John Andrew Willems v Total Energy Systems Limited
[1998] APO 19
•3 April 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 6 in the name of
Title:
Action:
Decision: Issued .
Abstract
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. by
background
Patent application 653673 was filed on 25 February 1993 by John Andrew Willems (WILLEMS) claiming priority from provisional application PL 1872 which was filed on 13 April 1992. The application was advertised accepted on 6 October 1994.
Total Energy Systems Limited (TES) filed a notice of opposition to the grant of a patent on the application on 4 January 1995 and a statement of grounds and particulars on 4 April 1995. The opponent served their evidence in support in time on 4 July 1995, and the applicant served their evidence in answer in time on 3 October 1995. The opponent did not serve evidence in reply.
The matter was heard in Brisbane on 7 September 1997. Dr Kevin M. Pullen, patent attorney of Pizzeys, represented the applicant and Ms Alison McMillan assisted by Dr Ian de Jonge, patent attorneys of Cullen & Co., represented the opponent.
PRELIMINARY MATTERS
The issue of a potential conflict of interest was raised the day before the hearing by Dr Pullen. He informed me and the attorneys for TES by facsimile that he had previously acted for the opponent in preparing a provisional patent application a few years prior to 1995. I allowed the opponent seven days from the date of the hearing in which to make submissions on the issue. None were made. I note that there is no action for “conflict of interest” per se under the Patents Act 1990. As both parties have been made aware of the facts, there is no need for me to consider this further and I will not do so.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars states the following, in summary:
Under s.59(1) (sic) of the Patents Act 1990, the nominated person is not entitled to a grant of a patent for the invention because the nominated person developed the invention as claimed in any one of claims 1 to 14 while in the employ of another person or company. The other person or company was entitled to have any invention made by the nominated person assigned to it.
Under s.59(b) of the Patents Act 1990, the invention as claimed in any one of claims 1 to 7 and 12 is not a manner of manufacture within the meaning of section 6 of the Statute of monopolies in that it is a mere admixture of known ingredients, ie water, a carbonaceous fuel such as sugar and a thickener such as a gum.
Under s.59(b) of the Patents Act 1990 the invention as claimed in any one of claims 1 to 14 was published in the following documents before the priority date of each of the claims or is otherwise not novel :
(a) US 3834954
(b) US 4685375
(c) US 4614146
(d) US 4427465
(e) US 3681156
f) AU 13293/76
(g) ZA 1614/89
(h) CA 1244244(I) US 4081299
(j) GB 1238818
(k) US 3507718
(l) AU 51326/79
Under s.59(b) of the Patents Act 1990:
(i) The invention as claimed in any one of claims 1 to 14 did not involve an inventive step and was obvious to a person skilled in the relevant art and in the light of common general knowledge in Australia before the priority date of each of the claims in that each feature or combination of features claimed was part of the common general knowledge of the skilled person in the relevant art in Australia. The relevant art is that of explosive formulations and in particular slurry explosives. These explosives were developed in about 1950 and are now one of the most widely used blasting agents. It was well-known in the art to formulate explosives using an inorganic oxidising salt, a carbonaceous fuel, water, gelling agent and cross-linking agent. It was also common general knowledge in the art to use two part formulations which are mixed on site. This enabled safe transportation of the respective parts.
Further, to change the order in which known components are mixed to provide a known formulation having known properties does not involve an inventive step and was merely a variation easily able to be made by an average worker in the field of explosive formulations before the priority date.
(ii) The invention as claimed in any one of claims 1 to 14 lacked an inventive step and was obvious to a person skilled in the relevant art in the light of any one of the documents (a) to (l), listed above, and (m) to (p), listed below, together with the common general knowledge in Australia before the priority date of each of the claims:
(m)US 3713918
(n)US 3477888
(o)AU 24257/84
(p)US 3333998
(q)US 414044
A person skilled in the art would reasonably expect to have ascertained, understood and regarded these documents as relevant.
Under s.59(c) of the Patents Act 1990, the complete specification does not comply with Sections 40(2)(a) and 40(3):
(a)The specification does not describe the invention fully.
(i)The specification refers to a water gel explosive whereas the explosive described would appear to be a slurry explosive which is not a gel.
(ii)The specification alleges that the process described therein provides a “stable, substantially homogeneous system at low temperatures”. There is insufficient information regarding mixing conditions, cross-linking agent and relative amounts of components to enable the method to be carried out in a manner which will achieve the promise of the invention.
(b) The claims are not clear.
(i)Claims 5 and 6 (sic) are not clear as to the amount of gelling or thickening agent in the composition. The maximum amount of gelling or thickening agent is 80% but the claims limit the amount of carbonaceous fuel to be not less than 80%.
(ii)Claim 10 is not clear because it depends from claims 8 & 9 and claims a formulation obtained by these methods. The presence of the oxidising salt and omission of a cross-linking agent in claim 10 is inconsistent with the components provided in claims 9 and 10.
(iii)Claim 8 and claim 10 are unclear as to the respective scope and meaning of the terms “oxidising agent” and “oxidising salt”.
(c) The claims are not fairly based on the specification.
(i)Claims 1 to 14 do not contain any limitations as to the amounts of each component. There is no basis in the specification for a formulation containing any possible amounts of components.
(ii)Claims 6 and 7 define a composition having particular weight ratios of a carbonaceous fuel. There is no support in the specification for these ratios.
(iii)Claims 1 to 7 and 12 claim a composition for use in any explosive. The claims are not restricted for use in a method which is the subject of the invention.
(iv)Claims 10 and 11 are not limited to the features defined at page 6, lines 12 -18 of the specification.
MATTERS TO BE DECIDED
Briefly, the matters to be decided are whether:
the applicant is entitled to a grant of a patent on the invention the subject of the application;
the invention defined in the claims is not novel in the light of certain prior documents;
the invention as defined in the claims was obvious and did not involve an inventive step in the light of common general knowledge;
the invention as defined in the claims 1 to 7 and 12 is a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies as it is a mere admixture of known components;
the complete specification does not comply with s.40(2)(a) and 40(3) of the Patents Act 1990.
SUBMISSIONS
The opponent made submissions on all these matters except the issue of entitlement. The applicant made submissions on all these matters. I will refer to these submissions as appropriate below.
DECISION
Evidence
The evidence filed in this matter comprises, as evidence in support, two declarations, which I will refer to as the major and minor Harman declarations made by Kevin James Harman; and, as evidence in answer, a declaration made by John Andrew Willems. The declarant for the opponent, Mr Harman, has considerable experience, dating from 1977, in the explosives industry, in particular with “water gel” explosives. He is also the Managing Director of Total Energy Systems Limited, the opponent.
Mr Willems, applicant and declarant, has considerable experience dating from 1975 in the explosives industry including handling and test firing of explosives, primarily ANFO and ANFO related products, “training of operators in the manufacture of water gel explosives,.....package production and bulk pump truck operations”.
The Harman declarations are accompanied by a number of exhibits. At the hearing the attorney for the applicant raised the issue of the absence of independent means to establish the publication dates of the documents cited in the evidence and stated that the applicant did not make any formal acceptance of their publication prior to the priority date of the claims. However all the patents would, in accord with normal publication practice for patents, have been published in Australia well before the priority date. Further Mr Harman declared that all the documents including the extracts from two technical reference books were published prior to the priority date of 13 April 1992. I have no reason to doubt his declaration. I find all the documents published in Australia in time.
There is no specific evidence before me that any of the documents referred to were such that a “skilled person.........could before the priority date of the claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area” as required by Section 7(3) of the Patents Act 1990. From the specification the relevant art may be described as the commercial formulation of slurry explosive compositions, and the person skilled in the art is the person who formulates such compositions.
It does not automatically follow from an absence of evidence that a skilled person would not have “ascertained, understood and regarded as relevant” these documents. I note the applicant’s submission that there is no evidence that a skilled person would consult patent specifications in seeking to address the disadvantages overcome by the invention. However it is clear from the evidence that explosives formulation and supply for the mining industry is a competitive business and one in which it is reasonable to conclude that participants would have a real interest in keeping abreast of their competitors’ developments, both to maintain competitiveness and to avoid infringement. Thus, on the balance of probabilities, I find that at least British Patent Specification, GB 1238818 by African Explosives and Chemical Industries Limited, Australian Patent Specifications AU 470938 by Donald M. Stromquist and Boyd J. Wathen and AU 470938 by Dyno Industries A.S. “could have been reasonably expected to have been ascertained” by the skilled person. In considering the content of these documents I find that they would have been “understood” by the skilled person. I will discuss their relevance in my discussion of inventive step below.
Entitlement
The minor Harman declaration is directed to this matter. No submissions were made on behalf of the opponent, TES, at the hearing. Dr Pullen for the applicant, Mr Willems, submitted and I agree that this declaration does not identify that Mr Willems’ duties as Plant Manager during 1989 and 1990 included the developing and testing of sugar slurries which was being undertaken by TES at that time. Mr Willems’ own declaration only refers to his involvement in “package production and bulk pump truck operations” and to his ongoing work with his own company. Although this Harman declaration makes some further statements on TES operations and Mr Willems’ earlier employment history, they seem to have little relevance to the question of TES’s entitlement to an invention made by Mr Willems. On the evidence, I think it is unlikely that Mr Willems’ duties with TES were such as to entitle TES to have any invention made by Mr Willems in the field of explosives formulations assigned to it. In addition there is no evidence that Mr Willems’ invention was made during the time he worked for TES. On this basis I find that it is Mr Willems who is entitled to a grant of a patent for this invention.
Common general knowledge
The common general knowledge on which the opponent relies is outlined in the statement of grounds and particulars.
Mr Harman has declared in the evidence in support that the following is common general knowledge:
“Slurry explosives were developed in the 1950’s and are now widely used explosives in open-pit mining. Slurry explosives generally contain a fuel and ammonium nitrate dispersed in aqueous solution. The fuel may be any combustible material and may include non-explosive fuels such as hydrocarbons, carbonaceous and cellulosic materials and heat-producing materials such as aluminium and silicon. These slurries are made water resistant by means of hydrophilic colloids such as guar gum. Cross-linking agents may also be added. Slurry explosives produced according to the above formulations were well known and have been widely used in Australia before 13 April 1992. One example of these explosives is the Gulf range of explosives. These explosives have been manufactured and used in Australia well before 13 April 1992.
“Slurry explosives may be produced in either of two ways. First they can be prepared off site and transported to the mine site where they are pumped into bore-holes. Alternatively, the explosives may be mixed on site. Typically the oxidant is added to a non-explosive pre-mix composition. The principle of adding an oxidising agent to a pre-mix was known and practised in Australia by the average skilled worker prior to 13 April 1992.”
Mr Harman seeks to “illustrate this point” by “reference” to a number of patent specifications which he states were published prior to 13 April 1992 and which disclose “the addition of ammonium nitrate to a non-explosive pre-mix containing a fuel.”
He further states that:
“The application claims to overcome these problems by adding the oxidising agent to a pre-mix containing the fuel, water and gelling or thickening agent. However, such a procedure for formulating a slurry explosive was well known in the art and published in Australia prior to 13 April 1992...”
“the use of two part formulations was standard practice and well known in the art in Australia prior to 13 April 1992.”
“There is nothing new or surprising in using a carbohydrate and raw sugar in a slurry.
“Sugar is indeed a prior art fuel as shown by the numbers of patents directed to sugar slurries, the following of which are examples.”(There follows a list of ten United States and one Australian patents, selected from the exhibits all of which disclose the use of sugar, in a number of forms such as molasses or granulated sugar, in slurry explosives.)
“The use of carbohydrates and sugar have also been listed in standard texts such as those exhibited sheets as KH-3 and KH-4 (sic).”
“Water, thickener and a fuel are conventional components used in slurry explosives and were in use and well known in Australia well before 13 April 1992.”
“The addition of a cross-linking agent to a slurry explosive was well known and practised in the field in Australia prior to April 1992.”
There is no evidence before me that the documents referred to by Mr Harman are themselves common general knowledge. Although Mr Harman refers to them in “reference” to “what was generally known in the art”, he has not asserted that they were in fact common general knowledge in Australia. As there is no evidence that any of these documents are common general knowledge the weight that I can put on them in support of Mr Harman’s statements is quite low. However, where their content supports his assertions of common general knowledge, that would lend weight to his statements and similarly if they were in conflict that would detract from his assertions. Having considered the documents to which he refers I find that, in general, they support his assertions with the exception of his statements that:
“.....such a procedure” (adding the oxidising agent to a pre-mix containing the fuel, water and gelling or thickening agent) “for formulating a slurry explosive was well known in the art and published in Australia prior to 13 April 1992.”
“Typically the oxidant is added to a non-explosive pre-mix composition. The principle of adding an oxidising agent to a pre-mix was known and practised in Australia by the average skilled worker prior to April 1992.”
While several of the documents do disclose adding an oxidising agent to a pre-mix in the sense used in the present application their disclosures are, in my view, insufficient to support the proposition that this is well-known or “typical”. In my view this low level of support does not detract from his assertions but neither does it lend weight to them. I find that it is neutral in this respect.
In their submissions the applicant expressed reservations as to Mr Harman’s independence as a witness because of his position as managing director of the opponent company. These reservations were not supported by any other evidence of conflict in the facts which would support a suggestion of bias. In the applicant’s evidence in answer, Mr Willems has not contested any of the statements of common general knowledge made by Mr Harman.
On balance, I find that taking these factors into account, in the light of his lengthy experience in the industry and despite his position as managing director of the opponent company, I have no reason not to accept Mr Harman’s statements of what constituted common general knowledge in Australia before 13 April 1992. I accept these statements and will give them weight in keeping with the level of support provided by the documents to which he has referred.
The specification and section 40 matters
The specification is stated as being directed to a water gel explosive formulation which comprises a stable, substantially homogeneous system at low temperatures which can be reliably detonated, and which is applicable to simple, low-cost preparation at either the plant or blasting site. The formulation is stated as comprising a carbonaceous fuel, a gelling or thickening agent, water and, optionally, a sensitiser to which is later added an oxidising agent and, if required, a cross-linking agent. Water gel, ie “slurry”, explosive formulations comprising an inorganic oxidising salt, a fuel, water and a gelling or thickening agent in combination with suitable cross-linking agents are stated to be widely used in commercial blasting operations.
Various advantages are stated for the invention:
the premix is non-explosive and can easily be carried to the blasting site;
the preferred prime component, raw sugar, is inexpensive and a readily obtainable indigenous product;
both the premix and the final explosive formulation can be prepared at ambient temperatures;
the final explosive formulation will remain substantially homogeneous for several hours or longer;
it resists solidification at low temperatures and remains effective at temperatures as low as 5oC.
There are fourteen claims:
A composition for use in an explosive, said composition consisting of:
1)a carbonaceous fuel
2)a gelling or thickening agent; and
3)water.
A composition as defined in Claim 1 further comprising a sensitizer.
A composition as defined in claim 1 or Claim 2 wherein said carbonaceous fuel is a carbohydrate.
A composition as claimed in Claim 3 wherein said carbohydrate is selected from one or more of the following compounds: sugar, a sugar derivative, molasses and syrups derived from the sugar cane plant.
A composition as defined in Claim 4 wherein said carbohydrate is raw sugar.
A composition as defined in any one of Claims 1 to 5 wherein said carbonaceous fuel to said gelling or thickening agent is in the ratio of 80-99.5% : 0.5-80% by weight.
A composition as defined in anyone of Claims 2 to 5 wherein said carbonaceous fuel to said gelling or thickening agent to said sensitizer is in the ratio of 80-99.5% : 0.5-80% : 1-12% by weight.
A method of preparing an explosive formulation, said method comprising: adding an oxidising agent to the composition as defined in any one of claims 1 to 7.
A method as defined in claim 8, further comprising adding a cross-linking agent.
An explosive formulation when prepared by the method of claim 8 or 9, said formulation comprising:
1)a composition as defined in any one of Claims 1 to 7; and
2)an oxidising salt.”
An explosive formulation as defined in Claim 10, further comprising a cross-linking agent.
A composition as defined in Claim 2, substantially as hereinbefore defined with reference to the Examples.
A method of preparing an explosive formulation as defined in Claim 8 substantially as hereinbefore defined with reference to the Examples.
An explosive formulation as defined in Claim 10, substantially as hereinbefore defined with reference to the Examples.
The accuracy of the term “water gel explosive” as opposed to “slurry’” has been queried by the opponent. However from the evidence in support this is a common, if “technically improper”, use of the term and, considering the specification as a whole, it is unlikely to cause difficulty to the skilled addressee. I find that its use does not detract from a full description of the invention. See AMP v Utilux (1971) 45 ALJR 123 at p.128:
“...if a man skilled in the art can easily rectify the mistakes......the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct mistakes.... has been stated to be this: Can he rectify the mistakes........without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient.......”
The clarity of the two terms “oxidising agent” and “oxidising salt” as used in claims 8 and 10 was also queried by the opponent. These terms have clear and different meanings in the art which are consistent with their use in the description and claims. “Oxidising salt” has a narrower scope and is encompassed within “oxidising agent”. I find these claims clear in this respect.
The specification identifies as a particular problem the tendency for slurry explosive formulations to separate and settle into layers of uncertain explosive properties, especially under low temperature conditions, when left standing for any significant period of time even when prepared on site. Previously gelling agents or thickeners, either alone or in combination with cross-linking agents, were used to reduce the tendency for the components to separate and form layers. But these were not entirely satisfactory, particularly at low temperatures where there was still a tendency to solidify.
It is stated to be an object of the invention to provide a “water gel explosive formulation which comprises a stable, substantially homogeneous system at low temperatures which can be reliably detonated, and which is applicable to simple, low-cost preparation at either the plant or blasting site.” It is stated that this can be achieved by a method comprising the steps of “first preparing an aqueous solution comprising a carbonaceous fuel and gelling/thickening agent and, optionally, a sensitizer, to which is later added an oxidising agent and, if required, a cross-linking agent(s).
The opponent has submitted that there is insufficient information regarding mixing conditions and relative amounts of the various components to enable the method to be carried out in a manner which will achieve the promise of the invention, ie to provide a “stable, substantially homogeneous system at low temperatures.” The applicant, on the other hand, has submitted that it would be clear to the person skilled in the art, or at worst would require some routine experimentation to determine which of the possibly infinite number of combinations of the three or more components defined would have the required properties. I note that these latter assertions do not accord well with the applicant’s proposition that the composition defined, and somehow limited by the term, “for use in an explosive”, in the claim is novel and inventive over known compositions including these components.
The description attempts to provide guidance as to the limits applicable where the carbonaceous fuel is a 24-96% sugar solution, in which case the ratio of the sugar solution : gelling agent : sensitiser is stated to be 80-99.5% : 0.5-80% : 1.0-12%. It is clear that there is an error in these percentages in that these limits, eg in the case where there is 80% gelling or thickening agent, require a composition totalling at least 161%, and if there is 99.5% sugar solution the composition totals at least 101%. Claims 6 and 7 contain similar errors. The correction of these mistakes is not obvious on the face of the document. In addition, no evidence has been put forward to assist in resolving them. Thus I find that the specification fails to describe fully the best manner of performance of the invention and in this respect does not describe the invention fully.
The scope of the claims was the subject of submissions. The opponent argued that claim 1 was not restricted to a three component composition despite the use of the word “consisting” in the claim and the assertion in the evidence in answer (paragraph 30 of the Willems declaration) that the composition consisted of only the three components listed, ie a carbonaceous fuel, a gelling or thickening agent and water.
The description does not support this restriction because in the statement of invention the composition includes “optionally, a sensitiser”. The preferred composition includes a sensitiser and “Example 1” includes 4% of sodium, ammonium or potassium perchlorate, ie a sensitiser. In fact there is no example described without the sensitiser.
I also note that since claim 2, dependent on claim 1, includes the sensitiser, the usual interpretation would require that the possibility of inclusion of a sensitiser is intended to be within the scope of claim 1. Further, in the specification as filed the words used in claim 1 were “a composition comprising.....”. Although “comprising” may, in accord with the decision in WR Grace v Asahi 25 IPR 481 be interpreted, depending on circumstances, either as “consisting only” or as “including”, the present circumstances dictate that in the claim as filed “comprising” meant “including”. The introduction by amendment of the word “consisting” has had the effect of limiting claim 1 to a composition of three components only, in accord with the long established interpretation of this word. This raises issues of fair basis with which I will deal later.
To summarise, the absence, as also the presence, of a fourth component, the sensitiser, is clearly an optional not an essential feature of the invention. The description clearly envisages a premix which may incorporate a sensitiser. I find that it is not an essential feature of the invention described that the composition be restricted to three components only. I find that it is essential that the premix composition has at least the following three components: a carbonaceous fuel, a gelling or thickening agent, and water and that it may or may not, optionally as required, include other components known to the person skilled in the art to have suitable properties. In particular it may include a sensitiser. Similarly it follows that the first step of the method of the invention is not limited to the preparation of a composition with only three components.
I have some difficulty in determining the scope of the claims in relation to the limitation inherent in the term “for use in an explosive” in claim 1. There is little evidence before me as to what this phrase means in practical terms. The opponent has submitted that these claims are not fairly based because they include within their scope compositions not restricted to being able to be used in the method of the invention. The applicant argued that the person skilled in the art would have no difficulty in determining what was suitable. Applying a purposive construction to the claims (in accord with the principles set out in Decor Corp v Dart Industries 13 IPR 385) it is clear that any optional components together with the three main components must be chosen so as to avoid making this “premix” composition itself explosive as this would defeat one of the primary objects of providing such a premix, ie that it is non-explosive and therefore safe to handle.
It was further argued that if claim 1 was, as I have found above, limited to a composition with only three components then it was not fairly based on the specification.
The law on fair basis has been reviewed by the Federal Court in CCOM Pty Ltd & Ors v Jiejing Pty Ltd & Ors (1994) AIPC 91-079. The passage at 38,452 is applicable:
“Certainly, the Australian case law includes examples where there has been a lack of fair basing because of the total silence of the basic application as to a feature of the invention as claimed. That is but another way of saying that there cannot be a real and reasonably clear disclosure of what has become an integer in the claim if what is involved is the selection in the claim of one compound with special qualities from a class of compounds disclosed in the provisional specification. An example is the decision of the Full Court in Cooper’s Animal Health Australia Limited v Western Stock Distributors Limited (1988) AIPC 90-491 at 38,258-38,260, 38,267-38,268; (1987) 15 FCR 382 at 389-391, 400-401. There the claim in the petty patent for the formulation including DGBE as a carrier could not be regarded as a more specific application of what was claimed in the provisional specification; rather it was the result of further experimentation and was properly regarded as involving an inventive step beyond the disclosure in the provisional specification. Whilst some generality of expression in the provisional specification was acceptable, nevertheless a reading or study of it would not lead by a process of selection to that which was later claimed.”
The proposal implicit in the limitation of claim 1 to only three components, and explicit in the applicant’s arguments, is that this composition has special properties which distinguish it from a composition which includes other optional components. However there is no disclosure of such properties in the specification as filed. In addition as no reference is made in the body of the specification to any embodiment or alternative with only three components, the specification may fairly be described as wholly silent on this feature. It can also fairly be said, in line with the Coopers decision, that a reading of the specification does not lead one to this aspect of the claim. Thus I find claim 1 not fairly based on the description. Although it is not an issue in this action, I note also that this claim is, for the same reasons, “not in substance disclosed” in the specification as filed.
Claims 6 and 7 require the carbonaceous fuel per se to be in a given ratio with the other components. This is in conflict with the description which requires an aqueous solution with a given concentration range of the carbonaceous fuel to be in that ratio. I find that claims 6 and 7 are not fairly based on the matter described in the specification.
From a reading of the specification as a whole, I find that the invention disclosed can be fairly said to reside in a premix composition comprising a carbonaceous fuel, a gelling or thickening agent, water and, optionally, a sensitiser and in a method of preparing an explosive composition in which the oxidising agent is only added to the premix shortly before the explosive composition is to be detonated. The two step process is intended to ensure that the explosive is effective and the provision of the premix is intended to make the process more convenient and enhance its effectiveness. The alleged inventive concept resides in the provision of a premix with at least these three components, in suitable proportions able to be determined by the person skilled in the art, and which allows for addition of the oxidising agent on site shortly before use.
Novelty and inventive step
The test for anticipation is the reverse infringement test as set out in Meyers Taylor
Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at p. 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 all the essential features of the invention claimed are disclosed by the alleged anticipation. (Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at p.549.)
The prior art base against which novelty is tested is publicly available prior art information as set out in Section 7(1) of the Patents Act 1990.
For inventive step, the general test to be applied is set out in Wellcome Foundation v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at p.286:
“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.”
The prior art base for inventive step is set out in sections 7(2) and 7(3) of the Patents Act 1990 and comprises common general knowledge either taken alone or together with prior art information which is such that a “skilled person.....could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.”
As discussed above, the specification identifies as a particular problem the tendency for slurry explosive formulations to separate and settle into layers of uncertain explosive properties, especially under low temperature conditions, when left standing for any significant period of time even when prepared on site. Previously gelling agents or thickeners, either alone or in combination with cross-linking agents, were used to reduce the tendency for the components to separate and form layers. But these were not entirely satisfactory, particularly at low temperatures where there was still a tendency to solidify.
Submissions were made with respect only to GB 1238818 , AU 597686, AU 470938, the three most relevant documents. I have already found that these were published in time and are such that a skilled person could “be reasonably expected to have ascertained, understood and regarded as relevant.”
In considering the novelty of claim 1 at the hearing I referred to the everyday household use of gelling agents, ie gelatine, in food preparation. This use is well known and has been for many years before the priority date of this application. To my personal knowledge one practice is to dissolve gelatine in water and add sugar to form a basis for a range of desserts. The proportions of the various components are varied depending on the degree of stiffness required in the final food product. Dr de Jonge for the opponent concurred with my suggestion that this could fall within the scope of claim 1. Dr Pullen for the applicant made no comment. Despite there having been no evidence presented as to this practice, I think it is such a common practice that I can find that this common household use of gelatine, sugar and water makes claim 1 not novel.
[Subsequent to the hearing, in support of my personal knowledge, I found published evidence of compositions of only three components, ie sugar, water and gelatine, used to make marshmallow. These publications are “The 21st Birthday Cookery Book” of the Country Women’s Association in Tasmania, published in 1963 which discloses the components of marshmallow topping as 1/2 cup of water, 1 cup of sugar, and 1 tablespoon of gelatine; and “The St George ‘All Electric’ Cookery Book” published by the St George County Council, no publication date given, but priced at 5 shillings, ie pre-decimal currency, which discloses the components of a marshmallow topping as 1 cup of sugar, 1 cup of water and 1 tablespoon of gelatine. The proportions of sugar, water and gelatine disclosed in these recipes are clearly within the range set out in the current application, ie an initial aqueous solution prepared by adding raw sugar in the range 24-96%, and the ratio of aqueous sugar solution to gelling agent of 80-99.5% : 0.5-80% (sic)]
However I do not believe that knowledge of such common household use can be inferred to extend to the person skilled in the art of slurry explosive formulation. Consequently claim 1 is not obvious and lacking in inventive step in the light of this knowledge
GB 1238818 discloses a gelled premix containing molasses to be mixed on site with the explosive ingredient, eg particulate ammonium nitrate and aluminium; and, optionally, additional fuel. One of the problems to be overcome is the difficulty in retaining the homogeneity of the composition and thus avoiding detonation failures.
The premix is described as a “composition not containing the explosive ingredient.” Components of the premix may be water, guar gum, carboxymethylcellulose, sodium nitrate and molasses. The ratios of these components in the premix may be eg. 9.0 : 0.3 : 0.4 : 3.0 : 6.8, ie 46% water, 1.5% guar gum, 2% carboxymethylcellulose, 15% sodium nitrate, 37% molasses. Guar gum is the “most popular” of a wide range of gelling agents but molasses interferes with the guar gum cross-linking process. The carboxymethylcellulose is included to counteract this interference. Trinitrotoluene may be added as a sensitiser. A comparative premix example which omits carboxymethylcellulose is also disclosed.
The final slurry explosive may contain 50-80% by weight of the inorganic oxidising salt (eg prilled ammonium nitrate), 12-16% water, 2-8% by weight of molasses, 0-15% of additional fuel (eg aluminium), 0.2-1% of galactomannan gelling agent(eg guar gum) and 0.2-5% of carboxymethylcellulose as a viscosity controlling agent. One example has 19.5% premix, 70.5% prilled ammonium nitrate and 10% aluminium.
The opponent has argued that although this premix contains sodium nitrate which is an oxidising agent, it is only present as a very minor component, that it is stated that the premix remains non-explosive until the major oxidising agent is added on site, and this achieves the same result as the present invention. The applicant has argued that because the sodium nitrate included in the premix in this document is an oxidiser this premix is outside the scope of the premix claimed.
It is clear that the prior document discloses a non-explosive premix including the first three components claimed in the current application. As discussed above, other components may be added to the premix of the present invention provided the premix retains the non-explosive nature which makes it suitable for the use envisaged. Even though sodium nitrate may be used as an oxidising agent, ie to produce explosive properties in a composition, it is clear from the document that the quantities used in the premix do not make it explosive.
The other components fall within the scope of those defined in the claims of the present application. In particular the guar gum with carboxymethylcellulose, or guar gum alone in the comparative example, fulfils the function of a “gelling or thickening agent”. I note that the present application refers to the gelling agent as being able to “be any suitable compound(s) well known in the art”, ie the gelling agent is not limited to being a single compound. The extra aluminium as fuel is an optional component known to the person skilled in the art. Thus the composition, even including the presence of a small amount of sodium nitrate, ie in an amount which does not make the premix explosive, falls within the scope of the invention claimed. The document discloses all the essential features of the invention described and all the features of claims 2 to 4 and 8 to 11. I will deal with claim 1 later.
I find claims 2 to 4, 8 to 11 not novel in the light of GB 1238818.
The problem sought to be addressed by the current application is to overcome the tendency for known slurry explosive formulations, incorporating gelling or thickening agents, to separate and settle into layers of uncertain explosive properties when left standing. GB 1238818 is also directed to overcoming problems of separation of explosive components and resulting detonation failures. It would thus be considered by the skilled person as being relevant to the problem to which the present application is directed.
This document discloses non-explosive premixes for use in slurry explosive formulations including all the essential features of claims 2 to 4, 8 to 11. These prior compositions which fall within the scope of the present claims will have the essential properties of the compositions claimed. Thus there is no inventive step in selecting them for use in addressing the same problem that they have already been used to address. The argument presented by the applicant, in essence that prior compositions were less successful in overcoming the problem, is irrelevant because these prior compositions are within the scope of the claim. As there are no special properties disclosed for other known alternatives falling within the scope of the claim, selection of these would be a matter of routine to the person skilled in the art. Thus the claims lack inventive step and are obvious.
Dependent claim 5 is limited to a premix in which the fuel is raw sugar, which is not disclosed by this document. The omnibus claims, 12 to 14, are also limited to raw sugar and have specific proportions of components which are not disclosed. Because of the error already discussed in claims 6 and 7 it is not possible to determine with any certainty whether this disclosure falls within the scope of these claims. However, I note that the guar gum comprises 1.5% of the comparative premix of the prior document which would appear to be within the scope of that component in both claims 6 and 7.
Further considering claim 5, although the document does not specifically disclose its use, raw sugar is a known carbonaceous fuel commonly used in slurry explosives, as stated in Mr Harman’s declaration and supported by the references to its use in the documents to which he refers. The question is whether it would have been obvious to replace molasses with raw sugar in the composition. They are convenient and cheap alternatives. The present specification ascribes no particular technical advantage or difficulty overcome to raw sugar relative to other fuels. I think that raw sugar would be an alternative fuel that would very readily occur to the skilled worker in the art. The substitution of one for the other may, I think, fairly be described as a mere choice between known alternatives. Thus I find the use of raw sugar obvious and the invention as claimed in claim 5 lacks an inventive step.
I have found despite some difficulties that claim 1 is limited to only three components. As this citation does not specifically disclose a composition with this limitation it does not make claim 1 not novel. The opponent has argued that omission of what is a known merely optional feature does not constitute an inventive step. I agree that the exclusion from a composition of any component described as optional in an earlier publication would clearly not constitute an inventive step and would be obvious. The closest disclosure in GB 1238818 is the comparative example comprising water, guar gum, molasses and sodium nitrate. In this document from the broad statement of the invention and from the claims it is clear that sodium nitrate is not an essential feature of the invention. Although it is not explicitly stated I think it is fair to infer from this that sodium nitrate is also an optional feature in the comparative example. It follows from this that claim 1 lacks an inventive step and is obvious when compared with GB 1238818.
Claims 6 and 7 merely define preferred, if indeterminate, ratios for the components defined. Identification of preferred ranges is a common step to take with any composition. In addition the applicant has argued that the person skilled in the art would have no difficulty in determining suitable proportions. In the absence of any disclosure in the specification of any unexpected advantage or result arising as a result of the choice of a particular range of ratios, such a choice lacks inventive step and is obvious. Thus claims 6 and 7 lack inventive step and are obvious in the light of this document.
Similarly the omnibus claims 12, 13, 14 merely define preferred ranges of preferred components, mere choices amongst alternatives, not resulting in any unexpected advantage or result. Thus claims 12 to 14 also lack inventive step and are obvious in the light of this document.
AU 597686 is directed to the problem of the erratic performance of slurry explosives including the problem of separation over time. It discloses the premixing of a “non-explosive matrix” which is then combined with ANFO.
The matrix composition comprises “an oxidiser solution selected from the group consisting of an aqueous sodium perchlorate solution, an aqueous ammonium perchlorate solution, an aqueous calcium nitrate solution, or a combination thereof; a thickening agent; and a fuel which serves as a dispersing agent for the thickening agent”. The oxidiser solution “also acts as a sensitiser.” The fuel may be ethylene glycol or fuel oil, which are both “carbonaceous fuels”. The thickener may be guar gum and glacial acetic acid. The formulations disclosed include ratios of fuel to gelling agent in the range of 2.85 : 1 to 1.43 : 1. The percentage of oxidiser/sensitiser present ranges from 47.8% to 53.1%. The “guar gum is mixed with the ethylene glycol to form a suspension” and the “suspension is then added to the sodium perchlorate solution, which is supplied commercially in the form of an aqueous solution”. Glacial acetic acid is “added last and the matrix then becomes viscous and honey-like.” This is the non-explosive premix.
The final slurry explosive is formed by mixing ANFO, which is an explosive or oxidising component, with the premix matrix and then adding a cross-linker.
The composition claims of the present application are limited to the extent that the composition must be “suitable for use in an explosive” and must not itself be explosive. Despite the use of the term “oxidiser solution” to describe the premix matrix in this prior document, all the essential features of the composition defined by claim 2 are disclosed. All the essential features of the method claim 8 are also disclosed. Thus I find claims 2 and 8 not novel in the light of AU 597686.
As already discussed, the problem sought to be addressed by the current application is to overcome the tendency for known slurry explosive formulations, incorporating gelling or thickening agents, to separate and settle into layers of uncertain explosive properties when left standing. AU 597686 is also directed to overcoming problems of separation of slurry explosives and resulting detonation failures. Thus I conclude that it would be considered by the skilled person as being relevant to the problem to which the present application is directed.
This document discloses non-explosive premixes for use in slurry explosive formulations including all the essential features of claims 2 and 8. These prior compositions which fall within the scope of these claims will inherently have the essential properties of the compositions claimed. Applying the same reasoning as used above in relation to GB1238818, these claims lack inventive step and are obvious.
The features added by claims 3 to 7 and 9 to 14 are not disclosed in this document. However, the features added may be summarised as either alternatives which are common knowledge in the art or choices of preferred ranges. Similar arguments apply to those used above in discussing GB 1238818. I find these claims lack inventive step and are obvious in the light of AU 597686.
With regard to claim 1, I have found despite some difficulties that it is limited to only three components and as this document does not disclose or suggest such a composition claim 1 is novel over this document. As there is no suggestion in this document that the perchlorate “sensitiser” is optional, I do not find that its omission would be obvious. Thus claim 1 is also inventive with respect to the disclosure of this document.
AU 470938 is directed to a modification of the known method of providing premixed components which are then mixed together on site to produce an explosive composition, with the advantages of greater safety and ease of handling. The modification is directed to overcoming problems in the mixing together of these components arising from one of the components having been “a particulate solid material” and the other component having been a solution. It discloses the formation of two premixes, one incorporating the oxidising salts and the other incorporating “combustible liquids” and, optionally, thickening agents. These are prepared as separate viscous dispersions before being mixed together on site.
The first premix is mainly a mixture of nitrates, ie oxidising salts, with small amounts of ethylene glycol, water, tapioca starch and guar gum. The second premix comprises liquid media, which are themselves “combustible liquids” and which may be ethylene glycol, molasses or an evaporated sulfite liquor, and may also include thickening agents. Sensitisers to be mixed in the “combustible” premix may be flaked aluminium, trinitrotoluene. Other solid, fuel materials may be “powders of coal, asphalt, pitch, peat, wood, cork, bark, or of metals such as aluminium, magnesium, silicon, boron, or their alloys”.
There is no clear teaching in this document of a “combustible” and “non-explosive” premix which must contain both water and a gelling or thickening agent as well as a carbonaceous fuel although that would appear to be within the scope of the various possible alternatives which might be envisaged. While this document clearly discloses the broad principle of providing premixes which are to be mixed later to form an explosive composition on site, it does not disclose compositions with all the essential features of the invention and associated methods the subject of the present application. Thus I find that the invention as claimed is novel in the light of AU470938.
Although this document is concerned with the provision of reliable explosive agents, the particular problem addressed by this document differs from that of the present application in that it is concerned with the difficulty of accurate mixing of dry particulate components with a flow of liquid. Thus it is concerned with the initial homogeneity of the formulation rather than with the problem of ensuring that that homogeneity is maintained over a period. Thus on reading this document the person skilled in the art would not readily find a solution to the problem of separation and layering of explosive formulations. I find that, on balance, it would not be found relevant and the invention claimed is inventive and non-obvious with respect to this document..
Manner of manufacture
The statement of grounds and particulars sets out that the invention is a mere admixture of known ingredients. At the hearing the opponent argued that the invention as claimed was a combination of ingredients known for use in explosive compositions, had no inventive merit beyond what was known and did not have the quality of invention required for there to be a manner of manufacture. The applicant argued that merely because something was a combination of known ingredients did not make it not novel.
I was referred to Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd et al 34 IPR 256 which followed NV Philips Gloeilampenfabreiken v Mirabella International Pty Ltd 26 IPR 513. However this has recently been overturned on appeal to the Full Bench of the High Court in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19, issued 26 March 1998. In the majority decision, at pages 16-17, the Court distinguished s.100 (1)(d) of the Patents Act 1952, which applied to that case, from the parallel s. 138(3)(b) of the Patents Act 1990. Although Philips v Mirabella was further distinguished, at page 19, as having relied on what was apparent on the face of the specification in determining whether or not the threshold requirement of “the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent”, the Full Bench seems to have left the way open for some issues of newness, other than those encompassed by novelty and obviousness, to be considered under the banner of manner of manufacture in the 1990 Act.
In the present case, the Patents Act 1990 is the relevant legislation. However the arguments presented concerning combinations of known ingredients have been dealt with above, where I have found that the compositions claimed are either not novel or obvious. While there may be some residual matters, these have not been identified either in submissions or evidence. Thus I find that there is insufficient evidence to establish that any issues of newness remain which could support an argument that the claims are not in respect of a manner of manufacture.
Regarding the issue of the composition being a mere admixture it is clear from the evidence before me that there is an interaction between the components of the composition which demonstrates that the composition is a true combination even if not a novel one. On this basis also I find that the ground of the claims not being in respect of a manner of manufacture has not been made out.
Costs
Both the opponent and applicant made submissions that costs should follow the event. Although the ground of the application not being in respect of a manner of new manufacture has not been made out, this is not significant in the overall result. Thus I award costs against the applicant, John Andrew Willems.
SUMMARY
I have found that the complete specification of patent application 653673 does not comply with sections 40(2)(a) and 40(3) of the Patents Act 1990 and that all the claims either lack novelty or inventive step. I have also found that the ground that the application is not in respect of a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies has not been made out. I have awarded costs against the applicant, John Andrew Willems. Although it seems unlikely that the specification may be amended to overcome the deficiencies, I am prepared to allow the applicant 60 days from the date of this decision to propose amendments to overcome the deficiencies and I so allow.
Delegate of the Commissioner of Patents
Patent attorneys for the applicant :
Patent attorneys for the opponent :
0
5
0