Imperial Chemical Industries Plc v Mitsubishi Gas Chemical Co. Inc

[1994] APO 26

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 610341 in the name of IMPERIAL CHEMICAL INDUSTRIES PLC

Title:    METHANOL

Action:    Opposition thereto by MITSUBISHI GAS CHEMICAL CO. INC.  and an application under regulation 5.10(4) by the applicant to serve further evidence

Decision:    Issued            .  Application to serve further evidence under Regulation 5.10(4) granted. The specific circumstances are considered where it is the applicant for the patent who has applied to serve further evidence, the opponent has raised new evidence in the evidence in reply and the further evidence is of particular importance to the applicant's case.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 610341 by IMPERIAL CHEMICAL INDUSTRIES PLC, opposition thereto by MITSUBISHI GAS CHEMICAL CO INC, an application under regulation 5.10(4) to serve further evidence in opposition proceedings and an objection thereto

background

Application No. 610341 was filed on 9 February 1989 by Imperial Chemical Industries PLC(ICI).  It was advertised accepted on 16 May 1991, and a notice of opposition filed by Mitsubishi Gas Chemical Co. Inc.(Mitsubishi) on 16 August 1991, followed by a statement of grounds and particulars on 16 September 1991. On 15 September 1992 the opponent filed an application to amend the statement of grounds and particulars. The applicant made no objection to this amendment which was allowed on 22 October 1992.

Three applications for extensions of time to serve evidence in support were made, totalling 9 months to 16 September 1992.  These were granted without objection from the applicant.  Evidence in support was served on the applicant on 15 September 1992.  Evidence in answer was served on the opponent on 9 December 1992.

The opponent gave notice of its intention to file evidence in reply and applied for extensions of time of 2 months and 1 month, in which to serve evidence in reply.  The applicant objected to the second extension but withdrew the objection after the evidence in reply was served on 19 May 1993.  The extensions were granted to 9 June 1993.

On 6 August 1993 the applicant made application to serve further evidence in the opposition proceedings. The application was accompanied by a statutory declaration in the name of Keith Mansfield.  Another statutory declaration in the name of Raymond Lewis Evans, dated 12 November 1993, was filed in support of the application to lodge further evidence .

The opponent objected and the matter was set down for hearing in Canberra on 24 November 1993.  Both parties appeared by telephone.  The applicant was represented by Mr Raymond L. Evans, patent attorney of Phillips Ormonde and Fitzpatrick, Melbourne.  The opponent was represented by Mr John Terry, patent attorney of Griffith Hack and Co, Sydney, assisted by Mr Peter Williams.

This is an application which was advertised accepted after the commencement of the Patents Act 1990. Thus the procedures are essentially governed by Chapter 5 of the Patents Regulations 1991.

APPLICATION

In its application  to serve further evidence, the applicant made the following statement:

"The nature of the further evidence is set out in the attached declaration of Keith Mansfield dated 9 July 1993.  The declaration addresses a number of points raised for the first time in evidence in reply by the Opponent.  In particular in paragraph 11 of the declaration Yok Sam Lee dated 17 May 1993 the Opponents assert for the first time that an R value of 1.8 to 2.2 has been used for many years in ammonia production.  The Applicants dispute this assertion."

PRELIMINARY SUBMISSIONS

Mr John Terry for the opponent objected to the Evans declaration and questioned what its status should be.  He argued that Mr Evans' declaration, at paragraphs 3 and 4, purported to make conclusions as to the matter to be decided and was purported evidence going directly to the point to be decided.  It was basically putting forward assertions in the nature of submissions which could be put forward at the hearing, as submissions, but should not be given the status of evidence in this matter.

Mr Evans stated that his declaration was not in the nature of the further evidence itself but was merely in support of the grounds on which the applicant sought to serve further evidence.  It was in the form of a declaration, and an appropriate form in which to provide support for further evidence.  It should be considered but there might be a question as to the weight to be given to it.
He referred to a similar situation arising in extensions of time: CSIRO v Western Mining Corporation Ltd 13 IPR 424.

PRELIMINARY DECISION

The parties share the view that this declaration is not further evidence going to the substantive issues of the opposition but rather in the nature of submissions in support of the applicant's request for leave to serve further evidence. Taking into account the contents of this declaration, I agree with this view. I admit the declaration and will treat it as submissions in support of the application to serve further evidence. 

The parties also made preliminary submissions concerning the Mansfield declaration and what its status should be in the context of the present hearing. These are included in the summary of main submissions which follows.

MAIN SUBMISSIONS

Mr Evans for the applicant made the following submissions, in summary:

1. The Mansfield declaration should be admitted as it both sets out the further evidence and supports the application to serve the further evidence.  The applicant has provided more than is required and has lodged the evidence itself so that each side can clearly see what is at issue.  The applicant does not intend to go beyond that further evidence.

1. Concerning the exercise of the Commissioner's discretion to grant an application to serve further evidence, provided for in Regulation 5.10(4), much the same criteria should apply as applied under the Patents Act 1952. The decision in Sandoz Ltd v Fujisawa Pharmaceutical Co. Ltd, (1993) AIPC 91-013 refers to the decision of Micronair (Aerial) Ltd v Waikerie Co-op Producers Ltd 7 IPR 107 which sets out three factors to be considered in these circumstances:

.the evidence could not have been obtained with reasonable diligence at an earlier stage

.it must have an important effect on the outcome of the case

.it must be apparently credible although not necessarily incontrovertible.

This decision also refers to the earlier Simac SpA Macchine Alimentari v Semak Electrics Pty Ltd 5 IPR 281, which is the most relevant previous decision. In this case the applicant sought leave to serve further evidence in response to matters raised for the first time in the opponent's evidence in reply. The further evidence itself was not provided. The hearing officer stated:

"the evidence  could not in any case have been contemplated by the applicant, and much less could it have been obtained and filed, any earlier than that date.  I cannot, therefore, find any justification for the opponent's claim that the applicant has been less than diligent in bringing the evidence forward at this stage."

and later in the decision:

"The applicant does not here seek to raise new issues by way of its proposed further evidence, but simply to answer issues newly raised by an opponent in its evidence in reply.  Moreover it seems to me that the importance of the proposed evidence is no less than the importance of the evidence which it seeks to rebut.  For the opponent it was said that the opponent's own fresh evidence  was of little or no importance to the case.  Be that as it may, the opponent has elected to put its evidence in nevertheless, and it is bound to submit to an examination of its merit on the substantive hearing of the case.  It is not the purpose of these proceedings to consider the merits or importance of the opponent's evidence, or indeed its admissibility if that question should arise.  That will be considered at the substantive hearing in the context of the matter as a whole."

1. The further evidence for which leave is sought is important. The invention claimed is the production of methanol by a specific combination of process steps, including the use of a two stage reforming process.  An R value of 1.8-2.2 is a key limiting feature, with R being the ratio of the difference of the hydrogen and carbon dioxide molar contents to the total molar carbon oxides content.

1. The evidence raised for the first time in the evidence in reply relates to common general knowledge and it appears is to be used in support of an obviousness argument.  The decision in Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915 made clear that the statement of grounds and particulars should fully foreshadow the opposition and then it is merely a matter for expert evidence to be produced considering each of the documents referred to. The case of Mobay Corporation v Dow Chemical Company (1992) AIPC 90-895 also dealt with the inadequacy of the opponent's grounds and particulars.

In the current case in both the original and amended statement of grounds and particulars dealing with the question of obviousness the particulars provided are almost non-existent.  They are in fact saying that the opponent has not yet determined what the common general knowledge in the art in Australia is, but intends at some further stage to provide particulars in relation to common general knowledge.  The opponent is undertaking a "fishing expedition": Kent-Moore (supra), which extends to the evidence in reply.

1. The further evidence which ICI wishes to serve responds to evidence raised by the opponent for the first time in its evidence in reply.  It is quite clear that ICI could not have presented its evidence earlier as it was only made aware of this new matter on which the opponent wished to rely when it was presented in the opponent's evidence in reply.  This is a key factor in the Commissioner exercising his discretion.

1. The new matters raised in the evidence in reply and which relate to common general knowledge are set out in the Mansfield declaration.  In paragraph 2, p.3 of Mr Lee's evidence in reply, he asserts that it is well known to use a two stage reforming process in methanol manufacture:

"In a one-step steam-reforming of methane rich natural gas, the resulting synthesis gas is H rich having a R value of 2.7-3.0 which is much higher than the R value of 1.8-2.2 required for methanol synthesis.  To correct this non-optimum gas mixture, a two-step reforming is often used which provides for better control of synthesis gas production in ammonia synthesis."

In his evidence in reply, Mr Lee asserts for the first time that it would have been obvious to use the "Mitsubishi process", a process recited in Japanese patent application JP-B50-20959:

"Accordingly in addition to the Mitsubishi process unambiguously teaching me to combine the Mitsubishi process with steps (a)(iv) to (e) of claim 1 of the ICI application, I am of the opinion that it would have been obvious to a person of skill in methanol technology at February 1988 to recycle part of the purge from a methanol synthesis loop coupled to the Mitsubishi process to the primary reformer of the Mitsubishi process and to utilise the remainder of the purge gas in a manner that optimised plant efficiency."

He refers to R values which for the first time he asserts were commonly used in ammonia production which he further asserts is relevant to methanol production:

"..the use of a secondary reformer to achieve a R value within the range of 1.8 to 2.2 is not new and has been standard practice in ammonia plants for over 40 years."

These three matters constitute new evidence on common general knowledge and go well beyond the evidence in support, which raises the following matters.

1. In his evidence in support on the question of the two stage process, Mr Lee states that a two stage reforming process for the production of ammonia, not methanol, involves the introduction of nitrogen at the second of two steps in what is overall a seven step process.  There is no assertion that a two stage process is used in methanol production.

The evidence in support does refer to the "Mitsubishi process" but not that it was often or commonly used in methanol production or formed part of the common general knowledge in Australia prior to the relevant date.

On the question of R values, in the evidence in support, Mr Lee asserts that the Japanese (Mitsubishi) patent discloses a number of figures which if calculations are done give an R value of 1.9.  However he makes no reference to its use in practice, and nowhere asserts that it was standard practice.

1. These three pieces of evidence are raised for the first time in evidence in reply and are dealt with by Mr Mansfield in his declaration.

Although specific issues were discussed in the evidence in support, for the first time the opponent is providing in the evidence in reply evidence regarding the nature of common general knowledge.  Statements, asserting common general knowledge, such as "steam reforming often involves a two step process" or that "it was common practice to use certain R values in ammonia production" or that the contents of a Japanese patent are common general knowledge clearly go far beyond the evidence in support.

In summary, ICI was faced on receiving the evidence in reply with fresh evidence regarding common general knowledge relevant to a number of features of ICI's claim.  In the normal course of events it should have been advised of these matters in the statement of grounds and particulars, served in 1991.  It is quite clear that the evidence relating to common general knowledge is important to the outcome of the case, thus meeting the second condition set out in the Micronair decision(supra).

1. Regarding the third condition set out in the Micronair decision (supra), the applicant's new evidence is certainly such as can be presumed to be believed, and is no less credible than the Yok Sam Lee evidence.  Mr Mansfield's evidence is supported in each case.

10.The diligence of each party is quite critical in deciding whether the Commissioner should exercise his discretion: Bristol Meyers Squibb v L'Oreal (1992) IPR 443. Clearly the applicant has been diligent and has actually gone further by providing the evidence, itself. It should be given the benefit of any doubt, given the importance of the evidence.

11.It is normal practice in opposition proceedings that when leave to serve further evidence is allowed the other side be given one month to respond.  As the opponent's witness is in Australia and in a place where the opponent's attorneys have an office, and the opponent has already had the evidence for some three months, it has had a deal of time to consider the evidence once the leave has been granted.

Mr Terry, for the opponent, made the following submissions, in summary:

1. The Mansfield declaration should not be admitted for consideration at this hearing as it is the evidence which is sought to be admitted. Although the Regulations under the 1990 Act are silent on the point, the Regulations under the Patents Act 1952 are relevant. Arguments to justify granting of leave are required but there is no need to file the evidence itself. If the declaration is admitted it should not be given the status of evidence as it is the evidence to be finally decided in this matter.

In the document in which ICI PLC applied to serve further evidence, the only particular given refers to a specific statement in the Yok Sam Lee declaration.  Thus the application is only to serve further evidence on the point concerning the use for many years of an R value of 1.8 to 2.2 in ammonia production.

1. The heart of our submission relates to what an opposition proceeding is all about.  It is a truncated type of procedure, one in which the opponent has the privilege of putting in the last bit of evidence. In the present case, when the facts are properly understood, it will be seen that Mr Lee's evidence in reply is nothing more than a proper reply to Mr Mansfield's comments and goes straight back to issues raised initially.

Mr Evans referred to Regulation 5.10(4) and noted that the authorities show that the hearing officer has a discretion.  From the Sandoz case (supra) it is clear that there are strict rules to be applied.  Thus from these principles there is a heavy onus to be discharged by the applicant seeking to serve further evidence especially in the context of the current 1991 Regulations which have as their tenor an expedited process.

1. Regarding the principles set down in the Micronair case (supra), on the question of the importance of the evidence to the result of the case, nothing in the Mansfield declaration, or at best only part, is to points which could be considered important.

1. Another principle is whether the evidence might reasonably have been obtained earlier.  Mr Mansfield could have made further relevant statements earlier.  For example, he could have more fully stated matters relating to his own experience and expertise. He did not do so.

In his evidence in reply Mr Lee makes reference to an R value of 1.8-2.2 applying to the ammonia prior art.  This is nothing more than a proper reply to issues concerning the differences between ammonia and methanol manufacture raised for the first time by Mr Mansfield his initial declaration.  These matters only then became a point requiring comment in reply.

The opponent's case is focussed on a prior published specification which recognises the production of a synthesis gas as a first stage then supplied to a second stage in which catalytic synthesis of a substance occurs. The alleged novelty of the applicant's process is in the first stage which produces a gas for methanol synthesis.

One aspect of Mr Lee's evidence is to refer to what is known about ammonia synthesis.  In his evidence in support he made comments about the relevant similarity between ammonia and methanol synthesis, fairly and squarely raising the issue.  Thus in his evidence in reply in paragraph 11 when he refers to R values of 1.8-2.2 in ammonia synthesis, he is merely responding to the Mansfield declaration which states in paragraph 4 that there are significant differences between ammonia and methanol technologies.

1. Mr Mansfield wants to make further evidence but, in each case, the evidence in reply is not being raised for the first time as it relates to the evidence in answer.  By its nature evidence in reply will always make comments additional to those being raised in evidence in support.

In particular, in relation to the use of the word "often" in Mr Lee's declaration, what the applicant now seeks to bring into evidence is based on a misinterpretation.  In the evidence in reply the relevant paragraph of Mr Lee's declaration is referring to steam reforming of methane rich natural gas and makes the point that because a one step reforming results in an R value of 2.7-3.0, two step reforming is the technique used in general.  The word "often" does not refer to the synthesis of methanol.

The evidence in answer disputes similarities between ammonia and methanol synthesis.  This position could have been substantiated then.  The evidence supplied in the three normal stages provides a proper and full basis for those issues to be the subject of submissions and decision at the substantive hearing and Mr Mansfield's declaration is not likely to bring in anything which has an important bearing on the outcome of the case.

1. As to the Micronair test of apparent credibility, in the further evidence Mr Mansfield states that he has a detailed knowledge of methanol technology and "a general understanding of ammonia technology".  Thus there is an element raised as to the extent to which his evidence on the ammonia issue, if admitted, can be seen as credible.

1. Mr Evans dealt with the particulars in support of the opposition. This is an irrelevant line to the issues of today's hearing. 

1. Concerning the question of diligence, it is only if ICI could be criticised for earlier dilatoriness that time factors could be relevant in the Commissioner's declining to exercise his discretion. ICI has not been dilatory and therefore the timing stages are not an issue and are merely neutral for ICI in this situation.

The opponent opposes admission of this further evidence on the grounds that if the evidence is admitted, an  order would need to be made giving to the opponent a proper opportunity to reply.  This would lead to further delay and further expense to the opponent.

1. If further evidence is allowed to be adduced , then an order should be given allowing the opponent adequate opportunity to consult with his expert witness and to adduce evidence in response to Mr Mansfield's new evidence, bearing in mind the relative locations of the opponent, their witness and their attorneys and that the onus is on an opponent.  A period of three months for evidence in response would in these circumstances be appropriate.

DECISION

The cases on the exercise of the Commissioner's discretion to grant leave to serve further evidence establish that there are a number of factors to be considered.  Three of these are set out in the Simac decision (supra) and followed in the Micronair decision (supra) and the Sandoz decision (supra) which is the first case to deal with these matters under the Patents Act 1990 and the 1991 Regulations. The criteria are:

(1)It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.

(2)The evidence must be such that if given, it would probably have an important influence on the result of the case.

(3)The evidence is such as is presumably to be believed, that is it must be apparently credible, though not necessarily incontrovertible.

In both the Micronair and Sandoz decisions, it was the opponent seeking to serve further evidence, rather than the applicant as in the present case.  The Simac decision (supra), although it is a trademark decision, deals with an applicant seeking leave to serve further evidence after filing of the opponent's evidence in reply which raised new matters and is thus particularly relevant in the present case.  In it the hearing officer found that the applicant had shown reasonable diligence because:

"the proposed evidence being, as it seems, evidence which seeks to rebut certain matters raised" (belatedly) "for the first time by the opponent.....the evidence could not have been contemplated by the applicant and much less could it have been obtained and filed, any earlier than that date."

I find this statement to be directly applicable in the present case.

The hearing officer in Simac (supra) also found that as new evidence had been raised by the opponent there was a presumption that that evidence would have an important bearing on the case, and that evidence in response to those new matters should be treated as having "no less than the importance of the evidence it seeks to rebut".  

The present action is not the substantive opposition hearing.  To attempt to determine in any absolute sense the importance of the applicant's further evidence would be to preempt, without the benefit of full argument, the decision in the substantive opposition hearing.  In the present circumstances I believe that the approach adopted by the hearing officer in the Simac decision (supra) is the correct one.

Two further criteria, which I also find to be relevant to the present case, were applied in the Sandoz decision (supra).  If the request to serve further evidence were allowed:

.would this cause unnecessary protraction of the opposition?

.    would there be any injustice done to the other party?

Before considering these criteria in the context of the present application, I must first resolve the issue of the status of the declaration made by Keith Mansfield on 9 July 1993 and which  accompanied the application.  The application described it as setting out the "nature of the further evidence".  Mr Evans has submitted that it includes both the evidence the subject of the application and further reasons for the application.

Mr Terry argued that it should not be admitted as it is the further evidence which is the subject of the present application.  He also argued that as the application only makes specific reference to the assertion of the use of "an R value of 1.8-2.2.... for many years in ammonia production", then only the evidence on that point should be considered.

Addressing the last point first, I find that the application to serve further evidence is not limited to the issue of the use of an R value of 1.8-2.2.  The application makes it clear that there are a number of points at issue, of which this is merely a particular one and that other points are addressed in the Mansfield declaration.

The Mansfield declaration itself does not distinguish between reasons and evidence.  However, I find that, read in conjunction with the application, the Mansfield declaration does provide some information on the grounds for the application to serve further evidence.  Mr Evans' submissions, both those made in his declaration dated 12 November 1993 and those made at the hearing throw further light on the matter.

Although it is not necessary, in this case the evidence has been provided prior to the decision on the application to serve further evidence.  Insofar as statements in the declaration assist in determining whether the application meets the criteria set down above, it is appropriate to take them into account, and their availability can only make it easier to determine the present matter.  I contrast this with the Simac decision (supra) where the hearing officer was unable to draw any conclusion as to the credibility of evidence which had not yet been served, but even so allowed the application.

Consequently I will admit the Mansfield declaration for consideration in this hearing.  This is not to preempt the decision as to whether the evidence should be admitted for consideration in the substantive opposition.

Before I consider the specific matters on which the applicant bases its application, there are a number of general issues which were raised by the parties.

Under the Patents Act 1990 which applies to the conduct of this case, the opponent is required to file a statement of grounds and particulars. The Kent-Moore decision (supra) defines its function.  It is what sets out the matters on which the opposition is to be determined and should spell out for the applicant the boundaries of the opponent's case against them. The applicant is then in a position to start preparing its defence, even before the evidence in support has been served.

In the  present case the amended statement of particulars states that:

"The invention fails to comply with ground 4......in the light of the publication in Australia of the documents listed under paragraph (A) above and/or in the light of the common general knowledge in the art."

Ground 4 asserts that the invention is obvious and does not involve an inventive step.

Mr Evans argued that this statement of grounds and particulars does not provide any particulars in regard to the matter raised for the first time in the evidence in reply and relating to the ground of obviousness.  Referring again to the Kent-Moore decision (supra):

"To the extent that the statement of grounds and particulars refers to common general knowledge there ought to be an expectation that an opponent has good reason to believe that the referred to common general knowledge is in fact so.  There ought not to be any expectation that an opponent can refer to matters which might be common general knowledge, and then engage in a 'fishing expedition' to find that common general knowledge."

In the Mobay decision (supra) the hearing officer rejected certain particulars as being inadequate.  The matter of whether the particulars in the present case are adequate, and consequently whether certain evidence is admissible, is for decision in the substantive opposition hearing.   However, they certainly provide no disclosure of any substance for the applicant to rely on in putting together its evidence in answer relating to the ground of obviousness.

Mr Evans argued that none of the matters the subject of the application were referred to in the statement of grounds and particulars and the applicant therefore had no notice that such matters were to be raised and no opportunity to respond before the evidence in reply was served.  I will deal with the specific matters below.

Mr Terry for the opponent also raised the issue of the nature of an opposition as being a somewhat truncated procedure that had three evidence stages.  However, in my view, although it is desirable that the process is not extended, both in the public interest and in the interests of the applicant and the opponent, this is not of itself a reason to deny the applicant an opportunity to respond when new matters are raised by the opponent late in the proceedings.

Mr Terry further argued that the onus to prove its case was on an opponent, and an applicant was always able to attack evidence in reply in the substantive hearing.  However if it chooses not to raise certain matters until the evidence in reply, it must expect that the process will be extended as the applicant seeks to defend its position, as has happened in the present case.

With regard to diligence, it was argued that the parties' diligence in serving evidence in support, evidence in answer and evidence in reply should be taken into account in determining the criterion of diligence in this action.  In this case the applicant to serve further evidence served its evidence in answer within the statutory three month period, and provided its proposed further evidence at the same time as its application to serve further evidence, within two months of the evidence in reply being served.  Thus there is no basis on which to question the applicant's lack of diligence.

The question of the opponent's prior diligence or lack of it is, in my view, irrelevant to the decision on whether the applicant's application should be granted.  In the present case, unlike the Sandoz decision (supra),  it is the applicant not the opponent who is seeking to serve further evidence.

I will now deal individually with the allegedly new matters which I determine from the application and Mr Mansfield's declaration.

1. The first issue alleged by the applicant to be new matter is that Mr Lee stated in the evidence in reply that in methanol synthesis "To correct this non-optimum gas mixture, a two-step reforming is often used.." (emphasis added by Mr Mansfield).  In his declaration, Mr Evans argued that no assertion regarding frequency of use of a two-stage reforming process in methanol production had been made prior to the evidence in reply.

Mr Terry submitted that the applicant had misinterpreted the use of the word "often" in Mr Lee's evidence in reply at page 3, that it did not refer to the synthesis of methanol and therefore was not new matter as asserted by the applicant.

I have considered Mr Terry's view of the use of the word "often" in the discussion of one and two step reforming on page 3 of Mr Lee's evidence in reply.  I find it difficult to envision how else the passage may be read except as referring to the frequency of using two step reforming to obtain the required R value of 1.8-2.2 for methanol synthesis.  Further I find that the assertion that this happens often is new matter, not raised earlier either in the evidence in support or in the statement of grounds and particulars.

Thus it would have been unreasonable to expect the applicant to address this point in their evidence in answer.  On this matter, the application meets the test of reasonable diligence.

I find that Mr Mansfield's further evidence is relevant to the question of the frequency with which two-stage steam reforming is used in methanol production.  As regards importance, the opponent by raising it has given it some importance and, followimg the Simac decision (supra), a relevant response by the applicant is entitled to be treated as having the same level of importance.  I further find that there is no reason, on the evidence before me to doubt Mr Mansfield's further evidence on this point.  It therefore meets the third criterion of apparent credibility.

1. From the statements in Mr Mansfield's declaration and from Mr Evans submissions at the hearing it appears that the applicant is concerned that in Mr Lee's discussion of the "Mitsubishi process" in the evidence in reply, he has asserted for the first time that the "Mitsubishi process" is common general knowledge.

In the evidence in support Mr Lee refers to the "Mitsubishi process" in the context of it being a published patent specification.  He makes no statements as to its having ever been used anywhere in the world.  Thus it appears that this process is being discussed only in relation to the ground of novelty.  In Mr Mansfield's evidence in answer he also refers to the "Mitsubishi process" in the context of it being no more than a published patent specification which "a skilled man would dismiss......as a mere paper proposal that is unlikely to be of any practical utility."  In the evidence in reply, Mr Lee comments that certain additions or modifications to the "Mitsubishi process" would be obvious once the "Mitsubishi process" was known, and that it

"would have been obvious to a person of skill in methanol technology at February 1988 to recycle part of the purge from a methanol synthesis loop coupled to the Mitsubishi process to the primary reformer of the Mitsubishi process and to utilise the remainder of the purge gas in a manner that optimised plant efficiency."

The latter is new matter and the opponent has raised it in the context of obviousness.  The applicant's further evidence is directed to the relevance of the "Mitsubishi process" to the question of obviousness and should be accorded the same importance.  On the question of credibility, there is no reason, on the evidence before me, to doubt Mr Mansfield's further evidence on this point.

3.   Mr Mansfield's declaration seeks to rebut the statement in Mr Lee's evidence in reply that "the use of a secondary reformer to achieve a "R" ratio in the range 1.8 to 2.2 is not new and has been standard practice in ammonia plants for over 40 years."  Both the application and Mr Evans' declaration assert that this statement is new matter raised for the first time in the evidence in reply, insofar as it has bearing on the issue of common general knowledge in the relevant art.

Mr Terry submitted that in the evidence in support Mr Lee commented that there was relevant similarity between ammonia and methanol synthesis, he referred to what was known about ammonia synthesis and gave evidence as to his own practical experience with ammonia synthesis. He argued that Mr Lee's evidence in reply on the R value of 1.8-2.2 in ammonia synthesis was merely in response to Mr Mansfield's evidence in answer, where he states that there are significant differences between ammonia and methanol technology.

In the evidence in support, Mr Lee states that a difference between conventional make-gas production and the claimed process is that "the primary reformed gas is partially oxidised by combustion with oxygen to give a R value of 1.8-2.2".  He calculates an R value of 1.9 for the "Mitsubishi process" and then compares relevant parts of the claimed process and the "Mitsubishi process" and asserts that they are the same.

In the evidence in answer, Mr Mansfield disputes the validity of these conclusions.  He also states that "while ammonia synthesis gas production generally utilises primary and secondary catalytic steam reforming (using air as the oxygen-containing gas supplied to the secondary reforming stage)......most methanol plants employ only a primary catalytic reforming stage."

In the evidence in reply, Mr Lee repeats his statement that an R value of 1.8-2.2 is obtained in the "Mitsubishi process", and further states that "the use of a secondary reformer to achieve an R value of between 1.8 to 2.2 is not new and has been standard practice in ammonia plants for over forty years."

Although the questions of whether there are similarities between ammonia and methanol technologies, and whether an R value of 1.8-2.2 is obtained in the "Mitsubishi process" have been discussed earlier in the evidence, the specific assertion of R values of 1.8 to 2.2 being used in ammonia processes for over forty years was not raised before the evidence in reply.  Thus I find that this specific assertion is new matter, the applicant could not have been expected to deal with it in the evidence in answer, and the criterion of reasonable diligence has been met.

An R value of between 1.8 and 2.2 is a limiting feature of the invention claimed and this last evidence is relevant to the ground of obviousness.  The opponent has raised it and the applicant's further evidence in response should be accorded the same importance.  On the last criterion, Mr Mansfield has provided detailed technical reasoning to support his position, and I have no reason to doubt this.  I find his evidence apparently credible.

1. The issue of Mr Mansfield's expertise was raised by Mr Lee in his evidence in reply.  The applicant now seeks to rebut Mr Lee's assertion that Mr Mansfield appeared to have no chemical engineering knowledge.

In his declaration, Mr Evans argued that the issue of the skilled addressee being a chemical engineer rather than a chemist was canvassed for the first time in the evidence in reply and hence Mr Mansfield's further evidence as to his own expertise was not relevant until after the evidence in reply was served.  Mr Terry for the opponent presented a different view, arguing that the allegedly new matter was nothing more than a proper reply to the evidence in answer and that Mr Mansfield could have more fully stated his own expertise earlier, but chose not to.

In the several stages of evidence neither party has questioned that chemical engineering is a relevant art.  Mr Mansfield could have included more detailed information on his own expertise in the evidence in answer.  However he did not and it was the opponent's questioning of that expertise in the evidence in reply which made it an issue of particular importance. 

The evidence in this instance is different in kind from the three matters discussed earlier.  It is not evidence which goes directly to the grounds of opposition.  However Mr Mansfield's credibility is clearly of importance to the applicant's case as it underpins all their evidence.  It is important that the applicant has the opportunity to rebut the assertions which attack his credibility.  In my view, in these circumstances, rigid application of the criterion of diligence would not be appropriate. 

Mr Mansfield's evidence on this point is in accord with his evidence in answer and therefore apparently credible.

On the question of whether granting this application would unnecessarily delay resolution of the opposition, I find that since the applicant has already provided the further evidence, the further delay involved in allowing the opponent time to respond to the applicant's further evidence is not significant.  It is the opponent's action in raising new evidence at a late stage in proceedings which has given rise to the applicant's request.  If I grant the application the opponent will be given a period in which to respond to the further evidence and there will not be any injustice done to the opponent.

CONCLUSION

I have found that there are four matters which the applicant asserts were raised for the first time in the opponent's evidence in support. Of these, three meet all the criteria set out above for the Commissioner to exercise his discretion to grant an application to serve further evidence.  Although the issue of Mr Mansfield's chemical engineering expertise does not clearly meet the criterion of diligence, in my view, this alone should not prevent the applicant serving further evidence on this matter which is fundamental to their whole case.

Having considered all the circumstances I grant the application to serve further evidence on all four matters.  Bearing in mind that the applicant has already served its further evidence and that the opponent has had both opportunity and cause as a result of their participation in this action to become familiar with the details of the further evidence, I allow the opponent one month from the date of this decision in which to file evidence in response.

COSTS

Both parties made submissions on costs.  In actions before the Commissioner, costs usually follow the event.  In this case I have found in favour of the applicant on all the issues raised.  Considering all the circumstances I award costs against the opponent.

W. GUNAWARDANA
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde and Fitzpatrick, Melbourne

Patent attorneys for the opponent   :  Griffith Hack and Co, Sydney