opponent argues that claims 1, 5, 8 and 16 lack clarity due to phrases concerning the divider slopes. Paragraph [90] of the OS specifically points to the following phrase in claim 1:
“…wherein each of the first and second divider slopes is zero or positive; wherein the first divider slope is greater than about 10 degrees”.
37. This was said to lead to a lack of clarity as outlined at [91] to [95] of the OS:
“91 As Mr Fullam explained, this integer gives rise to a logical difficulty: it is impossible for the first divider to be both zero and greater than 10 degrees. The same difficulty arises for the equivalents in claims 5, 8 and 16.
92 Mr McAlister sought to resolve this difficulty by imposing upon claim 1 a construction such that the integers are ‘a Boolean expression whereby satisfaction of one of the conditions renders the expression true.’
93 However, Mr McAlister’s imposition of a Boolean requirement illustrates the lack of clarity in claim 1, and leaves the skilled addressee unsure as to the extent of the monopoly sought to be claimed.
94 To take an example, if the first divider slope was 11 degrees and the second was 9 degrees
(a) On Mr McAlister’s interpretation, it appears that this would satisfy a Boolean construction, because each of the first and second divider slopes would be “positive” and the first divider slope would be greater than about 10 degrees;
(b) However, this ignores the textual requirement that “each of the first and second divider slopes is zero or positive”, which prima facie is an exclusive requirement (that is, if the first divider slope is positive, the second divider slope is required to be zero);
(c) On Mr McAlister’s interpretation, an apparatus satisfying the other requirements of claim 1 with a first divider slope of 11 degrees and the second of 9 degrees would infringe the claim. Contrastingly, on the second interpretation above, it would not.
95 Further, on either of these interpretations, there is an inherent redundancy in the integer extracted above, as the reference in claim one to “each of the first and second divider slopes” being “zero” will be redundant because the first divider slope is required to be greater than about 10 degrees. Either construction runs into the problem that claim one expressly provides that each of the divider slopes can be zero, and authority establishes that the claims must be construed according to their terms upon ordinary principles, and it is not legitimate to apply glosses to clear words used in a claim.” (emphasis in original, references to footnotes removed)
38. Despite exhorting construction “…according to their terms upon ordinary principles…” it is not clear to me that the Opponent and Mr Fullam have proceeded on that basis. The phrase concerned is quite clear in its own terms – it specifies that the first or second divider slopes are zero or positive and then goes on to further specify that the first divider slope is greater than about 10 degrees. Ergo, it is quite clear that first divider slope must be greater than about 10 degrees. There is no lack of clarity due to the wording concerned.
39. I note that there were some other constructional matters in contention between the parties. However, these primarily relate to the disclosure of prior art discussed in connection with novelty. I will leave consideration of those issues, to the extent needed, to consideration of novelty later in this decision.
Clarity – Conclusion
40. I am not satisfied that the recital of the dividers slope angles in the claims leads to any lack of clarity. The Opponent has been unsuccessful in making out this ground of opposition.
Novelty
41. The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
42. In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The FirestoneTyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tire & Rubber”) as to what a skilled addressee would do based on the disclosure in question:
“…if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee’s invention will not suffice.”
43. Notably s7(1)(c) of the Act provides for prior art information for the purposes of “whole of contents” novelty by referring to subparagraph (b)(ii) of the definition of “prior art base” in Schedule 1 of the Act. This subparagraph provides criteria that determine whether a document may be used for the purposes of whole of contents novelty as follows:
“(b) in relation to deciding whether an invention is or is not novel:
………
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published.”
44. With respect to “whole of contents” objections, it was noted by Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [178][1] (“Danisco”) that:
“A ‘whole of contents’ objection under s 7(1)(c) and paragraph (b)(ii) of the definition of ‘prior art base’ in the Dictionary in Schedule 1 to the Act attracts additional considerations. The usual rules as to clarity of disclosure to the skilled addressee apply but, in addition, it must be possible to draft a notional claim (assuming there is not an actual claim to the relevant subject matter) that is fairly based on the disclosure of the prior specification relied upon (E I Du Pont de Nemours & Co v ICI Chemicals & Polymers Ltd (2005) 66 IPR 462 at [80]–[84] per Emmett J).”
[1]Undisturbed on appeal in Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417.
The Opponent’s novelty arguments
45. The Opponent’s novelty case is premised on an application of the Opponent’s, WO 2021/094386 A1 (“D1” or “Johansen”). D1 was published on 20 May 2021, but has an earliest priority date of 13 November 2019. D1 therefore nominally qualifies as prior art for the purposes of “whole of contents” novelty. I will consider the disclosure of D1 below.
46. D1 is titled “Centrifugal separator having an improved flow and system comprising such a centrifugal separator”. The “Field of invention” from page 1, lines 2 to 4, states that: “The present invention relates to a centrifugal separator of the type having a plurality of axially spaced annular recesses on a peripheral wall of a rotatable bowl.” It is manifest that D1 is in the same art as the application.
47. The “Background” of D1 extends from page 1, lines 6 to 28. This discusses the fact that centrifugal separators comprising “…a rotatable bowl having a peripheral wall comprising annular recesses has been known in the industry for many years” (page 1, lines 6 to 7) and that there have been efforts to improve the efficiency of these separators by changing the shape of the recesses or having inserts or screens in the recesses.
48. However, it seems that these attempts may not have been entirely successful, and there is room for further improvements:
“…despite many attempts to improve this type of centrifugal separator over the years, the unit recovery is still only at around 20% and the slurry that exits the bowl is therefore passed through several separators to obtain as much product as possible.
Since the type of materials to be separated and the density of those materials in the slurry may vary, the operational conditions of the individual separator should be optimized. In this context it is possible to vary rotational speed, i.e. centrifugal force and the water injection pressure. Both control the fluidization in the annular recesses and determines the density of the particles which collect. It is however desirable to provide a concentrator design which allow for improved flexibility and optimization.
It is also desirable to provide a centrifugal separator which is able to provide a higher yield i.e. a product stream with a higher concentration of the product. This would enable a similar yield to the current centrifugal separators with fewer passes through a separator, or preferably a higher yield with the same number of separation steps.” (page 1, lines 17 to 28)
49. The “Summary of the invention” runs from page 2, line 1 to page 9, line 5. Like many such summaries, it includes consistory statements commensurate with the claims. However, it does point out what appears to be the thrust of the invention as described in D1, or what might be called the inventive concept. This is to do with regulating fluid pressure in the centrifuge, using certain means not important for present purposes, which are said to improve separation:
“The inventive concept builds on the recognition that when the separator is in use the fluid pressure in the annular cavity changes from the bottom of the annular cavity towards the top of the annular cavity due to the shape of the annular cavity, more particularly due to the varying distance from the center of rotation, i.e. the center axis, and the rotational speed of the centrifuge bowl. Typically, the fluid pressure increases from the base towards the top since the distance from the center axis increase towards the top of the annular cavity. As the annular recesses are located at different positions in the centrifuge bowl this results in a different fluid pressure and thereby also a different fluid flow through the perforations into the annular recesses. Particulate material in the slurry has different densities and sizes and a varying fluid pressure is good for collecting the different particulate material. It has been observed that certain adjacent annular recesses collect much more product material than others because they have an optimized fluid pressure and therefore a better fluidization of particulate material. Due to the inclination of the centrifuge bowl wall and the housing wall and because it rotates, it is not possible to have the same fluid pressure at all annular recesses with the prior art centrifuges. However, by having an Aflow [accumulated cross sectional flow area] at two different heights in the annular cavity that differs by at least a factor 10, preferably that form at least two partially separated sections, it is possible to alter the fluid pressure in an additional way and obtain a more desired pressure (or pressure region) that may appear at several locations in the annular cavity. The optimized pressure increases the amount of product particulate material collected in the annular recesses and thereby increase the overall efficiency of the centrifuge.” (page 3, lines 4 to 21)
50. I will now turn to a detailed consideration of the invention described in D1 as relevant for present purposes. Figure 1 of D1, reproduced below, shows a centrifuge 1 comprising a bowl 10. The bowl 10 has a base 11, peripheral wall/bowl wall 12 and open mouth 13. Bowl 10 is mounted to support shaft 16, which is driven by motor 2, such that it may thereby rotate about axis 15. A feed duct 17 supplies a feed of material, for example a slurry, onto a guide plate 18 at base 11. Rotation of the bowl 10 deflects the feed radially outward with respect to axis 15 and then moves up the peripheral wall 12. Heavier (more dense) material is caught in a plurality of annular recesses 19 on the peripheral wall 12, while lighter (less dense) material flows out of the mouth 13 and is collected by launder 20.
51. Figure 2 of D1, reproduced below, shows further details of the bowl 10. Here it can be seen that recesses 19 are spaced along the inner surface 23 of peripheral wall 12, with the recesses increasing in diameter as one moves from base 11 upward along axis 15 towards open mouth 13. Each recess 19 has a recess base 40 and side walls 41 that converge towards recess base 40. Although not shown on figure 1, the centrifuge 1 has similar means for fluidisation as per the application, as demonstrated by openings 32 on figure 2 illustrated below[2].
[2] See also D1, page 10, lines 29 to 30.
52. Importantly, for present purposes, it is stated on page 10, lines 11 to 18 that:
“The overall angle of the centrifuge bowl wall 12 relative the central axis 15 may vary or be constant. In the embodiment shown in Fig. 2 the centrifuge wall 12 has a first lower portion 45 which has a larger angle relative to the central axis 15 than a second upper portion 46 of the centrifuge wall 12. Alternatively, the centrifuge wall 12 may have a first, second, and third portion, each having a different angle smaller than the previous section relative to the central axis 15. It is clear that the number of sections having a different angle may be increased further. As the number of sections is increased the shape becomes rounder and ultimately the shape of the centrifugal wall 12 in a cross-sectional view may be circular, i.e. the centrifuge bowl wall 10 may have a shape similar to a half sphere or a paraboloid.” (emphasis added)
53. The above quoted passage is the only part of the “Detailed description of embodiments of the invention” that discusses the idea of variation in the angle of the peripheral wall 12 with respect to the axis 15. However, considerably more is provided in the “Summary of the invention” as follows:
“In a preferred embodiment of the invention the portion of the centrifuge bowl wall that includes recesses has at least two different inclinations with regards to the central axis. In other words, the inner surface of the centrifuge bowl wall may have a first portion and a second portion both comprising one or more annular recesses. The first portion of the inner surface of the centrifuge bowl has an angle with respect to the central axis which is different than the angle of a second portion of the inner surface of the centrifuge bowl.
The angles may vary between 5 degrees and 15 degrees. Preferably the difference in inclination between the angles is at least 3 degrees to 5 degrees.
During intended use when the centrifuge bowl is rotated and slurry is provided into the centrifuge bowl, the rotation of the bowl generates a centrifugal force acting on the particles in the slurry and forces them in a radial direction towards the centrifuge bowl wall. The inclination of the bowl wall determines the distance from the center of rotation, i.e. the center axis, and thereby also the magnitude of the centrifugal force that acts on the particles in the radial direction and the resulting force acting on the particle in a direction parallel with the surface of the centrifuge bowl wall. The angle therefore determines how much of the centrifugal force act on the particles towards the recesses and in an upwards direction. The inventors have surprisingly found that by varying the angle the recovery of high density minerals improves. Without being bound by any theory it is believed that relatively shallower angle in a section helps to accelerate feed up the bowl wall and minimizes the hydraulic transition zone as the feed is deposited at the base of the bowl, maintaining or improving throughput capabilities relative to the existing designs. A steeper, but not vertical section maintains a relatively uniform film thickness of feed moving up the peripheral wall, while minimizing the overall difference in radius between the upper and lower recesses, thereby reducing the localized differences in pressure in the jacket due to centrifugal forces.
In a preferred embodiment the first portion of the inner surface is located closer to the centrifuge bowl base than the second portion of the inner surface and that the angle of the first portion of the inner surface is greater than the angle of the second portion of the inner surface. This configuration provides a bowl wall that is steeper towards the top of the centrifuge bowl. The angle is measured with respect to the central axis.
Preferably the centrifugal bowl wall has an angle relative to the central axis of 5 to 15 degrees. Preferably the angle of the lower section is 10 to 15 degrees, such as 12.5 degrees. Preferably the angle of the upper section relative to the central axis is 5 to 10 degree, more preferably 7 to 9 degrees, such as 8 degrees.
In another preferred embodiment the angle of the centrifuge bowl wall may be varied at several locations between the base and the open end. Preferably the centrifuge bowl wall may substantially be shaped as a half sphere or a paraboloid.” (D1, page 7, line 11 to page 8, line 4; emphasis added).
54. With reference to figure 2, what is clear from the above disclosures is that D1 provides for a bowl wall 12 that has at least two different inclinations with respect to the rotation axis 15. The inclination of the lower section of the bowl wall 45 is preferably listed as 10 to 15 degrees, whilst the inclination of the upper section 46 is preferably 7 to 9 degrees. In one instance, the inclination of the lower section of the bowl wall 45 is given as 12.5 degrees, whilst the upper section 46 is inclined at 8 degrees.
55. I will now consider whether claim 1 lacks novelty in view of D1 and then consider the dependent claims if necessary.
Does claim 1 lack novelty in view of D1?
56. There is no question that the inclinations of the bowl wall 12 (as opposed to the divider slopes) are commensurate with those of claim 1. Despite Ms Cunliffe’s efforts to suggest that the embodiment concerned is a preferred embodiment which may or may not be implemented (said to be the “first difficulty” by the Applicant, see the AS at [44]), a clear and unmistakeable disclosure of something in the General Tire & Rubber sense does not become unclear or mistakeable simply because it relates to preferred features. A question remains, however, as to whether this leads to clear and unmistakeable directions for features 1G to 1I in D1.
57. In this regard, the claim chart comprises annotated (partial) copies of figure 2 with respect to integers 1F and 1G; this seeks to demonstrate clear and unmistakeable directions for the angular features defined in claim 1. I have reproduced the relevant parts of the claim chart below.
58. Noting that D1 deals with the slope of the bowl wall, as opposed to divider slopes, the key question is whether D1 in some way also necessarily discloses divider slopes falling within the scope of claim 1 of the application. To my mind D1 does so. As is apparent from the annotated partial figure 2 at 1G of the claim chart, the red line drawn across the tips of the three recess dividers on lower section 45 of the bowl wall (circled on the lower part of the figure) is parallel to the lower section 45 of the bowl wall itself, this being represented by the green line I have added as a further mark up to the figure. Similarly, the red line drawn across the tips of the four recess dividers on upper section 46 of the bowl wall (circled on the upper part of the figure) is parallel to the upper section 46 of the bowl wall, this being represented by the yellow line I have added as a further mark up to the figure.
59. While there is some divergence of language used in D1, for example it refers in places to the angle of the inner surface 23 of the bowl 12 and in other places simply refers to the angle of the bowl wall 12, it is apparent from the disclosure that it is the relevant sections of the bowl wall that are angled as described. That is, there is no real distinction in the disclosure between the angles of the inner surface 23 and outer surface 24 of the bowl wall 12. Put another way, where the bowl wall 12 is said to be angled with respect to the central axis 15 in the lower section, then it is the entirety of the bowl wall 12, both the inner surface 23 and outer surface 24 that are so angled. This is quite apparent from figure 2 as marked up above, where the yellow and green lines representative of the outer surface 24 are parallel to the red lines drawn across the tips of the rings 22 forming the inner surface 23 of the bowl wall 12.
60. In any case, even if I am wrong on this point, it is inarguable that the inner surface 23 of the bowl wall is angled with respect to the central axis 15 as discussed in D1. As I will discuss further below in response to some of the AS, the ring tips 22 comprise part of the inner surface 23 of the bowl wall 12. Thus, the inner surface 23 has a profile that, conceptually, may be understood to be corrugated in a similar way as a sheet of corrugated iron roofing. While such surfaces may be uneven, this does not mean that one cannot identify an angle for such surfaces when that surface is considered as a whole. Assuming a sheet of corrugated iron roofing is angled in a manner that runs perpendicular to the direction of the corrugations (as opposed to the orthodox case in roofing where the corrugations run parallel to the roof pitch to ensure effective water drainage) one can legitimately define the angle that a sheet of corrugated iron roofing makes with respect to any axis one cares to make via taking any line perpendicular to the direction of the corrugations and within a horizontal plane running through or on the corrugated roofing sheet.
61. For example, the picture below shows such a corrugated roofing sheet end on to the corrugations, the sheet being at an angle to the black line. The angle of the corrugated roofing sheet to the black line can easily be appreciated and defined by any line as discussed in the preceding paragraph. Three such lines are apparent below, the blue line touching the uppermost point of the corrugation, the purple line touching the lowermost point of the corrugation and the orange line running through the middle of the corrugations. Each line is parallel and can be legitimately said to define the angle the corrugated roofing sheet makes with the black line. A line that could not be fairly said to define the angle the sheet makes with the black line would, for example, be the dashed green line.
62. It follows from the above discussion that any appropriately drawn line across or through the tips of the rings 22 will define the angle of the inner surface 23 of the bowl wall 12 to the central axis 15. Given the angular ranges for the lower 45 and upper 46 sections of the bowl wall 12, it follows that features 1F to 1I are disclosed in D1. It is also manifest from figure 2 and the disclosure in D1 with respect to the same that features 1A to 1E are also disclosed in D1 – indeed I did not understand that these features were in dispute between the parties. Consequently, D1 deprives claim 1 of novelty.
63. Of course, the above analysis tends to break down if, for example, figure 2 does not accurately reflect the relative dimensions of ring tips/dividers and other features of the bowl 10. I note that in some parts of his evidence Mr McAllister refers to the drawings of D1 as being “schematic”[3]. However, I do not think figure 2, at least, of D1 can be dismissed as being unclear or meaningless in terms of conveying the relative dimensions of the bowl 10. While not at the level of detail as proper engineering or technical drawings, figure 2 clearly represents the bowl 10 and its constituent parts in proper proportion to each other. There is nothing otherwise about the disclosure of D1 to doubt this is the case for figure 2. It follows that figure 2 would be understood as being properly to scale, such that I am satisfied with the approach I the approach I have taken concerning the disclosure of D1 with respect to claim 1.
[3] For example, McAllister at [83] and [101].
64. Contrary to my view put above, the Applicant argued that the (alleged) varied ways that the embodiment concerned can be put into effect meant that D1 was not novelty destroying:
“47. The second, even more critical difficulty, is that it is not clear how the arrangement described on pages 7 to 8 of Johansen is to be put into effect, and there are several ways to do so. Contrary to the Opponent’s suggestion at OS [47] to [50], the difficulty in identifying the point or points at which the angle with respect to the central axis should be measured is not merely a hypothetical difficulty identified by Mr McAlister based on his idiosyncratic reading of Johansen.
48. It may be assumed in the Opponent’s favour, for the purpose of this analysis, that the inner surface refers to the inner surface of the liner, and not to the separator, as the Opponent suggests at OS [52]. The liner includes ring tips and the annular recesses. The first portion and second portion are therefore each comprised of at least one ring tip (or more than one ring tip) and an annular recess, and may be comprised of much more. That is, each of the first portion and the second portion comprise (inter alia) an annular recess. Even on the assumption which has been made in favour of the Opponent, for the purpose of this analysis, the surface of each portion therefore varies considerably in terms of its distance from the central axis and there is consequently considerable variability in the angles measured from different parts of the surface of the portion with respect to the central axis.
49. Johansen is silent as to where on the surface of each of the first and second portion at which the angle should be measured. That difficulty is compounded by the unclear definition of the first and second portion. It is not clear whether the angle should be taken based on the angle of the straight line between ring tips which are some distance away (as the Opponent assumes, conveniently for its case on anticipation) or whether it should be taken from the line across a single ring tip, or at the furthest point of the surface from the central axis (that is, based on a line drawn across the furthermost part of the annular recess). All readings are open.
50. This difficulty is compounded by Figure 2, which, as set out above, purports to show a centrifuge wall with a first lower portion that has a larger angle relative to the central axis than the second upper portion of the centrifuge wall.
51. As Mr McAlister explains, it is not possible to identify an inner surface of the bowl that has an angle with respect to the central axis that is different to the angle of a second portion of the inner surface of the bowl. It is also not possible to identify any inner surface that has an angle that is between 5 degrees and 15 degrees, except the inner surface of the bowl wall to which the liner is attached. The innermost surface of each ring tip is vertical, as is the rear wall surface of each annular recess. The upper and lower sloping surfaces of each ring tip appear to be the same in each instance. The figure offers no guidance to the skilled addressee in identifying the point of the first and second portion’s surface at which the measurement should be taken
52. At OS [55], the Opponent submits (citations omitted) that:
Mr Fullam understood that the term ‘divider slope’ used in Johansen ‘was intended to refer to the angle of the straight line connecting the inner positions of a pair of adjacent dividers.’ This can be seen in the red portions of Mr Fullam’s annotated version of Figure 2 of Johansen:
53.Unfortunately for the Opponent, the term ‘divider slope’ is not used in Johansen: it is language taken from the Application. Nor is any similar term used in Johansen. The angle is measured from the surface of the first or second portion in relation to the central axis: that is, presumably, from a single point on those surfaces. The red line drawn by Mr Fullam appears to assume, without textual support, that a portion will be made up of several ring tips, and that the angle should be measured by drawing a line between the furthermost ring tips.
54.However, it is apparent from the relevant passage that Mr Fullam had to draw inferences rather than rely on what was (explicitly or implicitly) disclosed. There is no clear and unmistakable disclosure to use a first divider slope relative to the rotation axis between inner positions of the first pair of adjacent dividers which is greater than a second divider slope relative to the rotation axis between inner positions of the second pair of adjacent dividers.
55.That issue alone is fatal to the Opponent’s novelty case.” (references to footnotes removed)
65. The fact that D1 does not discuss a divider slope or explicitly is not, of itself, determinative in terms of whether there is a novelty destroying disclosure in D1. The Applicant’s contentions about the directions of D1 being able to be carried out in a variety of ways and variations in the surface of each portion of the bowl overlooks the disclosure of figure 2, which clearly discloses particular upper and lower portions 45, 46 of the bowl with a certain angular relationship and with each of these having a certain number of dividers. In this regard, as discussed above, it is quite apparent from the disclosure of D1 with respect to figure 2 (and indeed from figure 2 itself) that it is portions of the bowl 45, 46 as a whole that are angled with respect to the central axis.
66. The Applicant’s contentions appear to be premised on considering individual recesses or dividers or other constituent parts (or perhaps any two or more of these) from each portion 45, 46 as being used to define the angle of the portion 45, 46 as a whole with respect to the central axis 15. The fact that individual portions of a surface may be profiled or angled differently from the surface itself does not mean the angle of the surface as a whole is undefined. There does not appear to be any logical basis to define an angle for a surface in the way that the Applicant has and none emerges from D1.
67. The Applicant’s arguments at [51] of the AS rely on [82] of McAlister, which is reproduced below:
“I cannot identify in the figure [figure 2] an inner surface of the bowl that has an angle with respect to the central axis that is different to the angle of a second portion of the inner surface of the bowl. I also cannot identify any inner surfaces that have an angle that is between 5 degrees and 15 degrees except the inner surface of the bowl wall to which the liner is attached. The innermost surface of each divider is vertical as is the rear wall surface of each recess. The upper and lower sloping surfaces of each divider appear to be the same in each instance. Thus, what is depicted in figure 2 (and figures 3, 4 and 5 for that matter) can only match what is said at page 7 if the surfaces referred to are the inner surfaces of the bowl to which a liner has been applied.”
68. It can be seen that Mr McAlister appears to be applying a similarly unusual methodology for defining the angle of a surface as discussed above. Referring to paragraphs [70] to [73] of McAlister it may be understood that Mr McAlister’s difficulties in identifying different angled surfaces in the inner surface of the bowl stem from, in my view, an unnecessarily complicated and confusing discussion of what the inner surface is or could be in D1, and of the relationship between the inner surface and the recesses. These paragraphs are reproduced below:
“70. There is a brief discussion of the shape of the bowl itself at page 7 ln 11-40. At ln 11-14 it is stated that the portion of the centrifuge bowl wall that includes recesses has at least two different inclinations with regards to the central axis.
71. The passage goes on to state that this means that the inner surface of the centrifuge bowl wall may have a first portion and a second portion both comprising one or more annular recesses. The first portion of the inner surface of the centrifuge bowl has an angle with respect to the central axis which is different than the angle of a second portion of the inner surface of the centrifuge bowl. The authors use of ‘in other words’ at page 7 ln 12 communicates extra emphasis on this attribute so I spent extra time trying to figure out what the authors meant.
72. A ‘surface’ as related to geometry means a continuous set of points that has length and breadth but no thickness. This definition comes from Oxford Languages. Oxford Languages is the world’s leading dictionary publisher, with over 150 years of experience creating and delivering authoritative dictionaries in more than 50 languages. Therefore, this passage could be saying that in the interior of the bowl, there are a first portion and a second portion that each have angled surfaces, and the angles of the surfaces are different. This could be a description of surfaces that are exposed to slurry transiting the apparatus. However, the relationship between any such the recesses is not made clear. For example, are the angled surfaces part of the recesses?
73. Alternatively, the reference to the ‘inner surface of the centrifuge bowl wall’ in the passage at page 7 ln 11-16 may be a reference to the inner surface of a bowl structure to which has been applied another component that forms the annular recesses. For example, it is common in these types of centrifuges for the bowl to be constructed from metal having a smooth inner surface and to have a liner component affixed to the inner surface of the bowl to form the series of dividers and recesses in the interior of the bowl. This understanding of what constitutes the ‘inner surface of the centrifuge bowl wall’ appears consistent with an earlier description of the apparatus at page 6 ln 36 to 41. Here it is stated that the centrifuge bowl has a circumferential wall having an inner and outer surface with the inner surface comprising a plurality of annular recesses at axially spaced positions on the inner surface of the centrifuge bowl. This could be a description of an inner surface that is distinguishable from the annular recesses. However, it is difficult to ascertain what exactly is the ‘inner surface’ from the disclosure of Johansen and I expect that this term may be used mistakenly and interchangeably for more than one feature.”
69. I find it difficult to follow the logic of Mr McAlister in undertaking “further analysis” due to the use in D1 of “in other words”. The passage at page 7, lines 11 to 16 of D1 does nothing more than to specify that the portion of the inner bowl wall that comprises recesses has at least two different inclinations with respect to the central axis (e.g. 15 of figure 2). Nothing about the use of “in other words” changes this understanding or requires further elaboration in my view. Nevertheless, I have no difficulties with Mr McAlister’s understanding of a “surface” as outlined in the earlier part of [72] of his declaration.
70. However, things begin to clearly go awry from the fourth sentence of [72]. It is not clear how Mr McAlister has doubts as to what comprises the inner surface of the bowl – it is difficult to see how it is anything other than the surface exposed to the slurry in operation. Further, I fail to understand what Mr McAlister means when he says that the relationship between the angular surfaces and the recesses is not made clear and whether the angled surfaces are part of the recesses. The recesses clearly form part of the angular surfaces concerned, so the last sentence of [72] is difficult to understand.
71. Paragraph [73] is even more perplexing. In this regard page 6, lines 36 to 41 of D1 read as follows:
“According to another aspect, the invention relates to a centrifuge bowl for use in a centrifuge for separating intermixed particulate material of different specific gravity, the centrifuge bowl having a base, a circumferential wall surrounding a central axis and an open end substantially opposite of the base, said central axis passing through the base, the circumferential wall having an inner and outer surface, said inner surface comprising a plurality of annular recesses at axially spaced positions on the inner surface of the centrifuge bowl and wherein the outer surface of the centrifuge bowl comprising a sealing portion.” (emphasis added)
The emphasised portion above makes it quite clear that the recesses form part of the inner surface, as observed above. Mr McAlister’s suggestion that the recesses are distinguishable from the inner surface does not accord with the disclosure of D1. I also fail to see how D1 in any way confuses what is meant by the inner surface, or that it is difficult to ascertain what this is or how different portions of the inner surface may be at different angles. Figure 2 and the disclosure therein in D1, at the very least, clearly points out the nature of the inner surface via item 23 and makes it clear that portions 45, 46 are angled in a certain way.
72. Ms Cunliffe reiterated similar arguments as above at the hearing, but suggested that, as two different experts construed D1 differently in terms of its disclosure regarding the slopes of the inner surface of the bowl wall, there could not be clear and unmistakeable directions in D1 for the features of claim 1 concerned. While a decision maker may take note of expert evidence, ultimately construction of specifications and prior art, and what these disclose is a matter for the decision maker; see Otsuka Pharmaceutical Co Ltd v Generic Health Pty Ltd (No 2) [2016] FCAFC 111; 120 IPR 431 (“Otsuka”) at [36] and references therein. Novelty is not reduced to a matter of determining whether or if a majority of experts consider certain features are disclosed in a document. I have considered D1 and have determined that it discloses all the features of D1.
73. A further issue concerning D1 was raised by the Applicant at [56] to [67] of the AS[4]:
[4] Note there is no paragraph [65] as such – this paragraph number alone appears next to figure 2 as cited at [64] of the AS.
“56. The third difficulty is that there is no clear and unmistakeable disclosure that the lower divider slope is greater than 10 degrees. Johansen discloses that the angles may vary between 5 degrees and 15 degrees.
57. This issue, again, is fatal to the Opponent’s novelty case on all claims.
58. The case is even clearer in relation to dependent claim 3, which specifies that the first divider slope is greater than about 20 degrees, and to each of the claims which depend on it.
59. There is no disclosure in Johansen of the use of an angle of about 20 degrees. The only specific disclosure as to angles occurs in the context of a disclosure that ‘In a preferred embodiment of the invention the portion of the centrifuge bowl wall that includes recesses has at least two different inclinations with regards to the central axis. In other words, the inner surface of the centrifuge bowl wall may have a first portion and a second portion both comprising one or more annular recesses. The first portion of the inner surface of the centrifuge bowl has an angle with respect to the central axis which is different than the angle of a second portion of the inner surface of the centrifuge bowl.’
60. In that context, Johansen specifies that ‘The angles may vary between 5 degrees and 15 degrees. Preferably the difference in inclination between the angles is at least 3 degrees to 5 degrees’, and that ‘Preferably the centrifugal bowl wall has an angle relative to the central axis of 5 to 15 degrees. Preferably the angle of the lower section is 10 to 15 degrees, such as 12.5 degrees. Preferably the angle of the upper section relative to the central axis is 5 to 10 degree, more preferably 7 to 9 degrees, such as 8 degrees.’
61. The Opponent suggests at OS [71] that where Johansen describes angles of between 5 and 15 degrees, it is in the context of a preferred embodiment of the invention in which there are two different inclinations. However, the extract referred to states that the preferred embodiment suggests that the relevant portion has at least two different inclinations with regards to the central axis, which would not preclude a hemispherical or parabolic embodiment wherein more than two different inclinations are used. The OS’ submissions attempt to elide this wording.
62. Given that Johanssen does not otherwise disclose the use of angles, and that a hemispherical or parabolic embodiment would have both a lower section and an upper section, the extract set out above would apply to any hemispherical or parabolic embodiment, so that any implementation of these embodiments would use these angles.
63. OS [74] states:
Mr Fullam also identified a further technical reason why it would be nonsensical to apply a limitation on angles of slope inclines between dividers and recesses of between 5 and 15 degrees: where a bowl or separator is half‐spherical in shape, it would only be possible to achieve slope inclines of between dividers and recesses of between 5 and 15 degrees by placing the dividers and recesses on the upper portions of the bowl wall (due to the slope of the upper wall being closer to the vertical rotational axis). However, this would mean that the lower portion of the bowl wall would lack dividers and recesses, and be substantially smooth. This smooth area would reduce the ability of the bowl to recover particles (such as gold) because it would have reduced recesses. Accordingly, contrary to Mr McAlister’s approach, those skilled in the art would not apply a 5 to 15 degree angle range to divider slopes in a half‐spherical bowl, and Johansen would not be understood to imply such a limitation.
64. What Mr Fullam is describing as ‘nonsensical’ (placing the dividers and recesses on the upper portions of the bowl wall because the slope of the upper wall is closer to the vertical rotational axis), so that the lower portion of the bowl wall would lack dividers and recesses, and be substantially smooth, appears to be precisely what is disclosed in Johansen’s Figure 2, shown below:
66. In light of the absence of disclosure suggesting the use of angles over 20 degrees, and the suggestion in Johansen that the angle adopted should be between 5 and 15 degrees, it is apparent that each of claims 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19 and 20 are independently valid over claims 1 and 2. There is no clear and unmistakeable direction in Johansen to do what the patent discloses.
67. Similarly, there is no disclosure that the second divider slope must be less than about ten degrees, or that subsequent divider slopes are less than about 3 degrees.”
74. With respect to claim 1, the Applicant’s contentions cannot be sustained. D1, at page 7, lines 37 to 40, clearly discloses:
· that the angle of the lower section of the bowl is 10 to 15 degrees with respect to the central axis, and refers to 12.5 degrees as a particular example; and
· that the angle of the upper section of the bowl is 5 to 10 degrees, with respect to the central axis and preferably 7 to 9 degrees with 8 degrees as a particular example.
75. It is quite clear that these angles are relevant to the embodiment of figure 2 and would be understood as such by the skilled addressee. I also observe that the reference, at page 7, line 37 to the bowl wall having an angle relative to the central axis of between 5 to 15 degrees would be understood in context as conceptually specifying a preferred overall angular range for the bowl wall comprising recesses[5] when considered as a whole, rather than a range for any particular portion of the bowl wall. The fact that the preferable angular ranges for the lower and upper section fall within this range, as well as the fact that separate preferable ranges for each of the upper and lower sections are provided is indicative of this.
[5] See also discussion of D1 at [70] below.
76. I will leave most of the AS at [56] to [67], as these relate to claims other than claim 1 for discussion of the dependent claims concerned. However, for convenience, an issue for this part of the AS that I will consider now concerns whether there are two different preferred embodiments in D1 concerning the bowl wall having different inclinations, and what, if anything is the significance of this.
77. In my view, it is apparent, not least to the language of “In another preferred embodiment…”, that the discussion on page 8, lines 1 to 3 of a substantially half sphere shaped or substantially paraboloid shaped bowl relates to a different preferred embodiment to the one where there are only upper and lower bowl sections with different angles to the central axis (as exemplified by figure 2). Despite this, on one view the substantially half-sphere or paraboloid embodiment can be taken to be a generalised extension of the preferred embodiment where there are only lower and upper portions of the bowl wall angled to the central axis. One could then take this to mean that the preferable angular range of 5 to 15 degrees for the bowl wall, as given at page 7, lines 17 to 18 and 37, would equally apply to the substantially half-sphere or paraboloid embodiment.
78. I tend to in fact think this is the case. Notably, D1, at page 7, lines 11 to 32 reads as follows:
“In a preferred embodiment of the invention the portion of the centrifuge bowl wall that includes recesses has at least two different inclinations with regards to the central axis. In other words, the inner surface of the centrifuge bowl wall may have a first portion and a second portion both comprising one or more annular recesses. The first portion of the inner surface of the centrifuge bowl has an angle with respect to the central axis which is different than the angle of a second portion of the inner surface of the centrifuge bowl.
The angles may vary between 5 degrees and 15 degrees. Preferably the difference in inclination between the angles is at least 3 degrees to 5 degrees.
During intended use when the centrifuge bowl is rotated and slurry is provided into the centrifuge bowl, the rotation of the bowl generates a centrifugal force acting on the particles in the slurry and forces them in a radial direction towards the centrifuge bowl wall. The inclination of the bowl wall determines the distance from the center of rotation, i.e. the center axis, and thereby also the magnitude of the centrifugal force that acts on the particles in the radial direction and the resulting force acting on the particle in a direction parallel with the surface of the centrifuge bowl wall. The angle therefore determines how much of the centrifugal force act on the particles towards the recesses and in an upwards direction. The inventors have surprisingly found that by varying the angle the recovery of high density minerals improves. Without being bound by any theory it is believed that relatively shallower angle in a section helps to accelerate feed up the bowl wall and minimizes the hydraulic transition zone as the feed is deposited at the base of the bowl, maintaining or improving throughput capabilities relative to the existing designs. A steeper, but not vertical section maintains a relatively uniform film thickness of feed moving up the peripheral wall, while minimizing the overall difference in radius between the upper and lower recesses, thereby reducing the localized differences in pressure in the jacket due to centrifugal forces.” (emphasis added)
79. As emphasised above, the bowl wall is stated to have at least two different inclinations, meaning that three or more differently inclined portions of the bowl wall are contemplated. This then continues into a preferred angular range for the bowl wall, difference in inclination between the angles and a general discussion of how having variations in the inclination of the bowl wall improves recovery of high-density material. To my mind, the above passages are discussing a general principle concerning preferred embodiments having variable bowl wall inclinations with respect to the central axis and of the preferred variation in bowl wall angles for such embodiments. That is, the preferred angular ranges of 5 to 15 degrees and differences of at least 3 to 5 degrees are applicable to all embodiments where there are two or more inclined portions of the bowl wall, including those have a substantially half-sphere or paraboloid shaped cross section.
80. I note that the OS, at [71] to [74], argues that D1 does not disclose the angular range of 5 to 15 degrees being applicable to a half-sphere or paraboloid embodiment. However, as may be understood from the preceding discussion, the half-sphere or paraboloid embodiment may be considered a different embodiment from one where only the upper and lower walls of the bowl are angled, but this does not mean that D1, when properly understood is not in fact indicating that the preferred 5 to 15 degree range is also applicable to half-sphere or paraboloid embodiments. The fact is that the half-sphere or paraboloid embodiment and only the upper/lower wall portions angled embodiment may be understood as sub-embodiments of the same preferred embodiment.
Claim 19
116. Claim 19 is appended to any one of claims 1 to 18 and requires that the retainers have common minimum depths. D1 does not discuss anywhere the relative depths of the recesses/retainers. However, the Opponent refers to Fullam1 at [68] in support of this feature being present, Mr Fullam noting that he is unaware of any commercial bowl having recesses with varying depths – that is it appears universal in the art to implement the bowl with retainers/recesses having a common depth (and therefore common minimum depth). In response, at [101] of his declaration, Mr McAllister states that “There is no clear disclosure in either the text or the schematic drawings of the features of claims 16 to 19. I therefore disagree with the comments in [68] to [69][15]”. While challenging Mr Fullam’s views on the disclosure of D1 with respect to claim 19, Mr McAllister has not in fact challenged the veracity of Mr Fullam’s statements concerning the ubiquity of retainers/recesses comprising a common depth.
[15] Of Fullam1.
117. Further, from the discussion above concerning claim 1, it should be apparent that Mr McAllister’s suggestion that there is no clear disclosure in the “schematic” drawings of D1 of the features of claim 19 may not be the case. In my view, given the fact, discussed above, that figure 2 shows features in proportion, it appears that figure 2 does in fact show that each of the recesses has a common minimum depth when one views figure 2. To illustrate this I have reproduced an annotated version of part of figure 2 below.
118. The “red” lines on the figure above represent the minimum depth of each recess. The extent of this minimum depth can be determined by the length of a line extending perpendicular to the red lines to the bottom of each recess – this is shown as a green line for one of the recesses on the figure. The red lines confirm my view from the “raw” version of figure 2 that the minimum depth of each recess is the same. It follows that I am satisfied that D1 discloses the retainers having common minimum depths.
Claim 20
119. Claim 20 is appended to any one of claim 1 to 19 and, in effect, merely defines a system wherein the bowl of any one of these claims is coupled to a device to cause it to rotate about the bowl’s rotation axis and with a particle source in communication with the input end of the bowl while it rotates – that is the bowl forms part of a functional particle separation system. Given the above discussion concerning the disclosure of D1, it is apparent that the features of claim 20 are disclosed in D1 – see the discission concerning figure 1 of D1 in particular.
Novelty – Conclusion
120. I am satisfied that claims 1, 2, 4, 5, 6, 8, 9, 11, 13, 14, 16, 19 and 20 lack novelty in view of D1. I am not satisfied that claims 3, 7, 10, 12, 15, 17 and 18 lack novelty in view of D1. The Opponent has been successful in making out this ground of opposition.
Further matters raised at the hearing
121. At the hearing, Mr Cameron stated that:
“In considering the applicant’s arguments concerning the construction of the claims of the application it’s become clear to us that additional issues of clarity and lack of support arise.”
I will consider each of these issues below, and whether I should exercise any of the Commissioner’s powers under s60(3) with respect to these matters.
Clarity
122. The principles concerning clarity have been outlined earlier in this decision, so I will not repeat those here.
123. The additional clarity issue raised by the Opponent at the hearing was expressed by Mr Cameron as follows:
“Claim one of the application refers to a plurality of axially spaced dividers, and that the plurality of dividers includes a first pair of adjacent dividers and a second pair of adjacent dividers; doesn’t say that the plurality dividers only include those two pairs. Accordingly, on its terms, claim one encompasses multiple dividers from which two pairs can be identified as the first pair defining the first divider slope and the second pair defining the second divider slope.
Claim one would encompass other sets of dividers, which could define other divider slopes. There’s no restriction in claim one on the slope of those other dividers. Only divider slopes one and two are specified as zero or positive. The other divider slope could be negative. The fact that claim one encompasses multiple dividers means that it’s not clear, because the skilled addressee will not be able to determine whether a particular arrangement falls within the monopoly.
For example, if an apparatus had three pairs of dividers, one of which had a divider slope of twelve degrees, another of which had a divider slope of minus four degrees, and the third of which had a divider slope of eight degrees, that would not infringe claim five of the application because the third divider slope is negative. Which would be contrary to the teaching, the requirements of claim five, that such an arrangement might infringe claim one, but only if what I’ve referred to as the first and third divider slopes of twelve and eight degrees are said to be the corresponding slope pairs for the first and second divider slopes in claim one of the application.
There’s no workable standard to determine whether that’s the case. And for that reason, we say it gives rise to problems of clarity, which we say is contrary to Section 40, subsection three.”
124. It is not clear to me how there is no “workable standard” as argued by Mr Cameron. The words of the claims appear plain enough on their face – claim 1 specifies divider slopes of adjacent pairs of dividers, where the first adjacent pair is nearer the input end than the second pair of adjacent dividers. The example posited by Mr Cameron does not directly address these aspects of the claim, and Mr Cameron has not suggested or pointed to any evidence that suggests the PSA would not know how to determine what are, or what would comprise, adjacent pairs of dividers, or that there would be difficulty determining which of the adjacent pairs is closer to the input end. Nor is any such evidence apparent to me.
125. In this regard, the Macquarie Dictionary Online, 2024, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd, defines “adjacent” as follows:
“adjective 1. having a common border; contiguous; adjoining: adjacent rooms; a field adjacent to the main road.
2. (of two or more things) not separated by anything of the same kind: adjacent houses with a pretty garden between them; adjacent towns.”
126. Once adjacent pairs are identified, determining whether something falls within the scope of the claim is then simply a matter of determining the divider slopes. The fact some of the divider slopes may possibly be negative does not lead to a lack of clarity. I am not satisfied that there is any lack of clarity due to this issue.
Support – s40(3)
127. The requirement that the claims be supported was introduced into the Patents Act 1990 as part of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“RTB”) reforms. Specifically, s40(3) reads as follows:
“(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.”
128. In Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 (“Encompass”) Perram J noted (at [170]) that with the insertion of the support requirement by the RTB legislation, the previous requirement for fair basis was no longer relevant. Justice Perram, on considering the nature of support then quoted the following passage from the Explanatory Memorandum to the RTB legislation:
“‘[T]he terms ‘support’ and ‘full support’ pick up two concepts:
·there must be a basis in the description for each claim; and
·the scope of the claims must not be broader than is justified by the extent of the description, drawings or contributions to the art.’”
Other than this Justice Perram did not elaborate further on the nature of support.
129. As I apprehend it, the first detailed judicial consideration of support post-RTB was undertaken by Justice Burley in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 (“Merck”). After extensive analysis of the secondary materials and the law in Europe and the United Kingdom, from [511] to [543], his Honour summarised the law on support in Australia as follows at [545] to [547]:
“545. The theme common to each ground, however, reflects what the Minister described in his Second Reading Speech as the cornerstone of the patent system, namely that in exchange for a monopoly on commercialisation, the patentee must tell the public how their idea works. As said in the Explanatory Memorandum, in exchange for the exclusive rights given to the patentee, the patentee must share with the public the information necessary to make and use the invention. This is the essential exchange between inventors and the public which has long been a feature of patent law in Australia: see Lockwood No 1[16] at [57].
546 In CSR Building ProductsLtd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
‘…to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.’
547. That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed.”
[16] Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; 217 CLR 274; 79 ALJR 260; 212 ALR 1; 62 IPR 461
This approach was reiterated by his Honour at [241] of TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493 (“TCT”).
130. His Honour also observed in connection with his formulation of the law on support in Australia, at [242] of TCT:
“This statement of the position has been adopted without criticism by other judges of this Court: Rakman International Pty Ltd v Trafalgar Group Pty Ltd [2022] FCA 464; 166 IPR 264 at [120] (Yates J); Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540; 167 IPR 1 at [370]-[372], [481] (Rofe J) [“Jusand”].”
It may also be added that Justice Burley’s formulation of the law on support was undisturbed, as I understood it, in the recent decision of the Full Court in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (“Jusand FC”), being the decision on appeal to Jusand.
131. As may be understood from the preceding discussion, the nature of support was considered prior to any judicial reckoning in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (“CSR”) at [109] to [116], where Dr Barker considered caselaw from Europe and the UK relevant to the nature of support. After doing so the Dr Barker outlined a three-step test to determine whether the claims are supported at [115]:
“Thus the task is to:
i)construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine the technical contribution to the art, and
iii)decide whether the claims are supported by the technical contribution to the art.”
132. I take the test and considerations of technical contribution from CSR to be congruent with the EM as cited by Justice Perram in Encompass and of the approach cited above by Justice Burley from Merck. Dr Barker’s three step test from CSR provides a convenient means of analysing support, and I shall adopt his test in this matter, although as shall be seen, there is little need for extensive analysis on support.
133. Justice Burley provided further guidance on what “support” means at [243] to [245] of TCT:
“243 In Fuel Oils/Exxon, (T409/91) [1994] OJ EPO 653 the EPO Boards of Appeal said, in a passage at 3.3 that has been often cited, including by Lord Neuberger in Generics UK [Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] All ER 955; [2009] RPC 13] at [97], that: (emphasis added):
‘…[there is a] general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified… This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words,... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.’
244 The language of ‘at the disposal of the person skilled in the art’ should be understood to mean that the patent must enable the invention to be performed by such a person.
245 In Jusand, Rofe J observed that one way for the claim impermissibly to exceed the technical contribution to the art is for the claim to cover ways of achieving the desired result which owe nothing to the patent or any principle that it discloses: at [483].”
134. Guidance on what is meant by “the technical contribution to the art” is apparent from CSR at [111] to [112]:
“111. The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. The distinction was explained by Lord Walker in Generics at [30]:
‘The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. “Inventive concept” is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 9 paras 112-113) which entitles the inventor’s achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.’
112. In the same case Lord Neuberger of Abbotsbury described the technical contribution at [95] as:
‘in the context of a simple product claim such as the present (especially where the claim is to a single chemical product), the technical contribution is (at least in the absence of special factors) the product itself. As I have suggested, the technical contribution can often be equated with non‑obvious novelty – what is new to the art and not obvious is really another way of identifying the technical contribution.’”
135. It can be seen that the requirement for the claims to be supported by the technical contribution to the art includes within its ambit a requirement that the claims be enabled, in the sense understood under s40(2)(a), by subject matter in the description and drawings. This is due to the fact that a failure to do so would, in the parlance of Generics, result in the claim extending “…to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.” Hence a claim which is not enabled by the description is not supported by the technical contribution to the art and therefore lacks support under s40(3).
136. However, as also apparent from the above, the support requirement is not a mere reiteration of s40(2)(a). The enabling disclosure requires consideration of the claims in isolation from the remainder of the specification – that is the enablement must come from the description and drawings. This contrasts with s40(2)(a) where the enabling disclosure comes from the entire specification. As observed in Jusand FC at [155]:
“The requirement in s 40(2)(a) is often referred to as the sufficiency obligation whilst the requirement in s 40(3) is referred to as the support requirement. The sufficiency requirement requires that the patentee should sufficiently disclose in the specification how to perform the invention. The support requirement requires that the claims defining the patent should themselves be supported by what appears in the specification. In many cases these obligations may tend to be the same since they are describing the same relationship although viewed from the differing perspectives of the claims and the specification. As Burley J has observed in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 (‘Merck Sharp’) at [543], they may often be viewed as two sides of the same coin. But they may nevertheless sometimes differ as Birss J (as his Lordship then was) explained in Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57 (Pat); RPC 12 (‘Illumina’) at [255].”
137. As may also be gleaned from the above, it is also the case that the requirement to not exceed the technical contribution to the art requires consistency between the invention described and the invention claimed, which can result in a lack of support even if the claim is otherwise enabled. This was expressed by Justice Nicholas as follows in Calix Limited v Grenof Pty Ltd [2023] FCA 378; 171 IPR 582 (“Calix”) at [128]:
“Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed. See, for example, the invention described in the relevant priority document and the invention claimed in AstraZeneca at [254]-[255] [AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324; 312 ALR 1; 107 IPR 177] which were characterised by the Full Court of the Federal Court as ‘fundamentally different’ inventions. It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be ‘supported by matter disclosed’ in accordance with s 40(3) of the Act.” (emphasis added)
The Opponent’s Support Arguments
138. The Opponent’s support arguments were given at the hearing by Mr Cameron as follows:
“In addition, there’s no support in the application in the specification in the application for claim one encompassing such multiple dividers outside what are the first and second pair with divider angles of any amount.
For example, by the terms of claim one, the first divider slope could be the lowest divider slope, the base of the bowl, and then every subsequent divider slope could be negative as one proceeds up the bowl wall. Apart from the highest divider slope, which could be identified as the second divider slope, there’s no embodiment of that type taught in the specification in a manner which explains how the invention could work or contribute to the art.
The claim therefore would lack support because the technical contribution to the art disclosed by the specification does not justify the breadth of the monopoly which is claimed by the terms of claim one as addressed by Justice Burley in Merck and Wyeth number three[17] at paragraphs 546 to 547.”
[17] Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1.
139. In the Delegate’s letter, I wrote to the Applicant in the following terms concerning these submissions by Mr Cameron:
“While Mr Cameron has referred to Merck (no 3), I take the issue raised to be essentially commensurate with inconsistency between the invention claimed and the invention described. This was expressed by Justice Nicholas as follows in Calix Limited v Grenof Pty Ltd [2023] FCA 378; 171 IPR 582 (‘Calix’) at [128]:
‘Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed. See, for example, the invention described in the relevant priority document and the invention claimed in AstraZeneca at [254]-[255] [AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324; 312 ALR 1; 107 IPR 177] which were characterised by the Full Court of the Federal Court as ‘fundamentally different’ inventions. It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be ‘supported by matter disclosed’ in accordance with s 40(3) of the Act.’
I have considered the specification, and I am of the view that there is some force to the Opponent’s arguments. The specification repeatedly refers to having divider slopes that are zero or positive (or non-negative) and indicates that having progressive reductions in divider slope (but with these still being zero or non-negative) may facilitate improved particle separation and the flow of particles from the input end of the bowl to the output end of the bowl. All of the embodiments described in detail comprise these features.
In particular, all of the embodiments described also comprise at least one set of adjacent pairs of adjacent dividers that meet the divider slope requirements disclosed, in order to facilitate improved particle separation. That is there does not appear to be any material disclosure of the divider slope requirements applying to pairs of adjacent dividers where the pairs of dividers are not adjacent to each other. To help illustrate this, I have reproduced figure 2 of the application below. With reference to figure 2, the pairs of dividers would be limited to, for example 120, 122 and 122, 124 or 120, 122 and 124, 126. Non-adjacent pairs of adjacent dividers, such as 120, 122 and 138, 140 do not appear to achieve the benefits of improved particle separation.
The only disclosure with respect to there being a negative divider slope occurs at page 28, lines 11 to 12:
‘In some embodiments, some divider slopes may be negative, for example, near the output end 104 of the separator 12.’
It is difficult to see how this very brief statement can somehow be taken to materially change the nature of the invention as described, which concerns having adjacent pairs of adjacent dividers with a zero or non-negative divider slope, with the slope of the divider pair closest to the input end being greater than the divider pair further up the bowl wall (and closer to the output end).
In particular the specification, at page 18, lines 22 to 27 reads as follows:
‘In some embodiments, using a generally parabolic path may facilitate improved particle separation by density. For example, in some embodiments, particle/material flow may be facilitated by following a smooth path as provided by a parabolic path, for example, and this may result in improved particle separation when compared to a path having abrupt changes in flow direction, for example.’ (emphasis added)
The above passage indicates that a smooth or parabolic path provides for improved separation in comparison to a more stepped path, even if that stepped path is commensurate with the zero or positive divider slope as discussed elsewhere in the specification. Consequently, it appears reasonable to believe that the disruption caused by negative divider slope(s) interposed between zero or positive divider slopes would have an even more significant (and deleterious) impact on particle separation and movement up the bowl wall.
The claims as they stand extend to non-adjacent pairs of adjacent dividers, including the possibility of negative divider slopes being interposed between zero or positive divider slopes. The claims therefore appear to extend to embodiments inconsistent with the invention as disclosed and lack support in the Calix sense.” (emphasis in original).
140. The further AS in response were as follows:
“A. INTRODUCTION
In its letter of 5 December 2024, the Delegate of the Commissioner of Patents identified that it was minded to exercise its powers under s 60(3) of the Patents Act 1990 (Cth) on the basis that the claims as they stand extend to non-adjacent pairs of adjacent dividers, including the possibility of negative divider slopes being interposed between zero or positive divider slopes, and therefore appear to extend to embodiments inconsistent with the invention as disclosed and lack support. The Applicant, Sepro, addresses the Delegate’s concern, and proposes an amendment to deal with the concern.
B. SEPRO’S RESPONSE.
2. Sepro does not agree that this is a case like Calix Limited v Grenof Pty Ltd [2023] FCA 378; 171 IPR 582 (‘Calix’) at [128], in which Nicholas J identified there may be claims that ‘define an invention that is materially different to what is described in the body of the specification ... It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be supported by “matter disclosed” in accordance with s40(3)’.
3. The Delegate’s conclusion that the claims were to a fundamentally different invention was reached without the benefit of any expert evidence.
4. In particular, the Delegate concludes, based on the disclosure that in some embodiments, a generally parabolic path is preferred:
[...] it appears reasonable to believe that the disruption caused by negative divider slope(s) interposed between zero or positive divider slopes would have an even more significant (and deleterious) impact on particle separation and movement up the bowl wall.
[...] The claims as they stand extend to non-adjacent pairs of adjacent dividers, including the possibility of negative divider slopes being interposed between zero or positive divider slopes. The claims therefore appear to extend to embodiments inconsistent with the invention as disclosed and lack support in the Calix sense.
5. That is, the Delegate appears to suggest that a particle separator with even a single negative divider slope is inconsistent with the invention as described.
6. There are no statements in the specification which suggest that negative divider slopes cannot be used in the claimed invention. To the contrary, p28 lines 11-12 of the Opposed Application, the Patent states that in some embodiments, some divider slopes may be negative.
7. In those circumstances, given that the Opposed Application expressly contemplates that a particle separator may have negative divider slopes, Sepro respectfully submits that the claims are supported.
8. Nevertheless, Sepro wishes to address the Delegate’s concern that:
... all of the embodiments described also comprise at least one set of adjacent pairs of adjacent dividers that meet the divider slope requirements disclosed, in order to facilitate improved particle separation. That is there does not appear to be any material disclosure of the divider slope requirements applying to pairs of adjacent dividers where the pairs of dividers are not adjacent to each other
9. Accordingly, Sepro proposes to amend the claims as shown in Annexure 1. Amended independent claim 1 requires a plurality of dividers to include .... ‘a first pair of adjacent dividers and a second pair of adjacent dividers, the first pair of adjacent dividers nearer the input end than the second pair of adjacent dividers, wherein the first pair of adjacent dividers and the second pair of adjacent dividers include a common divider and ...’ (emphasis added). These amendments meet the Delegate's concern set out in paragraph 8 above.
C. CONCLUSION
10. For the reasons set out above, the Applicant submits that the ground of lack of support should fail.” (emphasis in original)
141. For the avoidance of doubt, I note that the discussion of parabolic paths in the Delegate’s letter was in the context of supporting the notion that the claims as they stand extend to non-adjacent pairs of adjacent dividers, including the possibility that there may be negative divider slopes interposed between zero or positive divider slopes. I was not adverting that there could be no divider slopes with a negative slope.
142. The Applicant’s arguments that my views, as expressed in the Delegate’s letter, were reached without the benefit of any expert evidence appears to ignore the fact that the basis for a Calix style lack of support does not require evidence as such. As pointed out by Justice Nicholas in Calix, the issue is one of properly characterising the invention as disclosed in the specification and the invention as claimed. In many, if not all cases, no evidence is necessary in order to undertake this analysis. In my view the analysis is akin to, and indeed emerges from, the task of construing specifications which is entirely the purview of the decision maker, even if this may be informed by expert evidence; again see Otsuka at [36] and references therein. I do not see any need for the assistance of expert evidence in the support analysis concerned here. Nor, despite the general remonstration about expert evidence, has the Applicant explained why any such evidence is necessary.
143. Turning to the support issue concerned, I am satisfied that the claims lack support in the Calix sense for the reasons outlined in the Delegate’s letter, noting that none of the dependent claims remedy the defects in claim 1 concerning this issue. That is, the claims as they stand include embodiments wherein negative divider slopes are interposed between zero or positive divider slopes. This results in the claim failing to achieve the improved particle flow which is said to result from having adjacent divider pairs having zero or positive divider slopes as otherwise defined in the claims. I note that the further AS do not provide specific arguments as to why this is not the case, but rather propose amendments said to address the issue. In effect, the Applicant has capitulated on the support issue.
Post hearing amendments
144. As apparent from earlier in this decision, the further AS were accompanied by proposed amendments said to address the support issues identified in the Delegate’s letter. I note that the Applicant, in separate correspondence, formally proposed these amendments on the same day the further AS were filed. Given these proposed amendments, I wrote to the parties in the Delegate’s further letter as follows:
“Turning to the amendments, I appreciate that these were filed with a view to address certain matters raised in the Commissioner’s letter[18]. Unfortunately, the filing of proposed amendments after hearing the opposition but before a decision regarding the opposition has issued is procedurally awkward. The Commissioner’s usual practice in these circumstances is to delay consideration of the proposed amendments until after a decision issues on the opposition. I will explain why that is the case further below.
Firstly, the Commissioner must decide the opposition pursuant to s60(1). The Commissioner must also report on the proposed amendments pursuant to Reg 10.2(1). However, for both of these actions, neither the Act nor the Regulations specify the time period in which the Commissioner must decide an opposition or report on proposed amendments. The Commissioner may defer one or both of these actions should the circumstances justify such action.
Secondly, and importantly, there appears to be little utility in the Commissioner considering amendments post hearing and potentially incorporating them into the specification prior to a decision issuing. The reason for this is the fact that whether or if the proposed amendments would address or obviate any potential outcome from the opposition, or would simply be unnecessary, cannot be known until the decision issues. This means that the Applicant may seek to make further amendments once the opposition is decided or may determine to withdraw the proposed amendments. It is also the case that, if the amendments were made, some form of quasi re-hearing of the entire opposition would likely be required. It is thus apparent that granting leave and incorporating the amendments in these circumstances would be both procedurally cumbersome and a not overly effective way of resolving the opposition.
Consequently, the Commissioner would normally not consider proposed amendments filed after an opposition hearing until the opposition is decided. Depending on the outcome of the decision and the any further actions taken by the Applicant, the Commissioner would normally re-assess whether it would be appropriate to report on the proposed amendments after the decision on the opposition issued.
Depending on the nature of the decision, I may, however, make some preliminary and non-binding comments on the effect of the amendments in view of any defects that might be identified in the decision when it issues.
If either party has any concerns with the course of action proposed in this letter, they should contact the Commissioner within one (1) week of the date of this letter. If there is no response, I will assume the parties are content for the Commissioner to proceed as per this letter.” (emphasis in original)
[18] That is, the Delegate’s letter.
145. Neither party responded to the Delegate’s further letter. In terms of the proposed amendments, I am of the preliminary view that these appear to address the support issues raised in this decision. However, whether or if these (or any other amendments proposed by the Applicant) overcome the support defect identified is a matter for final determination of this opposition.
Conclusion
146. The opposition is successful. I am satisfied that claims 1, 2, 4, 5, 6, 8, 9, 11, 13, 14, 16, 19 and 20 lack novelty in view of D1 No other ground of opposition raised by the Opponent has been upheld.
147. Pursuant to s60(3), I find that all the claims as they stand lack support.
148. I allow the Applicant two (2) months from the date of this decision to propose amendments overcoming the deficiencies identified in this decision. Noting that amendments have already been proposed, the Applicant should, within the two months indicated, advise the Commissioner that it intends to rely upon the proposed amendments filed on 14 February 2025 or file further proposed amendments. If there is no response, the Commissioner will assume that the Applicant wishes to continue with the amendments proposed on 14 February 2025 and will proceed accordingly.
Costs
149. Costs usually follow the event – I see no reason to do otherwise here. Consequently, I award costs according to Schedule 8 of the Regulations against the Applicant, Sepro Mineral Systems Corp.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
Annex A – Claims of the 2021261058 Application.
Annex B – The Opponent’s “Visual aid” re D1.
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