Hickson International Plc v Basf Aktiengesellschaft
[1998] APO 21
•17 March 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 659203 in the name of HICKSON INTERNATIONAL PLC
Title: Preservatives for wood and other cellullosic materials
Action: Opposition by: BASF AKTIENGESELLSCHAFT
Decision: Issued .
Abstract
Some claims found to be speculative and not fairly based on the matter described.
Synergism between fungicidal copper compounds and specified triazole derivatives
experimentally determined but only between a certain range of weight ratios. One end
of the range defined numerically but the definition of the other end of the range solely
in functional terms considered to be inadequate in the context of the nature of the
inventive concept.
Also, the term “biocidal metal compound” considered to be speculative in the light of
“unpredictable” synergism only having been experimentally determined with biocidal
compounds wherein the metal was copper.
However, the grounds of opposition of lack of novelty and no inventive step
found not established.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 659203 by HICKSON INTERNATIONAL PLC, and opposition thereto by BASF AKTIENGESELLSCHAFT
background
Patent application no. 659203 was filed in the name of Hickson International PLC (hereinafter referred to as "Hickson") on 3 August 1992 under the Patent Cooperation Treaty as PCT/GB92/01427 (published as WO93/02557) (Australian application no. 23797/92), claiming priority from GB application no. 9116672.8 filed on 1 August 1991 and NZ application no. 243460 filed on 6 July 1992.
659203 was advertised accepted on 11 May 1995. BASF Aktiengesellschaft (hereinafter referred to as "BASF") filed notice of opposition on 10 August 1995. The evidence stages of support, answer and reply were completed on 8 April 1997.
Hickson sought leave to file further evidence on the basis that the evidence-in reply included matter not strictly in reply. Leave was granted on condition that BASF be allowed to respond to the further evidence, which they did on 31 July 1997.
The matter was heard in Melbourne on 15 and 16 September 1997. The patent applicant was represented by Mr Bruce Caine of counsel assisted by patent attorney Mr Michael Caine of Davies Collison Cave. Also present was Mrs Judith Cornfield of Hickson. The opponent was represented by Mr Barry Hess of counsel assisted by patent attorney Mr Louis Gebhardt of Watermark. Also present was Dr F. Werner of BASF.
The opposition is proceeding under the provisions of the Patents Act 1990 and Chapter 5 of the Patent Regulations 1991.
THE SPECIFICATION
The specification commences:
“The use of biocidal metal ions in wood preservation is well known There are also many compounds containing a triazole group which are known to possess biocidal properties.
According to the present invention there are provided preservative compositions comprising a synergistic mixture of a biocidal metal compound and a fungicidal compound containing a triazole group selected from: ...”
The specification goes on to characterise specific types of triazole compounds from which the selection can be made, to state that the weight ratio of metal atom:fungicidal compound containing the triazole group is at least 5:1, and to indicate that one particular nominated composition is excepted.
At page 2 of the specification it is said that:
“The metal compound may be a compound of any biocidally active metal including copper, aluminium, manganese, iron, cobalt, nickel, zinc, silver, cadmium, tin, antimony, mercury, lead and bismuth. ... The most preferred metal is copper ... .”
At pages 3 and 4 it is indicated that particularly preferred triazole compounds are tebuconazole, propiconazole and azaconazole.
At the paragraph bridging pages 4 and 5:
“Preferably the ratio by weight of metal to triazole compound is less than 1000:1, e.g. no greater than 750:1. More preferably, the weight ratio of metal:triazole compound should be between 750:1 and 5:1, particularly preferably between 500:1 and 5:1, most preferably the said ratio is between 50:1 and 5:1, especially about 25:1.”
Details are set forth of 13 Examples of compositions according to the invention.
At page 14 details are described of a method for assessing the synergistic properties of a preservative formulation by determining the “Synergistic Index (SI)”.
Experimental data and calculations of the determination of the SI of copper:tebuconazole formulations at weight ratios of 1:10 and 1000:1 (fungicidal activity purely additive) and 25:1 and 100:1 (significant synergism) are reported. Experimental data is also presented showing that copper:propiconazole and copper:azaconazole formulations at weight ratio 5:1 exhibit significant synergism.
THE CLAIMS
The specification ends with 18 claims. Claim 1 reads as follows:
“1. Preservative compositions comprising a synergistic mixture of a biocidal metal compound and a fungicidal compound containing a triazole group selected from:
a) compounds of formula (A) :
| (A) |
wherein R1 represents a branched or straight chain C1-5 alkyl group and R2 represents a phenyl group optionally substituted by one or more substituents selected from halogen atoms and C1-3 alkyl, C1-3 alkoxy, phenyl and nitro groups;
b) compounds of formula (B) :
| (B) |
wherein R3 is as defined for R2 above and R4 represents a hydrogen atom or a branched or straight chain C1-5 alkyl group; and
c) hexaconazole and difenoconazole;
wherein the weight ratio of metal atom: fungicidal compound containing the triazole group is at least 5:1; with the specific exception of composition (a) which contains 1.320% by weight of sodium nitrite, 1.190% by weight of copper sulphate 5H2O, 0.400% by weight of boric acid, 0.625% by weight of sodium heptonate, 0.390% by weight of sodium hydroxide, 0.012% by weight of tebuconazole 0.391% by weight of surfactant blend in xylene and 95.762% by weight of water."
THE GROUNDS OF OPPOSITION
The grounds identified in the statement of grounds and particulars are that the specification does not comply with section 40, the invention is not novel and the invention does not involve an inventive step.
EVIDENCE
The evidence in support consists of statutory declarations by:
- Rex Stuart JOHNSTONE (with Exhibits RSJ1 to RSJ14) a resident of Australia who states that he is an Independent Consultant in the field of timber preservation; and
- Dr Reimer GÖTTSCHE (with Exhibits RG1 to RG14) a resident of Germany who states that he is employed as a Research Chemist by Dr. Wolman GmbH (an affiliate of BASF); and
- (in relation only to the publication of documents) Louis Charles GEBHARDT.
The evidence in answer consists of statutory declarations by:
- Judith Ann CORNFIELD (with Exhibits JAC1 TO JAC8) a resident of England who is one of the inventors of the subject of 659203 and who states that she is employed as Project Manager by Hickson Timber Products Ltd. (a subsidiary of the applicant company); and
- Dr Karl Johann SCHMALZL (with Exhibit KJS-1) a resident of Australia who states that he is employed as a Principal Research Scientist by CSIRO.
The evidence in reply consists of statutory declarations by:
- Dr Reimer GÖTTSCHE (the second Göttsche declaration, with an Exhibit RG1 different from Exhibit RG1 in the first Göttsche declaration); and
- Rex Stuart JOHNSTONE (the second Johnstone declaration).
The further evidence adduced before the hearing consists of a statutory declaration by Judith Ann CORNFIELD (the second Cornfield declaration).
- The response to the further evidence consists of a statutory declaration by Dr Reimer GÖTTSCHE (the third Göttsche declaration, with an Exhibit RG1 different from either of the Exhibits RG1 in the first and second Göttsche declarations).
SUBMISSIONS
I summarise Mr Hess’s main submissions, including references to the statement of grounds and particulars, on behalf of BASF as follows:
Section 40
- The invention is not fully described, since the enhanced activity of the formulations could be attributed to the properties of the additional components in the Examples and not solely to the synergism between the biocidal metal component and the fungicidal compound. Thus it is known that at least one of the process oils has fungicidal properties and the compositions of the Examples include ingredients such as process oil.
- The term “biocidal metal compound” is not clear in scope. Does it include any metal compound which has some scintilla of biocidal activity? Or is it meant to be limited to those metal compounds commonly known to be biocidally active?
- There is insufficient support in the description for the use of the broad term “biocidal metal compound”. The only metal compounds for which synergism has been demonstrated are copper compounds.
.- Claim 1 does not define an upper limit for the metal atom:triazole ratio and hence the claim is indefinite and speculative.
- A synergistic effect has only been shown for a copper to triazole ratio of 25:1 and 500:1 (page 18, lines 8 and 9). The synergistic index for the ratios 1:10 (0.1:1) and 1000:1 is 1, which means no synergy. No data are shown between 0.1 to 25:1 and 500 to 1000:1. Therefore an extrapolation over such a broad range is arbitrary and not permissible. The copper to triazole ratio of at least 5:1 in claim 1 is arbitrary, particularly bearing in mind that in the original PCT application (WO 93/02557) corresponding to the presently opposed application , at page 1 line 16, a weight ratio of metal atom:triazole of 1:2.5, equivalent to 0.4:1 is disclosed. The same weight ratio is claimed in claim 1 of the PCT application. On page 4, line 34 to page 5, line 3 (PCT application), preferred weight ratios of metal:triazole compounds between 750:1 and 1:1 are disclosed, with particularly preferred ranges being between 500:1 and 2:1. This means that in the above PCT application, ratios of metal atom:triazole of between 0.4 to 750:1 are disclosed and pretend to exhibit synergistic fungicidal activity (cf. page 2 lines 3 to 8). Furthermore, Figures 3, 5 and 6 also pretend that synergism exists already for weight ratios little above 0.1:1.
- The claims are speculative and too wide in that they are not limited to the only Examples (no’s 1 and 6) which demonstrate the claimed synergistic effect and which are water based . Further, the only synergistic calculations are for Examples 1 and 6 and Figures 2,3 and 4 respectively each of which contains the additional essential components of an emulsifier and monoethanolamine. Figures 5 and 6 are referred to at page 20 lines 27/28 but no examples are given as to the relevant formulations. Further, Examples 7 to 11 contain organic solvents but no synergistic calculations are given for these Examples.
Essential Features
- Synergy as described and claimed in the opposed application is not exclusive to the ratio of at least 5:1 as described and claimed. Such synergy was said to exist over a much greater range in the PCT application and exists at less than 5:1 in the opposed application. Hence, the reference to “synergy” in claim 1 etc and in the applicant’s evidence is a reference to a feature which is limiting in description but not essential to the invention for novelty (and obviousness) considerations. At the lower end of the range, the limitation of 5:1 is not at the “synergy cut-off” and no synergy has been calculated at the other - and indeterminate - end of the range (save for 1000:1).
At best the limitation of “at least 5:1” in claim 1 of 659203 is contrived and arbitrary and as such cannot be regarded as essential.
- It is essential that one of the components of the composition of the invention be a copper fungicidal compound since there is no disclosure in 659203 that the synergism with the specified triazole compounds has been demonstrated with any other metal biocide. Examples 4,7 and 10 include zinc compounds but there is no mention of synergism having been demonstrated with these compositions.
- Synergism has only been demonstrated with compositions which in addition to copper and triazole compounds also contain an alkanolamine and an emulsifier, i.e. compositions containing at least those four components. A two component (Cu/triazole) system not containing an alkanolamine and an emulsifier would not be suitable for impregnating wood because the triazole is not soluble in water and would stay at the surface of the wood, whilst the copper compound would not be fixed in the wood and would be washed out of the wood (see the second Göttsche declaration at paragraph 2.4 and note that Document A only claims compositions which include alkanolamine and emulsifier).
Novelty
- All of the claims of the opposed application are not novel in the light of “Document A” which is Australian Patent Application No. 646732 (15117/92) in the name of Dr. Wolman GmbH, application date 21/04/92, published 22/10/92, priority date 18/04/91.
- In Document A, copper compounds are disclosed at page 2 lines 4 to 7. Triazole compounds, which fall within the definition of triazole compounds in claim 1 of 659203, are disclosed at page 2 lines 19 to 31, in particular azaconazole, propiconazole and tebuconazole. Examples 1 to 4 disclose specific compositions with a copper:triazole ratio of 2:1. Ratios of copper:triazole of 103:1, 116:1 and 144:1 are calculable from the disclosure of suitable concentrates at page 6 lines 24 to 30 of Document A which thus discloses ratios greater than the “at least 5:1” of claim 1.
- At page 1 lines 12,13 of Document A it is said that the copper compound and triazole containing compositions disclosed therein “have very good activity against wood destroying Basidiomycetes”. At paragraph 2 of the second Göttsche declaration:
“Very good activity means better than expected from the activities of the individual ingredients. This very good activity is based on a synergistic effect, inherent to the wood preservative. Document A did not use the word ‘synergy’, however I was able to show how someone skilled in the art could determine the synergistic effect by a calculation.”
- Any working of relevant ranges within the combinations at page 6 line 24ff of Document A would be an infringement of claim 1 et seq of the opposed application.
Inventive Step
- The invention was obvious at the priority date of 659203 in the light of the disclosure of each of the following documents taken separately together with the common general knowledge (CGK) in Australia:
Document B: EP,A,4236742, Australian equivalent Patent No. 625003 (see in particular Example 15);
Document C: EP,A,238051, Australian equivalent Patent Application No.70428/87 (see in particular Examples 1 to 11);
Document D: EP,A,393746 (see in particular page 2 lines 17 to 48 and page 3 lines 7 to 19);
Document E: EP,A,50738 (see in particular page 1 lines 13 to 25 and page 3 lines 21 and 22).
- It was CGK in Australia at the priority date of 659203 to:
(a) use copper compounds in wood preservatives.
(b) use triazole compounds in wood preservatives
(c) use a combination of a copper compound and a triazole compound in a wood preservative.
- Not only would it have been obvious to combine copper and triazole compounds in wood preservative compositions but it would have also been obvious to optimise the Cu:triazole ratio to >5:1, particularly since copper compounds are markedly cheaper than triazole compounds.
- there is no indication whatsoever in the specification of 659203 of the nature of any problem that is solved by the alleged invention.
I summarise Mr Caine's main submissions on behalf of Hickson as follows:
Section 40
- The invention is fully described in the sense that the synergistic effect between copper compounds and triazole compounds is established by the experimental results described in the specification of 659203 which experiments were performed with compositions not containing any other ingredient for which any biocidal activity has been reported (see the first Cornfield declaration at paragraph 61).
- The term "biocidal metal compound " in claim 1 is not too broad. The biocidal metals, are well known in the art to have similar activities (see the first Cornfield declaration at paragraph 64).
- Claim 1 is not rendered indefinite or speculative merely because the upper limit for the metal:triazole ratio is not defined numerically. The experiments described at pages 15 to 21 of the opposed specification demonstrate that where the ratio was 500:1 the compositions were synergistic whereas where the ratio was 1000:1 the compositions were not synergistic. Compositions such as where the ratio is e.g. 1000:1 are excluded from the scope of claim 1 by the functional limitation requiring the compositions to be synergistic (see the first Cornfield declaration at paragraphs 8 and 9).
- The limitations in claim 1 of "at least 5:1" and that the composition must be synergistic are clearly supported, synergism having been demonstrated by experimental data in the specification at metal:triazole ratios of 5:1, 25:1 and 500:1. References, such as in the paragraph bridging pages 5 and 6 of the amended statement of grounds and particulars, to the text of the PCT application upon which the present application is based, are not relevant to whether the presently opposed specification, as amended at and subsequent to acceptance, complies with the requirements of Section 40 of the Patents Act.
- There is no logical reason to restrict the claims to the invention in its broadest form to water based compositions just because the synergism happens to have been experimentally determined using water as the solvent. At paragraph 3 of the third Göttsche declaration he advances no reason why the synergism would not be just as apparent with common organic solvents but merely points out that there is no proof in the opposed specification that synergism occurs in solvent based compositions. That is an inversion of the burden of proof.
Essential Features
- the lowest metal:triazole ratio for which experimental data in the opposed specification shows that synergism exists is 5:1. Also there is experimental data in the specification which shows that there is no synergistic effect at 1:10. There is no requirement that the applicant determine the exact ratio at which synergism cuts in. The limitation "greater than 5:1" in claim 1 is clearly not arbitrary or contrived since it derives directly from experimental data which is presented in the specification and goes to the determination of the existence of synergism.
- It is not essential that the biocidal metal compound be limited to a copper fungicide. Since all biocidally active compounds interact with fungi by the same mechanism it follows that where a synergistic fungicidal effect has been demonstrated with compounds of one of the well known in the art bioactive metals, in this case copper, and another group of compounds, a similar synergistic effect with the same other group of compounds would occur with compounds of all of the other biocidally active metals.
- An emulsifier is not essential because it is only required with water based compositions, whereas the compositions of the present invention may be either water based (Examples 1 to 6), or organic solvent based (Examples 7 to 11) (see the second Cornfield declaration at paragraph 6).
- That the presence of an alkanolamine is not essential is apparent from the fact that there is no such ingredient in many of the Examples of the compositions of the invention in the opposed specification.
Novelty
- Document A does not deprive the invention as claimed in the opposed application of novelty. Thus the Examples in Document A only disclose a metal:triazole ratio of 2:1 and thus fall outside the scope of claim 1 which defines that ratio as greater than 5:1. That is so regardless of whether or not the compositions of those Examples can somehow or other be shown to exhibit synergism or whether or not there is anything at all in Document A which might somehow or other be construed as amounting to a suggestion that the compositions disclosed in that document are synergistic.
From the very wide ranges of concentrations described at the passage at page 6 lines 24 to 30 of Document A, it is theoretically possible to select appropriate values for the weight percent of both an appropriate copper compound and a triazole compound so as to come up with a composition wherein the weight ratio of copper atom : triazole compound is at least 5:1. However it is equally as possible to follow the teaching given in the ranges and arrive at a composition wherein the ratio is less than 5:1 (see the first Cornfield declaration at paragraphs 11 to 20). Thus there are no clear and unmistakable directions to do what is claimed in the opposed application, i.e. select the weight ratio of at least 5:1 and such that the resulting composition is synergistic.
Inventive Step
- The applicant does not accept that it was CGK to combine a copper compound with a triazole compound at the priority date but does accept that there could be nothing inventive in merely combining those two well known components of wood preservatives. The inventive step of the opposed application resides in the suprising discovery of synergism at certain weight ratios of biocidal metal atom:triazole compound.
- Example 15 of Document B discloses a composition containing a copper compound and propiconazole in which the weight ratio of copper atom:triazole is 1:2.17, i.e. smaller by an order of magnitude than the minimum weight ratio of 5:1 specified in claim 1 of the opposed application. That the composition of Example 15 of Document B would not exhibit any synergism is shown by experiments detailed in Exhibit JAC3 to the first Cornfield declaration.
Document C merely discloses that the use of copper compounds in wood preservatives was well known.
Documents D and E go no further than to suggest the preparation of compositions containing both a biocidal metal compound and a triazole compound.
There is nothing in the disclosures of Documents B,C,D or E which contains any suggestion to combine copper and triazole compounds to obtain a synergistic effect or in proportions such that the weight ratio of biocidal metal to triazole compound meets the requirements of Claim 1. In the absence of any such suggestion it would not have been obvious at the priority date to the non-inventive person skilled in the art to try compositions according to the present invention.
DECISION
Before considering the issues relating to novelty, inventive step, and section 40, I shall first determine which features of the claimed invention I consider essential.
Essential Features
A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential (Catnic Components v Hill & Smith Ltd [1982] RPC 183).
Claim 1 of 659203 can be broken down into the following features:
A composition characterised by being a mixture of:
(A) a biocidal metal compound, and
(B) a fungicidal compound containing a triazole group as defined,
and which mixture is
(C) synergistic,
and wherein
(D) the weight ratio of metal atom:fungicidal compound containing the triazole group is at least 5:1.
The opponent submits that because the synergistic effect must exist at least at ratios immediately below 5:1, it follows that the “at least 5:1” limitation is arbitrary and contrived so as to avoid anticipation. I note that in the application as filed that experimental data is presented to show that the synergistic effect does not exist at the metal atom:triazole ratio of 1:10 but is exhibited at the ratio of 5:1. Thus, there is a basis for the ratio of 5:1 which is related to the concept of the invention which is that there is a synergistic effect but only within a limited range of weight ratios of the active ingredients of the composition. I therefore find that the “at least 5:1” feature is essential in that it affects the way in which the invention works. In passing I note the decision, in relation to a somewhat similar issue, by a delegate of the Commissioner in Mars U.K. Limited v Merck & Co, Inc. (unreported decision on Application No. 577431, issued 28 May 1997).
I furthermore do not agree with the submissions by the opponent to the effect that an alkanolamine and an emulsifier should be essential components of the compositions of 659203. Such additional ingredients might only be essential if the present compositions were limited (which they are not) to such specific types as “water-based” or “for exterior use only”.
I find that the characteristics (A), (B), (C) and (D) above are essential features of the invention as claimed at acceptance.
Novelty
The document upon which the opponent relied for its attack on the novelty of the opposed application is Australian Application No. 646732 (15117/92) in the name of Dr. Wolman GmbH (Document A). The current status of this application is that it was advertised accepted on 3 March 1994 and is currently the subject of pending opposition proceedings.
Document A was published on 22 October 1992, which date is after both of the priority dates of the opposed application which are 1 August 1991 and 6 July 1992. However, the priority date of Document A is 18 April 1991 which is earlier than either of the priority dates of the opposed application. None of these priority dates were disputed nor was there any submission to the effect that (what is colloquially known as ) “Whole of Contents” novelty could not apply in this instance because any of the relevant preconditions imposed by the Patent Act and Regulations were not satisfied.
In order to make good the presumption that the authorities on novelty should be followed equally when considering “Whole of Contents” novelty issues, Mr Hess directed my attention to the decision of Burchett J. in Alcatel NV v Commissioner ofPatents 35 IPR 255-258. I accept as correct the proposition as put by Mr Hess on the basis of that decision.
The generally accepted test for novelty is the “reverse infringement” test as set out in Meyers Taylor Pty Ltd v. Vicarr Industries Ltd (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
Infringement of a patent occurs when each and every one of the essential integers of the claim have been taken (Rodi and Wienenberger AG v. Henry Showell Ltd [1969] RPC 367).
To establish anticipation all that is required is to see whether if one is to carry out the teaching of the prior document, that action would inevitably constitute an infringement of the patent in suit. It is not necessary that the prior art be equal in practical utility or disclose the same invention in all respects as the patent in suit. (Decision of the English Court of Appeal in Glaverbel SA v. British Coal Corp. [1995] F.S.R. 254 at 277)
In the specification of Document A there are five Examples of compositions according to the invention disclosed therein. Example 5 is a wood preservative composition not directly relevant to the present novelty consideration wherein the active ingredients are a copper compound and a phosphonium compound. However, Examples 1 to 4 are wood preservative compositions in which the active ingredients are Cu(OH)2CuCO3 in admixture either with propiconazole or with propiconazole and azaconazole. It was not disputed that the weight ratio of copper atom:triazole compound is calculable to be 2:1 in each of the aforesaid Examples 1 to 4. I note then that there are disclosed compositions in which there is significantly more copper compound than triazole compound, but that there is no specific exemplification of a range of ratios of copper atom:triazole compound. Also, in my view, in the context of the presently opposed application, a “twice as much” ratio is not of the same order of magnitude as an “at least five times as much” ratio.
A relevant passage in Document A to which I was referred is at page 6 line 20 to page 7 line 13, which reads as follows:
“In concentrated form, the water-dilutable wood preservatives generally contain the copper, for example, in an amount of from 1.0 to 15.0% by weight, calculated as metal.
Suitable concentrates consist of, for example, from 2.50 to 45%, in particular 10 to 20%, of copper compounds,
from 5.00 to 50%, in particular 20 to 40%, of alkanolamine,
from 0.25 to 15%, in particular 1 to 10%, of triazole compounds,
from 2.50 to 40%, in particular 10 to 20%, of phosphonium compounds,
from 0.5 to 30%, in particular 5 to 15%, of an emulsifier,
from 0 to 40% of a compound having a fungicidal inorganic or organic anion,
from 0 to 40% of an organic solvent,
from 0 to 40% of an aliphatic mono- or dicarboxylic acid and/or cycloalkylcarboxylic acid and/or cycloarylcarboxylic acid and
from 0 to 15% of a complex forming, polymeric nitrogen compound,
the sum being 100% by weight in each case, and, if required, minor amounts of other components, for example ..... ”
It is not disputed that although there is no direct disclosure of weight ratios of individual components, it is nevertheless possible to calculate from this disclosure a range of such ratios of individual components including weight ratios of copper atom:triazole compound which range from considerably below to considerably above 5:1. So, in amongst what look to be the somewhat wide ranging generalisations of the above passage, is a signpost discernible? If there is, then it is one which points every which way rather than in any specific direction, let alone towards the "at least 5:1" limitation of the invention claimed in the presently opposed application. In my view the above passage teaches the skilled addressee that the proportions of the various ingredients can be varied across a very wide range of values should there exist a motivation to do so, but (as with the rest of Document A) does not suggest any particular reason for varying the relative proportions of any particular ingredients in any particular way.
In General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at 485-6 it was stated that:
"If 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 that would not do so the patentee's claim will not be anticipated.", and:
"To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented."
I consider that from the disclosures of Document A, the skilled addressee could rather than would
have produced a composition having a metal atom:triazole compound ratio of at least 5:1. I find that Document A has not disclosed all of the essential features of the invention of the opposed application in such a way as to provide clear and unmistakable directions to perform the invention claimed in 659203, and I then conclude that the presently claimed invention is novel in the light of the disclosures of Document A.
Inventive Step
Having regard to the nature of the evidence filed and the submissions made, in order to determine whether or not the invention involves an inventive step, the Patents Act 1990 requires me to:
determine the art in which the invention lies;
determine what has been established as the relevant CGK in the art (if any) in the patent area before the priority date;
(iii) identify a citation (if any) which could have reasonably been expected to have been ascertained, understood and regarded as relevant to work in the art, and;
(iv) determine whether the invention as claimed would have been obvious to the person skilled in the art in the light of the common general knowledge considered separately or together with the citation.
The present invention lies in the art of wood preservation chemistry.
In the period of time immediately preceding the priority date of 659203, the expert declarants Göttsche and Cornfield were employed elsewhere than in Australia. However, they each declare to the effect that they are in a position to say what was or was not CGK in the art in Australia at that time because of the international nature of the wood preservation industry, the way in which technical information is disseminated nowadays, attendance at conferences etc. Having noted all of that I still have reservations but will assign appropriate weight to their statements on CGK and obviousness. Similar reservations do not seem to apply to expert declarants Johnstone and Schmalzl who both appear on the face of it to be well placed to comment on CGK and obviousness in Australia in the art at the relevant date.
Johnstone asserts (at page 17 of his first declaration) that "The combination of metal e.g. copper and triazole was either highly expected or well known and accordingly not unexpected", and that "The ratios between metal e.g. copper and triazole when used in combination was also well known including a ratio of 5:1." In contrast, at page 9 of his declaration, Schmalzl clearly and unequivocally disagrees with the aforesaid assertions by Johnstone. In my view insufficient corroborative evidence has been provided to enable me to resolve this conflict in favour of the above assertions by Johnson.
However, it was not disputed, and I accept that it has been established, that it was CGK in Australia at the priority date to use separately copper compounds or triazole compounds in wood preservative compositions.
I am satisfied that it was usual for persons skilled in the art of wood preservation chemistry to regularly consult patent documentation and that each of the citations previously identified as Documents B,C,D and E could have reasonably been expected to have been ascertained, understood and regarded as relevant to work in that art.
As a suitably structured way of tackling the obviousness question posed by the Act, I will use the so-called problem-solution approach. This approach has been advocated, if applicable to the circumstances of the case, in decisions of a Delegate of the Commissioner such as American Home Products Corporation's Application, on Application No. 16397/92, issued 28 September 1994, unreported, and Rhone-Poulenc Rorer S.A.'s Application, on Application No. 12264/92, issued 25 August 1995, unreported.
On the basis of the specification of 659203 as a whole and the surrounding facts, the technical problem underlying the present application was to propose a wood preservative with enhanced effectiveness. In view of the experimental data given in the specification of 659203, which shows a marked synergistic effect, I am satisfied that the present proposal does indeed solve that technical problem.
The manner of problem-solution approach which seems to be appropriate to adopt in the present instance is to ask whether, in the light of each of the citations taken separately and if appropriate with the CGK, the non-inventive person skilled in the art of wood preservation chemistry would, in attempting to solve the aforesaid technical problem, have taken the necessary steps to reach the claimed invention.
The likelihood of success necessary to render a routine investigation obvious was considered in Beecham Group Ltd's (Amoxycillin) Application [1980] RPC 261 at 290:
"It is clearly established that, for a particular step or process to be obvious ... it is not necessary to establish that its success was clearly predictable. ... It will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile."
In my view there is nothing in the disclosures of any of Documents B,C,D or E which would suggest to the person skilled in the art that mixing a biocidal metal compound with a triazole compound in a ratio of an order of magnitude of at least 5:1 would be worth trying as a solution to the aforesaid technical problem. That remains so, even if that CGK which I have indicated as having been established is added to the disclosures of any of those citations.
I also make the observation that no document, published before either of 659203's priority dates, has been brought to my notice which discloses biocidal metal compounds or triazole compounds as exhibiting synergism with each other or indeed with any other compounds. On the basis of the information made available to me, I therefore conclude that there was no reasonable expectation of synergism and that the invention claimed in all of the claims is characterised by an inventive step and that it has not been established that it was obvious.
Section 40
The opponent asserts that the invention may not be fully described because of the possibility that the apparent experimentally observed synergistic effect could in fact have been due to the presence of a component having fungicidal activity other than the copper compound and the triazole derivative.
At paragraph 61 of the first Cornfield declaration she states:
“The criticism levelled at these experiments (pages 15 to 19 of the opposed specification) is that since some of the compositions tested contain process oil, it cannot be concluded from the experimental results that copper and tebuconazole are synergistic. The criticism is based on speculation that the particular process oil might have been one of the few process oils known to have fungicidal activity. The experiments described in the opposed application were carried out under my supervision and I am aware that the process oil employed was Process Oil GB 2330 produced by Petrofina (UK) Limited. As far as I am aware, there have been no reports that this particular process oil has any fungicidal activity. The level of process oil employed in the experiments was in any case, very low in comparison with the oil content (100%) of oily wood preservatives used for their fungicidal properties. Furthermore, the process oil was present not only in the mixtures containing both copper and tebuconazole, but also in the comparative example, i.e. the composition containing tebuconazole but no copper (the composition used for this comparative example was pack B of example 6). This means that any possible fungicidal activity of the process oil would affect the efficacy of both the mixtures of tebuconazole and copper, and the comparative example containing tebuconazole alone so that valid comparisons between these compositions could still be made. In my opinion therefore, the criticism of this experimental work is unfounded. I note that, in any case, the specification of the opposed application contains further discussion of experimental work which demonstrates the synergistic effect between copper compounds and triazole compounds (section B on pages 20 to 21); in these experiments, no process oil was present in any of the compositions tested.”
I consider this evidence more convincing than the opponent’s line of reasoning on this point and I am satisfied that the invention is fully described.
I turn now to consider whether the claims are fairly based on the matter described in the specification.
When considering the issue of fair basis, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is claimed in the claims (CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 ALR 415; 28 IPR 481). And in Shell Development Co's Application, (1947) 64 RPC 151 the claims were held to be speculative because of the use therein of the broad term "organic mixtures", whereas the examples in the specification were all restricted to "hydrocarbon mixtures".
The term “biocidal metal compound” in claim 1 is asserted by the opponent to be speculative.
At paragraph 64 of the first Cornfield declaration she states:
“... the biocidal metals, are a group of well known metals in the art of which copper is simply the most widely used. It is well known in the art that these metals have similar activities in vivo due to their interactions with proteins in fungal cells. Consequently, it is perfectly reasonable to assume that if synergism is observed between triazole compounds and copper compounds, synergism will also be found between those triazole compounds and other biocidal metal compounds.”
At paragraph 27 of the first Cornfield declaration she states:
“The question of whether two active ingredients are synergistic at any particular ratio (or at all) can only be determined by experiment.”
Having duly noted these statements, I have to say that I would find the justification for extrapolating from copper to biocidal metal a lot more convincing if synergism had been experimentally determined with a triazole compound and at least one biocidal metal compound wherein the metal was other than copper (the composition of Example 7 of 659203 for instance, contains zinc versatate and tebuconazole).
The issue then is whether there is a real and reasonably clear disclosure in the specification of biocidal metal compounds other than copper compounds exhibiting synergism with the specified triazole compounds. My assessment of the balance of probabilities in this matter is that in the context of the nature of the present inventive concept, the use of the term “biocidal metal compound” in claim 1 is considerably broader than the consideration given by the applicant and, consistent with the quid pro quo philosophy upon which the patent system is based, would need to be limited to “biocidal copper compound” in order to render the claim fairly based. Also not being so limited, claims 15 and 17 are speculative and not fairly based for the same reason.
On behalf of the opponent it was pointed out that claim 1 is open-ended as to the maximum copper atom:triazole compound ratio, whereas 500:1 is the highest such ratio at which the specification of 659203 discloses synergism to have been experimentally determined. The applicant says that higher ratios, such as the 1000:1 at which synergism has been determined not to exist are excluded by the functional limitation that the mixture of specified fungicidal ingredients must exhibit synergism. I consider that the aforesaid simple functional limitation is inappropriate and inadequate in the context of an inventive concept said by the applicant to reside in the discovery not merely that the synergistic effect is observable with the specified fungicidal compounds but that it occurs at some active ingredient ratios but not others. In the absence of a numerical definition of the maximum copper atom:triazole compound ratio, I find that Claim 1 is speculative and not fairly based in this respect, and consequently imposes too great a burden upon others to determine whether or not a given ratio would infringe.
It was argued that the broadest claims do not define the invention because they are not limited to compositions which necessarily are water-based and contain an emulsifier and an alkanolamine. I find the submissions made on behalf of the opponent as to why any of that should be so to be unpersuasive in the light of the counter arguments put by expert witness Cornfield in her first declaration.
CONCLUSION
I find that the opposition succeeds on the ground that some of the claims are speculative and are not fairly based.
I allow the applicant 60 days from the date of this decision in which to propose amendments directed toward overcoming my finding.
COSTS
The power to award costs, which is based on section 210 and regulation 22.8, is discretionary and consequently I must take all relevant considerations into account.
At the hearing I invited submissions as to costs but neither part drew my attention to any special circumstances which they wished me to take into account.
The opposition has succeeded but only on the ground that claims are not fairly based in accordance with the provisions of section 40 of the Patents Act 1990. In such a situation I consider it appropriate to not award costs against either party.
Alan Moore
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Watermark, Melbourne
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