Imperial Chemical Industries PLC

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 29314/02 in the name of Imperial Chemical Industries PLC

Title: Working fluid compositions

Action: Refusal of the application

Decision: Issued .
Abstract

The application is refused.
The present application is related to two earlier applications.
(i) The first application included the subject matter that is now claimed in the present application, and is the parent of the present application It was refused by the Federal Court on the basis of a lack of novelty (amongst other reasons).
(ii) The second application included the subject matter that is now claimed in the present application, but is not a parent application. It has also been refused by the Federal Court, but not on the basis of a lack of novelty.

Issue estoppel in relation to the earlier decisions of the Federal Court considered not appropriate, because the parties were different.
The earlier decisions of the Federal Court considered to determine which decision was more persuasive.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Refusal of Patent Application No. 29314/02 by Imperial Chemical Industries PLC

BACKGROUND

Patent application number 658005 by Imperial Chemical Industries PLC (hereafter referred to as ICI) was accepted by the Commissioner on 30 January 1995. The application was the subject of an opposition to grant, which was unsuccessful (see Lubrizol Corporation v Imperial Chemical Industries PLC (2000) AIPC 91-614, (1999) 49 IPR 484). The opponent appealed to the Federal Court, where Justice Branson found that the application was not novel in the light of the Lubrizol patent (see E I Dupont de Nemours & Co v Imperial Chemical Industries PLC [2002] FCA 230, (2002) AIPC 91-788, (2002) 54 IPR 304). Leave to appeal to the Full Court was refused (see Imperial Chemical Industries PLC v E I Dupont de Nemours & Co [2002] FCAFC 264). As a consequence, patent application 658005 was refused (the Patent Office database records the date of refusal as 1 October 2002).
Patent application number 29314/02 by ICI was filed as a divisional application from patent application 658005 on 28 March 2002. An examination report issued on the divisional application on 19 December 2002, raising one objection only:
“1. The invention defined by the claims lacks novelty in the light of:-
AU 54480/90 (638710) to The Lubrizol Corporation
This citation was ruled in the Federal Court judgement as rendering the parent of the current application not novel. It is noted that the specification of the current application is identical to the parent document.
See E I Dupont de Nemours & Co v Imperial Chemical Industries PLC [2002] FCA 230 in particular paragraphs 38 to 71.
Note: In the light of the above the Commissioner is considering refusing this application under s. 49(2). You will be contacted early in the new year to arrange a date for a hearing into the matter.”
On 2 April 2003 ICI proposed amendments to the specification. On 23 April 2003 I informed the patent attorney for ICI that in spite of the amendments I considered there were outstanding issues that were best progressed at a hearing.
A hearing of the refusal was held in Sydney on 29 May 2003. Mr David Catterns QC instructed by Mr Christopher Schlicht, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, represented ICI. The opponents in relation to the parent application (E I Dupont and Lubrizol) are not parties to this refusal action, and have no right to be heard. However, Dupont is clearly an interested party, as demonstrated by their opposition to the parent and the subsequent appeal to the Federal Court. Consequently, the Commissioner will inform Dupont of the outcome of this refusal action by forwarding to them a copy of this decision.
THE SPECIFICATION
The specification relates to refrigerant compositions that do not contain chlorofluorocarbons. The specification as filed appears to be identical to the specification of the parent at the time that it was refused. The compositions described have two components - a heat transfer fluid (identified as component A) and a lubricant (identified as component B). The compositions of claim 1 as filed are:
(A) a binary or ternary mixture of R-32 / R-134a / R-125
and
(B) a lubricant of the formula R-(-O-C(=O)-R¹)_n
The compositions of claim 1 as proposed to be amended are:
(A) a ternary mixture of R-32 / R-134a / R-125
and
(B) a lubricant of the formula R-(-O-C(=O)-R¹)_n
[These claims are reproduced in full in Annex 1.]
In both cases the lubricant is the same, and the difference resides solely in the heat transfer fluid. The significant point is that the specification as filed (and the parent application) is directed to four heat transfer fluids: three binary mixtures and one ternary mixture. In the specification as proposed to be amended the claim is directed solely to the ternary mixture.
THE DECISIONS OF THE FEDERAL COURT
The parent application (658005) and a related application (654176) were both the subjects of opposition proceedings. The Commissioner rejected both oppositions. On appeal, the Federal Court upheld both oppositions (E I Dupont de Nemours & Co v Imperial Chemical Industries PLC [2002] FCA 230). Branson J found that application 658005 was not novel in the light of the Lubrizol patent ([63] to [71]), and application 654176 was novel in the light of the Lubrizol patent ([143] to [144]), but that the opposition succeeded on other grounds.
The Full Court of the Federal Court considered a request for leave to appeal from both decisions (Imperial Chemical Industries PLC v E I Dupont de Nemours & Co [2002] FCAFC 264). In relation to application 658005, the Court stated that "the correctness of that conclusion [that any patent would be revocable] by the primary judge is attended with no doubt" (see [20]). The Full Court did not need to comment on the conclusion that application 654176 was novel in the light of the Lubrizol patent.
The significance of these decisions is the fact that claim 1 as proposed to be amended falls within the scope of claim 1 of application 658005, and also within the scope of claim 1 of application 654176. On the face of it, the Federal Court has reached different conclusions on the novelty of the subject matter of claim 1 as proposed to be amended in its earlier decisions. The key issue in the present case is which of the Federal Court decisions should be followed.
SUBMISSIONS BY THE APPLICANT
Mr Catterns accepted that there are conflicting decisions of the Federal Court, but submitted that I am bound by the law in the previous decisions, and not by the decisions of fact. The question is then to identify the binding law, and determine how persuasive are the decisions of fact. Mr Catterns contended that the decisions of fact in relation to the 654176 application should be preferred. His reasons for this are essentially twofold: the decision in relation to application 658005 related more to binary mixtures rather than the ternary mixture, and even if the decision does relate to the ternary mixture the reverse infringement test was incorrectly applied.
DECISION
The amendment proposed by ICI narrows the invention as claimed to one of the four heat transfer fluids originally claimed. Such an amendment appears to be allowable under section 102, especially in light of Example 5 (at page 27). The only issue is whether the claims as proposed to be amended are novel.
The first question is whether I am bound to follow the decision of the Federal Court in relation to the parent application. The present application is a separate application, which has not yet been considered by the Court. Consequently the doctrine of res judicata does not apply, and I cannot be considered to be functus officio. However, the same citation and very similar claims have been before the Court, so a question of issue estoppel arises. I was referred to the decision of the House of Lords in New Brunswick Railway Co v British and French Trust Corporation Ltd [1939] AC 1, which relates to whether an estoppel applied in relation to the construction of mortgage bonds. However, the facts of that case are sufficiently different that it does not help me with the present case.
Issue estoppel was described by Dixon J in Blair v Curran (1939) 62 CLR 464 at 532:
"A judicial determination directly involving an issue of fact or of law disposes once for all of the issue, so that it cannot afterwards be raised between the same parties or their privies. The estoppel covers only those matters which the prior judgment, decree or order necessarily established as the legal foundation or justification of its conclusion, whether that conclusion is that a money sum be recovered or that the doing of an act be commanded or be restrained or that rights be declared. The distinction between res judicata and issue-estoppel is that in the first the very right or cause of action claimed or put in suit has in the former proceedings passed into judgment, so that it is merged and has no longer an independent existence, while in the second, for the purpose of some other claim or cause of action, a state of fact or law is alleged or denied the existence of which is a matter necessarily decided by the prior judgment, decree or order."
The disclosure of the alleged anticipation is a fact that was in dispute in the earlier Federal Court matters, and was necessarily determined in order to decide whether the claims were novel. I would accept that there is an issue estoppel except that the parties in the present matter are not the same as those in the Federal Court. Consequently I am free to determine this matter upon the evidence available. However, the decisions of the Federal Court are clearly highly relevant given the similarity of the subject matters. In both cases claim 1 as proposed to be amended falls within the scope of the claims that were considered by the Federal Court. In both cases there was an explicit claim directed to the ternary mixture of the present application - in the case of application 658005 it is the appended claim 4, and in the case of application 654176 it is the independent claim 10. Her Honour Justice Branson had the advantage of witnesses who provided evidence of their understanding of the Lubrizol patent. Mr Catterns pointed out that this evidence is not before me, but I note that it is reported in the decision of Her Honour. I believe I can properly rely on the decisions of Her Honour in determining the novelty of the present application.
Her Honour's decision identifies the law that is relevant - the reverse infringement test (see Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 per Aickin K at 235), which requires that the prior publication contain clear and unmistakable directions to do what the applicant claims to have invented (see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 per Sachs LJ at 486). The question that I have to answer is whether the Lubrizol patent provides clear and unmistakable directions to use a composition of R-32 / R-134a / R-125. Since the earlier decisions provide conflicting guidance, the question is which decision is more persuasive. This necessarily requires a careful reconsideration of Her Honour's reasons for judgement. I note that the decision of the Full Court is emphatic in upholding the decision of Her Honour in the 658005 application, but is not helpful in terms of the reasons for that conclusion.
Mr Catterns drew my attention to several matters in Her Honour's decisions that suggest that the decision in application 654176 should be preferred over that in application 658005:
a)        the decision in the 658005 application appears to focus on binary compositions rather than the ternary composition, making the conclusion inappropriate to the ternary composition;
b)        the ternary composition is clearly considered in the decision on the 654176 application, making the conclusion appropriate to the ternary composition; and
c)        the decision on the 658005 application may have incorrectly applied the law of novelty, making the conclusion unsafe.
I will briefly deal with these matters, and then determine what I believe Her Honour decided in the two cases.
1. In analysing the 658005 application did Her Honour have in mind the binary compositions rather than the ternary composition?
Claim 1 of application 658005 relates to binary and ternary mixtures. At some parts of the reasons there are references that seem to relate to binary mixtures, but at others there are references to the ternary mixture. It is clear that Her Honour was aware that claim 1 included the possibility of a ternary mixture.
2. Did Her Honour only fully consider the ternary composition in the 654176 application?
Her Honour clearly recognised that the 654176 application includes ternary mixtures, and that claim 10 is directed specifically to a ternary blend. However, this does not mean that Her Honour was not aware of the ternary blends covered by the 658005 application. There is nothing to suggest that Her Honour was not considering the ternary composition in the decision on the 658005 application.
3. Did Her Honour misapply the test for novelty in relation to the 658005 application?
Mr Catterns was concerned that Her Honour may have incorrectly applied the reverse infringement test, by asking whether the compositions of application 658005 would have infringed the Lubrizol patent (rather than the reverse). At no point does the judge state that this is the test that she is applying. However, Her Honour accepts the opinion of Mr Symons that component (A) "encompassed" single fluorine containing hydrocarbons (and mixtures), which would have included R-134a, R-125, R-32 and R-143 (paragraph 65). I do not believe that Her Honour is considering whether the patent application would infringe the Lubrizol patent, but whether the disclosure of the Lubrizol patent encompasses the heat transfer fluids that are of significance.
What did Her Honour decide?
It is clear that the Lubrizol patent discloses a large range of HFCs. This is clear from the face of the Lubrizol patent, especially pages 8 and 9. It is also clear that the HFCs can be mixtures, including ternary blends (page 9). It is clear that Her Honour found that the mixtures can include R-32, R-125, R-134a and R-143, and that the mixtures can be ternary blends (paragraphs 65 and 69).
Her Honour was of the view that the Lubrizol patent is principally concerned with lubricants. The lubricants are useful within refrigerant compositions. A broad class of refrigerants can be used with the lubricants. Consequently, Her Honour came to the conclusion that a person skilled in the art would have regarded the Lubrizol patent as providing clear and unmistakable directions to use any heat transfer fluid (or binary mixture) of the broad class described (paragraph 69). On this basis, the heat transfer fluids that are clearly and unmistakably disclosed are all those that are encompassed by the broad terminology, not just those that are preferred forms. However, it seems that more complex blends (having a large number of highly particularised components) are not part of the teaching (paragraph 144).
But what of ternary blends, and in particular the specific ternary blend of the present application? It appears that Her Honour may not have been aware that the single ternary blend of the 658005 application is also one of the blends of the 654176 application. It seems hard to believe that Her Honour forgot about the ternary blend when considering the 658005 application, as that application covers only four blends. Looking at paragraph 65, it seems clear that Her Honour accepted Mr Symons evidence that the Lubrizol patent discloses binary and ternary blends of R-134a, R-125, R-32 and R-143. This statement leads inevitably to the conclusion that a ternary blend of R-32 / R-125 / R-134a would be not novel in the light of the Lubrizol patent. Paragraph 144, on the other hand, says that the highly particularised blends are novel without noting the composition of those blends. I think it would have been possible to overlook the specific composition of one of the ternary blends (of which I believe there are 15 possible combinations), even though claim 10 is directed to the specific blend in question.
I believe that Her Honour decided that the Lubrizol patent contains clear and unmistakable directions to use the ternary blend in question.
Conclusion
Is there any reason to depart from the conclusion of Her Honour in relation to the disclosure of the Lubrizol patent? Her Honour had the advantage of cross-examination of Mr Symons and Professor Ball. The evidence of persons skilled in the art is normally of assistance in the interpretation of citations. Based on the evidence of Mr Symons, I would come to the same conclusion as Her Honour. No new evidence was placed before me in the present matter. I can see no reason to come to a conclusion different to that reached by Her Honour.
I conclude that the present application is not novel in the light of the Lubrizol patent, and should be refused. Mr Catterns requested the opportunity to propose further amendments should I find against ICI. Since both the binary and ternary blends of the application as filed lack novelty, and the lubricants are the same as those in the Lubrizol patent, I cannot see that there is any prospect of overcoming the lack of novelty by amendment.
I refuse the application.
Dr S.D.Barker
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick
ANNEX 1: THE CLAIMS OF 29314/02
Claim 1 as filed:
1.        A working fluid composition comprising:
(A)      a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and
(B)      a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula:
R(O-C(=O)-R¹)_n                II
wherein
R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol, or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol;
each R¹ is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R¹ group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; and
n is an integer.
Claim 1 as proposed to be amended:
1.        A working fluid composition comprising:
(A)      a heat transfer fluid comprising a mixture of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and
(B)      a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula:
R(O-C(=O)-R¹)_n                II
wherein
R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol, or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol;
each R¹ is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R¹ group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; and
n is an integer.

[2003] APO 30

11 August 2003