John Donnelly Johnston v Hi-Fert Pty Ltd
[1998] APO 57
•12 October 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 669403 in the name of John Donnelly Johnston
Subject: Coating granular fertilizers
Action: S.59 opposition by Hi-Fert Pty Ltd.
Hearing
Decision: Issued .
Abstract: Opposition unsuccessful. Claims closely compared with the prior art and found to be novel and involving an inventive step.
Opponent's concerns under S.40 found to be not objectionable.
Opponent was advised that verbal evidence from its declarant was not appropriate in the circumstances.
| patents act 1990 decision of a delegate of the commissioner of patents |
Re:Patent Application No. 669403 by John Donnelly Johnston and opposition under S.59 of the Patents Act 1990 by Hi-Fert Pty Ltd.
background
Application 669403 (52601/93), for a patent for an invention relating to coating granular fertilizers, comprises a complete specification filed on 21 December 1993, with priority claimed from provisional application PL6569 filed on 24 December 1992. The application was advertised accepted on 6 June 1996 and opposed on 4 September 1996. The opponent’s evidence-in-support was served by 4 March 1997, and, after the evidence-in-answer was served, the applicant filed a request to amend the specification. The amendments were advertised as allowable on 4 December 1997, and the opponent’s evidence-in-reply was served by 26 February 1998.
The opposition was heard in Canberra on 15 June 1998. The applicant was represented by Mr Ken Hamilton, patent attorney, and the opponent was represented by Mr John Maciel of Counsel and Ms Catherine Hustwick, patent attorney. Mr Karl Walter, one of the opponent’s declarants, was also present at the hearing.
At one stage whilst arrangements were being made for the hearing the opponent’s attorneys referred to Mr Walter “appearing as a witness”, but the matter was not referred to the applicant’s attorneys in sufficient time for them to prepare for dealing with a witness, so I decided that it was not appropriate for Mr Walter to give evidence at the hearing. However, he had provided evidence in the usual form of written declarations, in the opponent’s evidence-in-support and evidence-in-reply. Under the circumstances, I think Mr Walter not giving verbal evidence-in-chief was the best course of action, since it was highly likely that complications relating to “further evidence” may have arisen; and this would have delayed the hearing and/or possibly resulted in a second hearing. I did allow Mr Walter to make some comments on his evidence at the hearing.
THE SPECIFICATION
The specification indicates that the invention relates to a process relating to coating granular plant fertilizers with mineral nutrients such as sulphur and/or trace elements, which assist in plant growth. Prior art methods of coating the granules with the nutrients mixed with binder materials such as oils or waxes are unsatisfactory because the binder is absorbed into the fertilizer thus eventually reducing adhesion of the nutrients. One prior art method uses concentrated mineral acids to create a reactive layer on the surface of the fertilizer granules, but this method is allegedly inappropriate for some combinations of materials because toxic chemical by-products are produced from chemical reactions between the fertilizer materials and the coating materials.
Another prior art method uses water or a solution of a water-soluble salt to produce a variety of chemical reactions, but this has limited application across the known range of fertilizer materials.
There are 16 claims defining the invention as follows:
“1 . A process for producing a coated granular fertilizer product, wherein granules of fertilizer are mixed with a dilute mineral acid, a desired quantity of a component including sulphur and/or at least one supplemental micronutrient, and an acid neutralising agent, thereby causing liberation of heat energy which removes water as water vapour and at the same time causing precipitation of at least one reaction product of the acid and neutralising agent which binds the component to the surface of the granules in the form of an adherent coat.
2. A process according to claim 1, wherein the granular fertilizer is at least one of single superphosphate, double superphosphate, triple superphosphate, mono-ammonium phosphate, di-ammonium phosphate, urea, ammonium sulphate, potassium chloride, potassium nitrate, potassium sulphate and ammonium nitrate.
3. A process according to claim 1 or claim 2, wherein the acid neutralising agent is or includes an oxide, hydroxide and/or carbonate of calcium, potassium magnesium, sodium and mixtures thereof.
4. A process according to any one of claims 1 to 3, wherein the acid neutralising agent is or includes cement kiln dust.
5. A process according to any one of claims 1 to 4, wherein the component is or includes elemental sulphur.
6. A process according to any one of claims 1 to 5, wherein the component is or includes at least one of copper, zinc, manganese, cobalt, molybdenum, boron, iron and calcium.
7. A process according to claim 6, wherein the component is or includes a copper compound selected from copper oxide, copper sulphate, basic copper sulphate, and mixtures thereof.
8. A process according to claim 6, wherein the component is or includes a zinc compound selected from zinc oxide, zinc sulphate, basic zinc sulphate and mixtures thereof.
9. A process according to claim 6, wherein the component is or includes a manganese compound selected from manganese oxide, manganous sulphate and mixtures thereof.
10. A process according to claim 6, wherein the component is or includes a cobalt compound selected from cobalt oxide, cobalt sulphate, basic cobalt sulphate and mixtures thereof.
11. A process according to claim 6, wherein the component is or includes calcium sulphate and/or a calcium phosphate.
12. A process according to any one of claims 1 to 11, wherein the dilute mineral acid is a solution of sulphuric acid and/or phosphoric acid.
13. A process according to any one of claims 1 to 12, wherein mixing the granular fertilizer with said dilute mineral acid is effected after mixing the fertilizer with the component and neutralising agent.
14. A process according to any one of claims 1 to 12, wherein the component and neutralizing agent are added to the granular fertilizer after mixing the fertilizer with said dilute mineral acid.
15. A process according to any one of claims 1 to 14, substantially as hereinbefore described with reference to any one of the examples.
16. A coated granular fertilizer product produced by the process of any one of claims 1 to 15.”
grounds of opposition
The Statement of Grounds and Particulars alleges that the invention is not novel, is not a manner of manufacture, does not involve an inventive step and does not comply with Section 40. At the hearing the opponent indicated that it was not pursuing the ground of manner of manufacture.
THE EVIDENCE
The evidence-in-support is summarized as follows:
A declaration dated 3 March 1997 by Karl Heinrich Walter, and Exhibits KWH 1-9.
Mr Walter is a very experienced fertilizer technology consultant with the opponent company. He is the inventor in several patents referred to in the prior art. He suggests that:
Neutralising agents such as lime are well-known in the fertilizer industry to minimise free acids and moisture in fertilizer materials.
The present claims are anticipated by or obvious in the light of US Patent 3,419,379 to Goodale and Frump, published in 1968.
The reference in the US patent to fertilizer granules being mixed with oleum discloses both the “mineral acid” and the “component including sulphur” in present claim 1.
It is not important that dilute mineral acids are not referred to in the US patent because the present specification indicates that “the only reasons for using dilute acid are economic”
The present claims are anticipated by or obvious in the light of AU patents 554,749 and 601,099. He was one of the inventors in the former and the sole inventor the latter.
Some parts of the present specification are misleading and/or not clear.
Two declarations from librarians relating to publication dates of some of the evidence.
The evidence-in-answer is summarized as follows:
A declaration dated 22 July 1997 by John Donnelly Johnston, the applicant in the opposed application and inventor of the invention described in the present specification.
Mr Johnson has had many years of research experience in the fertilizer industry in Australia. From 1986 to 1991 he was a research manager at Top Australia Ltd / Pivot Ltd. He suggests that:
Liming agents have been used in the fertilizer industry over a long period of time, but not in the same manner as the present invention.
US Patent 3,419,379 does not anticipate the invention because it does not disclose (a the use of a dilute mineral acid, (b) the mixing of the fertilizer with three distinct components, (c) the loss of water from the system by the heat reaction, and (d) the creation of a reaction product which binds the supplemental micronutrient to the surface of the fertilizer component.
AU 554,749 does not anticipate the invention because (i) the citation is limited to a process for the coating of phosphate-containing fertilizers, and (ii) in the present invention, the binding of the mineral nutrient is not dependent on a reaction between the acid and the fertilizer.
AU 601,099 does not anticipate the present invention because, whilst processes involving dilute mineral acids are disclosed, there is no disclosure of simply mixing fertilizer granules with dilute mineral acid and the other components. Also, the patent cited teaches that a range of steps and a number of chemical reactions are required to form the coating
Mr Walter’s evidence does not fully explain why he thinks the invention is obvious in the light of the cited patents.
A declaration dated 30 June 1997 by Alan K. Kepert, a self-employed chemical engineering consultant with experience in the fertilizer field. Mr Kepert, prima facie, seems to be an independent expert with no direct link to the applicant.
Mr Kepert suggests that the present invention is not anticipated by or obvious in the light of the cited prior art. He points out several differences between the citations and the present invention, and comments thereon.
A declaration dated 23 June 1997 by Salvatore Lancuba, a chemical engineer and currently a manager at Pivot Ltd.
A declaration dated 17 July 1997 by James Gearing, a manager at Pivot Ltd, with a long experience in the fertilizer industry.
Messrs Lancuba and Gearing comment on parts of the Walter declaration which relate to S.40 issues. They suggest that the specification is not ambiguous, that it provides clear instructions, that preferred materials could easily be determined by conducting trials, and that an addressee of the specification could easily conduct the process of the invention as defined.
The evidence-in-reply is summarized as follows:
A second declaration by Mr Walter, dated 26 February 1998, with appendices 1-10.
He suggests that:
Free acids are deleterious in the fertilizer industry and manufacturers have to ensure that their products are neutral or close to neutral to avoid the deleterious effects. Lime, limestone and dolomite have been used by some manufacturers.
He “understands clearly the features of, as well as the misrepresentations in, the Johnson specification”.
The table of examples on page 13 of the specification is insufficient because no details are provided of the sizings and purity of the reactants.
Re US 3,419,379: (i) the addition of trace elements to high analysis fertilizers was, at the time of the US patent, of little interest to the fertilizer industry outside Australia, and sulphur deficiencies were not as common as they are today, and
(ii) no inventive step is required to incorporate supplementary nutrients into the thick film of the reaction products described in the US patent.Neutralizing reactions are disclosed in AU patents 554749 and 601099.
The specification is incorrect when indicating that water is primarily removed by energy generated from the neutralizing process.
A declaration dated 27 October 1997 by Roslyn Jane Baird, a research chemist at Hi-Fert Pty Ltd, who has worked extensively in the field of coated and uncoated fertilizers.
She suggests that:
All fertilizer producers are aiming to supply a fertilizer with the lowest possible free acidity content. Free acid causes caking and setting in the fertilizer and excessive corrosion in machinery.
By December 1992, acid-base reactions were being used in fertilizer products, and “adding acid to fertilizers in order to coat on trace elements was commonplace” at that time.
A declaration dated 15 January 1998 by Ms Hustwick, relating to a facsimile message received from a Mr Morony in which he discusses (i) the potential explosive effects of coating ammonium nitrate with sulphur, and (ii) how adding even dilute acid to ammonium nitrate would liberate toxic oxides of nitrogen.
A declaration dated 20 January 1998 by Dr Fu Yang Wang, a senior research officer at the University of Queensland.
Dr Wang has had some experience with drying equipment for granular fertilizers, and he suggests that the feature in the present invention of water being removed by heat generated by the neutralization reaction does not in fact occur. He sets out reasons for his assertion.
submissions
Both parties made comprehensive verbal submissions and filed written submissions at the hearing; I shall refer to these submissions where appropriate in the following paragraphs of my decision.
DECISION
I shall first compare the claims of the present specification with the prior art cited by the opponent. The features of the inventions described in the citations are generally similar to those discussed in the present specification, and most of the features of present claim 1 are disclosed in the citations. The issues of disclosure generally in dispute are (i) whether the citations disclose the use of dilute acids, and (ii) whether micronutrients (or sulphur) are disclosed as a separately identifable component in the process of producing the coating.
Re US Patent 3,419,379, Goodale et al, (Exhibit KHW5)
This patent, published in 1968, discloses a method of coating fertilizer granules, the coating controllably releasing plant nutrients. The abstract reads as follows:
"A method of producing water-resistant, solid discrete fertilizer particles by separately coating the particles with an acidic inorganic material having dessicating properties, such as superphosphoric acid, SO3, oleum and mixtures thereof, and an alkaline material such as calcium or magnesium compounds which react with the acid material to produce a salt in situ on the particles. Calcium and magnesium sulfates and phosphates are preferred. Coatings can also be provided from ammonia and sulfuric acid or SO3 vapours. Variation of the amount of coating formed on the fertilizer particles provides an anti-caking fertilizer or a slow-release fertilizer."
Novelty
On the first issue of dilute mineral acids, the opponent submitted that "although no mention of the mineral acid being ‘dilute’, there is no disclosure in the Johnston application of any benefit in the use of a weak mineral acid". The applicant submitted that dilute mineral acid is an essential feature of the invention because "if a strong acid is used … then the acid will predominantly react with the fertilizer. However if a dilute acid is used, the reaction between the fertilizer and the acid will be essentially negligible thus allowing the acid to react with the neutralising agent to form the adherent coat." There was also some discussion at the hearing about whether acids disclosed in the present specification were in fact dilute. On page 6 of the present specification ranges of 50% to 80% w/w sulphuric acid and 50% to 75% w/w phosphoric acid are referred to, the strength of acid used in any composition depending on the composition of the base fertilizer.
I note that one feature in claim 1 of the US patent is "the proviso that neither the acidic inorganic material nor the basic inorganic material react appreciably with the fertilizer." To me this suggests that, if the invention in the citation works the same way as the present invention, it is likely that dilute acids would have to be used, to avoid reactions with the base fertilizer. However, there still may be some doubt whether there is sufficient disclosure to comply with the legal requirements of a novelty objection, so I will put aside this issue for the moment.
On the second issue of separate components, the opponent submitted that "a desired quantity of a component including sulphur and/or at least one supplemental micronutrient" is disclosed at Col.2 lines 58-59 and at Col.3 lines 24 and 30 of the US patent. The applicant submitted that there is no disclosure of separately adding micronutrients. In my view, the specification generally teaches that the micronutrients are available in the coating as a result of the salt formed from the reaction of the acidic and basic components, and not as a separate component; this is discussed for example in paragraph 3 of Col.3 and paragraphs 5 and 7 of Col.4 of the US patent.
The disclosure at Col.2 lines 58-59 is that ".. in thick films [the coatings] can strongly contain plant nutrients ..", but to me this is not a disclosure of the nutrients being included as a component separate from the acidic and basic components.
The disclosure at Col.3 lines 24 and 30 refers to forming a calcium sulphate coating by reacting SO3 or oleum with calcium and/or magnesium oxide and/or carbonate. Oleum, or pyrosulphuric acid, H2S2O7, is defined as a solution of sulphur trioxide in 100% sulphuric acid. The opponent submitted that the two sulphur components satisfy the requirements of a "mineral acid" and a "component including sulphur and/or at least one supplemental micronutrient" in present claim 1. In my view this is placing a strained interpretation on the disclosure, I do not think an industrial chemist skilled in the field of the invention would consider oleum per se to be two separate integers. Oleum is an identifiable chemical entity, with known properties (powerfully dehydrating and highly corrosive) and could satisfy either one of the said features in present claim 1 but not both. Furthermore, oleum is a very strong acid, thus, notwithstanding my comments above on the feature in claim 1 of the US patent, suggesting that the US patent may be teaching away from dilute acids.
Taking all these matters into account, I conclude that present claim 1 is novel in the light of the US patent because the latter does not disclose the separate features of (i) a dilute mineral acid and (ii) a component including sulphur and/or at least one supplemental micronutrient.
Inventive step
The problem to be overcome by the present invention is how to incorporate sulphur and/or micronutrients into a granular fertilizer coating. The problem to be overcome by the invention in the US patent is how to produce a coating which (i) is water-resistant, dessicating and anti-caking and (ii) allows controllable release of plant nutrients. Despite these different problems to be overcome, I think the US patent is still relevant because of the detailed disclosure of materials for forming the fertilizer granule coatings. The issue at hand then is to determine whether there is any invention in adapting the knowledge of the US patent to solve the problem of the present invention.
The invention disclosed in the US patent and the present invention have a similar result, ie. micronutrients are included in the granular coating. However, the present invention has a more sophisticated way of achieving that result- by including the micronutrients as separate components in the coating. Mr Walter suggests that "no inventive step is required to incorporate into this thick film of reaction products … any supplementary nutrient." Mr Kepert on the other hand suggests that the US patent "does not describe or teach that the reaction product of the acid and the alkaline material would cause precipitation of a product that could bind elemental sulphur or a micronutrient to the surface of the fertilizer."
The applicant submitted that the advantages of the invention are: (i) the process can be used to add supplemental micronutrients to a wide range of different types of fertilizers, and (ii) the size distribution of the supplementary micronutrients can vary within relatively wide limits without effecting the physical integrity of the coat; and that these advantages are achievable due to the fact that the invention is not dependent on the chemical nature of the fertilizer and the need to form a bond between the surface of the fertilizer and the supplementary micronutrients.
Inventive step must be considered in the light of the common general knowledge, and a claim may be subject to an objection of lack of inventive step by considering a single citation in the light of the common general knowledge. The evidence and submissions suggest that it was commonly known that:
acid neutralizing agents such as lime could be added to fertilizer to reduce moisture and bag rot, and
granular fertilizers could be coated with supplemental nutrients by using binders such as waxes and oils, or by chemical reactions between the fertilizer components and additional coating materials.
When the citation in this case is considered together with the common general knowledge, I think all that is disclosed is that supplemental nutrients may be provided by coatings which are the result of certain specified chemical reactions. In other words, my prima facie view is that the citation can be construed as merely an example of the said common knowledge. However, to decide this issue I must consider the parties' experts' opinions.
Generally I am of the view that the opponent's evidence is insufficient to prove its case in this particular issue; I don't think the weight of evidence of opinion on inventiveness and/or obviousness is in the opponent's favour, because the opponent's evidence on inventive step relies mainly on the declarations of one expert, Mr Walter. Also, whilst this evidence contains much in-depth detail to support the opponent's case, I am concerned that at times there is too much detail, which suggests to me that Mr Walter may be too involved, and not the "non-inventive worker in the field" envisaged by the High Court in Wellcome Foundation v VR Laboratories (1981) 148 CLR 262 at 263 and in Minnesota Mining v Biersdorf (1978) 144 CLR 253 at 293.
In my view, there is insufficient evidence before me to conclude:
(i) that the disclosure in the US patent would solve the problem of the present invention (Hart v Hart (1978) 141 CLR 305),
(ii) that the common general knowledge pointed to the solution of the problem (Minnesota Mining v Biersdorf, supra, at 298),
(iii) that the inventive concept of the present invention, ie. including the supplemental nutrients as a separate component of the coating, in addition to the acid/base reaction components, is disclosed by considering the citation in the light of the common general knowledge, or
(iv) that, generally, based on expert opinion, the inventive concept is obvious.
Taking all these matters into account, I conclude that there is no objection of lack of inventive step to present claim 1, based on US patent 3,419,379.
Re AU Patent 554,749, Adelaide & Wallaroo Fertilizers Ltd (A&WF), (Exhibit KHW7)
Mr Walter is one of the inventors referred to in this patent specification. The object of this invention is to add micronutrients or trace elements to phosphorus-containing granular fertilizers.
Mineral acids are used as a binding agent: when the mineral acids are added to the fertilizers the acids react with some of the phosphatic fertilizer constituents on the surface of the granules, and these reactions yield more acidic phosphatic constituents and further reactions.
During the reactions the surface of the granules becomes wet and tacky thus allowing trace element-containing powder to be picked up by the granules. The trace elements such as copper, zinc, cobalt and manganese are added in the form of a micronutrient "carrier" in the form of compounds of the trace element, and tumbled with the fertilizer granules. Carrier compounds such as sulphates, oxides and basic sulphates are described in the specification. Further reactions then occur between the carrier compounds and the products of the said reactions involving the mineral acids. The multiple chemical reactions lead to the formation of new crystals on the surface of the granules which become interlocked and hold any portions of unreacted micronutrients in the coating.
Novelty
On the issue of dilute mineral acids, there are several references in the A&WF patent to the use of either 98% sulphuric acid or 62% phosphoric acid. The sulphuric acid is clearly not dilute, but the strength of the phosphoric acid is within the range of dilute phosphoric acid described in the present specification, so I think this feature of present claim 1 is disclosed in the citation.
On the second issue of separate components, the applicant submitted that there is no disclosure of adding a neutralizing agent but the opponent submitted that an "acid neutralizing agent" is disclosed by references in the citation: (i) on page 5, and (ii) the tables on pages 8,10 and 12 and a text reference on page 13.
Reference (i) is to ammonia being first generated by a reaction between ammonium phosphate fertilizer compounds and zinc oxide (trace element carrier), and then being "scrubbed in situ by the mineral acid", according to the reaction:
2NH3 + H2SO4 è (NH4)2SO4
I agree that ammonia could be generally be described as an acid neutralizing agent, but in this case the ammonia is an intermediary and transitory product of the chemical reactions. I think an addressee of present claim 1 would construe the claim as requiring that the "component including sulphur and/or at least one supplemental micronutrient" and the "acid neutralizing agent" are separately identifiable components, both mixed with the fertilizer. However, in the A&WF specification the ammonia is not added separate to the zinc oxide trace element carrier, but is in fact derived from a reaction of the fertilizer and the trace element carrier, eg:
2NH4H2PO4 + ZnO è Zn(H2PO4)2 + H2O + 2NH3
Also, the embodiment of the invention discussed on page 5 of the A&WF patent uses sulphuric acid as a binding agent, which is not used in dilute form, and, even though dilute phosphoric acid is disclosed elsewhere in the citation, I think there is some doubt whether an addressee would have generalised and combined the separate references to ammonia and phosphoric acid to a sufficient degree to arrive at the present invention. There are no "clear and unmistakable directions" to the present invention in the citation. See Canadian General Electric v Fada Radio (1930) 47 RPC 69 at 90.
Reference (ii) is directed to the use of basic salts, such as basic zinc sulphate and basic copper sulphate. I agree that basic salts are compounds which could be described as acid neutralizing agents, but in this case I note that the basic salts referred to are also the micronutrient carrier compounds (eg. for zinc and copper micronutrients), and therefore cannot be construed as being both the "component including sulphur and/or at least one supplemental micronutrient" and the "acid neutralizing agent" features in present claim 1.
Taking all these matters into account, I conclude that present claim 1 is novel in the light of the A&WF patent because the latter does not disclose the following features being separately mixed with the fertilizer: (i) a component including sulphur and/or at least one supplemental micronutrient, and (ii) an acid neutralizing agent.
Inventive Step
The invention in the A&WF patent addresses the same problem as the present invention, but the latter has the additional feature of a separate acid neutralizing agent.
I have indicated that its was common knowledge that granular fertilizers could be coated with supplemental nutrients by using binding chemical reactions between the fertilizer components and additional coating materials. Insofar as that knowledge related particularly to acid-base reactions, I do not think it extended any further than acids reacting with basic components in the fertilizer granules. The common general knowledge then doesn't add much to this citation. Significantly, the present inventive concept of a coating formed from acid-base reaction components and including separate additional supplemental micronutrients, in my view is not envisaged when the citation is considered together with the common general knowledge.
The applicant's specification and evidence suggest that the present invention has some advantages over the A&WF invention, the main advantages being related to the use of dilute sulphuric acid. Toxic reaction products are allegedly produced when concentrated sulphuric acid is used with either (i) elemental sulphur as the supplementary component or (ii) triple or double superphosphate fertilizer granules. (I note that in the specification of later patent AU 601,099 Mr Walter acknowledges that the invention in the A&WF patent cannot be used for the incorporation of elemental sulphur or used with triple or double superphosphate fertilizers). Another alleged advantage of the present invention is that it can apply to a broader range of fertilizers and micronutrients because the main chemical reaction is between the acid and the neutralizing agent.
Taking all these matters into account, I conclude that there is no objection of lack of inventive step to present claim 1, based on the A&WF patent.
Re AU Patent 601,099, Hi-Fert, (Exhibit KHW8)
This patent published in 1989 lists Mr Walter as the sole inventor. Claim 1 as accepted reads as follows:
"1. A process for producing a coated granular fertilizer, wherein granules of a granular base fertilizer, selected from orthophosphates of calcium, ammonium and potassium and mixtures thereof, are coated by placing at least one such granular base fertilizer in a mixing-cum-coating device and by spraying the granules within said device with either water or an aqueous solution of a salt to thereby establish:
(a) a first layer comprising 1 to 5% (by weight of the total composition) of water or an aqueous solution of a salt selected from the group of sulphates and phosphates of ammonium or potassium and mixtures thereof;
thereafter adding to the tumbling bed of wet and sticky granules within said device the desired quantity of various components selected from elemental sulphur, supplemental micronutrients and water-soluble salts to thereby establish:
(b) a second layer comprising (i) at least one component selected from elemental sulphur and supplemental micronutrients, and, if the first layer consists of water only, (ii) 0.1 to 10% (by weight of the total composition) of a salt selected from the group consisting of water-soluble sulphates and phosphates of ammonium or potassium, water-soluble sulphates of metallic trace elements, and mixtures thereof; and
thereafter finishing off the coating operation by subjecting the coated granules to the mechanical forces encountered in said mixing-cum-coating device, thereby allowing an interaction between some of the chemical constituents on the exterior of the base granules with some of the chemical constituents employed in the establishment of the coating, thereby enhancing the adherence of the coating to the base granules."
The Hi-Fert specification indicates that the coating is "based upon the interaction of some of the chemical constituents in the top layer of the granules with the chemicals employed in the establishment of the coating, and some of the supplementary nutrients …" Various reactions are detailed in the specification and some of these reactions involve acid-base reactions, but the acids or bases seem to come from either the fertilizer, such as phosphoric acid, the micronutrients, such as manganous oxide, or from reactions occurring in the aqueous solution, eg. sulphuric acid is a reaction product of phosphoric acid in the fertilizer and the aqueous salt potassium sulphate.
Novelty
Comparing present claim 1 with the disclosure in the Hi-Fert specification, I am of the view that the mineral acids involved in the Hi-Fert reactions are likely to be "dilute" because of the stated aqueous chemical environment on the surface of the granules. However, if the acids are coming from the fertilizer per se it cannot be said that the acids have been mixed with the granules as separate components of the coating process. The aqueous salts of ammonium and potassium phosphates and sulphates are normal salts, not acidic or basic salts. I think there is also some doubt whether the Hi-Fert specification discloses separate addition to the mixture of acid neutralizing agents and supplemental micronutrients. Present claim 1 requires three separate components to be added to the fertilizer granules, but I am not convinced that an addressee of the Hi-Fert specification would construe it to disclose each of these three said components.
The opponent submitted that the present invention was disclosed by combining the disclosures in the two Walter patents, and that this was allowable because the A&WF patent was discussed in some detail in the Hi-Fert patent. In some ways I think the Hi-Fert specification is teaching away from the A&WF specification, which suggests that they should not be treated as one disclosure. See Nicaro Holdings v Martin Engineering 16 IPR 545 at 570.
However, without deciding whether the mosaic would be legally allowable, I am of the view that the said feature of three separate components to be added to the fertilizer granules in present claim 1 is not disclosed in the combination of the two Walter specifications.
Taking all these matters into account, I conclude that present claim 1 is novel in the light of the Hi-Fert patent.
Inventive Step
The Hi-Fert specification addresses a similar problem to the present specification and has a similar result- sulphur and/or other micronutrients are included in the coating; so the advantages of the two inventions are similar. However, the end results are achieved by different processes. In Hi-Fert an aqueous solution, with or without neutral salts, is first created on the surface of the granules causing some chemical reactions with the fertilizer compounds, then the supplemental nutrients are added causing further reactions, eventually producing the coating. In the present invention the reaction components and the supplemental nutrients are all added to the base fertilizer.
It could be argued that there is no inventive step in forming a salt by an acid - neutralizing agent reaction in the light of prior art which simply adds a salt. I note though in Hi-Fert that the added salts are involved in the reactions with the components of the fertilizer; there is no disclosure that the added salts remain in their original form and bind the sulphur or micronutrients to the surface of the granules; indeed the reactions discussed on page 14 of the Hi-Fert specification suggest that the added salts initiate some of the reactions.
My prima facie view is that there probably is an inventive step in the present invention because there is a different concept involved: the present invention is teaching away from reactions with the fertilizer components, whereas in Hi-Fert reactions between the fertilizer components and added components seems to be the essence of the invention. In the Hi-Fert invention the added salt is not the primary mechanism of adhering the micronutrients to the granules; the added salt starts chemical reactions and the reaction products adhere the micronutrients to the granules.
Whether there is any invention in this difference has been discussed by the parties' experts. Overall, I do not think the opponent's evidence has more probative value than the applicant's evidence. I note that the applicant's specification acknowledges that the Hi-Fert "method yields acceptable coated granules", but the examples in the present specification indicate that some experiment and effort has gone into the development of this invention, and it is likely that some difficulties have been overcome. Even if this were not so the applicant's invention is clearly an alternative process to the prior art and may thereby provide some advantages. The applicant submitted that the process of the present invention does not depend on chemical reactions with the base fertilizer thus being applicable to a "wide range of different types of fertilizers."
Also, the present specification indicates that in the prior art fertilizer coating processes it is necessary that the supplementary nutrients be in a finely divided form to enable the surface reactions between the base fertilizer and the coating material to proceed. It has been found in the present invention that the size distribution of the supplementary nutrients can vary within relatively wide limits without affecting the physical integrity of the coat.
In one embodiment of the invention the acid is added first, but an alternative method is described on page 8 of the specification: it is stated that "alternatively the coating material and neutralizing agent can be mixed with the fertilizer granules before addition of the acid", thus suggesting that the present invention may be a more flexible process than the prior art.
Taking all these matters into account, I conclude that there is no objection of lack of inventive step to present claim 1, based on the Hi-Fert patent.
Section 40 matters
Paragraph 11 of the opponent's written submissions deals with four issues under S.40. I will now comment on each of those issues.
11.1 It is submitted that the present specification "does not provide sufficiently clear instructions to allow the alleged invention to be reproduced by a person skilled in the art (fertilizer technology) without undue experimentation." I note that Mr Walter and some of the other declarants for the opponent have gone into quite a detailed analysis of some parts of the applicant's specification. Mr Walter for example discusses problems with some of the examples in the present specification, and he seems to be concerned that the inventor, Mr Johnston, hasn't discussed all the possible advantages and disadvantages of each of the examples in the embodiment of the invention.
It seems to me though, from reading of his declarations, that Mr Walter has a clear understanding of the invention in its broadest form and of many of the examples; he has been able to provide further information on materials which could be used in the invention for example.
I am inclined to agree with the four declarants for the applicant who indicate that the present specification is sufficient; they were able to understand the invention and how to put it into practice. A patent specification only has to describe the best method of performing the invention not all methods of performing the invention. See Ethyl Corp v California Research Corp (1970) AOJP 562. The standards Mr Walter is expecting I think are too high.
11.2 The opponent alleges that claim 1 of the present specification does not define the invention because the feature in claim 1 of "thereby causing liberation of heat energy which removes water as water vapour" is incorrect in outlining the mechanism by which the fertilizer is dried. The opponent submits that, using the coating equipment described in the specification, there would be no significant loss of water as water vapour, and most of the water would be incorporated in the coating.
Mr Johnston comments on this matter in paragraphs 14.3 to 14.5 of his declaration; he alleges that Mr Walter's comments are somewhat theoretical, and that in his own experience the majority of water is removed by vaporisation. Mr Walter replies in some detail to Mr Johnston's comments in the evidence-in-reply, and Dr Wang's declaration is devoted to this issue. Despite the weight of evidence prima facie being against the applicant on this issue, I am prepared to resolve any doubt in the matter in the applicant's favour because (i) it is a very technical issue, wholly reliant on the experts' opinions, and (ii) I do not consider that it is such an important issue in the opposition, because the feature relating to the water vapour in claim 1 is not a feature which is determinative of novelty or inventive step issues.
11.3 The opponent alleges that incorporation of cobalt oxide in the fertilizer would result in an unacceptable product. In my view, this issue is not important; even if it proved to be true I don't think there would be any valid objection to the specification.
11.4 Mr Walter alleges that following the instructions of the specification, insofar as it relates to a process for coating an ammonium nitrate fertilizer with a sulphur coating, would result in an unstable and potentially explosive product. Mr Johnston comments that "whilst the use of ammonium nitrate would require appropriate handling by the skilled addressee this does not mean that it could not be used in the process of the invention." Whilst the inventor's response may be construed as somewhat dismissive of the opponent's concern, again I don't consider this to be an important matter which would result in an objection to the specification or affect the validity of the patent.
CONCLUSION
I have found that the opposition to the specification, in its form as amended on 4 December 1997, is not successful because the invention defined by the claims is novel and includes an inventive step, and there are no valid S.40 objections to the specification. I direct therefore that the application and complete specification proceed to sealing.
COSTS
Both parties sought their costs in this matter. The amendments to the specification proposed after the evidence-in-support was served, and allowed on 4 December 1997, did not affect the scope of claim 1. In this case I see no reason why I should not follow the usual practice of costs following the event, so I award costs against the opponent, Hi-Fert Pty Ltd.
John Welsh
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Phillips, Ormonde & Fitzpatrick, Melb
Patent attorneys for the opponents: Madderns, Adelaide
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