ICI Australia Operations Pty Ltd v Monsanto Company

[1997] APO 71

official notice

decision of a delegate of the commissioner of patents

Application  :          No.606719 by ICI Australia Operations Pty Ltd.

Title:          Water Dispersible Granules.

Action: Opposition under section 59 of the Patents Act 1952 by Monsanto Company.

Decision:          Issued            .

Abstract

Claim 1 would not be void if the word "comprising" was interpreted as permitting the claim to include certain features not defined in the claim.  Therefore this word did not limit the features to those defined in the claim.  The terms "fungicide" and "insecticide" interpreted to include pharmaceutical chemicals.  The invention is not fully described and claim 1 is not clear because of the confusing description of the term "rolling"; claims 1 to 12 do not define the invention because one of the inventors stated there were particular requirements for this stage of the process which were not defined in the claims.  The process defined in the claims is novel but was obvious in respect of the production of water dispersible granules of pharmaceutical chemicals.  The effect proposed amendments would have on the findings discussed.  Costs awarded against ICI; ICI given an opportunity to propose further amendments.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application no.606719 by ICI Australia Operations Pty Ltd and an opposition under section 59 of the Patents Act 1952 by Monsanto Company.

background.

Application no.PCT/AU88/00201 by ICI Australia Operations Pty Ltd (ICI) was filed on 23 June 1988 and is based on a NZ application filed on 1 July 1987.  The application was given number 19605/88 on entering the national phase and was advertised accepted on 14 February 1991 under the number 606719.

Monsanto Company (Monsanto) filed a notice of opposition within the time allowed.  Dowelanco was granted an extension of time under subsection 223(2) to file such a notice (ICI Australia Operations Pty Ltd v Dowelanco (1992) AIPC 90-884).

The provisions of the 1952 Act apply to these oppositions as acceptance of application no.606719 was advertised under this Act (regulation 23.3).

The evidence stages in the Monsanto opposition were completed by 18 August 1993 and those in Dowelanco opposition were completed by 8 August 1995.

On 2 December 1992 ICI filed a request for leave to amend.  ICI has not finalised this request as the last action on it was an examiner issuing a second adverse report.

On 8 December 1994 ICI filed a request for leave to amend and this request was advertised for opposition purposes in the Official Journal dated 25 May 1995.  Both Monsanto and Dowelanco opposed this request for leave to amend.  ICI withdrew this request for leave to amend and the Commissioner dismissed both oppositions to this request.

ICI filed another request for leave to amend on 5 September 1996.  ICI has not finalised this request as it has not responded to the examiner’s first adverse report.

On 8 December 1994 ICI filed an application for special leave to adduce further evidence.  Monsanto objected to this application but its objection was based on the relationship between this application and the request for leave to amend which was filed on the same date.  Therefore Monsanto withdrew its objection when ICI withdrew this request for leave to amend.  ICI was granted special leave to adduce further evidence on 4 October 1996.

Monsanto did not serve evidence in response within the one month period specified in regulation 60 of the 1952 Act.  But ICI agreed to it serving further evidence under paragraph 59(1) of this Act.  Monsanto served this evidence on ICI on 6 February 1997.

On 26 May 1997 Dowelanco withdrew its opposition to the grant of a patent on application no.606719.

I heard the matter in Melbourne on 3 and 4 July 1997.  ICI was represented by Mr D Catterns QC assisted by Mr M Houlihan, patent attorney, of Callinan Lawrie.  Mr D Gibson, patent attorney, of ICI and Mr P Anderson, Technology Manager of Crop Care Australasia Pty Ltd were also present.  Monsanto was represented by Dr J Emmerson QC, assisted by Mr B Caine of Counsel and Mr B Wellington, patent attorney, of E F Wellington & Co.

SUBMISSIONS.

I will refer to the submissions made by Mr Catterns and Dr Emmerson at appropriate places in the decision.

NOTICE OF OPPOSITION.

The notice of opposition relies on the grounds in paragraphs (d) to (j) of subsection 59(1).  Dr Emmerson said Monsanto would rely on these grounds except that in paragraph (d) (ie prior claiming).

EVIDENCE.

The evidence-in-support consists of declarations made by:

William James Thiel dated 11 December 1991 with an appendix and exhibits WJT 1 to WJT 11 (first Thiel declaration),
Tatsuo Sato dated 14 August 1991 with an appendix and exhibits TS-1 to TS-18 (first Sato declaration),
Desmond Berry Williams dated 15 January 1992 with an appendix and exhibits BBW 1 to DBW 11 (first Williams declaration), and
Bruce Stephen Wellington dated 16 January 1992 with exhibits BSW 1 to BSW 7.

The evidence-in-answer consists of declarations made by:

John Malcolm Lloyd dated 16 April 1993 (first Lloyd declaration),
Keith Geoffrey Watson dated 19 April 1993 and
Roger Palmerston Heath dated 21 April 1993.

The evidence-in-reply consists of declarations made by:

William James Thiel dated 14 July 1993 with exhibits WJT 12 to WJT 20 (second Thiel declaration),
Desmond Berry Williams dated 15 July 1993 (second Williams declaration), and
Tatsuo Sato dated 2 August 1993 (second Sato declaration).

ICI’s further evidence consists of declarations made by:

John Malcolm Lloyd dated 7 December 1994 with exhibits JLM-1 to JLM-6 (second Lloyd declaration),
John Sydney Hall dated 7 December 1994 with exhibits JSH-1 to JSH-4,
Gottfried Lichti dated 7 December 1994 with exhibits GL1 and GL2, and
Ian Colin Logan dated 6 December 1994 with exhibits ICL-1 and ICL-2.

Monsanto’s further evidence consists of declarations made by:

William James Thiel dated 30 January 1997 with exhibit WJT 21 (third Thiel declaration),
Richard Kramer dated 31 January 1997, and
Michael Story dated 3 February 1997 with an appendix.

Mr Catterns referred to declarations made by Dr Story on behalf of Dowelanco and served as part of its opposition.  He pointed out Dr Story refers to these declarations in his Monsanto evidence.  Mr Catterns said Dr Story’s evidence on behalf of Monsanto modifies what he declared on behalf of Dowelanco.  Therefore he argued it would be fair to allow ICI to refer to Dr Story’s declarations in the Monsanto opposition.

Dr Emmerson objected that it was not reasonable to allow ICI to selectively rely on declarations served as part of the Dowelanco opposition.  In his view I have to consider either all or none of the evidence in that opposition.  Mr Catterns responded by saying his client had to face the possibility of the Commissioner considering the Dowelanco evidence in a bar to sealing action.  He said all he was doing was directing my attention to what his client considered the most relevant parts of this evidence.  Mr Catterns said he would not object to Dr Emmerson doing the same on behalf of his client.

Mr Catterns conceded, and I agree with him, that Dr Story does not incorporate his Dowelanco evidence in his Monsanto evidence by the way he refers to it.  I think the effect of allowing Monsanto to comment on the Dowelanco evidence will be to give it a role in what amounts to bar to sealing considerations.  I consider any bar to sealing considerations based on the Dowelanco evidence is a matter between ICI and the Commissioner.  Therefore I will not refer to the Dowelanco evidence in this decision.

I will refer to the relevant evidence at appropriate places in the decision.

THE SPECIFICATION.

The specification states the invention relates to formulations of agricultural chemicals, minerals and other substances.  It is more particularly concerned with preparing water dispersible granules containing such substances.  Agricultural chemicals are formulated in a number of ways such as large granules, emulsifiable concentrates, liquid flowable concentrates and wettable powders.

Wettable powders are generally very bulky and become air borne readily.  This can be hazardous to the user in the case of irritant or toxic materials.  A relatively new concept is water dispersible granules also known as dry flowables.  These are granular formulations of agricultural chemicals that (when properly formulated) disperse readily in water and remain in suspension, ie perform as well as liquid flowables and wettable powders when prepared for spray application to soil or plants.

The invention is described in the same terms as claim 1 which reads as follows:

“A process of preparing water dispersible granules comprising mixing the desired ingredients including at least one active agent selected from the group consisting of herbicides, fungicides and insecticides and surfactant in the presence of water to form an extrudable wet mix and then rolling the wet extrusions to break down said extrusions to form granules.”

The remaining claims are all appended to claim 1.

The specification describes preferred active agents and surfactants.  The active chemical component comprises from 1 to 99% by weight of the dry composition.  A variety of fillers may be used in water dispersible compositions and the filler may comprise from 1 to 99% of the total granule composition.  Compositions which consist essentially of the filler may be of particular use in the paint industry for distributing the filler in aqueous suspension.

The rate of dispersion of water dispersible granule products is improved by wet mixing the ingredients.  Preferably the mixing step is carried out to form an extrudable wet mix which has dough-like consistency analogous to stiff dough produced in bread making.

The order of addition and mixing of the ingredients is not critical and the materials used may be in finely divided form.  After thorough mixing or otherwise putting the mix into a form suitable for extrusion the extrusion takes place through a suitable orifices.  The size of the granules will depend on the size of the orifice but the extrusions can vary considerably in length.

After extruding the wet mix the wet extrusions are broken down by rolling preferably in a tumbling action.  The specification then defines what rolling means.  The rolling motion causes the extrusions to break into discrete sections of a length generally not exceeding three times their diameter.  Preferably at least 95% by weight of the composition will comprise granules of size such that they pass through a 1700 micron sieve but are retained on a 300 micron sieve.

The specification considers it is evident that one significant advantage of the invention is the extrusions are not reduced to granules (eg by cutting) as they exit the extruder.  This means the rate of extrusion is not limited by the rate at which the extrusions can be broken down into granules and high extrusion rates can be used.  This results in the present process being more cost effective than prior art extrusion processes.

The rolled granules are preferably dried by allowing them to stand or forced drying.  The process of the invention reduces the amount of oversized and undersized material which must be recycled.  Any fine particles and fragments which may be produced on extrusion are generally incorporated into the granules during tumbling.  Consequently the granule composition is essentially dust free.

The specification describes several examples of the preferred process.

INTERPRETATION OF THE SPECIFICATION.

I consider it is convenient to give my interpretation of the specification before considering the grounds of opposition.

Claim 1 uses the word “comprising”.  Therefore I asked both Mr Catterns and Dr Emmerson if the present context meant I should construe claim 1 as including the features defined in the claim but not limited to those features (Asahi Kasei Kogyo Kabushiki Kaisha v WR Grace & Co 22 IPR 491 at page 515). They both agreed the claim should be construed as if it was not necessarily limited to the features defined in the claim.

The full Federal Court did not overturn the above judgement of Heerey, J on appeal (WR Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha 25 IPR 481).  More recently Lindgren, J considered the word “comprising” did necessarily limit a claim to the features defined in the claim (General Clutch Corporation v Sbriggs Pty Ltd (1997) AIPC 91-333 at page 39,470). Part of the judge’s reasoning in this case is the features of a claim together with other unidentified features would render the claim void under section 40. For example the claim would not define the invention, would not be clear nor would it be fairly based on the matter described.

Claim 3 defines a process according to claim 1 where the ingredients include a filler although this feature is not defined in claim 1.  The specification describes a drying step as an optional feature of the process although this feature is not defined in claim 1.  Claim 12 claims a process according to claim 1 with reference to the examples which describe the use of fillers and drying step although these features are not defined in claim 1.

It seems to me claim 1 will not be void if I interpret the word “comprising” as permitting the possibility of the claim including the use of fillers and a drying step.  In my view this distinguishes the interpretation of the word “comprising” in the present claim 1 from that used by Lindgren, J above.  Therefore I will construe claim 1 as if its scope may include the use of fillers and a drying step.

I asked both Mr Catterns and Dr Emmerson if I should construe the terms “fungicide” and “insecticide” in claim 1 as limited to agricultural chemicals.  Mr Catterns said his client would limit the scope of these terms to agricultural chemicals if I considered it was necessary.

The specification on page 1, lines 2/3 refers to “agricultural chemicals, minerals and other substances”.  Later at page 3 lines 24/5 it states the process may be performed using a “wide range of active ingredients”.  The specification also refers to pigments (page 3, line 29 and page 5 lines 15 to 31), dyestuffs (page 3, line 29 and page 5, lines 32/3), trace elements (page 3, line 29) and compositions for use in the paint industry (page 7, lines 19 to 21).  The terms “fungicides” and “insecticides” are not defined in the specification but the examples seem to be limited to agricultural chemicals.

I can see no reason to limit the terms "fungicides” and “insecticides” in claim 1 to agricultural chemicals as to do so would be to limit the words of the claim by a gloss drawn from the description (Decor Corporation Pty Lt v Dart Industries Inc. 13 IPR 385 at page 400). Therefore I will interpret the terms "fungicides” and “insecticides” in claim 1 as including pharmaceutical chemicals. I note this means there is a conflict between the scope of the terms in the description and claim 1.

The Heath declaration contains a definition of the term “water dispersible granule”.  This definition reads as follows:

“a water dispersible granule is a particle, of typically 400-1200mm size, formed from primary particles typically 0.1-40mm which when placed in water will wet and subsequently disperse to form a reasonably stable suspension which can be spray applied through conventional spray equipment nozzles.”.

Mr Lloyd, who is named as one of the inventors in the present application gives a similar definition in his first declaration.  Monsanto’s only criticism of this definition is that the reference to spray equipment means the definition is restricted to dispersible granules of agricultural chemicals (second declarations of Drs Thiel and Williams).

It seems to me the term "water dispersible granules" is well enough known and is used to refer to granules from several chemical technologies such as agricultural chemicals and pharmaceutical chemicals.  Therefore I will interpret the term “water dispersible granule” according to the above definition but ignoring its reference to the granules being “spray applied through conventional spray equipment nozzles”.

The description at page 2, lines 13 to 15 suggests the water dispersible granules of the present invention may include readily soluble chemicals.  The above definition refers to the primary particles dispersing to form a stable suspension.  In my view the primary particles would partially dissolve as well as disperse if they contain a readily water soluble chemical.  Therefore this statement in the description conflicts with this definition.  I will not interpret the water dispersible granules claimed in the claims as including readily soluble chemicals.

Claim 1 in line 1 refers to “water dispersible granules” and in line 8 refers to “granules” without necessarily referring back to the word in line 1.  For example by using one of the phrases “the granules” or “said granules”.  Both Mr Catterns and Dr Emmerson suggested I should interpret “granules” in line 8 as referring to water dispersible granules.

The process claimed in claim 1 would require more steps to produce water dispersible granules if the word “granules” in line 8 does not refer to water dispersible granules.  This is not a purposive interpretation of claim 1 in the context of the whole specification (Decor Corporation Pty Lt v Dart Industries Inc. supra).  Therefore I agree with Mr Catterns and Dr Emmerson’s suggestion of that I should interpret the word “granules” in line 8 of claim 1 as referring to water dispersible granules.

The description at page 9 ,lines 4 to 7 states as follows:

“In this specification the term rolling is used to mean causing the extrusions to roll or tumble against each other or a fixed or moving surface.  The rolling motion causes the extrusions to break down into discrete sections of a length generally not exceeding three times their diameter.  The rolling process also rounds off the granules to some extent”.

The specification describes several kinds of apparatus in which rolling may take place.  For example on a laboratory scale by shaking or on a commercial scale in a rotating bowl apparatus.  It seems to me this definition of "rolling" in the description is of very wide scope and is not restricted to a particular kind of apparatus.  For example rough handling of a container of the wet extrusions may cause them to tumble against each other and a fixed surface and this would satisfy the definition.

The process of claim 1 requires the act of rolling to break down the extrusions to form granules.  Following the above interpretations of "water dispersible granules" and "granule" I consider the rolling in the claimed process has to produce water dispersible granules.  Therefore claim 1 is a claim by result (No-fume Ltd v Frank Pitchford and Co. 52 RPC 231) with the result being granules with particles, of typically 400-1200mm size, formed from primary particles typically 0.1-40mm.

Claim 5 reads as follows:

“A process according to any one of claims 1 to 4 wherein the water is present in the wet mix in sufficient quantity to mobilise the surfactant component and enable granule formation by extrusion but insufficient to cause the granules to agglomerate once formed.”

Claim 5 is appended to claim 1 so the scope of claim 1 includes processes in which there is too little water to mobilise the surfactant so granules are not formed by extrusion and rolling.  Or processes in which too much water is used so the granules once formed agglomerate into larger aggregates.  In either case the scope of claim 1 would include processes which do not result in granules.

I consider the features defined in claim 5 are essential features of the invention for the process to produce granules.  Claim 1 claims the process produces granules which in my opinion means the features defined in claim 5 are implied features of claim 1.  I will construe claim 1 to mean the water is present in the wet mix in sufficient quantity to mobilise the surfactant component and enable granule formation by extrusion but insufficient to cause the granules to agglomerate once formed.

SECTION 40.

Dr Emmerson argued the claims were not clear because the term "rolling" is not clearly defined in the specification.  He said the definition in the description referred to both rolling and tumbling.  Mr Catterns argued the word "tumbling" was well known in the art.

The description at page 9, lines 4 to 11 states as follows:

“After extruding the wet mix the wet extrusions are broken down by rolling preferably in a tumbling action.  In this specification the term rolling is used to mean causing the extrusions to roll or tumble against each other or a fixed or moving surface.  The rolling motion causes the extrusions to break down into discrete sections....”

It seems from this description that the act of rolling may give the extrusions a tumbling action as well as other actions.  Also according to this description when the extrusions roll they do not tumble but the rolling motion causes the extrusions to roll or tumble.  In my view this description is confusing as it suggests the scope of the term “rolling” includes “tumbling” but the scope of the term “roll” does not include “tumble”.  It seems to me this part of the description is describing an essential feature of the invention.  Therefore I consider this description does not fully describe the invention.

Claim 1 uses the term “rolling” which is not clearly defined or described in the description and I therefore consider the claim is not clear.

In my interpretation of the specification I found the definition of the term "rolling" in the description was of very wide scope but the term was used in claim 1 as part of a claim by result.  The definition in the description refers to the rolling motion causing the extrusions to break down into discrete sections of a length generally not exceeding three times their diameter.  In my view this is not necessarily the same as causing the extrusion to break down to water dispersible granules.  Therefore I consider the description at page 9 conflicts with claim 1.

Mr Lloyd, who is named as one of the inventors in the present application, states in his first declaration that from his knowledge and experience the granules prepared by the marumerizer spheroniser would have properties unsuitable for use as water dispersible granules.  Mr Heath makes a similar statement in his declaration.  Mr Lloyd argues the dispersibility of granules produced in this way is generally very poor.  Mr Catterns concedes the use of the marumerizer lies within the scope of the present claims.

Mr Lloyd in his second declaration declares as follows:

"The rolling stage of our invention is required to take place by placing the extrudate into a vessel which is rotated about a horizontal axis or an axis which is inclined to the horizontal such that the 'tumbling action' will take place."

He also gives a definition of the term "tumbling" which involves the use of a rotating vessel.  Dr Kramer argues the rolling step in the present specification is not necessarily performed in a rotating vessel.  I agree as the description at page 9 of the present specification states the "rolling process may be carried out in numerous ways using a wide range of apparatus".

I conclude from the above statement of Mr Lloyd that the present description does not fully describe the invention.  Claims 1 to 7 and claims 10 and 11 in so far as they are appended to claims 1 to 7 do not require the rolling step to be carried out in a vessel which is rotated about a horizontal axis or an axis which is inclined to the horizontal such that the "tumbling action" will take place.  Therefore I consider these claims do not define the invention.

Claim 8 claims a process wherein the rolling takes place in a rotating bowl type apparatus.  Claim 12 claims a process substantially as described in the examples which all use such an apparatus.  Mr Lloyd in his second declaration argues the skilled addressee would use a bowl that rotated about a horizontal axis.  The axis would be inclined to the horizontal if spillage from such a vessel was a concern.  Dr Lichti makes similar statements in his declaration.

In both these declarations the argument that the rotation is about a horizontal axis or an axis inclined to the horizontal is based on the need for the extrusions to undergo a tumbling action.  Claims 8 and 12 are appended to claim 1 in which the extrusions undergo According to claim 8 and the examples claimed via claim 12 the extrusions undergo rolling and this does not necessarily cause a tumbling action.

Therefore I consider the processes defined in these claims do not require the rotating bowl type apparatus to be rotated about a horizontal axis or an axis which is inclined to the horizontal.  Consequently I conclude that claims 1 to 12 do not define the invention

In my interpretation of the specification I concluded the features defined in claim 5 are essential features of the invention.  I also concluded the features defined in claim 5 are implied features of claim 1.  I consider claim 1 should explicitly define the essential features of the invention by referring to the quantity of water required for the process to produce water dispersible granules.

The description at page 8, lines 3 to 8 describes the features defined in claim 5 as optional features of the invention but I have found them to be essential features.  Therefore I consider this part of the description does not fully describe the invention.

Dr Thiel points out in his third declaration that a feature of claim 8 is the use of a rotating bowl type apparatus.  Claim 11 which is appended to claim 8 defines the rotating speed of "the drum".  He argues this is illogical because a rotating bowl and a drum have different geometric shapes and concludes it is not clear what apparatus is used in the processes defined in claims 1 to 12.

I consider a purposive construction (Catnic Components Ltd v Hill & Smith Ltd 1982 RPC 183) of claims 8 and 11 is that part of a rotating type bowl apparatus which rotates may be described as a drum. Therefore I consider claim 11 can be appended to claim 8 even though the apparatus defined in each claim may have a different geometric shape.

The specification at page 9, lines 12 to 16 describes examples of known apparatus in which the rolling step may take place.  Therefore I consider the skilled reader of the specification would be able to choose suitable apparatus in which to perform the rolling step in the claims.  Consequently I do not consider the claims lack clarity because the fail to specify the apparatus used in the rolling step.

The description at page 2, lines 13 to 15 suggests the water dispersible granules may include readily soluble chemicals.  Earlier in this decision I pointed out this conflicts with the well known definition of water dispersible granules.  I consider this means either the description does not fully describe the invention.  Or the claims lack clarity as the scope of the term water dispersible granules includes particles which are outside the well known definition of this term.

NOVELTY.

The test for anticipation is the reverse infringement test.  The classic formulation of this test reads as follows (Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 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"

This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at page 549). I will only consider in detail the most relevant of the documents served by Monsanto to see if they satisfy this test. I am satisfied all of these documents were published before the priority date of the present claims.

US patent no.3777331 discloses a process for the manufacture of enzymatic compositions as spherical beads for use in detergent compositions.  The beads may contain various adjuvants, including fungicides, to give the product its desired end use or processing characteristics.  Generally the beads are used as pre-soak enzyme preparations or as additives for laundry detergents.  The particle sizes are such that the average diameter of the beads falls within the range 250-2500mm.  Such sizes and size distribution give quick solubilities.

This US patent does not state that the bead is a water dispersible granule.  Therefore I consider US patent no.3777331 does not provide clear and unmistakable directions to produce water dispersible granules containing a fungicide (General Tyre & Rubber Co. v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at page 486). In my view the production of water dispersible granules is an essential feature of the present claim 1. Therefore I am satisfied the processes defined in the present claims are novel in the light of the disclosures in US patent no.3777331.

I have come to a similar conclusion about the processes defined in the claims and the disclosures in UK patent no.810290 and FR patent no.1356105.

JW Conine and HR Hadley published an article in “Drug & Cosmetic Industry” in 1970.  This article describes commercially available apparatus which is widely used in Japan by the pharmaceutical, agricultural and chemical industries.  This apparatus extrudes wetted material into slightly curved cylindrical segments which are then fed into a “Marumerizer”.  The “Marumerizer” imparts a rolling motion to the segments through the action of a horizontal plate which spins inside a stationary cylinder.  The cylindrical segments are first broken into short lengths and then shaped into spherical particles.

I note the Conine and Hadley article does not mention the apparatus may be used to make water dispersible granules.  Therefore I am satisfied the processes defined in the claim are novel in light of the disclosures in the Conine and Hadley article

I have come to a similar conclusion about the processes defined in the claims and the disclosures in an the article by AD Reynolds published in “Manufacturing Chemist and Aerosol News”.

UK patent no.1433882 discloses a process for producing water dispersible grains which involves extruding a wet mixture of a pesticide to form coherent granules , drying the granules and recovering the granules having a particle size range of 500-5000mm.  The drying can be carried out using any type of drying apparatus including a fluid bed dryer.

The third Thiel declaration states:

“...I conclude that a fluid bed system or dryer would not be a suitable method to ‘roll' the extrudate and is not intended to be covered by the claims of the specification of Acceptance 606719.  Also the specification states that the “rolled granules are preferably dried and can be dried in a fluidised bed dryer”.  From this I would interpret that rolling and drying stages are separate.”

In my view rolling the wet extrusions to break them down to granules is an essential feature of the present claim 1.  I consider UK patent no.1433882 does not provide clear and unmistakable directions to roll the wet extrusions to break them down to form granules.  Therefore I am satisfied the present claim are novel in the light of the disclosures in UK patent no.1433882.

I am satisfied the claims are novel in the light of the disclosures in all of the other documents served in this opposition.

OBVIOUSNESS.

The approach to obviousness under the Patents Act 1952 is set out in the Minnesota Mining case (Minnesota Mining and Manufacturing Co. and 3M Australia Pty Ltd v Beiersdorf (Aust.) Ltd 29 ALR 29). This approach is summed up by Aickin J in the Wellcome Foundation case (The Wellcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd ((1981) 148 CLR 262 at 270) as follows:

"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."

Workers in the field of the invention.

The second Lloyd declaration submits the appropriate addressee is a formulator of agricultural chemicals with a process engineering background.  If this person did not have this engineering background he would seek assistance from such an engineer.  The thrust of Monsanto’s submissions is the appropriate person would be skilled in the art of making granules as well as an appropriate chemical technology.

Earlier in this decision I found the scope of the terms “fungicides” and “insecticides” in claim 1 is not restricted to those used in agriculture  Therefore I do not agree with Mr Lloyd that the field of the invention is limited to a particular chemical technology.

I consider the field of the invention is the formulation of water dispersible granules of particular kinds of chemicals, for example agricultural or pharmaceutical chemicals.  It seems to me the skills needed for the field of this invention are likely to require the combined skills of a team of workers rather than the skills of a single worker (General Tyre & Rubber Co. v Firestone Tyre & Rubber Co Ltd, supra at page 482).

I consider there is no evidence Dr Sato, Dr Kramer and Mr Lloyd have worked in any relevant field in Australia.  Their declarations do not explain why they are in a position to know what is the common general knowledge in Australia.  Therefore I will only give weight to what these declarants say about the common general knowledge if it is confirmed by another declarant who has worked in a relevant field in Australia.

I consider all the other experts who have made declarations have worked in Australia in fields relevant to the invention.

Common General Knowledge.

The next issue is to determine what would have been common general knowledge in the field of the invention.  According to Aickin, J (Minnesota Mining and Manufacturing Co.
v Beiersdorf (Aust.) Ltd, supra, at page 57):

"The notion of common general knowledge itself involves the use of that
which is known or used by those in the relevant trade.  It forms the
background knowledge and experience which is available to all in the trade
in considering the making of new products, or the making of improvements
in old, and it must be treated as being used by an individual as a general
body of knowledge."

I am satisfied there is insufficient evidence to show any of the documents referred to by both Monsanto and ICI are part of the common general knowledge.  Therefore I cannot rely on any of these document in my consideration of whether the claimed invention is obvious (Minnesota Mining and Manufacturing Co. and 3M Australia Pty Ltd v Beiersdorf (Aust.) Ltd, supra at page 59).

Dr Williams’ first declaration states he has experience in the production of water dispersible granules containing pharmaceutical chemicals in Australia.  He says the extrusion/merumerization or extrusion/spheronisation processes for the production of pharmaceutical chemical formulations in granule form was well known to him before the priority date of the present claims.  Dr Thiel makes similar statements in his first declaration.  I note ICI did not argue these methods of making granules containing pharmaceutical chemicals were not well known at the priority date of the present claims.

I consider the involvement of Drs Williams, Thiel and Story in the development of granules of pharmaceutical chemicals means they are far too skilled to be described as non inventive skilled workers.  Therefore I will not take any account of their views on whether the present invention is obvious.  But I consider these declarants are able to comment on what is common general knowledge in the production of water dispersible granules of pharmaceutical chemicals (Clafton Pty Ltd v Forbes Engineering Holdings Pty Ltd 19 IPR 29 at page 40).

I conclude from the declarations of Drs Williams, Thiel and Story that the use of extrusion/merumerization or extrusion/spheronisation processes for the production of water dispersible granules of pharmaceutical chemicals was part of the common general knowledge in the field of the invention in Australia before the priority date of the present claims.  I also conclude  from Drs Williams' and Thiel's second declarations it was common general knowledge in Australia before the priority date of the present claims to incorporate surfactants into pharmaceutical formulations to improve the wettability and dispersion of the fine particles of the active drug.

Mr Heath has experience in the production of granules of agricultural chemicals in Australia.  In his declaration he says there are four general methods of manufacturing water dispersible granules.  These are agglomeration, pan granulation, extrusion and spray drying.  Mr Lloyd makes a similar statement in his first declaration.

Dr Lichti also has some experience in the production of granules of agricultural chemicals in Australia.  In his declaration he suggests there are several processes for producing water dispersible granules.  These are fluid bed agglomeration, drum agglomeration, pan agglomeration, spray drying processes and extrusion processes.

I consider the evidence suggests these processes were public knowledge and not common general knowledge for the production of water dispersible granules of agricultural chemicals in Australia  before the priority date of the present claims.  I also consider the evidence does not suggest extrusion/merumerization or extrusion/spheronisation processes were part of the common general knowledge in Australia before the priority date of the present claims for the production of granules of agricultural chemicals.

Drs Williams’ and Thiel's declarations do not state it was well known to them to use the extrusion/merumerization or extrusion/spheronisation processes for the production of water dispersible agricultural chemicals in granule form.  Their second declarations argue there is no special skill required to formulate water dispersible granules of agricultural chemicals over and above that required to formulate water dispersible granules of pharmaceutical chemicals.  In this case I would have expected them to comment on the four general methods of manufacturing water dispersible granules described in Mr Heath's declaration.  I note their declarations are silent in this regard.

Drs Williams’ and Thiel support their argument by referring to the activities of a Dr Benbow.  In at least one paper involving extrusion/spheronisation of pharmaceutical chemicals published in the mid 1980s Dr Benbow is thanked for his helpful discussions.  Dr Benbow's address is given as ICI Agricultural Division, Billingham.  In my view this evidence is not relevant to whether extrusion/spheronisation processes for the production of agricultural chemicals formulations in granule form was part of the common general knowledge in Australia.
Dr Story used extrusion/merumerization or extrusion/spheronisation processes for the production of water dispersible granules of pharmaceutical chemicals before the priority date of the present claims.  In his declaration he states:

"...a person experienced in the art of granule technology in the pharmaceutical industry, and having a general technological background, can reasonably be expected to have no difficulty in quickly adjusting to the art in the agrochemical industry..."

I note Dr Story does not say this was the case for the use of extrusion/spheronisation processes for the production of agricultural chemicals formulations in granule form before the priority date of the present claims.

Dr Thiel in his second declaration states as follows:

"...the published literature in general might be seen to show the pharmaceutical industry as having a clear technological lead in the mid-1980's, over the agrochemical industry, in the adaptation of pharmaceutical industry production methods to the agrochemical industry, with respect to the development of formulations and processing methods for the production of water-dispersible granules."

Dr Williams makes a similar statement in his second declaration.  This statement may mean the pharmaceutical industry was adapting its methods for the production of water dispersible granules of agricultural chemicals.  In this case I would have expected Drs Thiel and Williams to give published examples where this had happened but they do not do this.  This statement may mean the pharmaceutical industry had a technological lead in the processing and formulation of water dispersible granules.  The publications served by Monsanto suggest this may have been the case.

Dr Story states the use of equipment between industries depends on the training, experience and "know-how" ingenuity of persons employed in each industry.  In my view this does not suggest the equipment which is well known in Australia for the production of water dispersible granules of pharmaceutical chemicals is necessarily well known in Australia for the production of water dispersible granules of agricultural chemicals.

Therefore I cannot conclude from the evidence that extrusion/merumerization or extrusion/spheronisation processes for the production of granules of agricultural chemicals was part of the common general knowledge in Australia before the priority date of the present claims.

Therefore I consider Monsanto has not shown extrusion/merumerization or extrusion/spheronisation processes for the production of water dispersible granules of agricultural chemicals is part of the common general knowledge in Australia before the priority date of the present claims.

The problem to be solved.

The question of what is obvious in the light of the common general knowledge may be assessed using the following approach:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

(Wellcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd, supra,
at page 286).

The specification describes the problem as follows:

"This invention provides a method of producing water dispersible granules in which the granules are of a more uniform size than can be achieved by pan granulation.”

I consider the team of skilled workers in the field faced with the problem of producing water dispersible granules of a pharmaceutical fungicide or insecticide would need no more than common general knowledge to consider trying an extrusion/merumerization or extrusion/spheronisation process instead of pan granulation.

Mr Catterns conceded merumerization fell within the scope of rolling the wet extrusions to break down said extrusions to form granules as claimed in claim 1.  Therefore the question I have to consider is whether the worker in the field would as a matter of routine have included a surfactant in the composition.

In my view the team of skilled workers in the field would need no more than common general knowledge to consider including a surfactant in the composition because the granules have to be water dispersible.  The team would do this as a matter of routine because it was common general knowledge in Australia before the priority date the surfactant would improve the wettability and dispersion of the fine particles of the fungicide or insecticide.

I conclude the team of skilled workers in the field would require no more than common general knowledge at the priority date of the present claims to perform the process claimed in claim 1 in so far as it includes water dispersible granules of a pharmaceutical fungicide or insecticide.  Therefore I consider Monsanto has shown claim 1 is obvious in this regard.  It seems to me claims 2 to 7 and claim 10, in so far is it is appended to claims 1 to 7, add features which are within the common general knowledge of the skilled worker.  Consequently I consider Monsanto has shown these claims are obvious in so far as they include water dispersible granules of a pharmaceutical fungicide or insecticide.

Claim 8 refers to the use of a rotating bowl type and claim 12 claims the process described in the examples which also use this apparatus.  In my view Monsanto has not produced evidence which shows the skilled worker would require only common general knowledge to use this apparatus in combination with an extrusion step to produce water dispersible granules of a pharmaceutical chemical.  Therefore I consider Monsanto has not shown the processes defined in claims 8 and 12 are obvious in so far as they claim a process for the production of water dispersible granules of a pharmaceutical fungicide or insecticide.

Claim 11 refers to a rolling apparatus with "the drum rotating at a speed in the range of from 1 to 100 rpm".  The article by Conine and Hadley which I referred to earlier in this decision describes the product from the extruder as slightly curved cylindrical segment.  The article then states as follows:

“In order to form spheres, the cylindrical segments are fed into a ‘Marumerizer’....which imparts a rolling motion to the cylindrical segments through the action of a horizontal spinning plate...”

This means in a marumerizer the extrusions are subjected to rolling in what may be described as a rolling apparatus but the rolling does not take place in a drum.  I conclude the use of a marumerizer does not fall within the scope of claim 11.  In my view Monsanto has not produced evidence which shows the skilled worker would only require common general knowledge to use a rolling apparatus with a drum in combination with an extrusion step to produce water dispersible granules of a pharmaceutical chemical.

Therefore I consider Monsanto has not shown the process claimed in claim 11 is obvious in so far as it claims a process for the production of water dispersible granules of a pharmaceutical fungicide or insecticide.

I consider the team of skilled workers in the field faced with the problem of producing water dispersible granules of herbicides, fungicides and insecticides not including pharmaceutical fungicides and insecticides would consider the processes which are part of the common general knowledge and the public knowledge.  It seems to me the team would be able to choose from several processes, for example a fluid bed process, a spray drying process, an extrusion/merumerization or extrusion/spheronisation process to avoid the use of pan granulation.

In my view this means the team would not as a matter of routine have chosen a process involving extrusion/merumerization or extrusion/spheronisation process.  Therefore I consider Monsanto has not shown the processes claimed in claims 1 to 11 are obvious for the production of water dispersible granules of herbicides, fungicides and insecticides not including pharmaceutical fungicides and insecticides.

Manner of manufacture.

Dr Emmerson said all that the present claims do is apply a known process to known materials to obtain a known result and this is outside the scope of the Statute of Monopolies.  Mr Catterns said the present claims met the threshold test discussed in the Phillips v Mirabella case (NV Phillips Gloeilampenfabriken v Mirabella International Pty 32 IPR 449 at page 454) as on the face of the specification the applicant alleged the process did not produce a known result. He argued the specification suggested the present water dispersible granules had better attributes than known water dispersible granules. Mr Catterns said none of the documents filed in the opposition disclosed water dispersible granules with the attributes of the present water dispersible granules. Therefore he argued the Ramset case (Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd 34 IPR 256) did not apply to the present situation.

I consider the invention claimed clearly belongs to the useful and not the fine arts (National Research Development Corp v Commissioner of Patents 102 CLR 252). The specification at page 11, lines 6 to 9 states as follows:

"We have found that the granule composition produced by the above process have (sic) a lower tendency to powder and form dust than granules prepared by conventional processes .....while also having dispersibility properties which are typically superior."

The specification alleges the attributes of water dispersible granules prepared by the present process are at least different from those prepared by pan-granulation.  Therefore I consider it is not apparent on the face of the specification it fails to meet the threshold test in the Phillips v Mirabella case (supra).

Monsanto did not provide any results which compared any of the attributes of water dispersible granules prepared by the present process with those prepared by prior art processes.  The specification does not specifically refer to documents from the prior art and it does not give any measurements of the lower tendency to powder and form dust.

The specification gives one example which to illustrate the typically superior dispersibility properties of water dispersible granules prepared by the present process.  In this example an unnamed commercially available water dispersible granule is broken down and formed into granules using the present process.  The reconstituted product has superior suspensibility and more rapid dispersion time than the original commercial product.

The example does not describe how the commercial product was broken down.  Therefore it is not clear to me if these improved attributes result directly from the present process or from the extra processing of the commercial product.

I conclude it is not clear from the prior art documents whether water dispersible granules with the same attributes as those prepared by the present process are known.  Therefore I consider the Ramset case (supra) does not apply to the present situation.

Consequently I am satisfied Monsanto has not shown the process claimed is not a manner of new manufacture.

proposed amendments.

I will not consider the request for leave to amend filed 2 December 1992 as ICI subsequently filed two other requests one of which it has withdrawn.  I will consider what effect, if any, the amendments proposed in the request filed on 5 September 1996 would have on the findings in this decision.  In doing this I will not explicitly or implicitly decide whether any of the proposed amendments comply with section 102.

The request for leave to amend filed on 5 September 1996 only proposes to amend the claims and involves adding claims 13 to 39 to the claims in the specification at acceptance.  Therefore my earlier findings about compliance with section 40 and the obviousness of claims 1 to 12 would not be overcome by these proposed amendments.

I consider the confusing definition at page 9. lines 4 to 11 would cause the proposed claims to lack clarity in respect of the terms “rolling” and “tumbling” similar to earlier  findings for the accepted claims.

Proposed claim 13 reads as follows:

"A process of preparing water dispersible granules comprising mixing the desired ingredients including at least one active agent selected from the group consisting of herbicides, fungicides and insecticides and surfactant in the presence of water to form an extrudable wet mix, extruding the wet mix and then tumbling in a tumbling action the wet extrusions to break down said extrusions to from granules."

Proposed claims 14 to 24 are appended to proposed claim 13 with proposed claim 24 being an omnibus claim.

I consider proposed claims 13 would be open to the same findings I made earlier in this decision about claim 1 with respect to the conflicts with the description at page 9.  Proposed claim 17 claims the same features as claim 5 and in my interpretation of the specification I concluded these features are essential features of the invention.  I consider the features defined in proposed claim 17 are implied features of proposed claim 13.  In my view proposed claim 13 should explicitly define the essential features of the invention by referring to the quantity of water required for the process to produce water dispersible granules.

Proposed claim 13 claims the extrusions are subjected to "tumbling in a tumbling action".  The description at page 9 ,lines 4 to 11 states as follows:

“After extruding the wet mix the wet extrusions are broken down by rolling preferably in a tumbling action.  In this specification the term rolling is used to mean causing the extrusions to roll or tumble against each other or a fixed or moving surface.......

The rolling process may be carried out in numerous ways using a wide range of apparatus.”.

Mr Lloyd's second declaration includes a definition of "tumbling" from "Encyclopedia of Chemical Technology" (Third edition (1978), vol 16, page 629).  He says this definition refers to a common process for mixing dry solids and is as follows:

"Tumbling.  Gentle mixing by a tumbling action causes materials to cascade from the top of the rotating vessel.".

Drs Heath and Lichti use similar definitions in their declarations.  Mr Lloyd goes on to refer to several references which describe the kinds of apparatus which may be used to cause the tumbling action.  He notes all the apparatus operate by rotation about a horizontal axis and that apparatus with the axis inclined up to 55^o  from the horizontal give best results.  Dr Heath agrees such apparatus is extremely well known and has been used for many years.

Dr Thiel does not specifically disagree with the above definition of "tumbling" but he points out this word as well as the phrase "tumbling action" is not defined in the specification.

In my view the skilled worker on reading the description , particularly the quotation from page 9 above and proposed claim 13 would not necessarily consider the phrase "tumbling in a tumbling action" as restricted to cascading the extrusions from the top of a rotating vessel.  It seems to me this phrase includes, for example cascading the extrusions against each other and a fixed surface.  Therefore I conclude the phrase "tumbling in a tumbling action" does not necessarily mean the extrusions are treated in an apparatus which rotates about a horizontal axis or with the axis include up to 55^o  from the horizontal.

Mr Lloyd states in his second declaration that the rolling stage of the process is required to take place in apparatus which is rotated about a horizontal axis or about an axis inclined to the horizontal such that a tumbling action takes place.  In this case I consider proposed claim 13, and proposed claims 14 to 24 which are appended to it, would not define the invention.

The article by Reynolds to which I referred above states the marumerizer breaks down the extrusions and spheronises them.  The article describes the motion of the particles in the marumerizer as follows:

"This characteristic disposition of the material is due to the transport of pellets centrifugally to the periphery of the plate where their residual momentum causes them to rise up the stationary wall and then to fall within or over the mass of pellets as their momentum is dissipated."

Drs Hall and Lichti and Mr Lloyd consider this cannot be described as a "tumbling action" because the extrusions are not treated in a rotating vessel.  Dr Thiel did not argue the marumerizer is a rotating vessel.

In my view the above quotation means the extrusions in the marumerizer cascade against each other or a fixed surface which I found above to be included of the scope of the phrase "tumbling in a tumbling action".  Therefore I consider it follows the process claimed in proposed claim 13 would be obvious in respect of making water dispersible granules containing a pharmaceutical fungicides and insecticides for reasons similar to those I described earlier in this decision with respect to the accepted claims.  Similarly I consider the processes claimed in proposed claims 14 to 21 and in proposed claims 23 and 24 in so far as they are appended to claim 13 would also be obvious.

Proposed claim 22 reads as follows:

"A process according to any one of claims 13 to 21 which comprises tumbling the extrusions in a tumbling apparatus for a period of at least 30 seconds with the apparatus rotating at a speed in the range of from 1 to 100 rpm".

In my view the skilled worker on reading the description , particularly the quotation from page 9 above and proposed claim 22 would not necessarily consider the phrase “tumbling apparatus” necessarily meant the kind of apparatus described in the references in Mr Lloyd’s second declaration.  I conclude from the quotation from the article by Reynolds that the marumerizer may be described as a tumbling apparatus in the context of the present specification.

The Reynolds article states the speed of the plate in the marumerizer may be varied from 400 to 1600 rpm and the Conine and Hadley article makes a similar statement.  Mr Lloyd in his second declaration suggests other articles describe plate speeds in the range 100 to 5000 rpm.  But none of ICI's declarants suggest the plate in the marumerizer could not be adjusted to the speeds claimed in proposed claim 22.  Therefore I consider the use of a marumerizer lies within the scope of this claim.

Dr Thiel in his third declaration states in the pharmaceutical industry  marumerizers are operated at high speed to achieve strong, well compacted final granules.  Dr Story in his declaration states the speed of 1 to 100 rpm are “typically too slow for the usual application of a Marumerizer”.

In Dr Thiel’s opinion operating a marumerizer at lower speed may produce granules which would approximate those manufactures by the present process.  But he does not say at the priority date of the present claims he would have operated a marumerizer at a speed of 1 to 100 rpm to produce water dispersible granules.

I consider this means Monsanto has not shown it would be obvious to use a marumerizer at a speed of 1 to 100 rpm to produce water dispersible granules.  I consider a speed of 1 to 100 rpm is an essential feature of proposed claim 22.  Therefore I consider there would be insufficient evidence to find the process claimed in proposed claim 22 would be obvious.  Similarly I consider there would be insufficient evidence to find the processes claimed in proposed claims 23 and 24 in so far as they are appended to claim 22 would be obvious.

Proposed claim 25 reads as follows:

"A process of preparing water dispersible granules comprising mixing the desired ingredients including at least one active agent selected from the group consisting of herbicides, fungicides and insecticides and surfactant in the presence of water to form an extrudable wet mix, extruding the wet mix and then tumbling in a tumbling action in a rolling apparatus rotating at a speed in the range 1-100 rpm to break down said extrusions to form granules."

Proposed claims 26 to 36 are appended to proposed claim 25 with proposed claim 36 being an omnibus claim.  Proposed claim 37 claims water dispersible granules whenever prepared by the process of any one of claims 1 to 12 and proposed claim 39 is a similar claim with respect to claims 13 to 24.

I consider proposed claims 25 would be open to the same findings I made earlier in this decision about claim 1 with respect to the conflicts with the description at page 9.  Proposed claim 29 claims the same features as claim 5 and in my interpretation of the specification I concluded these features are essential features of the invention.  I consider the features defined in proposed claim 29 are implied features of proposed claim 25.  In my view proposed claim 25 should explicitly define the essential features of the invention by referring to the quantity of water required for the process to produce water dispersible granules.

For similar reasons to those I described for proposed claims 13 to 24 I consider proposed claims 25 to 36 would not define the invention as they do not require rolling of the extrusions about a horizontal axis or about an axis inclined to the horizontal.

I consider the speed of 1 to 100 rpm is an essential feature of the processes to produce water dispersible granules defined in proposed claims 25 to 36.  When I discussed whether proposed claim 22 would be obvious I said  Monsanto has not shown it would be obvious to use a marumerizer at a speed of 1 to 100 rpm to produce water dispersible granules.  Therefore I consider Monsanto would not have shown the processes defined in proposed claims 25 to 36 would be obvious.

costs.

Costs usually follow the event and Monsanto has been successful in its opposition.  Therefore I award costs against ICI.

summary.

I have found that the specification of application no.606719 does not comply with section 40 and that the claimed process does not lack novelty but is obvious.  I have awarded costs against ICI.  I am satisfied the specification may be amended to overcome the deficiencies I have outlined in my decision.  Therefore I allow ICI 60 days from the date of this decision to propose amendments to overcome these deficiencies.

M Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  : Callinan Lawrie

Patent attorneys for the opponent   : E F Wellington & Co