Lentjes Bischoff GmbH v ABB Miljo as
[2001] APO 61
•7 November 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 697089 in the name of Lurgi Lentjes Bischoff GmbH
Title: Process for removing sulfur dioxide from flue gas
Action: Opposition under section 59 of the Patents Act 1990 by ABB Miljo AS
Decision: Issued .
Abstract
The opponent only relied on lack of inventive step and failure to comply with section 40 at the hearing.
The opponent failed to establish that the Gu paper was a document that would have been ascertained understood and considered relevant as it was in Chinese and published only a few days before the priority date of the claims. [The translation not being available until well after that date].
The opponent did establish that the so called Flakt Hydro process as disclosed by exhibit JGB-3 was a document that would have been ascertained understood and considered relevant. However, alone it did not deprive the claims of an inventive step.
The opponent failed to establish the state of the common general knowledge in Australia before the priority date of the claims. Consequently, nothing could be added to exhibit JGB-3 to deprive the claims of an inventive step.
The opponent failed to demonstrate that the claims did not comply with section 40.
Opposition dismissed.
Costs awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No 697089 in the name of Lurgi Lentjes Bischoff GmbH, opposition
under section 59 of the Patents Act 1990 by ABB Miljo AS
BACKGROUND
Patent application 60767/96 in the name of Gottfried Bischoff GmbH & Co. KG was filed as a convention application claiming priority from two German basic applications 19527836 and 19535475 dated 29 July 1995 and 23 September 1995 respectively. The applicant company underwent two name changes to Lentjes Bischoff GmbH and then to Lurgi Lentjes Bischoff GmbH. I shall refer to them from here on as Bischoff.
Following modified examination based on granted US Patent 5,690,899 the application was advertised accepted on 24 September 1998. ABB Miljo filed a notice of opposition on 29 December 1998 following a section 223 extension of time. A statement of Grounds and Particulars was served on the applicant on 17 March 1999. Service of all the evidence was completed on 3 January 2001 following extensions of time.
The matter was heard in Melbourne on 15 August 2001. Mr Barry Hesse of Counsel and Ms Virginia Beniac Brookes patent attorney of Callinan Lawrie represented the applicant. Mr Greg Munt patent attorney of Griffith Hack Melbourne represented the opponent.
THE OPPOSITION
The Statement of Grounds and Particulars filed on 17 March 1999 specifies the following grounds of opposition:
“Section 59
b)that the invention is not a patentable invention because it does not comply with Section 18(1)(a) or (b),
c)that the specification filed in respect of the complete application does not comply with Sub-section 40(2) or (3).
THE SPECIFICATION
The specification is directed to an improved process for separating sulfur dioxide from flue gas by scrubbing it with seawater. Using seawater for waste gas scrubbing is admitted as known by the applicant, but the process of the specification in suit is said to use smaller reaction basins and avoid the high noise of the high velocity aeration systems of the prior art. It is also said to avoid the risk of discharging waste gas that has not been properly scrubbed and still contains sulfur dioxide.
The process of the opposed specification is also said to reduce the amount of air required for oxidation and be more economical than the prior art. The specification ends with 9 claims only one of which is independent. It reads as follows:
1. A process for separating sulfur dioxide from a flue gas consisting essentially of the steps of:
(a) contacting a flue gas containing sulfur dioxide with sea water in an absorption column to collect a liquid phase in a sump of said column containing bisulfite resulting from sulfur dioxide scrubbed from said flue gas by the sea water and to produce a scrubbed gas having a reduced sulfur dioxide content;
(b) aerating said liquid phase in said sump to transform said bisulfite to bisulfate;
(c) withdrawing said liquid phase containing bisulfate from said sump and mixing the withdrawn liquid phase with fresh sea water in a reaction basin to convert the bisulfate to sulfate and at least partially neutralize the liquid phase in said reaction basin;
(d) measuring a pH of the liquid phase withdrawn from said sump and determining a deviation of the measured pH from a setpoint pH in the range of pH=4.0 to pH = 5; and
(e) depending upon said deviation selectively feeding an additional stream of sea water directly to said sump, and recycling a liquid stream to an absorption zone of said column at a controlled rate to minimize said deviation and to keep the pH value of the liquid phase in the sump for the aeration step (c) in the range of pH 4.0 to 5.
At the hearing Mr Hesse, for the applicant, outlined what he saw as the benefits of the patent in suit with respect to the prior art processes. In summary these he asserted were:
1.The oxidation of the bisulfite to bisulfate is carried out in the sump of the absorption tower rather than in a separate reaction vessel. This is said to reduce the quantity of air required for oxidation and thus reduce costs. (See page 13 of the specification).
2. The setting of the sump pH between 4 and 5 enables the rate of the oxidation reaction to be maximized. This means shorter residence times in the sump and lower demands in respect of oxygenation. This is because:
the chosen pH in the sump is found to maximize the bisulfite concentration in a relatively small liquid flow (See page 6 lines 5-7 and page 12 lines 20-22 of the specification)
the rate of the oxidation reaction is pH dependent and a higher rate of conversion to bisulfate is achieved in this pH range (see page 6 lines 8-9 and page 12 lines 19-22 of the specification).
3. There is an important environmental advantage in carrying out the oxidation step in the sump instead of a separate vessel because there is a reduced chance of loss to the atmosphere of unbound SO2 (see page 12 of the specification).
4. The proposed method of sump liquor recycling, depending on sump effluent pH enables the minimization of scrubbing tower water (See page 5 of the specification) but at the same time ensures that the effluent withdrawn from the sump contains no unbound SO2 (See pages 6 and 12 of the specification). The minimization of the scrubber tower water is independent of the water required for the neutralization of the bisulfite to bisulfate, and thus the quantity of the scrubbing seawater used to maximize scrubbing efficiency does not limit or affect the subsequent reactions in the desulfurization process (see page 5 of the specification).
5. The oxidation of the bisulfite to bisulfate is carried out in the sump before the neutralization step. Note that when the effluent treated in the manner described in step (b) of claim 1, is withdrawn from the sump and then mixed with fresh seawater in a post-reaction basin, sulfate is formed and the effluent is neutralised. This feature leads to significant cost savings, by enabling a smaller post-reaction basin to be used, in which no aeration is needed (see page 6 of the specification), because the oxidation of the bisulfite has already been completed in the sump, and large amounts of CO2 have already been driven out of the scrubbing liquid. Air and energy requirements for compression of the oxidation air are likewise significantly reduced.
6. Following on from point (4) because of the defined optimal conditions for the removal of unfixed SO2, only a relatively small quantity of liquid is present in the sump of the absorption tower and thus only a relatively small flow of liquid is withdrawn from the sump. Consequently, the claimed process can be performed in a smaller sized plant, which clearly has cost benefits.
THE EVIDENCE
The evidence in support consists of:
A Statutory declaration by Mr. Raymond Holliday, a senior technologist with Pasminco Group Technical support. The declaration is accompanied by three exhibits.
A Statutory declaration by Mr Bruce Ian Carr, an engineering manager in the service and environmental division of ABB Power Generation Limited. The declaration is accompanied by two exhibits.
A Statutory declaration by Finn Bjorke project manager with the ABB group. The declaration is accompanied by three exhibits.
A Statutory declaration by John Graeme Blair, patent attorney of Griffith Hack and Co. The declaration is accompanied by 22 exhibits.
A Statutory declaration by Arne Ellestad, chemical engineer, currently working for ABB Miljo AS as a marketing director.
A Statutory declaration by David Wilson, chemical engineer, currently working for ABB Power Generation Limited as Manager Sales.
Evidence in answer
A Statutory declaration by Dr Navid Makkinejad, senior process manager of Lurgi Lentjes Bischoff
A Statutory declaration by Dr Mark Sebastian Wainwright, Dean of Engineering at the University of New South Wales.
A Statutory declaration by Mr Michael Henry Golding, an independent consulting chemical engineer.
Evidence in reply:
This consists of a statutory declaration by Dr Geoffrey Harold Covey, a senior lecturer in Chemical Engineering at the University of Melbourne and also a consulting engineer.
DECISION
At the hearing Mr Munt did not rely on lack of novelty, put only pressed the issue of lack of inventive step and non-compliance with section 40.
INVENTIVE STEP
According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
A finding of lack of inventive step thus requires, as a precursor, that the state of the common general knowledge in the art in Australia be established.
A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence, such as widespread publication or admissions made in patent specifications may also serve to indicate that something is common general knowledge.
Mr Munt argued at the hearing that the prior art Flakt-Hydro process as described in exhibit JGB-3 was part of the common general knowledge in Australia. To the extent that the claimed process includes features that are not part of this process, then these features are also part of the common general knowledge. Consequently the claimed invention was obvious in the light of the combination of the Flakt-Hydro process and these other features. I note that in Mr Blair’s statutory declaration he states that JGB 3 is a conference paper and was published in 1994. There is nothing on the paper itself to corroborate this nor does it state at which conference it was published. Thus although this paper may well be public knowledge there is nothing to even suggest that it is common general knowledge.
In addition Mr Munt has submitted that the Gu paper [JGB-1] referred to by Mr Wilson in his declaration was prior art information that the skilled person in the field of flue gas desulphurisation could, before the priority date, be reasonably expected to have ascertained, understood and regarded as relevant. To the extent that Gu does not disclose all the features of claim 1 (and the other claims), the features are common general knowledge and therefore the invention claimed was obvious.
I note at this point that the Gu paper was published on 20 July 1995 in Chinese in “Shanghai Environmental Science”. This is only some 9 days before the earliest priority date of the application in suit. The translation on file [JGB-1a] was not performed until 20 May 1999 well after the priority date of the application in suit. On this basis I cannot see how this document is one which before the priority date would have be reasonably expected to have ascertained, let alone understood [it was in Chinese] and therefore be regarded as relevant. On this basis I am the view that this paper is not relevant in determining whether the claims of the opposed specification lack an inventive step.
The next thing I must decide is whether the Flakt Hydro process was common general knowledge in Australia as of the priority date of the claims and if it was whether the combination of it and the common general knowledge are sufficient to deprive the claims of an inventive step. In order to assist me in deciding the extent of the common general knowledge in Australia as of the priority date of the opposed application, I have the following statutory declarations filed in evidence.
By Mr. Raymond Holliday, a senior technologist with Pasminco Group Technical support.
This merely states that he has read a paper by FHC Kelly published in the Proceedings of the Australian Institute of Mining and Metallurgy in 1949. This is said to describe a flue gas desulphurisation process based on the use of seawater, which is still operational in Australia. He states that the chemistry of desulphurisation is known to be:
All aqueous scrubbing
SO2 (g) = SO2 (aq)
SO2 (aq) + H2O = H+ + HSO3-
(bisulphite)
HSO3- = H+ + SO3 2-
(sulphite)
sulphation
SO3 2- + 1/2 O2 = SO4 2-
Precipitation
Ca2+ + SO3 2- + 1/2 H2O = CaSO3. 1/2 H2O
Ca2+ + SO4 2- + 2 H2O = CaSO4. 2H2O
He indicated that various neutralising agents were considered at the time including magnesia, ammonia, zinc oxide and caustic soda. In the event Pasminco being a zinc producer settled on zinc oxide.
By Mr Bruce Carr who is the engineering manager of ABB Power Generation (he is basically employed by the opponent in Australia).
His declaration states that in 1973 EZ Industries, an Australian company, which is a predecessor of Pasminco, wrote to ABB’s Norwegian affiliate seeking information on their process for flue gas desulphurisation using seawater. He further states that ABB in 1982 and 1983 supplied certain information to The South Australian Energy Commission and Bechtel about the Flakt Hydro process. The information about the Flakt Hydro process that was disclosed at this time is attached to Mr Carr’s declaration. It includes the use of lime in addition to seawater to neutralise the effluent from the seawater scrubber and discloses the neutralisation of scrubber effluent in a separate reactor, rather than in the scrubber sump. Consequently, it does not disclose as much as the conference paper JGB-3 which was not published until much later. Nowhere does Mr Carr make any comment as to what he believes to be the common general knowledge in Australia in relation to the Flakt Hydro process.
By Mr Finn Bjorke an engineer employed by the opponent in Australia
He discusses proposals to commercialise the Flakt Hydro process at the Portland aluminium smelter, here in Australia. He has appended certain information about the Flakt Hydro process that was made available to Nabalco in the form of a video presentation. There is a diagram, which clearly shows the use of a separate water treatment facility to neutralise scrubber effluent. No where is there any indication of neutralisation in the scrubber sump. There is also appended a letter to Bechtel about a seawater scrubber which avoids the use of lime. There is absolutely no indication that any of this information is common general knowledge in Australia only that it has been freely supplied to employees of two companies and is therefore public knowledge.
By Mr David Wilson an engineer employed by the opponent in Australia from 1997
He discusses exhibit JGB-1 a paper by Gu. This paper, he asserts, teaches operating a seawater based desulphurisation process with aeration step at pH 5 to 3.9. However this paper is in Chinese and was not translated until well after the priority date of the claims of the application in suit. I do not propose to consider it any further. He makes no comment as to the state of the common general knowledge in Australia as of the priority date of the claims.
By Mr Ame Ellestad an engineer employed by the opponent in Norway.
He has had extensive experience of the Flakt Hydro process. Apart from discussing the Gu paper, he also makes some comments about the iodine/thiosulfate titration method used to test for sulfite ions. He does not make any comment about the state of the common general knowledge in Australia as of the priority date of the claims.
By Dr Navid Makkinejad, senior process manager of Lurgi Lentjes Bischoff
Dr Makkinejad is a co inventor of the specification in suit. He is a German citizen and resident there and is therefore not able to comment on the state of the common general knowledge in Australia.
By Dr Mark Sebastian Wainwright, Dean of Engineering at the University of New South Wales.
Dr Wainwright has held his academic post since 1991. He has also had experience in adsorption processes in pollution abatement. In my view, he is qualified to comment on the common general knowledge in Australia as of the priority date of the claims.
He states that commercial exploitation of seawater desulphursiation of flue gas has occurred in China, Japan, Norway, the UK and the USA. He states that although the underlying principles of these plants is similar, there has been considerable local variation in the process design to suit the local conditions. He states that these desulphurisation plants [none of them in Australia] are based on the Flakt Hydro process.
He also goes on to express the opinion that these earlier plants had some operating problems which the present invention addresses. He is of the view that a person of ordinary skill in the art would not have thought to carry out the oxidation of bisulfite to bisulfate in the scrubber sump rather than in a separate reactor. He is also of the view that the pH control in the sump to between 4 and 5 is very unexpected since earlier processes actually increase the pH to 6 prior to aeration and oxidation. On the contrary, the present invention has realised that controlling to this lower pH actually vastly increases the rate of oxidation by a factor of 6-10 fold. Consequently, Dr Wainwright is of the view that is not obvious to the inventor.
Nowhere in his declaration does Dr Wainwright indicate what he believes to be the common general knowledge in Australia.
By Mr Michael Henry Golding, an independent consulting chemical engineer.
Mr Golding has had extensive experience in the chemical engineering field since 1963. Since 1999 he has been lecturing in chemical engineering at Swinburne University of Technology in Melbourne. Although he has not had any direct experience of sulphur dioxide removal from flue gas by seawater scrubbing he has extensive experience of sulphur dioxide removal in general. Because of this, in my view, he is a non-inventive skilled addressee who is well able to testify as to whether the present application lacks an inventive step.
He states that he believes that the reduced reaction times in the scrubber sump [brought about by the pH control measures of the claimed process] are a vast improvement on earlier processes. He also states that the combined scrubber and sump being utilised as the reactor for neutralisation are a improvement over earlier art, especially as the aeration takes place in the sump with any un-reacted sulphur dioxide merely returning to the scrubber and not being discharged to the atmosphere. This is going to be more environmentally acceptable than other processes. He also states that one other benefit is that the reaction basin can be smaller and unlike the prior art does not require aeration. All these advantages in his view lead to a smaller process plant and reduced cost.
He does not state what he believes to be the common general knowledge in Australia before the priority date of the claims.
By Dr Geoffrey Covey a senior lecturer in the Department of Chemical Engineering at Melbourne University.
He has extensive experience of flue gas desulphurisation in Australia, and is competent to state the common general knowledge in Australia. He makes a number of comments about the Gu paper but as I have already stated it is not a document that would have been ascertained, understood and considered relevant before the priority date of the claims.
He also makes comments about the Flakt Hydro process [that is exhibit JGB-3]. He asserts that it is well known and that this is backed up by the evidence of Carr and Bjorke. [I note here that I do not believe on the basis of their statutory declarations that it was common general knowledge in Australia before the priority date of the claims of the application in suit.]. He further asserts that the differences between the claimed invention and the Flakt Hydro process are common general knowledge.
These differences are:
Oxidation in the scrubber sump, which Covey says doesn’t matter;
pH in the range 4 -5 [but JGB-3 does disclose mixing seawater with absorber liquor to raise pH];
the use of additional seawater or recycling seawater.
In conclusion, on the basis of all these statutory declarations I am of the view that none of these three differences were part of the common general knowledge in Australia before the priority date of the claims. Whilst I am of the view that the Flakt Hydro process contained in JGB-3 was a document that would have been ascertained, understood and considered relevant I do not believe that alone it deprives the claims of an inventive step. None of the statutory declarations in any way asserts conclusively what was part of the common general knowledge in Australia before the priority date of the claims. I am therefore unable to add common general knowledge to the disclosure in JGB-3 .
Consequently on the basis of the evidence before me I am unable to find that any of the claims lack an inventive step.
SECTION 40
The opponent argued that the specification discloses a process that includes the step of either selectively feeding seawater or recycling liquid stream from the sump to minimise deviation of pH of liquid in the sump. This is supported by the declarants Dr Makkinejad, Professor Wainwright and Mr Golding in their statutory declarations.
Claim 1 step (e) is not in these terms. The claim requires that the process step includes selectively feeding additional seawater and recycling liquid stream from the sump. This is consistent with the as filed specification but inconsistent with the verified translation of the German priority document which uses the word “or” rather than “and”.
I see this as an insignificant matter. The specification as whole makes it perfectly clear that the liquid withdrawn from the sump has its pH measured and compared with a desired pH. Depending on that deviation you feed seawater to the sump or recycle a liquid stream from the sump to the absorption zone of the column. The key phrase here is “depending on the deviation selectively” so as to maintain the required pH in the sump. In the context of claim 1, I do not read the word “and” as meaning that both processes occur at the same time, rather that both processes can be used to maintain the desired pH, the skilled addressee easily being able to determine in which circumstance each is to be employed. Consequently I do not think a skilled addressee would have any difficulty understanding claim 1. The fact that the opponent’s own declarants seem to have worked it out for themselves only reinforces my view.
In my mind claim 1 is perfectly clear and no amendment is called for.
CONCLUSION
The opponent has failed to make their case either on the ground of lack of inventive step or on the ground of non-compliance with section 40. I therefore dismiss the opposition and direct that the application be sealed after 30 days from the date of this decision. If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
Section 210 and regulation 22.8 gives the Commissioner power to award costs against a party to proceedings before the Commissioner.
It is a well-established principle that cost follow the event. I see no reason before me to vary this practice and as in this instance the opponent ABB Miljo AS has been unsuccessful in their opposition I award costs in this matter against them.
R.A.Melvin
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Callinan Lawrie Melbourne
Patent attorneys for the opponent : Griffith Hack Melbourne
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