Kenneth William Hope v Heggies Bulkhaul Ltd

[1996] APO 25

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 643600 in the name of KENNETH WILLIAM HOPE

Title:    Soil substitute

Action:    Opposition by HEGGIES BULKHAUL LTD

Decision:    Issued            .

Abstract:    None of the claims define inventive subject matter (problem-solution approach applied) or patentable subject matter (recent decision of the High Court in Philips v. Mirabella discussed). Claims not anticipated by the particularised non-patent literature or by informative prior use (recent decision of the House of Lords in Merrell Dow v. Norton discussed).

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 643600 by KENNETH WILLIAM HOPE, and opposition thereto by HEGGIES BULKHAUL LTD.

background

Patent application 643600 was filed in the name of Kenneth William Hope ("Hope") on 6 March 1992 as application number 12146/92. The application was associated with provisional application number PK 4973 filed on 7 March 1991.

The application was advertised accepted on 18 November 1993. Heggies Bulkhaul Ltd ("Heggies") filed notice of opposition on 18 February 1994. The evidence in the opposition was completed on 6 March 1995.

The matter was heard in Sydney on 26 October 1995. The applicant was represented by Dr P Stearne (patent attorney of Davies Collison Cave, Sydney) assisted by Mr M Roberts. The opponent was represented by Dr C Bodkin and Mr J O'Connor (patent attorneys of Spruson & Ferguson, Sydney).

THE SPECIFICATION

The specification indicates that the invention concerns a soil substitute and that by that term is meant a material which functions in the same manner as soil, particularly for growing plants and including for use as a top dressing material, potting mix or soil conditioner.

Obtaining soil for use in gardening, particularly near cities, is said to be increasingly difficult and it would therefore be useful to provide a soil substitute containing readily available components and in which plants will readily grow. For this purpose, the specification states that the applicant found a mixture of coal fines and sand to be suitable, such a mixture also having the advantages of being weed-free, a dark loam colour favoured by users, and providing a use for coal fines which are a waste product the disposal of which is otherwise difficult.

THE CLAIMS

The specification ends with 6 claims which read as follows:

"1.  A soil substitute for use, comprising a mixture comprising:

(a) from 5% to 70% by weight of coal fines, and
(b) sand, and optionally
(c) a minor amount of any one or more of:
fertilizer, manure, compost, sawdust, finely divided wood chips, peatmoss, or soil.

2.  The soil substitute of claim 1 wherein the coal fines constitute from 25% to 55% by weight of the mixture.

3.  The soil substitute of claim 1 or claim 2 wherein the sand is river sand.

4.  The soil substitute of any one of the preceding claims which additionally include a minor amount of any one or more of: fertilizer, manure, compost, sawdust, finely divided wood chips or peatmoss.

5.  The soil substitute of any one of the preceding claims which additionally includes a minor amount of soil.

6.  A soil substitute substantially as herein described with reference to any one of the Examples thereof."

THE GROUNDS OF OPPOSITION

The statement of grounds and particulars sets out the following grounds of opposition:

Ground 1: Section 59(a). The nominated person is not entitled to a grant of a patent for the invention.

This ground was not pursued at the hearing.

Ground 2: Section 59(b). The invention is not a patentable invention because it does not comply with subsection 18(1)(a) or (b).

The following "documents 1 to 7" are cited under 18(1)(b):

1. BHP data sheet entitled "BHP Soil Mix";

2. BHP Steel, Slab & Plate Division publication "Greening of the Steel Works";

3. A paper entitled "Rehabilitation of Smelter Slags" in  Mining Rehabilitation 87, published by Australian Mining Industry Council (A.M.I.C.).

4. A paper entitled "Greening of Steel Plate Sites" presented at a conference of the Ecological Society of Australia at Geraldton, Western Australia in 1988;

5. A paper entitled "Utilisation of Solid By-products and the Rehabilitation of Steel Works Land" presented at an A.M.I.C. conference in Ballarat, Victoria in 1989;

6. A paper entitled "Recycling of Steel Works By-products for Land Rehabilitation Purposes" presented at the Effluent Re-Use Conference, Wollongong, 13 February 1990;

7. An article entitled "Artificial Soil - from a Steel Works!" by S. Thompson in Australasian Science Mag, Issue 2, 1991, pages 34-35.

Ground 3: Section 59(c). The specification filed in respect of the complete application does not comply with subsection 40(2) or 40(3).

A number of particulars are set out under this ground.

At the hearing, submissions were made in relation to section 40, novelty (documentary prior art information and prior use), inventiveness and manner of manufacture.

EVIDENCE

The evidence in support consists of statutory declarations by:

- Alan McNally, who states that he is director of Amgrow Pty Ltd (Amgrow), and that he has been so employed since 1984, and that Amgrow's business activities include the preparation and sale to nurseries and nursery supply wholesalers of soil mixes and soil substitutes for use in horticulture, and that he has personal knowledge of the products which have been sold by Amgrow during the time in which he has been director of the company.

- Dennis J. Frew, who states that he is currently employed by Clutha Limited in the capacity of General Manager Finance and Administration/Company Secretary and has been in the employ of Clutha for the past 25 years.

- Sharon Makin, (with Exhibits SM-1 to SM-7), who states that she has the degree of Batchelor of Environmental Sciences, and that she commenced work with BHP Slab and Plate Products Division (Port Kembla Steelworks) in 1985, and that she is Senior Environmental Engineer in that Division heading section in Environment in charge of Waste and Landcare.

- Library employees Elizabeth Swan, Julia Weir, and Rina Solomon (with Exhibit RS-1).

The evidence in answer consists of two statutory declarations by Kenneth W. Hope (with Exhibit KWH-1 to one of these declarations). Mr Hope, the applicant and inventor for 643600, states that he is Company Director of Hope's Soilmart Pty Limited and has been so for the past 20 years and has worked in the soil industry in Australia in total for 25 years.

The evidence in reply consists of a further statutory declaration by Sharon Makin (with Exhibits SM-8 and SM-9) and a statutory declaration by Ian D. Thomas. Mr Thomas states that he is general manager of Amgrow, and that he has been employed by Amgrow for approximately 17 years, and that he has the qualifications of Diploma in Applied Science, Agriculture (Agronomy) and Graduate Diploma in Environmental Management, and that he has personal knowledge of the products which have been sold by Amgrow in the time during which he has been employed by Amgrow.

SUBMISSIONS

I summarise Dr Bodkin's main submissions on behalf of Heggies as follows:

Section 40

- In claim 1 the meaning or meanings of the term "comprising" in the expression "... comprising a mixture comprising ..." is or are not clear, particularly in view of the use of the term "constitute" in claim 2. See the decision in Asahi v. WR Grace, 22 IPR 491.

- The term "a minor amount" in claim 1 has no clear meaning in the context of the specification. In Example 4 for instance, it would seem that the "heavy grade clay-based soil" component was the matrix of the material and as such was present in a considerably greater proportion than would normally be understood as minor.

- The basis of "5% to 70% by weight of coal fines" in claim 1 is not clear. Is the percentage range by weight of the sand or of the total mixture? And is it on a dry basis or a wet basis?

- The unqualified use of the term "for use" renders the scope of claim 1 unclear.

- The meaning of the term "coal fines", as used throughout the specification (including claim 1), is not clear. At page 2 of the specification coal fines are vaguely described as being a by-product of coal mining, a black granular substance and the waste products obtained from coal mining and processing. No other "definition" appears in the specification.

- It is not clear whether or not it is intended that the ambit of claim 6 should be broader than that of claim 1 in the sense that no proportions of the components of the mixtures of Examples 4 or 5 are specified.

- The claims are unclear with regard to "finely divided" which is a comparative term for which no definition is provided in the specification.

- Claim 6 is unclear because in Example 3 it is not clear what is meant by the statement "To this mixture, was added about 5% by weight per tonne of fowl manure".

Essential Features

- From a reading of the specification as a whole, it appears that the essential features of the invention are that there is a mixture of a black granular waste by-product of coal processing (which substance is referred to as coal fines) together with sand or clay, and other ingredients.

- That sand is not an essential feature is evident from page 1 lines 15 and 16 of the specification " ... a mixture of coal fines as well as sand or other growth matrix ... " and page 2 lines 8 to 11 "Clay based soils ... can be incorporated in the mixture in place of ... the sand."

- The  relative proportions of components are not essential because at the foot of page 1 of the specification it is stated to be merely preferable that the coal fines constitute from about 5 to 70% by weight of the mixture. Furthermore, the fact that no percentage amounts of ingredients are specified in either Example 3 or Example 4 is indicative that relative proportions are of no importance.

Novelty (documentary prior art information)

- Coal washery refuse is the waste material left over from the coal washing process and includes particles ranging from sub micron to approximately 50mm (first Makin declaration para 10 and second Makin declaration para 6). Thus coal washery refuse is, or contains, "coal fines " as defined in the opposed application.

- Granulated blast furnace slag resembles sand both in appearance and composition (first Makin declaration para 11 and second Makin declaration paras 5 and 6, and exhibit SM-8) and sand may be substituted for it in soil mixes (first Makin declaration para 11, second Makin declaration paras 10 to 14, McNally declaration paras 7 and 8 and Thomas declaration para 5 and 6)

- The article: "Rehabilitation of Smelter Slags" (Exhibit SM-2), published in Australia 21 October 1987, discloses the use of coal washery refuse in soil substitutes either alone or with slag or with soil comprising sand. Thus this article discloses the use of a soil substitute as defined in at least claim 1 of 643600.

- Each of the articles:

"Utilisation of Solid By-Products and the Rehabilitation of Steel Works Land" (Exhibit SM-3), published in Australia 4 April 1990;

"Recycling of Steel Works By-products for Land Rehabilitation Purposes" (Exhibit SM-4), published in Australia 5 October 1990;

"Greening of the Steel Works" (Exhibit SM-5), published in Australia October 1990.

refers to the use of a mix of coal washery refuse, granulated blast furnace slag and sewage sludge. Thus each of these articles discloses a soil substitute as claimed in at least claim 1 of 643600.

Novelty (prior use)

- Soil substitutes including coal fines and sand, as defined in at least claim 1 of 643600, were sold commercially in Australia by Amgrow Pty Ltd before the priority date (McNally declaration paras 4 to 6 and Thomas declaration paras 3 and 4).

- Coal fines and mixtures of coal fines with sand and/or soil, as defined in at least claim 1 of 643600, were used and sold in Australia by Clutha Limited before the priority date (Frew declaration paras 3 to 5).

Messrs McNally, Thomas and Frew are independent of the opponent Their evidence is prima facie credible and although challenged by Mr Hope, is not controverted. The declarations of McNally and Thomas corroborate each other.

- A soil substitute consisting of 50% coal washery refuse, 25% granulated blast furnace slag and 25% sewage sludge was used in Australia by BHP prior to the priority date (see the Makin declarations). Replacing granulated blast furnace slag with sand in the soil substitute used by BHP produces a soil substitute as defined in claim 1 of 643600, since it would comprise sand and between 5% and 70% by weight of "coal fines". The use by BHP of its soil mix was in public (see first Makin declaration, paras 13 and 15 and second Makin declaration para 22).

Inventive Step

The person skilled in the art is the commercial producer of soil mixes, substitutes or additives in Australia.

- Each of the prior art information documents 1 to 7 is such that it could reasonably be expected to have been ascertained, understood and regarded as relevant by such a person skilled in the art before the priority date of 643600.

- The evidence filed by the opponent establishes that in the production of soil mixes and substitutes industry in Australia, prior to the priority date of 643600, the following were common general knowledge:

(i) "Coal fines" are suitable for use in soil substitutes.

(ii) Granulated blast furnace slag and sand are essentially interchangeable in soil substitutes (first Makin declaration para 11; McNally declaration para 8; Thomas declaration paras 5 and 6; second Makin declaration paras 10 to 12).

- There is no inventive step in what is claimed in any of the claims in the light of the relevant common general knowledge alone or in the light of documents 1 to 7 of prior art information taken together with the relevant common general knowledge.

- Even if it be considered that documents 1 to 7 of prior art information do not disclose explicitly a soil substitute comprising from 5 to 70% of "coal fines" there is no invention in merely defining a particular range of amounts of one of the components in a known composition (cf. NV Philips v. Mirabella International (1992) 24 IPR 1 at 35; Commercial Solvents Corporation's application (1954) 71 RPC 143).

Manner of Manufacture

- There is no manner of manufacture disclosed in the specification because nothing new is given to the public thereby.

- It is not a manner of new manufacture merely to specify the criteria required to be met, in the manufacture of a known product from known materials, in order to achieve vendability (decision of Wilcox J, NV Philips v. Mirabella (1992) 24 IPR 1 at 35).

I summarise Dr Stearne's main submissions on behalf of Hope as follows:

Section 40

- It is clear that the term "comprising" in claim 1 should be given an exclusive interpretation. See the judgement of Heery, J. in Asahi v Grace (supra) at 515 where he said that "the word simply meant 'consists of' and would not cover claims in respect of an infinite number of substances which might be added ... ".

- When interpreting the terms "minor amount", "finely divided" and "coal fines" it is to be recognised that the invention does not lie in an exact art and should be given the meaning that a person skilled in the art (PSA) would adopt. Declarant Mr McNally of Amgrow does not appear to have had any difficulty with the meaning of the term "coal fines".

- In claim 1 the term "for use" is redundant.

- In Example 3, "per tonne" should be qualified by "of total material"; this can readily be corrected by amendment.

- Claim 6 includes Examples 4 and 5 not in isolation but "substantially as herein described". Thus the skilled addressee would understand the ambit of claim 6 in the context of the specification as a whole, including the statement at the foot of page 1 that: "Preferably, the coal fines constitute from about 5 to 70% by weight of the mixture".

Essential Features

- From claim 1 and page 1 lines 28 to 32 of the specification, it is clear that the essential features of the invention are that there is a mixture of sand and coal fines and that the coal fines constitute 5 to 70% by weight of the mixture, which mixture may contain minor amounts of other ingredients.

Novelty (documentary prior art information)

- None of the cited documents disclose a soil substitute comprising the essential features of 5 to 70% by weight of coal fines and an amount of sand.

- Coal wash consists mainly of general crud such as shales and clay minerals with varying amounts of coal not removed by washing (page 54 of exhibit SM-3) and is not the same as coal fines. Even if coal fines are present in coal wash there is no disclosure of their percentage by weight in "BHP soil mix".

- Sand is fundamentally different to slag which has properties which render it less suitable for inclusion as a component in a medium to support plant growth. Such properties of slag (not possessed by sand) include a high salt content, low moisture-retaining capacity, a high lime content (forms cement when moistened) and sterility (microorganisms killed by high temperature steel making process) - see page 107 of Exhibit SM-2.

- Sand is an essential feature of the invention of 643600 but the doctrine of mechanical (i.e. functional) equivalents applies only to inessential features. Dr Stearne referred me to Nicaro Holdings v Martin Engineering, 16 IPR 545 at 559 line 38 to 560 line 5, General Tyre & Rubber v Firestone Tyre & Rubber, 1972 RPC 457 at 485, R D Werner v Bailey Aluminium, (1989) 13 IPR 513.

Novelty (prior use)

- Statements by McNally, Frew and Thomas in their declarations as to their recollections are not only incapable of independent verification but also are not corroborated by any relevant contemporary documentation. Thus, in relation to alleged prior use by Amgrow Pty Ltd and Clutha Limited no corroborative evidence, such as copies of relevant invoices for delivery of relevant materials (which could easily have been obtained without too much trouble), has been provided in relation to actual use or formulations which may have been used.

Inventive Step

- As identified at page 1 para 3 of 643600 the object of the invention or problem to be solved is to "provide a soil substitute containing components which are readily available, and in which plants and other vegetation will readily grow". Therefore the person skilled in the art is a gardener or nurseryman.

- Prior art information documents 1 to 7 and the alleged use by BHP of the "BHP Soil Mix" are aimed at addressing the problem of rehabilitation of industrial land using wastes from steelworks either wholly or partly as substitutes for soils (cf. para 5 of the first Makin declaration). This is clearly a different problem to that solved by 643600 and in our opinion relates to the art of land reclamation or rehabilitation. Documents 1 to 7 and the alleged prior use by BHP therefore do not fall within the prior art base for assessing inventiveness.

- As already submitted in relation to novelty, alleged prior uses by Amgrow and Clutha have not been established to the required standard of proof and therefore cannot be considered to constitute relevant prior art information.

Manner of Manufacture

The invention the subject of 643600 is a manner of manufacture because it is useful, has utility and is of economic significance, cf. the "vendible product test" developed in NRDC's Application, (1959) 102 CLR 252, and recently confirmed as relevant to the 1990 Patents Act by the decision of the full Federal Court in CCOM v. Jiejing, 28 IPR 481.

DECISION

Before considering the issues relating to section 40, novelty, inventive step and manner of manufacture, I shall first determine which features of the claimed invention I consider to be essential.

Essential Features

Apart from features clearly indicated as optional, Claim 1 of 643600 can be broken down into the following features:

- a mixture of:

- 5 to 70% by weight of coal fines, and
- sand.

That "coal fines" (whatever the meaning of that term) are an essential ingredient of the mixture was not disputed.

Is "sand" essential? In the specification of 643600 there are indications (at page 1 lines 15 and 16 and at page 2 lines 8 to 11) that "clay" or "other growth matrix" could substitute for the sand. I believe, however, that on balance the notional addressee would consider these to be misleading stray phrases in view of the following factors which are persuasively indicative that sand is essential:

- In the specification of 643600, the phrases:
"In a broad form the present invention comprises ... a mixture of sand and coal fines." (page 1 lines 28 to 30) and "the coal fines /sand mixture of the invention" (page 3 lines 13 to 14);

- All of the mixtures of Examples 1 to 7 of 643600 include sand as a component;

- each of the claims of 643600 define sand as a non-optional component of the mixture claimed.

I think that the patent applicant intended the precise term  "sand " in the claims to be understood by the notional addressee as excluding functional variants (cf Catnic Components v. Hill and Smith, (1982) RPC 183, Lord Diplock at 243). I therefore conclude that sand is an essential component of the mixture of the invention.

I have to agree with the submissions made on behalf of the applicant to the effect that the limitation in claim 1 that the coal fines are present in an amount in the range of " 5% to 70% by weight of the mixture" is an essential feature of the invention as claimed. Thus, not only is the range "5 to 70%" unequivocally defined in the broadest claim but also (notwithstanding the use of the word "preferably" in the paragraph at the foot of page 1) there is no specific disclosure in the description of any percentage range having a minimum of less than 5 or a maximum of greater than 70.

I find that the essential features which characterise the invention of 643600 are that it is a mixture of coal fines and sand with 5 to 70% by weight of the mixture (which optionally may include minor amounts of other ingredients suitable for inclusion in a soil mix or soil substitute) being coal fines. I should add that I think that it is not essential that the coal fines in the mixture should necessarily have existed as coal fines per se at any stage but rather that they may have become part of the mixture by being added as a component of a material (such as coal washery refuse) which contains coal fines in combination with other components which are suitable for inclusion in a soil mix or soil substitute.

Section 40

The double use of the term "comprising " in claim 1 is potentially unclear. From page 2 lines 2 to 6 of the specification I note " ... additional ingredients can be incorporated in the mixture. These additional ingredients can be selected from any one or more of the different types of fertiliser, manure, compost, sawdust, finely divided wood chips, peatmoss, and other such substances that promote or allow plant growth, or provide a matrix for growth." Having regard also to Examples 3 and 4, I interpret the "comprisings" of claim 1 to mean that the optional ingredients specified in claim 1, and similar such ingredients, are present only in relatively minor amounts in relation to the combined amount of coal fines and sand, but that mixture may then itself be mixed with anything from a small to a substantial amount of an ordinary soil to form the so-called "soil substitute" of the invention. Thus, however clumsy one might consider the expression " ... comprising a mixture comprising ... ", I believe the issue is determinable and that claim 1 does not thereby lack clarity.

From the context of the specification as a whole I believe that it is clear that the "from 5% to 70% by weight of coal fines" of claim 1 refers to the total weight of "the mixture" as defined in claim 1, notwithstanding that that mixture may then be further mixed with a significant amount of an ordinary soil.

Terms such as "minor amount" and "finely divided" can potentially cause lack of clarity in the claims of a patent specification. However, given the nature of the present invention, which clearly does not reside in a field of technology demanding of fine tolerances, I think that the meaning of such terms would be readily apparent to the skilled addressee.

On behalf of the opponent it was argued that the term "coal fines" was indefinite and on the basis of the vague description of the term in the specification in suit could even mean the same as the term "coal washery refuse". From the material before me it appears that both of the aforesaid terms originate from the coal processing industry and it does not seem likely to me that the skilled addressee of the specification of 643600 would be unaware of that fact. I am therefore prepared to accept that for the purpose of construing the specification of 643600 the definition of coal fines from the Dictionary of Fuel Technology (Gilpin) as "very fine coal particles, usually less than 1/8 in." should apply in the present instance (cf. Exhibit KWH-1 to Mr Hope's declaration).

The reason for the use of the unqualified term "for use" in claim 1 is not apparent to me. Presumably the term is either redundant or in need of elaboration, but in any event I think that its inclusion does not make the claim bad for want of clarity.

Claim 6 is rendered not clear by the use in Example 3 of the phrase "To this mixture, was added about 5% by weight per tonne of fowl manure".

Novelty and Inventive Step - The Legislation

The relevant provision of the Patents Act 1990 is section 7, which states in part:

"(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or though doing a single act;
 ...

(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.

(3) For the purposes of subsection (2), the kinds of information are:

(a) prior art information made publicly available in a single document or through doing a single act;
 ...

being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."

Novelty (documentary prior art information)

The generally accepted test for anticipation is the "reverse infringement" test as set out in Meyers Taylor Pty Ltd v. Vicarr Industries Ltd (1977) 137 CLR 228 at 235:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

Infringement of a patent occurs when each and every one of the essential integers of the claim have been taken (Rodi and Wienenberger AG v. Henry Showell Ltd [1969] RPC 367).

None of the documents tendered in evidence and published prior to the priority date disclose a specific mixture comprising coal fines and sand. Since this combination of features is essential, the claims are novel in the light of the documentary prior art before me.

Novelty (prior use)

Although it was submitted on behalf of the opponent that "BHP soil mix" contained a substance (granulated blast furnace slag) with some sand-like properties, it was not alleged that it contained sand itself. Since I have found that sand is an essential feature of the mixture of the present invention, it follows that even if BHP soil mix was used in public in Australia before the priority date, such use could not have anticipated the present invention.

In the recent decision of the House of Lords in Merrell Dow Pharmaceuticals Inc and Others v. HN Norton & Co Ltd 33 IPR 1 at 7-9, the key issue with regard to prior use was the change in wording from the 1949 to the 1977 UK Patents Act. Under the 1949 Act, prior user was based on "having regard to what was known or used". Under the 1977 Act novelty was assessed against matter "made available to the public". The House of Lords found that the use of the product becomes part of the state of the art only insofar as that use is informative, i.e. makes available the necessary information - a different result to that found in Bristol-Meyers Co (Johnson's) Application [1975) RPC 127. In my view the same considerations apply with respect to the differences between the 1952 Australian Patents Act and the 1990 Act. Under the 1952 Act, obviousness was assessed against "what was known or used" and novelty against publication and "otherwise not novel". The 1990 Act (section 7) assesses novelty and inventive step against prior art information "made publicly available" - a similar term to that used in the UK 1977 Act.

Consequently, even if I were to accept on the basis of one or more of the declarations of Messrs Frew, McNally and Thomas that mixtures comprising coal fines and sand had been used in public in Australia prior to the priority date, that would not be sufficient to establish anticipation by informative prior use since there is no specific evidence (as opposed to vague implication) before me that on any of the occasions of such use was information concomitantly provided to the public that the mixture in question, whilst having the appearance of ordinary soil, in fact comprised coal fines and sand. I incidentally also note that at paragraph 5 of his declaration Mr McNally states that "The precise compositions of Amgrow's products are, however, trade secrets which I am not prepared to divulge in this declaration."

I conclude that anticipation by informative prior use has not been established.

Inventive Step

In the circumstances of the present case, having regard to the nature of the evidence filed and the submissions made, in order to determine whether or not the invention involves an inventive step the Act requires me to:

1. determine the art in which the invention lies;
   (ii)  determine what has been established as the relevant common general knowledge in the art (if any) in the patent area before the priority date;
   (iii) identify a citation (if any) which could have reasonably been expected to have been ascertained, understood and regarded as relevant to work in the art; and
   (iv)  determine whether the invention as claimed would have been obvious to the person skilled in the art in the light of the common general knowledge considered separately or together with the citation.

As a suitably structured way of tackling the obviousness question posed by the Act, I will use the so-called problem-solution approach. This approach has been advocated, if applicable to the circumstances of the case, in recent Delegate of the Commissioner decisions such as American Home Products Corporation's Application, on application number 16397/92, issued 28 September 1994, unreported, and Rhone-Poulenc Rorer S.A.'s Application, on application number 12264/92, issued 25 August 1995, unreported.

As indicated in the specification of 643600, "the problem" to be solved, was to provide a soil substitute comprising components which are readily available in large quantities, has an appearance acceptable to soil buyers, is substantially weed free, and in which plants and other vegetation will readily grow. This problem lies in the art of large scale production of soil mixes and soil substitutes. Whether the product is subsequently used on a large or small scale is immaterial.

In my view the person skilled in the relevant art in which the present invention lies would have been the large-scale producer of soil mixes and soil substitutes.

The patent applicant has alleged that expert witnesses for the opponent are in collusion and has cast doubt on the veracity of some of the statements made in their statutory declarations. However, in the absence of substantiation in support of these allegations, I am satisfied that the declarations of Ms Makin and Messrs Frew, McNally and Thomas establish that prior to the priority date it was common general knowledge in the art that both coal fines (per se or as a component of coal washery refuse) and sand (or functionally equivalent material) were suitable for use in soil substitutes as were many other materials.

The solution proposed by the applicant to "the problem" was to combine two ingredients (coal fines and sand) out of the many ingredients commonly generally known for use in soil mixes or soil substitutes.

In Minnesota Mining & Manufacturing Co v. Beiersdorf (Australia) Ltd, (1980) 144 CLR 253, Aickin J at page 293:

"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of perhaps many possibilities, which must be shown to be obvious."

In the case of the present invention there is no comparative data at all in the specification of 643600 to establish that there was any surprising and unexpected technical advantage gained by selecting coal fines and sand to be combined in a soil substitute. It could well be that it might be commercially advantageous to so select coal fines and sand, but there is no evidence to suggest that any technical insight was required to devise a soil substitute comprising the components coal fines and sand each of which was individually already commonly generally known for inclusion in soil mixes or soil substitutes.

But does the specified percentage of coal fines in the mixture confer inventiveness?

In Acushnet Co. v. Spalding Australia Pty Ltd 16 IPR 333, the delegate of the Commissioner at page 336:

"Two points emerge. The first is that the fluorescent materials are commercially available. The second is that the amount of material to be used is largely a matter of choice ...  In these circumstances the inclusion of percentage ranges of the fluorescent material in the claims is substantially meaningless ... I note that in similar circumstances in Carlton Tyre Saving Co's Application (1973) 43 AOJP 1404, where the applicant claimed a specific wall thickness of a badminton racquet frame, the delegate of the Commissioner found that ... all the applicant had done was to optimise a range of values and ... some thicknesses must have better results than others ... ."

In NV Philips v. Mirabella International (1992) 24 IPR 1, Wilcox J. at page 35:

"I do not doubt that phosphors meeting those parameters have enabled Philips to market a successful product; but the stipulated figures are arbitrary, in the non-pejoritive sense of depending on the will or discretion of the patentees."

In the present instance, although it may be that the percentage range in question could have some relevance in terms of commercial cost factors, there is no indication in the specification that it is in any technical sense critical to the working of the invention.

I conclude that it would have been obvious, in the light of the common general knowledge before the priority date, to the person skilled in the art of large scale production of soil mixes and soil substitutes to solve "the problem" by selecting the particular combination of essential features claimed in claim 1.

It has been established (cf. the declarations by Swan, Solomon and Weir) that each of the articles by employees of BHP: "Rehabilitation of Smelter Slags" (supra), "Utilisation of Solid By-products and the Rehabilitation of Steel Works Land" (supra) and "Recycling of Steel Works By-products for Land Rehabilitation Purposes" (supra) was published in Australia prior to the priority date. Each of these articles discloses a soil substitute ("BHP soil mix") comprising coal fines (as a constituent of coal washery refuse) and granulated blast furnace slag.

Companies which operate so-called "dirty heavy industries" have been active for some years in responding to, or anticipating, public demands that land areas near cities polluted by dumps of industrialised wastes be rehabilitated. It is of course highly likely that a company which has expended considerable resources on developing technical solutions to community concerns would make documentation highlighting its achievements in that area easy to ascertain. I am therefore of the view that the person skilled in the art of soil mixes and soil substitutes would have ascertained the above 3 articles. The information concerning soil substitutes disclosed in each article is not obscure and would have been regarded as relevant to work in the art of the present invention.

I turn now to consider the issue of whether or not granulated blast furnace slag would have been considered, by the person skilled in the art at the priority date, as an equivalent or substitute for sand in a soil mix or soil substitute.

At paragraph 11 of her first declaration, expert witness Makin declares:

"Granulated blast furnace slag consists predominantly of a mixture of silica with varying amounts of other metal oxides, and resembles river sand in appearance. It is widely known throughout a number of industries as a possible substitute for sand. For example it is used as a substitute for sand in glass-making and concrete manufacture. Although it is more alkaline than sand, this does not present any practical difficulty when it is used in a soil substitute because the alkalinity does not tend to leak out. In my opinion, there would be no advantage in the use of sand instead of granulated blast furnace slag in BHP Soil Mix, as far as the acceptability of the mix as a soil substitute is concerned."

In paragraphs 7 and 8 of his declaration, expert witness McNally declares:

"Amgrow has at times, including prior to March 1991, included blast furnace slag as a substitute for sand in soil mixes which have been sold by Amgrow, at times when the relative prices of sand and slag made it commercially attractive to do so.

I ... regard slag and sand as essentially interchangeable in soil mixes. Sand is included in soil mixes mainly to promote drainage of the soil mix and to add bulk. A number of other materials, such as blast furnace slag or gravel, can serve the same purpose. Of those other materials, blast furnace slag has a similar appearance to sand and fulfils the same functions as sand in a soil mix. In my opinion, sand is an obvious substitute for blast furnace slag, in a soil mix which includes blast furnace slag."

In paragraphs 5 and 6 of his declaration, expert witness Thomas declares:

"Amgrow has at times, including prior to March 1991, included blast furnace slag instead of sand in soil mixes which have been sold by Amgrow. I am aware that other producers of soil mixes had also been using blast furnace slag as a substitute for sand in their products prior to march 1991. Because of the similarities in appearance between sand and granulated blast furnace slag, in March 1991 I regarded them as interchangeable in soil mixes, at least in mixtures which do not contain large amounts of sand. Amgrow's experience with the use of granulated blast furnace slag in place of sand in its soil mixes has been, and prior to March 1991 had been, that the products so obtained were of good quality. Amgrow has, however, generally not adopted the use of granulated blast furnace slag in place of sand in soil mixes sold by Amgrow because of the relative cost to Amgrow of the two materials, which favours the use of sand.

In my opinion at March 1991 it would have been obvious to me and to other persons experienced in producing soil mixes in Australia that the soil substitute then in use by BHP for rehabilitating its industrial land could have been varied by replacing the granulated blast furnace slag used by BHP with sand, without adversely changing the effectiveness of the resulting mixture as a soil substitute."

I conclude that it would have been obvious, having regard to my comments about the percentage ranges, and in the light of the common general knowledge before the priority date, when considered together with each (separately) of the 3 articles referred to above, to the person skilled in the relevant art to solve "the problem" by replacing the slag component of BHP soil mix with sand thereby arriving at the particular combination of essential features claimed in claim 1.

I find that the invention defined by claim 1 does not involve an inventive step. No significant submissions were made about the invention as defined in the dependant claims, which by the same reasoning also do not involve an inventive step.

Manner of Manufacture

As I understand the recent majority decision of the High Court in Philips v. Mirabella, 32 IPR 449, whether or not an invention constitutes proper subject matter for a patent according to traditional principles (i.e. is or is not a manner of new manufacture for the purpose of the Statute of Monopolies) is, in accordance with the provisions of the Patents Act 1990, something that is to be determined separately from whether an invention is novel or involves an inventive step.

However, that does not preclude the fact that certain issues may be relevant to the determination of both inventive step and manner of manufacture. In NV Philips v. Mirabella International 24 IPR 1, Wilcox J. at page 35:

" ... it is not an invention, or a manner of new manufacture, for someone to specify the criteria required to be met, in the manufacture of a known product from known materials, in order to achieve vendibility."

In the present case , my comments about the percentage ranges specified in the claims in relation to inventive step considerations are also relevant to manner of manufacture considerations.

In International Paint Co Ltd's Application, (1982) RPC 247 at 275:

" The classic cases of collocation are those mentioned in Through the Looking Glass: 'Mix sand with the cider and wool with the wine'. .. such mixtures .. are mere collocations and cannot be allowed to be patented .. ."

In British Celanese Ltd v. Courtaulds Ltd, 52 RPC 171 it was held that a collocation of known integers may be patentable but only where there is some working interrelation which produces a new or improved result.

However, the present invention as claimed is essentially a mixture of known ingredients (coal fines and sand) neither of which components has been demonstrated to be performing in the mixture anything more than its own hitherto well known functions. Both the sand and the coal fines provide bulk. One colours the mixture black, the other provides good drainage.

I consider that the present invention as claimed in claims 1 to 6 is a mere collocation and hence is not patentable.

CONCLUSION

I find that the opposition succeeds on the grounds that none of the claims of the application involve an inventive step and that none of the claims of the application define patentable subject matter. Also, there is a minor section 40 lack of clarity problem. Although I am unable to identify anything disclosed in the specification that could form the subject of a valid claim, I nevertheless allow the applicant 60 days from the date of this decision in which to propose amendments directed toward overcoming my findings. Otherwise, subject to appeal, I will refuse the application.

COSTS

Costs normally follow the event. As the opposition has been successful, and there are no special circumstances, I see no reason to depart from that in this case. I award costs against the applicant.

A. Moore
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Patent attorneys for the opponent   :  Spruson & Ferguson, Sydney