Hoechst Aktiengesellschaft v Monsanto Company
[1998] APO 13
•17 March 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 656735 in the name of Hoechst Aktiengesellschaft
Title: Synergistic Herbicidal Agents
Action: Opposition under section 59 of the Patents Act 1990 by Monsanto Company
Decision: Issued .
Abstract
Novelty:The claims defined a selection over the known art. The claims will lack novelty only if a prior document clearly shows the claimed combination of surfactant and herbicide has been made and that the surfactant acts as a synergist or enhances the activity of the herbicide.
Claims 1, 2 and 10 to and 11 lack novelty in light of EP 255 760. Example 2 of the citation is a clear disclosure that the combination of the claimed surfactant with a claimed herbicide has been made and the citation clearly discloses that the surfactant is incorporated to enhance the biological activity of the active agent.
Manner of Manufacture:
The claims define a manner of manufacture according to section 6 of the Statute of Monopolies. The use of surfactants according to the invention as synergists did not simply amount to the verification of an immediately predictable property of a known group of surfactants. The applicant had demonstrated that the surfactants achieved an improved result.
Inventive Step: The improved results provided by the invention were not immediately predictable. Rather, it appears to have been the result of inventive research, as per Beecham Group Ltd.’s (Amoxycillin) Application [1980] RPC 261
Section 40:The specific herbicides and surfactant reported in the examples of the specification provided sufficient basis for the claims. It was reasonable to extrapolate from the results given in the examples to the class of surfactants and herbicides claimed. The examples also supported the claims in the description of improved performance from the surfactants of the invention. The claims were clear and succinct and fairly based, and the invention was fully described.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 656735 by Hoechst Aktiengesellschaft and an opposition under section 59 of the Patents Act 1990 by Monsanto Company
background
Patent application 83863/91 by Hoechst Aktiengesellschaft was filed on 13 September 1991. The application claims a priority date of 15 September 1990. The application was advertised accepted on 16 February 1995 as application 656735.
Monsanto Company opposed the application on 16 May 1995 and filed a statement of grounds and particulars on 15 August 1995.
The applicant proposed amendments to the complete specification on 23 February 1996. The amendments were allowed.
I heard the opposition in Melbourne on 3 September 1997. Hoechst were represented by Mr B. J. Hess of Counsel, assisted by Ms Karen Sinclair and Ms Carolyn Harris, Patent Attorneys of Watermark Patent & Trademark Attorneys, Melbourne. Monsanto were represented by Dr John Emmerson QC, assisted by Dr Bruce Wellington, Patent Attorney of E F Wellington & Co, Melbourne.
specification
The specification is titled “Synergistical herbicidal agents”.
“The invention relates to the technical field of plant protection agents. in particular combinations of active substance/surfactants, which are taken up via the green parts of the plant.
It is generally known that some herbicides reach the plants both via the leaves and via the roots, and other herbicides are taken up selectively, virtually only via the roots or only via the leaves. Thus, the herbicidal activity can depend to a decisive extent on whether the active substances can penetrate the plants rapidly and as completely as possible through the leaf tissue. In this context, surface-active substances play an important role, because in individual cases they can increase the wettability and act as a sort of slide on which the active substances penetrate the leaves.
It has now been found that the effectiveness of the herbicides is increased to a surprisingly great extent when certain herbicides are applied together with surfactants of the type of the alkyl polyglycol ether sulfates and their salts.
The invention relates to the use of surfactants from the group comprising the C10-C18-alkyl polyglycol ether sulfates and their physiologically acceptable salts as synergists for herbicides from the group comprising leaf-acting selective herbicides and the leaf-acting non-selective herbicides glyphosate, paraquat and diquat.
The surfactants to be used according to the invention are generally applied to the plants together with the herbicide, or the herbicides, or immediately in succession, preferably in the form of an aqueous spray mixture, which contains the surfactants and the herbicides in effective amounts, and, if appropriate, further customary auxiliaries.
The concentration of the surfactants to be used according to the invention in an aqueous spray mixture is, as a rule, from 0.05 to 2 % by weight, preferably 0.1 to 1.0 % by weight, in particular 0. 1 to 0. 3 % by weight, of surfactant, based on detergent, a water application rate of 200 to 600 l/ha, in particular 300 to 400 1/ha, being preferred.”
The specification then lists examples of the preferred herbicides which can be used according to the invention. These include the following leaf-acting selective herbicides: grass herbicides, which are broken down to three sub-groups; urea derivatives; sulfonylurea herbicides; diphenyl ether derivatives; and dicotyledon herbicides. These groups are further broken down into subgroups and examples on pages 2 to 6. The description states at page 6 that in addition, the leaf-acting non-selective herbicides glyphosate, paraquat and diquat are also to be used according to the invention. The description says that these herbicides are generally known.
At page 9 the description states that:
“The surface-active substances of the type of the C10-C18-alkyl polyglycol ether sulphates are preferably used in the form of their alkali metal salts ..., and/or ammonium salts, but also in the form of magnesium salts, the polyglycol moiety preferably containing 2 to 5 ethylene oxide units. An example of a particularly preferred substance is sodium C12/C14-fatty alcohol diglycol ether sulphate (tradename âGenapol LRO, Hoechst AG); in the following text, this substance will be referred to as wetting agent A.”
The description acknowledges at page 10 that it is already known that wetting agents of the type of the C12/C14-fatty alcohol diglycol ether sulphates can be used for reinforcing the action of glufosinate.
The description sets out the advantages of the invention at pages 14 and 15 in the following terms:
“The noticeable improvement of action by the surfactants employed according to the invention such as, for example, wetting agent A, exceeds by far the performance of, for example, other conventional wetting agents and can therefore be referred to as being especially synergistically intensive. This is even more so since the surfactants according to the invention, by themselves, have no actual herbicidal activity and hardly damage the plant externally to a visible extent - occasionally, they result in slight brown discoloration (so-called "rusting") on the lamina of young plants, which, however, are outgrown very rapidly within a few days and are then no longer visible.
Wetting agent A on its own inflicts a slight growth shock on some sensitive young weeds, i.e. they show retarded growth compared with control plants for 1-2 weeks, but subsequently the plants recover and then show healthy growth.
However, when applied together with the herbicidal active substances, the surfactants according to the invention cause an extraordinarily powerful improvement of action, in such a way as that the active substances are taken up not only more rapidly, but also more completely, and can display their herbicidal effectiveness to a considerably greater extent.
Moreover, the effectiveness of the herbicides applied is much less adversely affected by climatic factors such as, for example, rain.”
The specification includes 14 claims defining the invention.
1.The use of surfactants from the group comprising the C10-C18-alkyl polyglycol ether sulfates and their physiologically acceptable salts as synergists for herbicides from the group consisting of leaf-acting selective herbicides and the leaf-acting non-selective herbicides glyphosate, paraquat and diquat.
Claims 2 to 5 are dependent on claim 1.
6.A herbicidal agent which contains:
(a)herbicides from the group consisting of:
(i)leaf-acting selective herbicides; and
(ii)leaf-acting non-selective herbicides glyphosate, paraquat and diquat
(b)surfactants from the group comprising C10-C18-alkyl polyglycol ether sulfates and their physiologically acceptable salts with
with the exception of
aqueous preparations of herbicides from the group comprising fenoxaprop-P-ethyl, isoproturon and diclofop-methyl, which contain sodium C12-C14-alkyl diglycol ether sulfate in combination with a salt of tallow fatty amine ethoxylate having 15 EO and C6-C12-perfluoroalkylphosphinic acids/phosphoric acids; and
water dispensable granulates which contain fenoxaprop-ethyl or fenoxaprop-P-ethyl and sodium Cl2-C14-alkyl diglycol ether sulfate, defoamers based on silicone, dispersants based on cresol-formaldehyde condensation products and aluminium silicate; and
preparations of glyphosate and lauryl polyethyleneglycol ether sulfate.
Claims 7 to 9 are dependent on claim 6.
10.A method of controlling harmful plants, which comprises applying, to the plants or the area of which they grow, a herbicidally effective amount of a combination of herbicide and surfactant as defined in claim 1.
Claims 11 to 14 are dependent on claim 10.
Grounds and particulars
The grounds upon which the opponent relies were set out in the statement of grounds and particulars. These grounds include novelty, manner of manufacture, obviousness and failure to comply with section 40.
The particulars relating to the ground of novelty state that the claims are characterised by the use of an anionic surfactant selected from the group comprising the C10-C18 alkyl polyglycol ether sulfates and their physiologically acceptable salts, with well known classes of herbicides, as synergistic/potentiating agents for the herbicides. The particulars state that these surfactants are seen to have the following structural formula:
CH3-(CH2)n-O-(CH2-CH2-O)x-SO3- M+
wherein n = 9-17; x = an integer; and M = a physiologically acceptable salt.
The particulars allege that this chemical nomenclature embraces a very broad class of well-known anionic surfactants which can be shown to have been extensively used in Australia in many technically useful formulations before the priority date. For instance, the particulars state that the sodium, potassium and ammonium salts where x = 2-4 and n = 11-13, for example “sodium lauryl ether sulfates”, were well known and widely used in Australia as a surfactant class.
The particulars state that the anionic surfactants are well known to be used or proposed to be used in connection with the claimed herbicides in Australia before the priority date, including use as synergistic/potentiating agents for the herbicides. The particulars also state that individual members of the group of anionic surfactants were well known to be useful in various fields of surfactant application as shown in the manufacturers technical brochures.
The particulars for novelty list fourteen publications or groups of publications.
According to the particulars, the use of a surfactant from the claimed group merely for the purpose of synergising/potentiating the selective and non-selective herbicides specified in the claims does not amount to a manner of new manufacture within the meaning of Section 6 of the Statute of Monopolies. The particulars state that the “use simply amounts to the mere verification of an immediately predictable or predicated property of that known group of surfactants, the indicated use resulting in no more than an expected herbicidal synergism/potentiation in the application of that known class of surfactants to that known group of herbicides.”
The particulars also allege that the claims lack an inventive step for similar reasons to those outlined under manner of manufacture. The particulars for both manner of manufacture and for lack of inventive step have regard to the disclosures in “at least some of the publications 1-14” referred to under novelty.
The particulars relating to section 40 are set out at pages 13 to 20 of the statement of grounds and particulars. The particulars allege that the specification does not fully describe and claim the alleged invention; the claims do not clearly define the alleged invention; and the claims are not fairly based.
evidence
The evidence in support of the opposition comprises declarations by:
Ross William Fellowes dated 13 November 1995. This is accompanied by exhibits RWF-1 to RWF-25. Fellowes was an employee of the Monsanto Company and its subsidiaries for various periods in the 1970s and 80s.
Arpad Tibor Phillip dated 13 November 1995. This is accompanied by exhibits ATP 1 to ATP 23.
Bruce Stephen Wellington dated 13 November 1995; Elizabeth Williams dated 10 November 1995; and Robyn Galagher dated 13 November 1995. These declarations set out to establish the publication dates of the documents filed in evidence.
The evidence in answer comprises declarations by:
Hermann Bieringer dated 7 May 1996. Bieringer is named as one of the inventors of the opposed application.
Joseph Henry Combellack dated 20 May 1996.
John Frederick Illingworth dated 29 May 1996.
The evidence in reply comprises declarations by:
Ross William Fellowes dated 29 November 1996. This declaration is accompanied by exhibits RWF-26 to RWF-28. These exhibits include three documents which discuss various aspects of synergism in herbicides.
Arpad Tibor Phillip dated 29 November 1996.
decision
Dr Emmerson stated that the opponent’s case fell into two groups of arguments, each supported by a group of prior art citations. The first argument is that the claims are prior published by a group of citations that disclosed the use of wetting agents to improve agricultural chemicals. Dr Emmerson submitted that this group of citations each directly disclosed what was claimed. The applicant was saying that the surfactants produced a synergistic effect when used with the claimed herbicides. The opponent says that this is not new. It is well known that surfactants help the herbicide get to the plant and kill it.
The second group of arguments is that there is a full disclosure of synergy between surfactants and herbicides in another group of documents. According to Dr Emmerson, the applicant is saying that these involved herbicides which have been excluded from the claims. Dr Emmerson contended that if it is permissible to extrapolate from one herbicide to another, the claims will fail in light of the citations disclosing the claimed surfactants with the herbicide glufosinate. On the other hand, according to Dr Emmerson, if it is not possible to extrapolate, the claims will fail fair basis as only a few of the many claimed herbicides have been exemplified.
The applicant, on the other hand, submitted that none of the documents put forward anticipate the claimed combination. Further, if it comes to selection, the combination of the claimed surfactant with the claimed herbicides produces a surprisingly good effect.
The matter of “selection” patents was considered in the case of I.G. Farbenindustrie A.G.’s Patents, (1930) 47 RPC 289, and the following criteria were laid down at pages 322 to 323:
1. the selection must be based on some substantial advantage gained or some substantial disadvantage avoided;
2. the whole of the selected members must possess the advantage in question; and
3. the selection must be in respect of a quality of a special character which may fairly be said to be peculiar to the selected group.
The issue of selection patents was also considered in E I Du Pont de Nemours & Co (Witsiepe’s Applications) 1982 FSR 303, where Lord Wilberforce commented at 310:
“Thirdly, disclosing a prior invention does not amount to prior publication of a later invention if the former merely points the way which might lead to the latter. A much quoted and useful passage is that from the judgement of the Court of Appeal in General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. [1972] R.P.C. 456 at 486. There Sachs L.J. said:
“A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”
Attractive metaphors may be dangerous for those in search of precision, but the passage illustrates the necessity that the alleged prior disclosure must clearly indicate that the use of the relevant material (i.e. that ultimately selected) does result in a product having the advantages predicted for the class. The point is well put by the New Zealand Court of Appeal. Dealing with semi-synthetic penicillin, the court (per Cooke J.) said:
“If such a compound has not been made before, its properties often cannot be predicted with any confidence; and where that is the case we do not consider that the invention claimed can fairly or accurately be described as ‘published,’ even if a skilled chemist would realise that to make the compound by routine means would be practicable. A making of the compound and a discovery of its properties is necessary before the ‘invention’ has occurred and can be published.” (My emphasis)
This is in line with, but adds a useful precision to what was said by Maugham J.:
“It must be remembered, of course, that the selected compounds have not been made before, or the patent would fail for want of novelty.” (I.G. Farbenindustrie A.G.’s Patents, l.c. p.321.)”
It is not entirely clear if this passage requires the new property on which the selection is based to be disclosed in the citation, or that the citation discloses the compound was made and its properties could be determined. In my view it is the latter, so long as the properties can be predicted with some confidence.
The applicant contends that the surfactants employed according to the invention are “especially synergistically intensive” and when applied together with the herbicidal active substances cause “an extraordinarily powerful improvement” (see the passages from pages 14 and 15 of the description set out above). Mr Hess stated that the degree of enhancement was unexpected. The opponent, on the other hand, argues that it is well known to get a synergistic effect from adding a surfactant to a herbicide. Dr Emmerson contended that the applicant was merely adding known surfactants to herbicides for known purposes.
Dr Emmerson stated that a number of the prior art documents filed as evidence in support supported the contention that the use of surfactants as synergistic/potentiating agents for herbicides is well known.
A review of this art shows that surfactants are known to enhance the phytotoxicity of herbicides. For example, Weed Science 25, 275, 1977 (Wyrill and Burnside) discussed an evaluation of surfactants for their ability to enhance glyphosate. Wyrill and Burnside reported that “cationic surfactants were more effective in enhancing glyphosate phytotoxicity than other ionic forms. Anionic and zwitterionic surfactants were generally less effective than non-ionic surfactants” (page 281). They also reported that “Effectiveness of surfactant combinations was quite variable and difficult to predict. Therefore, the indiscriminate addition of surfactants or wetting agents to glyphosate spray mixtures which already contain a surfactant should be avoided” (page 283). This paper reported on the addition of 76 surfactants of various types, but did not include the claimed surfactants.
The textbook “The Herbicide Glyphosate” (Turner), Edited by E. Grossbard and D. Atkinson, (1985) at page 223 states that the “addition of surfactants generally improves the activity of glyphosate”. It also stated that it “must be concluded that the effects of surfactants on glyphosate phytotoxicity are not entirely due to reduced surface tension, but at least partly to other functions, perhaps solvent action or to the formation of micellar solutions”.
Bieringer at clause 20.4 and Illingworth at clause 25.4 of their declarations filed as evidence in answer, make the following comments:
“In conclusion as stated, for example, on page 1 of the opposed application’s description, surface-active substances are well-known in the art to play an important role in increasing wettability and thereby facilitating the penetration of the active substances through the leaf tissue. These were facts that have been acknowledged by the skilled practitioner at the time the invention was made. The nature of the invention subject of the opposed application, however, consists in that effectiveness of the herbicides is increased to a surprisingly great extent when applied together with surfactants of the alkyl polyglycol ether sulphate type. Thus, the invention is based on the finding that the surfactants of the present invention are superior in causing a synergistic kind of effectiveness enhancement over the surface active agent. ...”
The declarants for the applicant all state that the specific synergizing/potentiating behaviour displayed by the group of anionic surfactants under consideration was not predictable or foreseeable. They state that the extent of enhancement was not predictable and was surprisingly super-additive or synergistic. They argue that while the prior art may include the enhancement of biological activity, they do not include the extent of enhancement, which is considered to be surprising, when using the selected surfactants of the opposed application.
Combellack states that the following definitions of "synergy” have been proposed:
Websters Dictionary (1976)
Synergistic a. same as synergetic. Synergetic a. {Gr. synergetikos, a working together; syn. together, and ergon, work.} working in co-operation
Herbicide handbook: - Published by Weed Science Society of America, 1508 West University Avenue, Champaign, Illinois, Seventh Edition - 1994, Editor William H Ahrens, p318.
Synergism - An interaction between two or more factors such that the effect when combined is greater than the predicated effect based on the response to each factor applied separately.
Synergist - For herbicides: a non herbicidal compound used to increase the phytotoxicity of a herbicide by a physiological mechanism.
A Dictionary of Biology, Abercrombie, M, Hickman, M L and Johnson, M L published by Penguin Reference Books (undated) on p.227
Synergism (1) Combined activity of agencies, eg drugs, hormones, which separately influence a certain process in the same direction, such that an effect is produced greater than the sum of the effects of each agency acting alone. (2) Sometimes used for combined activity such that the effect is either sum of the separate effects (summation), or greater than the sum of the separate effects (potentiation), it does not matter which, i.e., the agencies are not antagonistic to each other.
Combellack comments that he believes most scientists would describe synergism as per item (1) by Abercrombie et al. He states that a reading of the opposed specification supports the view that this is the definition that the inventors mean by their use of the term "synergistic".
Fellowes, in his declaration filed as evidence in reply, agrees that there is some acceptance of the Abercrombie version of the definition i.e. the combined activity is greater than the sum of the parts. He states that by this definition, essentially all agricultural surfactants in use in Australia are synergistic as this definition includes even the slightest degree of enhancement. However Fellowes also considers that the definition is simplistic and is not an adequate basis for making an assessment of the invention. Fellowes acknowledges that the examples of the opposed application show some form of “synergy” according to the accepted definition. However, he says that the point at issue is whether the result is extraordinary or unusually greater than would be expected against the standard of the best prior art surfactants previously used for the same purpose.
Both Fellowes and Phillip take issue with the adjectives used by the specification and by the declarants for the applicant to qualify the terms “synergy”, “enhancement”, and “potentiation”. They consider that terms such as the "surprising discovery" that surfactants of the defined class provide an “unexpected enhancement”, or an "extraordinary increase" in enhancement, or “extraordinarily powerful improvement” and similar terms used in the specification and in evidence are indefinite in relation to herbicidal activity and the meaning of the terms "synergy", "enhancement", and "potentiation".
Fellowes, in his evidence in reply, refers to a number of publications which attempt to deal with synergy in herbicidal compositions. These papers detail the difficulty of giving an unambiguous definition of synergy and finding a statistical technique that can give validity to the definition. Two of these papers refer to synergy as the combined effect when two herbicides are applied in combination, whereas the effect of a herbicide and a non-toxic adjuvant applied in combination is defined as enhancement. However one of these papers, “Methods of Applying Herbicides”, McWhorter and Gebhardt, WSSA Monograph No. 4, 1987, then says “Herbicide synergists are nonherbicides used to increase the phytotoxicity of a herbicide by a physiological mechanism. ... A synergist can be a nonphytotoxic adjuvant such as crop oil or surfactant or it may be another pesticide. ... Synergist activity has also been termed enhancement and potentiation”. These papers each then put forward mathematical models to measure synergy.
Fellowes says that the qualitative descriptive language used in the specification is not an adequate basis to validly determine any degree of claimed enhancement or synergism and that the applicant does not even attempt to employ any of the known quantitative mathematical techniques. But it is clear from the exhibits to his evidence in reply that the quantitative methods available are not altogether satisfactory. In the present case, the applicant has stated in its description that the effectiveness of the herbicides is increased to a surprisingly great extent when the herbicides are applied together with the defined surfactants. The description also includes examples which, on the face of it, support the claim that the surfactants exceed the performance of other conventional wetting agents. I do not believe it is necessary for the applicant to further support their claimed advantage by reference to quantitative mathematical models.
The opponent alleges that the examples in the specification do not support the applicants contention that there is any surprising effect. The opponent argues that in 11 of the 15 examples presented, wetting agent “A” is compared to the test herbicide alone and is not compared to any other surfactant. In the other 4 examples presented, wetting agent “A” is compared to a very limited number of other surfactants. The opponent contends that where valid comparisons are made, it can only be concluded that wetting agent “A” is similar to other standard wetting agents.
Wetting agent “A” is sodium C12/C14-fatty alcohol diethylene glycol ether sulfate (Genapol LRO). The opponent concedes that many of the results show apparent improvements in favour of the wetting agent when compared to herbicide formulations applied alone, but assert that this is old news. I note that a number of the examples state that commercially available formulations of the herbicide were used. Therefore, as pointed out by Bieringer, these formulations already contain an amount of surfactant that is deemed to be best suited for commercial purposes. These examples show improved performance when the surfactant of the invention is added.
Tables 2, 3 and 11 give comparative results between wetting agent A and other surfactants. Wetting agent “A” appears to show significant improvement compared to the other wetting agents, particularly at low dosage rates of active ingredient. Bieringer states “that it is very useful to decrease the amount of active substance herbicide and simultaneously obtain a control which is not decreased but, in some cases, even increased”. Phillip agrees that wetting agent A might be said to have given significantly better results in a few of the tests, but questioned the statistical significance of other results. Bieringer states that it “is correct that, at a relatively high dosage rate ... the addition of a further wetting agent gives no measurable increase of control. However, a 100% control cannot be topped”. Mr Hess pointed out that, in any case, the results showed some improvement at the top end of the range, where marginal increase is difficult to achieve.
Table 11 shows the results of tests on commercially available formulations of glyphosate without additive, with wetting agent A, and with three comparative wetting agents, at various dosage rates of active ingredient. The test showed that the herbicide was good when used on its own at 270 g/ha, but at half the dosage rate its effectiveness was incomplete. The opponent pointed out that when the formulation was diluted to half the dosage rate, the surfactant present in the commercial formulation was diluted below its effective rate. Fellowes states that “where a low rate of product is applied in a high volume of water, the commercial product packaging label requires the user to add extra surfactant for compensation to raise the total surfactant load to the desired range”. While I note the point made by the opponent, I also note that Table 11 also appears to show improved results for wetting agent A compared to the other wetting agents, including wetting agent D (ethoxylated tallow fatty amine having 20 EO).
I am satisfied that the examples in the specification show synergy between the claimed surfactants and the herbicides and show an improved performance in relation to other conventional wetting agents. While there may be some questions over the significance of the improvement in a few instances, the examples overall tend to show significant improvement when the surfactants of the invention are used. But it is also apparent from the various definitions and references discussing synergy that enhancement and synergy amount to the same thing when discussing the effect of surfactants on herbicides.
Mr Hess contended that there was a difference in degree in the present invention rather than a difference in kind. He said that this is a significant commercial result and proper subject matter for a patent. Dr Emmerson, on the other hand, argued that what is being said is that there is some sort of optimisation. He submitted that this was not enough for selection. It is clear from the body of literature put forward by the opponent that surfactants are known to have a synergistic or enhancing effect on herbicides. I need to decide in the present case, if it comes to selection, whether an improvement in the effectiveness of the herbicides to “a surprisingly great extent” is an advantage that would lead to a valid selection or if it is a mere optimisation.
Fellowes, in his declaration filed as evidence in support, states that the ROUNDUP herbicide ( a glyphosate-based herbicide) is one of the most widely sold and used herbicides in the world today and that more than 8,000 English text technical articles have been published worldwide on various aspects of glyphosate. In his second declaration, Fellowes points out that a “very large proportion of the technical literature on glyphosate” is focused on the addition of various surfactants to glyphosate in order to improve the herbicidal efficacy of glyphosate. It is clear from the literature cited by the opponent, eg Wyrill and Burnside quoted above, that effectiveness of surfactant combinations is quite variable and difficult to predict. In light of the past and ongoing research in the field, I consider that, in the present instance, an improvement of action by the surfactants which “exceeds by far the performance of ... other conventional wetting agents” and causes an “extraordinary powerful improvement of action”, to quote from the description, is an advantage in the sense of the Farbenindustrie guidelines and not merely an optimisation.
However I agree with the opponent that the degree of enhancement described is somewhat indefinite. In my view, claim 1 of the opposed application, which defines use of the surfactants as synergists for the herbicides, will lack novelty only if a prior document clearly shows the claimed combination of surfactant and herbicide has been made and that the surfactant acts as a synergist or enhances the activity of the herbicide. I believe this is consistent with the decision of E.I. Du Pont De Nemours & Co (Witsiepe’s) Application, quoted above.
The opponent also argued that the range of herbicides and surfactants included in the claims were not supported by the specification. Apart from the question of fair basis, this also has some impact on the questions of novelty, obviousness, manner of manufacture.
The opponents allege that there is no basis for claiming the entire class of surfactants from the group comprising the C10-C18-alkyl polyglycol ether sulfates as only one member of the group is exemplified. All of the claims use Na C12/C14-fatty alcohol diglycol ether sulfate (Genapol LRO) as the inventive surfactant. Phillip, in his declaration filed in evidence in reply, estimates that the claimed class of surfactants may contain up to 72 different compounds of which at least ten different raw materials are available commercially. However Bieringer states that the number of ethylene oxide units will not give rise to a dramatic change in properties and the counterion (M+) has no significant influence on the properties. The applicant says that the number of surfactants covered by the invention is relatively small. Mr Hess submitted that the behaviour of such a narrow range of compounds could easily be predicted by a chemist based on the behaviour of one within the group.
I agree with the applicant on this point. It seems reasonable to extrapolate the results of the examples to the claimed group of surfactants. There are three parts of the structure subject to variation: the alkyl chain length; the degree of ethoxylation; and the anion. From the evidence, the degree of ethoxylation and the anion do not appear to give rise to a dramatic change in properties. The alkyl chain, according to Phillip, includes C10; lauryl (C12-C14); and tallow (C16-C18). Phillip also states that the vast majority of surfactants used in the agricultural chemical formulation art, where they have hydrophobes comprising an alkyl chain, have chain lengths within the C10-C18 range. Phillip gives evidence that most alcohol sulfates are made from various blends of alcohols in the C10-C18 range. Having exemplified the lauryl range, it seems reasonable to claim surfactants from the group of C10-C18 alkyl polyglycol ether sulfates, which on the evidence is a well known class of surfactants.
The opponent also disputes that there is support for the range of herbicides claimed. Claims are made for 87 specified herbicides, arranged into groups. Of these 87, the examples cover only 16 herbicides. Fellowes states that if the results observed on only 16 herbicides are to be applicable by extrapolation to all 87 herbicides claimed, he considers it logically follows that the results published for the foliar herbicide glufosinate would be expected to be applicable to all or most other foliar herbicides. If this is not the case, Fellowes contends that the claims are not fairly based.
At clauses 38 and 39 Fellowes discusses the extrapolation of the examples to the listed herbicides. He states that several of the groupings of herbicides are of related chemical structure and mode of action. In these cases it might be reasonable to argue for extrapolation of results. However, Fellowes argues that the group “Dicotyledon herbicides” includes a range of disparate compounds of unrelated chemical structure and mode of action, of which only three have been exemplified. They have been grouped together for convenience as they are used for a common purpose against dicotyledon (broadleaf) weeds. Similarly, Fellowes states that the chemistry and mode of action of glyphosate is very different to that of the bipyridyls (paraquat and diquat). Fellowes considers it unreasonable to extrapolate from one compound to another in these cases.
Bieringer, in his declaration filed as evidence in answer, emphasises that the invention is directed to the group of selective leaf-acting herbicides as a whole. Additionally, a distinct selection of non-selective leaf-acting herbicides is also claimed. Bieringer states that besides the relationship of chemical structure and mode of action, it is acknowledged by the person skilled in the art that the purpose for which the herbicides are mainly used can be a feature which is common to a series of herbicides.
Mr Hess submitted that the skilled addressee would be capable of extending the representative examples to other formulations within the scope of the invention as claimed. I agree with the applicant’s submissions that the extrapolation of the examples to the claimed herbicides is reasonable. The opponent’s declarant agreed that it was reasonable to extrapolate the results for most of the groups listed in the specification. The concern appears to be with the dicotyledon herbicides and the group of non-selective herbicides. The specification includes examples representative of these two groups. I think it would be unreasonable to expect the applicant to provide an example of every herbicide listed in the specification. The applicant has listed the herbicides in the specification and also given representative examples. The applicant has discharged the onus to prove that it has established the invention in respect of a wide range of representative chemicals and has provided support for the claimed herbicides in the description.
The opponent asserts that it would be equally reasonable to extrapolate the results from glufosinate to other non-selective herbicides. The opponent referred to the publication Proc. EWRS Symp. "Factors Affecting Herbicidal Activity and Selectivity", which I will discuss in more detail below. This paper discusses the influence of two additives on the efficacy and rainfastness of glufosinate. The two additives are ammonium sulphate and the sodium salt of an alkyl-polyglycolethersulfate. According to Fellowes, the study shows very useful results. But Fellowes also states that the result in this case was not extraordinary as it was duplicated and even exceeded by ammonium sulfate. Fellowes states that the subject surfactants are seen not to be unusual or extraordinary, but no more than equivalent to another common adjuvant ie ammonium sulphate.
Bieringer states that the response of glufosinate and glyphosate to different wetting agents is quite different depending on the ranges of concentration. As an example, Bieringer compares the efficacy of wetting agents Genamin T-200 (ethoxylated tallow fatty amine) and Genapol LRO when used with glyphosate and with glufosinate. At low concentrations, Genamin T-200 was more effective with glyphosate while Genapol LRO provided better results with glufosinate. But at higher concentrations, as shown in Table 11, Genapol LRO gave better results with glyphosate.
As Mr Hess pointed out, the benefit of any doubt must be given to the applicant. The opponent has the burden of proof. In my view the opponent has not established that it would be logical to extend the observations on the use of the surfactants with glufosinate to glyphosate. The applicant has provided evidence that the response of glufosinate and glyphosate to different wetting agents is different. The opponent has stated that while the results shown on glufosinate were useful, they were not unusual. There is not sufficient evidence for me to find that it would be equally reasonable to extrapolate the results from glufosinate presented in the prior art to other non-selective herbicides. In any case, the claims define herbicides from the group consisting of leaf-acting selective herbicides and the leaf-acting non-selective herbicides glyphosate, paraquat and diquat. Glufosinate is clearly excluded from the claims.
I consider that the examples and the specification as a whole provide support for the class of surfactants and range of herbicides defined in the claims. In view of this, it follows that the claimed combination satisfies the second of the Farbenindustrie guidelines, ie the selected members of the claimed surfactant group possess the advantage of an improved synergistic effect with herbicides of the nominated group.
Dr Emmerson submitted that there was no evidence that the selection was in respect of a quality of a special character which is peculiar to the group. I have already decided that the examples in the description demonstrate that the surfactants of the invention show a noticeable improvement of action compared to other wetting agents. In I.G. Farbenindustrie A.G.’s Patents, above, some leeway was allowed for in relation to the third criterion. At page 323 it was stated:
“The quality must be of a special character. It must not be one which those skilled in the art will expect to find in a large number of the members. It would be rash to attempt a closer definition; for the question is ultimately one of appreciation.”
I am satisfied, on the available evidence, that the examples presented in the specification show that the third Farbenindustrie criterion has been met.
Novelty
I will now consider the disclosures of the documents cited by the opponent in evidence. Dr Emmerson broke the documents that the opponent relied on for anticipation into two groups, which I will refer to as group 1 and group 2. Group 1 includes documents that the opponent asserts completely disclose the invention defined by the claims. Group 2 documents, according to Dr Emmerson, are also applicable to the ground of lack of novelty. However Dr Emmerson’s main submission was that these documents demonstrate that the claims are not for a manner of new manufacture. He submitted that each of the group 2 documents discloses the use of the claimed surfactants with the herbicide glufosinate to enhance the effect of the herbicide.
Group 1 documents
European Patent Application 255 760 (Kao Corporation).
This document discloses that the useful biological activity of conventional or known agricultural chemical compounds can be enhanced by incorporation of a surface-active agent of some selected types into the agricultural chemical compositions. The weight ratio of agricultural chemical compound to anionic surface-active agent being in the range 1:0.5 to 1:20, the anionic surface-active agent being a sulphate type, sulphonate type, phosphate type or a carboxylic acid type. A number of surface-active agents are exemplified. The preferred agents include polyoxyalkylene (C8-22)-alkyl ether sulphates. A great variety of agricultural chemical compounds may be used as the active ingredient, including herbicides. Glyphosate is listed as an example of a herbicide.
Example 2 discloses a formulation having 30 parts by weight N-(phosphonomethyl)glycine isopropylamine salt (glyphosate); 30 parts by weight sodium polyoxyethylene (4) laurylsulfate; and 40 parts by weight of sodium sulfate decahydrate; in 80 parts by weight water.
Example 2 of EP 255 760 discloses a formulation including equal parts of glyphosate and sodium polyoxyethylene (4) laurylsulfate. The citation describes adding the surface-active agents to enhance the biological activity of the active ingredient. The applicant submitted that the surfactant was used in combination with sodium sulfate decahydrate, and not as a single compound, in order to enhance the effectiveness of the agent. In view of this, Mr Hess submitted that there were no clear and unmistakable directions to carry out what was claimed.
The presence of an additional surfactant does not distinguish the citation from the claims and is, in fact, included in at least some of the examples of the invention. I note, as I have already discussed above, that the surfactant of the invention was used in several of the examples with commercial formulations of surfactants. For instance, example A10 used the surfactant with commercially available formulations of glyphosate. As the applicant has acknowledged, these commercial formulations already contain surfactants. While the claims all require a surfactant from the group comprising the C10-C18-alkyl polyglycol ether sulfates, the claims do not exclude the presence of additional surfactants.
Example 2 is a clear disclosure that the combination of the claimed surfactant with a claimed herbicide has been made and the citation clearly discloses that the surfactant is incorporated to enhance the biological activity of the active agent. I consider that the invention defined by claim 1 has been disclosed by EP 255 760.
Claim 2 is appended to claim 1. Claim 2 includes the limitation that the ratio by weight of herbicide to surfactant is 10:1 to 1:200. EP 255 760 describes the weight ratio of active agent to anionic surface active agent being in the range 1:0.5 to 1:20. In example 2 the ratio is 1:1. Therefore the invention defined by claim 2 is also disclosed.
Claim 3 defines applying herbicide and surfactant in the form of an aqueous spray mixture, where the concentration of surfactant is 0.05 to 2% by weight relative to the spray mixture. There is no disclosure of this concentration in EP 255 760. Claims 4 and 5 limit the invention to selective herbicides thereby excluding glyphosate. Claims 6 to 9 include a disclaimer that excludes preparations of glyphosate and lauryl polyethylenglycol ether sulfate. Therefore claims 3 to 9 are novel over EP 255 760.
Claims 10 to 14 define methods of using the combination of herbicide and surfactant as defined in claim 1 to control harmful plants. The citation is clearly directed to herbicidal compositions for controlling harmful plants. Claim 10 lacks novelty over EP 255 760. Claim 11 is similar to claim 2 and also lacks novelty. Claim 12 is novel for the same reasons that claim 3 is novel. Claim 13 defines a dosage rate of surfactant of 600 to 900 g of detergent per hectare of area under cultivation. There is no disclosure of this dosage rate in the citation. Also, the citation does not disclose applying the formulation of example 2 to selectively control harmful plants in crops of useful plants. Therefore claim 14 is novel over EP 255 760.
I conclude that claims 1, 2 and 10 and 11 lack novelty over EP 255 760.
Japanese Patent Application 61-17029 (Ishihara Sangyo KK).
An English translation of the specification was filed in evidence with the Japanese document. This document discloses herbicide preparations containing a herbicide, urea or a water-soluble inorganic salt as a solid carrier, and an auxiliary agent. The herbicide may be N-(phosponomethyl)glycine (glyphosate). Surfactants, oil-absorbing materials and binders are cited as auxiliary agents. The description list a number of non-ionic, cationic, anionic and amphoteric surfactants which may be used. Polyoxyethylene alkyl ether sulphates are listed amongst 23 other sub-groups.
There are no examples involving the use of polyoxyethylene alkyl ether sulphates. While the document mentions surfactants being nonionic, cationic, anionic or amphoteric, there is no indication as to which is preferred. This document does not provide clear and unmistakable directions to carry out the claimed invention. The claims are therefore novel over JP 61-17029.
Australian Patent Application 48333/90 (Monsanto).
This document describes a composition comprising a water soluble salt of N-phosphonomethylglycine and one or more liquid surfactants. Suitable liquid surfactants include nonionic surfactants, anionic surfactants, cationic surfactants and amphoteric surfactants., mixtures thereof and the like, preferably ones that provide increased herbicidal activity of glyphosate. Polyoxyalkylene alkylether sulfate is listed among approximately 46 suitable classes of surfactant. The most preferred surfactant is an ethoxylated fatty tallow amine.
None of the examples involve the use of polyoxyalkylene alkylether sulfate. There is no evidence of the trial or use of C10-C18 alkyl polyglycol ether sulphates. Polyoxyalkylene is a general term including polyoxyethylene, polyoxypropylene, etc. Alkylether gives no indication of a C10-C18 alkyl residue. Phillip asserts in the evidence in reply that the C10-C18 alkyl group specified in the claimed surfactants covers all the industrial range of alkyl chain lengths used in the alkyl polyglycol ether sulfate class of surfactants considered to be “workhorse” anionic surfactants for industrial detergents. While the citation theoretically embraces C10-C18-alkyl polyglycol ether sulphates, it also includes almost every other class of surfactant. The document does not provide clear and unmistakable directions to carry out the claimed invention. The claims are novel over AU 48333/90.
Australian Patent Application 81718/91 (Whitco Corporation, assigned to Monsanto Corporation).
This document has an earlier priority date than the opposed claims but was published after the priority date of the opposed claims. It was cited in respect of patentable novelty on the grounds of a “whole of contents” objection.
This document is directed to surfactant compositions having reduced eye irritancy which are useful in the preparation of herbicidal compositions having reduced eye irritation properties in addition to their herbicidal effectiveness. The specification states that when the herbicide is water soluble, the surfactant can often be used to improve the herbicidal effectiveness of the herbicidal composition. The surfactant compositions described include polyoxyalkylene alkylamine as surfactant, while glyphosate is identified as an example of the herbicide. The specification states that while polyoxyalkylene alkylamine has excellent surfactant properties they also may be eye irritants. An eye irritant reducing compound is included in the surfactant composition to alleviate this problem. Polyoxyalkylene alcohol sulfates are named as one of a number of eye irritant reducing compounds.
Sulfated polyoxyethylene nonylphenol appears to be the preferred eye irritant reducing compound. But the specification states that other eye irritant reducing compounds can also be used. Alcohol sulfates and polyoxyalkylene alcohol sulfates having from 8 to 18 carbon atoms and up to 12 moles of alkoxyalkylene group are described as particularly useful. The surfactant composition comprises a major amount of the polyoxyalkylene alkylamine and an effective amount of the eye irritant reducing compound.
Examples 1 and 2 contain ethoxylated tallow amine. In examples 3-13, the surfactant composition contains ethoxylated tallow amine and sulfated ethoxylated nonyphenol. In examples 14 and 15, the surfactant composition contains ethoxylated tallow amine and an alcohol sulphate. I note that the amounts of eye irritant reducing compound used in the examples appear to be outside the preferred ratio of herbicide to the surfactant of the invention defined by claim 2 of the opposed application. None of the examples include polyoxyalkylene alcohol sulfate. Claims 16 and 17 test the herbicidal efficacy of compositions containing sulfated ethoxylated nonyphenol as the eye irritant reducing compound. The specification concluded that the surfactant compositions including the eye irritant reducing compound maintain or increase herbicidal activity. No results are published for polyoxyalkylene alcohol sulfate.
This document only describes the use of polyoxyalkylene alcohol sulfate compositions in amounts effective as eye irritant reducing compounds in surfactant compositions. There is no disclosure in the citation that these compositions have been made or that they may be used as synergists for herbicides. The claims are novel over AU 81718/91.
Group 2 documents
Most of these documents disclose the use of surfactants of the type claimed together with the herbicide glufosinate. The claims of the opposed application are restricted to herbicides from the group consisting of leaf-acting selective herbicides and the leaf-acting non-selective herbicides glyphosate, paraquat and diquat. It was common ground that glufosinate is a leaf-acting non-selective herbicide. As I have previously noted, glufosinate is excluded from the claims. Those citations disclosing only glufosinate as the herbicide will not destroy the novelty of the claims.
Australian Patent 545 169 (75480/81) (Hoechst Aktiengesellschaft).
This document describes herbicidal agents containing glufosinate in combination with a surfactant. The description states that the activity of herbicides can be improved in many cases by the addition of surface-active agents. The description states that liquid formulations of glufosinate must be stable to cold, have as high a proportion as possible of active ingredient, and the proportion of surface-active agents should be as low as possible, but simultaneously increase the herbicidal action. The particularly preferred surfactants are alkali metal salts or ammonium salts of (C12-C16) alcohol polyglycol ether sulfates (Trade Name Genapol LRO). These are the same as the surfactants exemplified in the opposed application.
This document discloses surfactants of the claimed class, but only in combination with the herbicide glufosinate. As glufosinate is excluded from the claims of the opposed application, the claims are novel over AU 545 169.
US 4 400 196 and EP 48 436
These documents derive priority from the same document as AU 545 169. The parties agreed that US 4 400 196 and EP 48 436 disclosed the same information as AU 545 169. Therefore the claims are novel over these documents for the same reasons.
Proc. EWRS Symp. “Factors Affecting Herbicidal Activity and Selectivity”, 227-232, 1988.
This document relates to trials on the influence of air humidity and rainfall on the efficacy of glufosinate-ammonium. The addition of adjuvants was tested to determine whether the adjuvants increased the efficacy or improved the rainfastness of glufosinate-ammonium. Glufosinate-ammonium was used in all trials. The other chemicals used were ammonium sulfate and an anionic wetting agent (sodium salt of an acyl-polyglycolethersulfate). While glyphosate was mentioned in this paper, it was used only as a commercial standard. The document contains no suggestion that the surfactants investigated therein be used with glyphosate.
The claims are novel over this document.
Australian Patent Application 60925/90 (Hoechst Aktiengesellschaft)
This document has an earlier priority date than the opposed claims but was published after the priority date of the opposed claims. It was cited in respect of patentable novelty on the grounds of a “whole of contents” objection.
AU 60925/90 deals with the problem of incorporating surfactants into water dispersible granules. The problem is overcome by using solid wetting agents. The document discloses water dispersible granules which contain 10 to 90 % by weight of one or more plant protection agents; 10 to 90 % by weight of one or more solid wetting agents; and 0 to 50 % by weight of customary formulation agents. The document states that there is a series of active substances which require the addition of wetting agents to achieve their optimum biological action. It goes on to say that examples of active substances in which larger amounts of wetting agents in the formulations may be advantageous to increase their biological activity include the group of herbicides and growth regulators. The named herbicides include glufosinate-ammonium and D,L- and D-fenoxaprop ethyl and diclofop-methyl. The list of suitable wetting agents includes sodium alkyldiglycol ether sulfate (for example Genapol LRO).
Examples 2, 2b, 3 and 9 specifically exemplify compositions in which D,L- and D-fenoxaprop-ethyl and Genapol LRO are present (amongst other additives). Several examples also exemplify compositions in which glufosinate-ammonium and Genapol LRO are present. The examples relating to glufosinate are not relevant to the novelty of the claims, for reasons I have already discussed.
There are also a number of “biological” examples showing the efficacy of compositions according to the disclosure. The “biological” examples all refer to glufosinate compositions and do not include any of the herbicides claimed in the opposed application.
There is overlap between this specification and the invention to the extent that this disclosure includes among its listed active agents, D,L- and D-fenoxaprop -ethyl, and among its listed surfactants, Genapol LRO. Claims 6 to 9 of the opposed application, which deal with herbicidal compositions, specifically disclaim granulates containing fenoxaprop-ethyl.
Dr Emmerson argued that the applicant doesn’t get out of it by amending the claims to carve out particular bits of the prior art. But, as I have said previously, the herbicides claimed are an essential feature of the claims.
I conclude that the claims are novel over AU 60925/90.
Other documents
A number of other documents were also filed in evidence. Dr Emmerson stated that these prior art documents were put forward simply to support the proposition that the use of herbicides with synergistic/potentiating agents such as surfactants is well known. None of these documents go to the novelty of the claims.
Manner of Manufacture
The opponent contended that the invention was not a manner of manufacture. They argued that the use of surfactants as synergists simply amounts to the verification of an immediately predictable property of a known group of surfactants. The opponent submitted that the use resulted in no more than an expected herbicidal synergism in the application of a known class of surfactants to a known group of herbicides. At the hearing Dr Emmerson relied on the group 2 documents discussed above to show that it was known that the claimed herbicide had been used as synergistic or potentiating agents with herbicides. He stated that there was no basis for saying that there was something special or different about the range of herbicides claimed. Dr Emmerson submitted that the claims were for the mere use of a known substance for a known purpose.
It is clear from the body of related art filed by the opponent that it is well known that surfactants may have a synergistic effect on herbicides. However the effectiveness of surfactant combinations can be quite variable and difficult to predict (eg see Wyrill and Burnside, discussed above). In some cases certain surfactants may even have an antagonistic effect on some herbicides, as shown in Table 11 of the opposed application. In addition, I have already said that the opponent has not established that it would be logical to transfer the results obtained from glufosinate directly to the claimed herbicides.
In view of these observations, I do not believe that the improved results achieved by the use of the claimed surfactants on the claimed group of herbicides was immediately predictable. Rather, it appears to have been the result of inventive research. In my view, the claims define a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
Inventive Step
The opponent’s case in regard to obviousness was not altogether clear, but appeared at least in part to be based on similar arguments to those raised under manner of manufacture. To that end, my findings in relation to manner of manufacture apply equally here.
I note that Fellowes for the opponent declares “that it would have been well worth my trying before ... the priority date ... to use the same class of surfactants as defined in the Hoechst application a synergistic/potentiating agents for the same class of herbicides as defined in the Hoechst application, as this would quite possibly have a profitable result”. He also declares that “the activity of the C12 - C14 - fatty alcohol diglycol ether sulfates group of surfactants with the non-selective foliar herbicide glufosinate was reported to an industry conference in 1988 (Proc. EWRS Symp. “Factors Affecting Herbicidal Activity and Selectivity”, 227-232, 1988). Since glufosinate was recognised as a post-emergence foliar non-selective herbicide, I consider that it plainly was obvious at least to test this group of surfactants with glyphosate and the other non-selective herbicides diquat and paraquat, if not with all other foliar herbicides.”
At the hearing Mr Hess provided me with a useful summary of the law relating to obviousness. In particular, he stated that the opponent had provided no evidence that the relative uninventive but skilled man ever had “a particular problem or need in mind”. He submitted that in this circumstance, Beecham Group Ltd.’s (Amoxycillin) Application [1980] RPC 261 was relevant, particularly the following passage from the judgement of Buckley L.J. at 290-1:
“It is clearly established that, for a particular step or process to be obvious for the purpose of either section, it is not necessary to establish that its success is clearly predictable (Johns-Manville Corporation’s Patent [1967] RPC 479 at 494 line 10). 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 ... Worthwhile to what end? It must, in my opinion, be shown to be worth trying in order to solve some recognised problem or meet some recognised need. The uninventive expert (see [1972] RPC page 355 line 5) should not be supposed to be attempting to discover something new, that is, to be striving for inventiveness. Having been shown what was disclosed by the prior art, he must be supposed to be attempting to solve some problem or fulfil some need which has not been resolved or satisfied by the prior art but which appears to his uninventive mind to be possibly capable of solution or satisfaction by taking the step or doing the thing under consideration. This, it seems to me, must involve the uninventive but skilled man having a particular problem or need in mind. If on carrying out his test he finds that the new step has the sort of consequence he had hoped for but in an unexpectedly high degree, this would or might not mean that a new step was inventive or other than obvious; it might merely mean that a new and obvious step has solved the problem or met the need unexpectedly well. The question would, I think, be one of degree. If, on the other hand, the new step produces some unexpected result productive of an improvement or benefit of an unexpected kind it may well be held to be inventive, the association of the new step with its result not having been obvious. Where, however, the skilled man has no particular problem or need in mind but merely regards some part of the art as giving a good lead for further research, which may result in the discovery of some useful further knowledge, can the result of that research and its ascertainment by carrying out the research be obvious in the relevant sense? I think not, although this also may be a question of degree. By selecting the research, the researcher is, in my view, demonstrating that he is not wholly devoid of inventive capacity. He is not merely employing an obvious technique to get round an awkward corner; he is seeking to extend the field of human knowledge. The distinction is between a mere exercise of ingenuity and a voyage of discovery.”
Mr Hess submitted that as the opponent had provided no evidence that of a particular problem, the latter part of this passage was entirely appropriate in the present case. However, I think that a problem can be inferred from the specification as a whole, the problem being to develop herbicide formulations having improved effectiveness. The opposed application states that herbicidal activity can depend to a decisive extent on whether the active substances can penetrate the plants rapidly and as completely as possible through the leaf tissue. In this context, surface-active substances play an important role. The applicant has provided a solution to the problem by finding that the effectiveness of certain herbicides can be increased to “a surprisingly great extent” when the herbicides are applied together with certain surfactants.
The paper referred to by Fellowes (Proc. EWRS Symp. “Factors Affecting Herbicidal Activity and Selectivity”, 227-232, 1988) relates specifically to glufosinate. There is no suggestion in that paper to use the surfactants with other herbicides. As I have stated previously, Fellowes indicated in his declaration filed as evidence in reply that the study reported in the paper shows very useful results with glufosinate. But Fellowes also states the surfactants are not seen to be unusual or extraordinary, but no more than equivalent to another common adjuvant (ammonium sulfate). In my opinion, the study reported in this paper does not provide any inducement to the uninventive but skilled person to try the surfactants used therein with any herbicides other than glufosinate.
I note that in his declaration filed as evidence in support, Fellowes states at clause 8 that “more than 8,000 English text technical articles, alone, have since been published worldwide on various aspects of glyphosate” and “that interest in glyphosate continues perhaps as much now as a decade ago”. At clause 32, “Weed research literature is replete with examples of the testing of post-emergence, foliar-applied herbicides, with various surfactants, in attempts to gain improved performance, usually in terms of cost-performance or absolute performance”.
It is clear that there is still great interest in developing new and improved herbicide formulations. There is a great number of possible combinations of surfactants and herbicides. That is not to say that all combinations will be inventive. But in the present case, as I stated regarding manner of manufacture, I do not believe that the improved results were immediately predictable. Rather, it appears to have been the result of inventive research. In my opinion, the opponent has not established that the invention defined by the claims lacks an inventive step.
Section 40
The opponent alleged that the specification does not fully describe the alleged invention; the claims do not clearly define the alleged invention; and the claims are not ‘fairly based’.
The opponent alleged that the claims are not fairly based because of 87 herbicides claimed, results are presented for only 16 herbicides. I have discussed this in detail earlier in this decision, where I found that there was a basis in the description for the groups of herbicides claimed.
Similarly, the opponent objected that there was no basis for the entire class of surfactant claimed. I again refer to earlier in this decision where I found that it was reasonable to extrapolate the results of the examples to the claimed class of surfactant.
In view of my earlier findings on these matters, I conclude that the claims are fairly based on the description.
The opponent also alleged that the claims were not clear. This appears to be in relation to the exclusion of glufosinate from the claims. Claim 4 is set out as follows:
4. The use as claimed in one or more of claims 1 to 3, which comprises using selective herbicides from the group consisting of the grass herbicides, urea derivatives, sulfonylurea herbicides, diphenyl ether derivatives and dicotyledon herbicides excluding glufosinate.
Claim 9 is set out in similar terms, apart from being dependent on claim 6.
The exclusion of glufosinate incorrectly places glufosinate with the defined groups of selective herbicides. In fact, the herbicide glufosinate is non-selective. However I note that none of the declarants had difficulty recognising that glufosinate is a non-selective herbicide. I also note that claim 1 defines “herbicides from the group consisting of leaf-acting selective herbicides and the leaf-acting non-selective herbicides glyphosate, paraquat and diquat.” (My emphasis). Therefore glufosinate is already excluded from claim 1 (and similarly claim 6).
While the exclusion of glufosinate is incorrectly placed in claims 4 and 9, this was readily corrected by all of the declarants. I do not think this invalidates the claim through lack of clarity.
In relation to the specification not fully describing and claiming the invention, this seems to be based on the opponent’s argument that the examples do not support the applicant’s claim to improved performance from the surfactants of the invention. I have also discussed this in some detail earlier. I am satisfied that the specification is sufficiently describes and claims the invention.
The specification satisfies the requirements of section 40.
Conclusion
Claims 1, 2 and 10 and 11 lack novelty in light of European Patent Application 255 760 (Kao Corporation).
The claims define a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
The opponent has not established that the invention was obvious in light of what was known before the priority date of the claims.
The specification complies with section 40 of the Patents Act 1990.
I allow the applicant 60 days from the date of this decision to file amendments addressing my objections.
Costs
Costs normally follow the event. I see no reason to vary this practice in the present case. In this case, Monsanto Company has been successful in that I have found claims 1 to 3 and 10 to 14 lack novelty over the prior art. I award costs against the applicant, Hoechst Aktiengesellschaft.
Brendan Bourke
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark Patent & Trademark Attorneys, Melbourne
Patent attorneys for the opponent : E F Wellington & Co, Melbourne
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