Kawasaki Jukogyo Kabushiki Kaisha v Kloeckner CRA Patent GmbH
[1996] APO 54
•18 November 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 600398 in the name of KAWASAKI JUKOGYO KABUSHIKI KAISHA
Title: Method of Smelting Reduction of Ores Containing Metal Oxides
Action: Opposition thereto by KLOECKNER CRA PATENT GMBH under s.59 (Patents Act 1952)
Decision: Issued .
Abstract: Prior publication/novelty, manner of manufacture, obviousness, otherwise not novel and non-compliance with section 40 considered.
Grounds of opposition not established.
Document (the Brotzmann Paper) filed with evidence-in-reply was not strictly in reply and hence not considered for the purpose of this opposition.
Applications to file further evidence, by the opponent, were allowed.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 600398 by KAWASAKI JUKOGYO KABUSHIKI KAISHA, and Opposition thereto under Section 59 of the Patents Act 1952 by KLOECKNER CRA PATENT GMBH.
background
Patent Application No. 600398 by KAWASAKI JUKOGYO KABUSHIKI KAISHA was lodged on 5 December 1988 as a convention application based on Japanese basic applications 62-310117 and 63-310143 filed in Japan on 7 December 1987 and 8 December 1987 respectively.
The application was advertised as accepted on 9 August 1990. KLOECKNER CRA PATENT GMBH filed a notice of opposition on 16 November 1990 (an extension of time was granted under section 160 of the 1952 Act). Evidence-in-Support was completed on 13 February 1992, Evidence-in-answer on 9 November 1993, and Evidence-in-Reply on 14 December 1994.
The opposition was heard in Canberra on 18 and 19 July 1995. I shall call this Hearing 1 and refer to it as HR-1 in my decision. Dr. A. Bennett and Steven Hurley of Counsel instructed by John O’Connor and Colin Bodkin of Spruson & Ferguson, Sydney represented the applicant. Mr. B.J. Hess of Counsel assisted by G.R. Munt of Griffith Hack & Co., Melbourne represented the opponent.
The application was lodged prior to the commencement of the Patents Act 1990, but not withdrawn or finally dealt with on the commencement day, therefore the opposition is determined under Part V of the Patents Act 1952, and Division 1 of Part XIV and regulations 82 and 83A of the Regulations under the 1952 Act.
The grounds relied on in the Notice of Opposition are all those listed under section 59(1)(a)-(i) of the Patents Act 1952. At the hearing the opponent relied on the grounds under section 59(1)(e) to (i), i.e. prior publication, manner of manufacture, obviousness, otherwise not novel and non-compliance with section 40.
An application to lodge further evidence was filed by the opponent at the hearing held on 18 July 1995. I have addressed this application under the title Further Evidence (HR-1). A further application to lodge further evidence was filed by the opponent on 28 August 1995. Supporting material was filed on 25 October 1995 and 1 February 1996. On 12 January 1996 the applicant lodged an application for extension of time under Section 223 in which to file a notice of intention to oppose the application to adduce further evidence of 28 August 1995. Subsequently on 21 May 1996 the applicant withdrew its application for extension of time under section 223. I decided to allow the further application by the opponent on the basis of reasons similar to those set out under the title Further Evidence (HR-1). I informed the applicant and opponent that I had allowed both applications to adduce further evidence and offered (by a letter dated 28 June 1996) to determine the opposition after:
a) giving both parties an opportunity to be heard,
b) having regard to written submissions,
c) having regard to the further evidence in the absence of either the applicant or opponent at a hearing, or submissions.
Both parties requested to be heard in the matter and a hearing was held on 12 September 1996. I shall call this Hearing 2 and refer to it as HR-2 in my decision. Dr. A. Bennett of Counsel instructed by Colin Bodkin of Spruson & Ferguson, Sydney represented the applicant. Mr. B.J. Hess of Counsel instructed by G.R. Munt of Griffith Hack & Co., Melbourne represented the opponent.
SPECIFICATION
The specification (as amended after acceptance) states initially that the invention relates to a smelting reduction method in which iron oxide ore, is subjected in a solid state to a preliminary reduction (hereinafter referred to as prereduction) step in a prereduction furnace and thereafter melted in a smelting reduction furnace thereby to carry out final reduction of the ore. The invention concerns a smelting reduction method by which, particularly, the rate of energy utilisation is increased, and the consumption of the reaction materials such as coal, oxygen, and lime is greatly reduced.
It then describes a number of prior art processes and identifies the following defects of the prior art. High rate of consumption of carbon, low energy utilisation rate, consequential problems of difficulty of extensive commercialisation, large consumption of oxygen, large quantity of slag, loss of extracted metal into the slag, cost of equipment to cope with the effects, heat transmission loss so that rates are lower than ideal, necessity for a large capacity prereduction furnace, and the ore is formed into large lumps with difficulties of obstruction of reaction and transfer.
The specification then gives a summary of the invention followed by a detailed description thereof including five embodiments of the invention. The specification focuses on carbon monoxide (CO) as the gas contributing to the reductive capability of the gas emerging (after secondary combustion) from the smelting reduction furnace. This gas is then used for prereduction of the iron ore in the prereduction furnace. The specification ends with six claims of which the independent claim and omnibus claim read as follows:
1. A method of smelting reduction of iron oxide ore, which comprises prereducing , in the absence of added carbonaceous material, said ore in solid state in a prereduction furnace, thereafter melting said ore and carrying out final reduction thereof in a smelting reduction furnace, at the same time charging a carbonaceous material and blowing oxygen into said smelting reduction furnace to cause gas generated in the smelting reduction furnace to undergo a secondary combustion, said gas having a reductive capability, and at the same time introducing the gas which has undergone the secondary combustion into said prereduction furnace, the rate of prereducing said ore in said prereduction furnace being such as to reduce the ore to FeO (wustite) and not to iron metal and being maintained at a value below 30 percent by controlling the rate of the secondary combustion to be at least 20 percent without supplying oxygen and carbonaceous material into the prereduction furnace.
6. A method of smelting reduction of iron oxide ore, substantially as herein described with reference to any one of the Examples and Figs. 1, 3, 5 and 6.
The specification at page 3 defines secondary combustion rate stating that “the secondary combustion rate is 30%, that is, when 30% of the CO gas emitted from the melt within the furnace is caused to undergo combustion and thus be converted to CO2”. Further at page 4 it defines the term reduction rate as “the rate of decrease of oxygen on the basis of the metal oxide contained in the raw material ore as reference. For example, in the case where Fe2O3 is taken as reference (reduction rate 0%), the ore is reduced to Fe3O4 at a reduction rate of 11.1%, to FeO at a rate of 33.3%, and to Fe at a rate of 100%.”. Earlier in the same paragraph the specification discloses “..in order to obtain as high reduction rate (prereduction rate) in the prereduction furnace as possible,...”. Thus I consider the term prereduction rate may be read to mean the same as the term reduction rate.
EVIDENCE
Evidence-in-support consists of statutory declarations by Dr. Robin John Batterham, Professor William John Rankin, Dr. John Kevin Wright, Professor Geoffrey R. Belton and Mr. Jonathan P. Moodie.
Evidence-in-answer consists of a statutory declaration by Mr. Takuya Maeda.
Evidence-in-reply consists of statutory declarations by Dr. Robin John Batterham, Mr. Brian Charles Cunningham, Mr. Thomas Ermer and Mr. John Alexander Innes.
I have to decide two issues before dealing with the main opposition. The first issue relates to the opponent’s evidence-in-reply and the second issue relates to a first application for leave to file further evidence proposed to be filed by the opponent.
Evidence-in-reply (HR-1)
The applicant’s counsel made the following submissions:
“The particular piece of evidence-in-reply is the declaration of Dr Batterham filed December 1994. That part of the evidence is not properly in reply. It purports to deal with a couple of matters and primarily a paper (the Brotzmann Paper (RJB-6)) is annexed that is new evidence. That paper was not relied on in the evidence-in-support and so far as this declaration is concerned is relied upon apparently for the purpose of trying to establish obviousness. We formally object to that evidence being relied upon in this opposition. If the evidence is to be relied upon at all, we seek leave to file further evidence in answer to that.”
The opponent’s counsel made the following submissions:
“The Batterham declaration of December 1994 in reply includes within its purview the paper which is exhibit RJB-6. So far as the applicant’s objection is concerned it is well out of time and should have been objected to sometime immediately after the declaration was served, with the request that supplementary evidence be provided in answer to that. The applicant’s objection is not one of any substance. The paper itself deals with matters raised in evidence-in-answer by the declarant Maeda on behalf of the applicant. We do intend to rely on the paper.”
Decision
Phipson (The Law of Evidence, 9th Ed.) states that:
“Evidence in reply, whether oral or by affidavit, must, as a general rule, be strictly confined to rebutting the defendant’s case,...”
In Ernest Scragg & Sons Ltd’s Application [1972] FSR 219 Graham J. expressed the view that the statement in Halsbury’s Laws of England:
“When the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent’s case, seek to adduce additional evidence to strengthen his own case.”,
was a sound principle which applies to oppositions in the Patent Office just as it does to any other case.
I have read Mr Maeda’s declaration and note that Mr Maeda has confined his arguments to dealing with the disclosures of documents filed in Dr Batterham’s first declaration (filed with the evidence-in-support). I do not see any reference by Mr Maeda to the document now filed in Dr Batterham’s second declaration in the evidence in reply, nor has Mr. Maeda raised any issues which need to be answered by the Brotzmann Paper. The applicant does not have a chance to reply to this document as the various stages relating to filing of evidence have been completed. If I allow this evidence in the applicant is entitled to either ignore the amendments or apply for special leave to file further evidence, which leave is not an automatic entitlement. The opponent is also seeking to introduce this evidence via their application to file further evidence. Taking all these factors into consideration I conclude that the document, “The Brotzmann Paper (RJB-6)” does not constitute evidence in reply.
Further Evidence (HR-1)
The applicant’s counsel made an application to file further evidence, which evidence was a declaration by Dr Misra. Opponent’s counsel stated that they did not object to the filing of this evidence. I therefore grant special leave for the admission of this further evidence. I will consider this further evidence (Dr. Misra’s declaration) as evidence for the purpose of this decision.
The opponent’s counsel made an application to file further evidence, which evidence was a declaration (dated 17 July 1995) by counsel’s instructor Mr. Munt together with a paper found in the files of the opponent. The applicant objected to the application to file further evidence. I shall refer to submissions made by the opponent and applicant, whenever appropriate, in my decision regarding the application to file further evidence made by the opponent.
Decision
The opponent relied on the statement of Kitto J. in Kaiser Aluminium v Reynolds Metal (1969) 120 CLR 136 at 143,
“...it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should, be shut out in consequence of a failure in procedure, lamentable though the failure may be.”;
The opponent deduced from Micronair v Waikerie 7 IPR 107, that in granting leave to adduce further evidence there are three matters to be considered.
(1) It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.
(2) The evidence must be such that, if given, it would probably have an important influence on the result of the case.
(3) The evidence must be such as is presumably to be believed, that is it must be apparently credible, though not necessarily incontrovertible.;
The opponent submitted that Dupps Co v Stord Bartz A/S 18 IPR 499 and Sandoz Ltd v Fujisawa Pharmaceutical 27 IPR 421, show there are two further criteria to consider if the request to serve fresh evidence is to be allowed.
(4) Would this cause any unnecessary protraction of the opposition.
(5) Would there be any injustice to the other party.
The applicant relied on a decision of the Full Federal Court, i.e. Bomanite Pty Ltd and Others v Slatex Corp Aust Pty Ltd and Others 104 ALR 165.
The opponent submitted that “the Bomanite decision turns solely and simply on the case management system which the Federal court has adopted. The case management system in the Federal Court is quite a different proposition to what is being managed by the Patent Office.”
I agree with the opponent in this matter and will apply the criteria of Micronair and Fujisawa.
Applying the three criteria set out in the Micronair decision I have found the following
(1) The opponent’s counsel has stated that the relevant evidence was discovered on a review of their files, immediately prior to the hearing, and immediately put into evidence as soon as its significance was realised. However the opponent has not shown that it could not have obtained that evidence with reasonable diligence at an earlier stage. The opponent’s statement in this matter clearly indicates that this matter was available to the opponent at an earlier stage. Thus the first criterion is not satisfied.
(2) The opponent’s attorney states that Dr Batterham has indicated in his second declaration that the Brotzmann paper is significant to the issue of novelty of the alleged invention described and claimed in the opposed patent application. I therefore consider that the further evidence satisfies criterion (2), i.e. if given, it would probably have an important influence on the result of the case.
(3) I believe that the further evidence satisfies the third criterion, as there is nothing, either in the opponent’s or applicant’s submission that leads me to conclude otherwise. Thus I believe that the evidence is apparently credible , though not necessarily incontrovertible.
Thus two out of three criteria have been satisfied. I note that there are two further criteria that need to be satisfied.
Firstly, I need to decide if this action of filing further evidence would cause any unnecessary protraction of the opposition. The submissions from the opponent regarding this evidence are already on file. I had stated (at this hearing), after submissions from both sides on this matter, that if I did allow the further evidence the applicant would be allowed one month from the date of issue of this decision to respond. This would clearly result in protraction of the opposition, but in light of the allegedly serious nature of the evidence I do not consider it to be an unnecessary protraction.
Secondly, I must consider if there would be any injustice to the applicant as a result of allowing the fresh evidence to be filed. As I had noted above, the submissions of Dr Batterham regarding this evidence are already on file, and the opponent’s counsel has made submissions during this hearing relating to that evidence. If I allow this evidence the applicant will be given one month from the date of issue of this decision to respond in respect of all issues relevant to the fresh evidence. I therefore conclude that there would be no injustice to the applicant in this matter.
I note that one out of the five criteria has not been satisfied. On consideration of the criterion in question I do not consider that non-compliance with this criterion effectively far outweighs compliance with the other four criteria to justify refusal of special leave to file further evidence. I shall therefore allow the application to file further evidence.
I allow the opponent’s request to file further evidence. I note that the applicant has been served with copies of the opponent’s request to file further evidence and the further evidence. At the second hearing (HR-2) the applicant has been given an opportunity to reply to this evidence.
Objection to Granting Special Leave to File Further Evidence (HR-2)
The applicant submitted that:
· the special leave application (to file further evidence) of 28 August 1995 should not have been allowed.
· the applicant had been denied natural justice in this matter.
· they had not been given an opportunity to be heard and by their letter of 20 May 1996 they had requested this opportunity.
Decision
The applicant’s letter of 20 May 1996 says the following:
“...The application for extension of time (to object to the opponent’s leave application to file further evidence as per the applicant’s letter of 12 January 1996) under s.223 which accompanied our 12 January 1996 letter is hereby withdrawn.
We respectfully request that the hearing in this matter be reconvened in order for oral submissions in respect of the opponent’s further evidence to be put to the Hearing Officer.”
As the applicant had effectively withdrawn from objecting to the opponent’s application to file further evidence they had forfeit their right to object to the allowance of the filing of that further evidence. They have requested to be heard in the matter of the evidence being filed and not as to whether the evidence should /should not be allowed. As noted previously (see BACKGROUND) I had given them this opportunity in my letter of 28 June 1996. I consider that fair and proper procedure has been followed in this matter and that the applicant has not been denied any natural justice.
Second Hearing-Separate/Reconvened Hearing
The applicant submitted that:
the hearing of 18 July 1995 had been adjourned to consider the further evidence filed at that hearing. In support of this they referred to the Australian Patent Office Manual of Practice and Procedure Volume 3 Oppositions, Courts, Extensions & Disputes paragraph 2.12.2 Adjournment of Hearings, item c) which states:
“Material being adduced at the hearing; if that material is properly adduced (either by agreement at the hearing, or by subsequent decision) the other party is entitled to have time to consider and rebut that material - which is properly done at an adjourned hearing (or by written submissions). Nevertheless, the hearing should proceed in respect of the evidence on file.”
it was not a fresh hearing of new matter to justify an additional hearing fee and that it was a recommencement of the hearing of 18 July 1995.
if the hearing officer concluded that the second hearing was a fresh hearing, then, as it is an action due to the opponent’s submissions, the applicant be awarded costs of the hearing fee and any other costs.
The opponent submitted that this was an adjourned hearing and the decision on it is a matter for the office and as to the costs they should go with the opposition.
Decision
At the first hearing, after the conclusion of submissions from both sides I had stated that:
“If I decide to allow the special leave application to file further evidence, the applicant will be granted one month from the date of issue of my decision to make written responses/submissions with regard to the further evidence.”
After having listened to the tape recording of the first hearing I conclude that I did not; at that stage of the hearing; or at the conclusion of the hearing; state that the hearing was adjourned and/or that it would be reconvened at a later date.
After the filing of a second application for leave to adduce further evidence by the opponent and the allowance thereof I had issued a letter dated 28 June 1996 (see BACKGROUND) wherein I had offered three options to both parties. One of the options related to filing of written submissions. The letter did not state that if a hearing was held that it would constitute a reconvening of the first hearing. I conclude that the second hearing is a separate hearing and not a continuation of the first hearing. Consequently fees are payable by both parties in respect of the second hearing.
SUBSTANTIVE OPPOSITION
SUBMISSIONS
I shall refer to submissions by the applicant and opponent wherever relevant in my decision.
DECISION
Prior Publication/Novelty
The test for anticipation is set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235,
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel. (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183)
I consider the essential features of claim 1 to be as follows:
A method of smelting reduction of iron ore, which comprises
reducing, in the absence of added carbonaceous material, said ore in solid state in a prereduction furnace,
thereafter melting said ore and carrying out final reduction thereof in a smelting reduction furnace,
at the same time charging a carbonaceous material and blowing oxygen into said smelting reduction furnace to cause gas generated in the smelting reduction furnace to undergo a secondary combustion, said gas having a reductive capability,
and at the same time introducing the gas which has undergone the secondary combustion into said prereduction furnace,
the rate of prereducing said ore in said prereduction furnace being such as to reduce the ore to FeO (wustite) and not to iron metal and being maintained at a value below 30 percent by controlling the rate of the secondary combustion to be at least 20 percent without supplying oxygen and carbonaceous material into the prereduction furnace.
The essential features of claim 6 when related to the examples linked with figs. 1, 3 and 5 are similar to that of claim one. The essential features of claim 6 when related to the example linked with fig. 6 are similar to that of claim 1 except for the last essential feature which reads
the rate of prereducing said ore in said prereduction furnace being such as to reduce the ore to FeO (wustite) and not to iron metal and being maintained at a value of 33 percent by controlling the rate of the secondary combustion to be at least 20 percent without supplying oxygen and carbonaceous material into the prereduction furnace.
The meaning of the terms prereducing rate and secondary combustion rate as spelt out in the specification have been provided under the heading SPECIFICATION.
Before I consider the prior art documentation I shall address an issue raised by counsel for the opponent Mr Hess. Mr Hess submitted that the scope of the term “reduction to FeO (wustite) and not to iron” did not specifically exclude iron in small amounts. No indication had been given as to what constituted the absence of iron, for instance was it 0.05%, 0.01% or absolutely no iron.. None of the declarants have expressed difficulty in understanding the above term. I note that Mr Maeda at paragraph 11 of his declaration states that “...because if only a small quantity of iron is produced in the prereduction step the coal consumption will increase sharply as compared with the case where no iron is produced at all in the prereduction step.”; and that Dr Misra in paragraph 8 of his declaration states “...the invention described in the opposed application provides..a process which lowers the consumption of coal below that which would have been achieved with two-stage processes which were known in Australia before the claimed priority date. This is accomplished by operating the process so that the iron ore is reduced only to FeO in the prereduction stage, and not at all to iron metal.” The opposed specification at pages 13 and 14 in conjunction with figs 2 & 4 clearly indicates that the secondary combustion rate and temperature if properly selected to avoid iron formation will give sharp reductions in coal, lime and oxygen combustion. As I noted previously under the heading of SPECIFICATION the definition of the term reduction rate makes clear that, “where Fe2O3 is taken as reference (reduction rate 0%), the ore is reduced to Fe3O4 at a reduction rate of 11.1%, to FeO at a rate of 33.3%, and to Fe at a rate of 100%.” From this it is clear that claim 1 with a reduction rate below 30% clearly excludes the presence of iron. The specification indicates that iron will form at a reduction rate above 33.3%. Thus it is clear that the feature of claim 1 “reduction to FeO (wustite) and not to iron” clearly contemplates the complete absence of iron metal in FeO.
I shall now consider the citations raised by the opponent.
The Singapore Paper (RJB2) - New Technologies for Efficient Utilisation of Coal in the Iron and Steel Industry; J.A. Innes, R.E. Turner, R.C. Rusden, D.K. Philp, and K. Brotzmann; 13th CMMI Congress-Metallurgy (available in “The Publications of the 13th CMMI Congress, Vol 4 Metallurgy,” edited by L.E. Fielding and A.R. Gordon).
The DRI Publication (RJB3) - Direct Reduced Iron-Technology and Economics of Production and Use edited by Robert L. Stephenson et al; Chapter 3, Physical Chemistry, Part I-Thermodynamics by H.U. Ross.
Certified English Translation of German Specification (3135575) “Process to produce iron from materials which contain iron at least partially in oxidic form” (RJB4)(TE1/3).
The Scandinavian Paper (RJB5) - Coal Consumption in Smelting Reduction Compared with Blast Furnace; V. Brabie and S. Eketorp; Scandinavian Journal of Metallurgy 4(1975) 205-210.
Drafts of the Brotzmann Paper (BCC2) - New Concepts and Methods for Iron and Steel Production-1987 Howe Memorial Lecture, Prof. K. Brotzmann.
Brotzmann Paper (BCC1) - New Concepts and Methods for Iron and Steel Production-1987 Howe Memorial Lecture, Prof. K. Brotzmann.
There has been no dispute regarding the publication dates of the first four documents which were published prior to the earliest priority date of the opposed application. The opponent claimed that the amended claims had a later priority date as the feature referring to “non-supply of oxygen and carbonaceous material to the prereduction furnace” was not disclosed in the original specification.” The specification as filed, both in the initial description and the embodiments shows that no oxygen or carbonaceous material is being added to the prereduction furnace/step. However as all documents cited have alleged publication dates earlier then the earliest priority date of the opposed specification I do not see this submission as being relevant to the issue of prior publication/novelty. The closest document in this regard is the Scandinavian Paper (RJB5) but that document discloses the addition of oxygen and carbon to the prereduction furnace as essential features. It also discloses the discharge of reducing gases from the smelting furnace as waste gases. Thus even on considering the earlier claims of the opposed application, this document would not satisfy the requirements of the reverse infringement test as the essential features of carbon and oxygen addition in the prereduction stage and the discharge of reducing gases from the smelting furnace as waste gases are absent from the opposed application.
The Singapore Paper (RJB2) does refer (see page 90, column 1) to the prereduction of iron ore using converter off-gases prior to charging the ore to the smelting reduction furnace. However it does not disclose a two-stage process in two separate (but linked) vessels, neither does it disclose the prereduction step to FeO and not to iron. Further it does not specify that the rate of prereducing the ore is maintained at a value equal to or below 33% by controlling the rate of secondary combustion to be at least 20% without supplying oxygen and carbonaceous material to the prereduction step. This document does not anticipate the invention of the opposed application.
The DRI Publication (RJB3) at pages 21,23 and fig 3-4 discusses equilibrium gas compositions versus temperature for the iron-carbon-oxygen system. This is a theoretical discussion and does not disclose the two-stage process. Further it does not specify the degree of prereduction of the ore or the degree of post combustion necessary to achieve the objects of the invention. It merely discusses the possible states of iron and its related oxides at different temperatures and gas compositions. This document does not constitute an anticipation of the invention of the opposed application.
The English translation of the German specification (DE-3133575) (RJB4) discloses a two-stage process and states at claim 1:-
“Process to produce iron from materials which contain iron at least partially in oxidic form in a iron bath reactor where the gases produced in the iron smelt of the reactor are drawn through the oxygen or oxygen-containing media which is blown across the surface of the bath into the reactor chamber above the smelt and are partially burnt there and that the heat emerging in conjunction with this is transferred to the iron smelt, characterised in that CO2 and H2O components are introduced into the flue gas by the partial combustion of the reaction gases in the gas chamber of the reaction vessel, that the reduction potential is adequate to carry out with this gas a pre-reduction of the iron oxide containing materials, essentially up to the FeO stage.”
On comparing this with claim 1 of the opposed invention I find that some essential integers are absent. In particular the anticipatory document discloses that the term “essentially up to the FeO stage” does contemplate (page 3, paragraph 3) the presence of iron (to a small extent/degree) in the prereduction stage; also the extent of secondary combustion to be at least 20% to ensure a prereduction rate below 30% has not been disclosed; and finally the requirement that oxygen and carbonaceous material not be added to the prereduction furnace has not been disclosed. In conclusion I find that this document does not anticipate claims 1 to 5 of the opposed application. Regarding claim 6 the prereduction rate is held at 33% and not below 30% as in claim 1. Hence claim 6 is also not anticipated by the above document.
The Scandinavian Paper (RJB5) clearly discloses a two-stage process. In the first stage (figs 1 & 6) prereduction of iron ore to FeO is carried out by charging ore, coal and oxygen to the prereduction furnace. In the second stage FeO is reduced to iron by charging FeO, coal, and oxygen to the smelting reduction furnace. In the second stage gas which has undergone secondary combustion in the smelting furnace is not introduced to the prereduction furnace but is discharged as waste gas. I note that the addition of carbonaceous material and oxygen to the prereduction stage has been expressly prohibited in the opposed process. Also the opposed process discloses that the reducing gases from the smelting step go to the prereduction step. Therefore RJB5 does not anticipate the opposed invention.
Drafts of the Brotzmann Paper (BCC2) were filed with the evidence-in-reply in the declaration of Mr Cunningham. Paragraph 7 of his declaration says “The preparation of the text of the lecture involved considerable effort of Professor Brotzmann and Australia-based Joint-Venture technical personnel, Dr Don Philp and myself. During the course of the preparation a considerable number of drafts of the text of the lecture were exchanged between all parties involved in the preparation.”, and paragraph 6 says “....the policy of the Joint Venture had been to limit disclosure of the important findings of the research/development work being undertaken by the Joint Venture. The presentation by Professor Brotzmann of the Howe Memorial Lecture was a deliberate departure by the Joint Venture from this policy. The intention of the Joint Venture was to make public via the Howe Memorial Lecture important results of the research/development work undertaken to that date by the Joint Venture.” The Brotzmann Paper was read at a lecture in the USA and no evidence has been advanced to show that the drafts of that paper were made available to the public in Australia before the relevant priority date. The members of the research team had viewed the drafts but there is no indication if any of the drafts being filed or placed on record for access by in the first instance staff of CRA and in the second instance the public at large. There is insufficient evidence to conclude that the Brotzmann drafts were published in Australia before the relevant priority date. Hence the Brotzmann Drafts cannot be considered for the issues of prior publication/novelty, manner of manufacture, obviousness and otherwise not novel.
Earlier on (see Evidence-in-reply) I had ruled that the Brotzmann paper did not constitute evidence-in-reply. I had allowed the two applications to file further evidence (see Further Evidence (HR-1) and BACKGROUND) filed by the opponent. This included:
(a) a statutory declaration by Mr. G.R. Munt (dated 17 July 1995) and a copy of a letter and enclosure addressed to Dr. D.K. Philp (exhibit GRM-1).-First application to file further evidence.
(b) a statutory declaration by Dr. D.K. Philp (dated 19 January 1996), exhibits DKP-1 to 5 and a statutory declaration dated 29 January 1996 by Mr. T.M. Keating.-Second application to file further evidence.
I have to determine if the Brotzmann paper was made available to the public in Australia prior to 7 December 1987, which is the earliest priority date of the opposed application.
There are two issues I need to determine. The first relates to publication of the paper via the CRA group of companies and the second relates to publication via disclosure to Mr. Keating.
Regarding the first matter, from the declarations of Dr. Batterham, Mr. Cunningham (evidence-in-reply) and Dr. Philp (new evidence) the following facts emerge:
A joint venture between CRA Limited and Kloeckner-Werke GmbH was formed in 1981 to undertake process development of an iron bath-based direct smelting process.
Basic research relating to the joint venture process was undertaken on a joint basis with Dr. Batterham and his team at the Division of Mineral Engineering, CSIRO, Melbourne.
Dr. Brotzmann (prior to 30 March 1987) drafted a lecture paper (the Brotzmann paper) with the assistance of Dr. Philp and Mr. Cunningham.
After the lecture was delivered in Pittsburgh, USA, Dr. Brotzmann sent a copy of the lecture to Dr. Philp.
On 11 May 1987 final confirmation was received by CRA Ltd. that the Brotzmann paper sent from Germany was the sanctioned version available for the general public.
From the above I can conclude that prior to 11 May 1987 some staff of CRA Ltd and CSIRO practised or were aware of the process disclosed in the Brotzmann paper and kept that matter confidential. I do not consider that these staff can constitute members of the public. As of 11 May 1987 the matter of that paper could be disclosed to the public in Australia. Those members of CRA Ltd who had kept the paper confidential could not after 11 May 1987 constitute the public to whom the paper was allegedly disclosed as in effect they were showing the paper to themselves (see Wood v Westaflex 20 IPR 387 at 399, lines 4 to 14 where King J. says “As the disclosures of the invention by Mr. Wood and others to Mr. Williams took place overseas they cannot be relied on as prior publication in Australia. Furthermore Mr. Williams was , in receiving the sample, acting as the duly authorised agent of his employer, and in that capacity brought it back to Australia, and also in that capacity showed it to his superiors and some fellow employees. The giving of the sample to him was in law the giving of it to Heacon Products Pty Ltd, and the showing of it to other employees of Heacon was not prior publication in Australia, as all persons who saw it did so in their capacities as agents of Heacon. The situation was equivalent to an individual showing the duct to himself.). No evidence has been provided that the Brotzmann paper was made available to the public in Australia. Only Dr. Philp (who, as an employee of CRA Ltd., I consider is not a member of the public) has given evidence of having received the paper. No other person from CRA Ltd has given any declaration in this regard nor is there any evidence of the paper having been passed on to a member of the public or of the paper being placed where it was easily accessible by the public in their capacity as members of the public.
Regarding the second matter Dr. Philp’s declaration discloses the following:
A copy of the Brotzmann paper was sent to Mr. Keating, Principal Executive Officer of the Coal and Minerals Division of the Federal department of Resources and Energy, Canberra, with a covering letter dated 24 April 1987. Prior to this Mr. Keating had met with him at the Perth offices of CRA Ltd on 6 March 1987.
The covering envelope, letter and paper, were not returned to Dr. Philp.
Dr. Philp believed that it was Mr. Keating’s responsibility to monitor resource based developments for the Federal Government.
Mr. Keating’s declaration discloses the following:
He was responsible for being aware of developments in the iron ore industry and downstream processing of iron ore-including steel making
He attended a meeting early in 1987 with Dr. Philp where Dr. Philp mentioned that he would forward to him a paper that explained in more detail the development work of CRA group of companies in the field of iron and steel making technology.
He cannot locate his files back to 1987 and believes they were destroyed.
In this instance there is no indication from Mr. Keating that he received the paper in question or that any disclosure was made to him of the contents of the paper. There is no evidence to indicate whether Mr. Keating constituted a member of the public who was not bound by any fetter of confidence (see Bristol-Myer’s Co.’s Application [1969] RPC 146 at 155 “...if the information, whether in documentary form or in the form of the invention itself, has been communicated to a single member of the public without inhibiting fetter that is enough to amount to a making available to the public...”) or that he was free in law and equity to do with the contents of the paper as he pleased (see Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen L.J. “I...treat this as a question of whether there has been a prior publication; that is, in other words had this information been communicated to any member of the public who was free in law or equity to use it as he pleased.”). There is no statement from Mr. Keating that he was not bound to keep confidential whatever information he received from various industries in his official capacity, or that whatever information he received was made available to the general public. Therefore I do not have sufficient evidence before me to conclude that a disclosure was made to Mr. Keating by Dr. Philp which clearly did not have any fetter of confidence placed on it. The onus is on the opponent to prove their case. I do not consider that the sending of the Brotzmann paper to Mr. Keating in itself constitutes a prior publication of the Brotzmann paper in Australia.
As I have decided that the Brotzmann paper was not published in Australia before the relevant priority date I shall not consider it against the grounds of manner of manufacture, obviousness/inventive step, and otherwise not novel.
Manner of Manufacture
The opponent raised the issue of Working Directions, i.e. the invention resides in instructions to use an old machine or operate an old process in a different or an allegedly more efficient manner to achieve an old result. The terms “old machine” and “old process” are used in the sense that use of the identical machine or process is either admitted in the specification or can be proved. See for example The Commissioner of Patents v Lee 16 CLR 138, for a particular operation of a charcoal burning kiln, where the specification itself admitted prior use of the kiln.
The two-stage process of the opposed application is not known as none of the prior art documents disclose, individually, all the essential integers of the process. Also, on comparing the prior art documents, there are clear differences in the way that the various stages of the two-stage process (i.e. prereduction and smelting) for the production of molten iron are carried out. Further no evidence has been adduced to show that the opposed process was a clear case of selecting operating parameters from well known ranges or, that the steps therein were something that constituted mere options amongst a variety of possible options. The opponent referred to the known Fe-CO equilibrium diagram. This diagram occurs as Fig. 4 in the opposed specification, and as Fig. 3-4 in RJB-3. Figure 4 of the specification shows a reduction equilibrium diagram for reduction of iron ore to iron due to CO gas, i.e. it shows the quantity of CO gas (as CO/[CO+CO2]) required for the reduction of iron ore to various oxides and finally to iron against temperature. It does not disclose or suggest a two-stage process but merely shows the temperatures and CO concentrations at which various forms of iron and its oxides exist. This diagram also does not suggest where reducing gases may be produced and where they should flow, nor where carbonaceous material may be added.
The opponent has not proven that the opposed invention constitutes a set of Working Directions. The opponent also submitted that the opposed invention was in the possession of the public in Australia at the priority date of the opposed application. As I have indicated above (Prior Publication/Novelty) this has not been proven on the basis of the evidence and prior art filed. I conclude, on the basis of the evidence put before me, that the case that the opposed invention does not constitute a manner of manufacture has not been made out.
Obviousness
Aickin J. states the test for obviousness in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd, (1981) 148 CLR 262 at 270,
“...whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge.”
The common general knowledge is the common general knowledge in the relevant field in Australia. The non-inventive worker in the field is a skilled but non-inventive worker in the relevant field of technology in Australia.
Regarding the declarants I shall now consider whether they could be considered to be non-inventive skilled workers in the relevant art in Australia.
Dr. Batterham as evidenced from his declaration (number of papers written, contribution to patents and work experience) possesses knowledge in the relevant field of smelting reduction of iron. I consider that his skills include those of the inventive skilled worker, in Australia, at the relevant priority date. I do not consider that his being inventive precludes him from giving information on what constituted common general knowledge in the art at the relevant priority date.
I consider that Professor Rankin, Professor Belton, Dr Wright and Mr Moodie were in the category of the non-inventive, but highly skilled worker, in Australia, at the time that the opposed application was filed. Their declarations state that they are in agreement with the contents of Dr Batterham’s declaration.
Mr Maeda is the inventor of the invention, the subject of the opposed application. He does not provide any evidence to indicate that he was aware of what constituted the common general knowledge in the relevant art at the relevant date in Australia. Hence I cannot consider his evidence to determine what constituted common general knowledge in Australia at the relevant date. Based on the evidence provided I consider that Dr Misra was a non-inventive but highly skilled worker, in Australia, at the relevant date.
The declarations of Mr Innes and Mr Cunningham deal with the alleged publication of the Brotzmann Paper and its drafts. They do not make any statements regarding the state of common general knowledge in Australia at the relevant date.
Dr Batterham states that he was aware of the basic characteristics of the opposed process but does not say that these basic features formed part of the common general knowledge. With regard to the alleged anticipatory documents Dr. Batterham does not state if these documents formed part of the common general knowledge at the relevant date. Only for the DRI Publication (RJB3) does he state that it is a basic text for persons involved in the field of the invention of the opposed patent application. The counsel for the applicant has agreed that only this publication constitutes part of the common general knowledge at the relevant time. I consider that this is also the view of Professor Rankin, Professor Belton, Dr Wright and Mr Moodie.
Dr. Misra has not viewed the alleged anticipatory documents except for the Brotzmann Paper (which I am not considering in this decision) which he says he was not aware of and that he would not expect other pyrometallurgists to be aware of it in Australia. He states that he was aware of two-stage iron smelting processes and the scientific principles underlying those processes before the claimed priority date and that other pyrometallurgists and pyrometallurgical engineers in Australia would have been aware of those principles at that time also. He also says that until the opposed application was brought to his attention in connection with these patent opposition proceedings he was not aware of the particular process described and claimed therein.
Dr. Misra concludes by saying that, based on his knowledge of the applicable scientific principles at the claimed priority date, he would not have predicted that a process in which iron ore is prereduced to FeO and not at all to iron metal, and in which the rate of secondary combustion was controlled to at least 20%, would provide the improvement in energy utilisation which is referred to in the opposed application, compared to two-stage processes of which he was aware at that time.
Based on the above submissions from declarants of both sides I cannot conclude that the essential features of the opposed invention formed part of the common general knowledge in the art in Australia. Therefore I cannot conclude that the claimed invention is obvious.
The DRI Publication is the only document which both sides agree on as forming part of the common general knowledge in Australia. However based on the evidence provided I cannot conclude that it would have been obvious to the non-inventive skilled worker to obtain from this teaching all the essential integers of the opposed invention. Further as I have noted under the heading Prior Publication/Novelty this publication does not disclose all the essential features of the invention.
I conclude, based on the evidence before me, that the ground of obviousness has not been proven.
Otherwise not Novel
Regarding the fourth ground of otherwise not novel the opponent submitted that the opposed invention before the priority date in Australia:
a) concerned a known process;
b) involved no more than a method of working that known process in a manner which was entirely known and predictable;
c) was part of the common general knowledge in the relevant technology as described in the six previously listed alleged anticipatory documents;
d) was already in the possession of CRA & CSIRO as constituent members of the public in Australia.
I note that item d) above refers to the project which was reported on in the Brotzmann drafts/paper. The four issues raised above by the opponent above have already been considered under the headings of Prior Publication/Novelty, Manner of Manufacture and Obviousness. Consequently I conclude, based on the evidence put before me, that the ground of Otherwise not Novel has not been made out.
Section 40
Counsel for the opponent submitted that claim 1 (and dependent claims) cover a method of use of the process which from Figure 4, and at reduction levels (I note that this actually refers to the secondary combustion rate-see the last paragraph under the heading SPECIFICATION) above 64% (e.g. at 800oC) will inevitably produce Fe; and hence the claims do not comply with s 40 because Fe production is against the teaching of the invention. Thus, the claims are either unclear or do not define the invention. Dr Misra has addressed this problem in his declaration. He says,
“In actual practice, the capability of the reductive gas to reduce the ore is determined not only by the gas composition (in particular the CO concentration) but also by the relative amount of reducing gas to iron ore. Even when the reductive capability is high with respect to the gas composition (that is, when the CO concentration is high: for example 80%) an ore of low prereduction rate can be obtained and production of iron metal can be avoided if the relative amount of reducing gas is low. ......In particular it is possible to operate the prereduction furnace so that the degree of prereduction is less than 30% (that is, no iron metal is produced) even if the CO/(CO+CO2) in the reductive gas is as high as 80%.”
Therefore I do not consider that the skilled addressee will face any undue difficulty in resolving the apparent inconsistency between claim 1 and Fig 4. Claim 1 clearly states that no iron is produced in the prereduction stage and this is also clearly stated in the description. I think it would be clear to the skilled addressee that the relative amounts of reducing gas to iron ore need to be adjusted to satisfy the requirements of no iron production in the prereduction stage.
The opponent’s counsel also submitted that claim 3 when appended to claim 1 lacked clarity as it used the term “about 800o”. This issue was raised by Dr Batterham in the evidence in reply. I note that Dr Misra does not face any difficulty with this term. Claim 1, being the broadest claim, clearly includes within its scope the temperature range in which the process operates. Though a specific range has not been set down in claim 1, none of the skilled addressees have mentioned any difficulties they may have faced in determining the temperature range of operation of the process. Also the description at page 13, lines 8-10 states “...the reaction temperature shall be over 700oC in order to get higher reaction speed and below 900oC in order to avoid sintering of the ore.” I conclude that the term “about 800o” does not cause claim 3 to lack clarity.
Other issues raised were that
(a) claim 1 is unclear in that the words at lines 9/10 appear to be tautologous. “Reducing the ore to FeO (wustite) and not to iron” always will occur at a pre-reduction rate maintained below 30%.
This feature has not made the claim lack clarity or made its scope unclear. None of the skilled addressees expressed any difficulty in construing the meaning of this term.
(b) there does not appear to be any fair basis for the limitation in claim 1 of “in the absence of added carbonaceous material”. In any event, the limitation is not essential to the invention.
This feature has clear support in the description and drawings. In particular the description at page 9 onwards and the related drawings clearly show that prereducing occurs in the absence of added carbonaceous material. The specification as a whole concentrates on minimising coal consumption in the smelting furnace (in conjunction with a number of other variables) and does not add coal to the prereducing furnace. I conclude therefore that there is fair basis for this feature and that it is essential to the invention.
(c) Dr Misra in his declaration at paragraphs 7 &8 has defined an essential process step, that is, sufficient concentration of CO in the pre-reduction vessel to ensure reduction of the ore to FeO and not to iron. As this feature is not in the specification, the specification lacks sufficiency; and the claims are not fairly based as this feature is not claimed.
This feature refers to the sufficiency of the CO concentration in the prereduction vessel. Claim 1 quite clearly states that the gas undergoing secondary combustion must have a reductive capability and that the prereduction must be such as to reduce the ore to FeO and not to iron. The presence of sufficient CO to effect this prereduction is therefore quite clearly implicit in that statement and also in the requirement that the rate of secondary combustion be at least 20%. The description at page 16, lines 13-15; and page 20, lines 7-12 makes a clear disclosure that the CO content is dependent on the secondary combustion rate defined in claim 1. I therefore do not consider that the specification lacks sufficiency and that the claims are not fairly based.
CONCLUSION
In the matter of the evidence-in-reply I found that the document, the Brotzmann Paper, did not constitute evidence-in-reply and hence it was not considered in the substantive opposition. The application to file further evidence made by the opponent at the first hearing has been allowed. Prior to the second hearing another application to file further evidence made by the opponent was also allowed. Finally I have found that the opponent has not succeeded in proving any of the grounds raised in relation to the substantive opposition.
COSTS
The opponent at both hearings requested that the costs should go with the opposition in their favour. The applicant asked for costs in their favour at the first hearing; and at the second hearing submitted that as this hearing was due to the opponent’s submissions the applicant should be also accorded costs of the second hearing plus any other costs.
As I have found in favour of the applicant I award costs, including the costs of the second hearing, against the opponent Kloeckner CRA Patent GmbH
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Griffith Hack & Co., Melbourne
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