Marcal Paper Mills Inc v Grantek Inc
[2000] APO 48
•27 July 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 685158 in the name of MARCAL PAPER MILLS, INC
Title: Process and apparatus for manufacturing absorbent granular material
Action: Opposition by GRANTEK INC under Section 59 of the Patents Act 1990
Decision: Issued .
Abstract
Opposition fails.
Found that all the claims are directed to a manner of manufacture, since they pass the threshold test of Philips v Mirabella.
Found that all the claims are novel when compared to the prior art base, since there was no disclosure of the combination of process and apparatus claimed
The opponent was unable to establish that the combination of unit processes claimed was part of the common general knowledge in Australia. Thus all the claims exhibit an inventive step.
Direct that the application to proceed to sealing.
Costs awarded against opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 685158 in the name of MARCAL PAPER MILLS, INC and opposition by GRANTEK INC under Section 59 of the Patents Act 1990
BACKGROUND
Patent application 685158 in the name of Marcal Paper Mills, Inc (Marcal)) was filed on 26 August 1994 as PCT/US94/09618 claiming priority from basic application US 08/118,186 filed on 9 September 1993. The application was advertised accepted on 7 May 1998.
Grantek Inc (Grantek) filed a notice of opposition to the grant of a patent on 15 April 1998 followed by a statement of grounds and particulars on 14 July 1998.
Following two separate decisions of the commissioner's delegate and a number of extensions of time the evidentiary stage was finally completed on 20th September 1999.
I heard the parties in Sydney on 10 April 2000. Grantek was represented by Ms Julia Baird of counsel and Mr Peter Pearson of H.R.Hodgkinson & Co. Marcal was represented by Mr Greg Turner, patent attorney of Spruson and Ferguson.
GROUNDS OF OPPOSITION
The specification was opposed under section 59 of the act on the ground that
It was not a manner of new manufacture
That it was not novel
That it lacked an inventive step
EVIDENCE
Evidence in support consists of:
A statutory declaration by Peter Leslie Pearson accompanied by one exhibit
A statutory declaration by David Kraske accompanied by nine exhibits.
Evidence in answer consists of
A statutory declaration by Professor Geoffrey Duffy accompanied by one exhibit
A statutory declaration by Nicholas R Marcalus
Evidence in reply consists of
A statutory declaration by David Stanley Thurley
A further statutory declaration by David Kraske
Mr Pearson is a registered patent attorney with H.R.Hodgkinson & Co, Sydney. Professor Kraske is a retired professor of Chemical engineering from the University of Maine in the USA. Professor Duffy is professor of Chemical engineering from the University of Auckland in New Zealand.
Mr Marcalus is the CEO of Marcal Paper Mill Inc. Mr Thurley is a consultant chemical engineer with extensive experience in Australia. He is also currently resident in Australia.
SPECIFICATION
The specification is directed to recycling waste paper to make absorbent granular material. Prior art paper recycling processes are said to have involved pulping the waste paper with chemicals to produce a slurry of fibres fines and fillers. The long fibres have gone on to make recycled paper but the remainder of short fibres, fines and fillers have remained in the water stream. Because of stringent water quality considerations it has been necessary to filter the water and dispose of the solids in landfill. The present invention is directed to using these otherwise useless solids to make useful absorbent granular products. Such products include industrial absorbents for oil and water and animal litter and feed.
The specification is directed to a process, a product and an apparatus for making the product. It ends with 27 claims, four of which are independent. They read as follows:
1. A paper mill process for making granular absorbent material from recycled paper containing kaolin clay, cellulose fibres and other solid components, comprising: treating waste paper with water to form a liquid slurry, separating fibres from the slurry in a first stream and forming a second stream containing kaolin clay and other solid components suspended in the liquid slurry, conducting the first stream of separated fibres to a papermaking machine, conducting the second stream to a flotation clarifier, adding a flocculating polymer with air upstream of the clarifier, skimming the flotate off the liquid surface in the clarifier, dewatering the flotate to produce a cake having a consistency of between 35 and 40 percent, forming the cake into irregular generally spherical granules, and drying the granules to a moisture content of less than 10% by weight.
10. Apparatus for performing the process of claims 1 to 9.
11. An apparatus for making granular absorbent material from waste paper containing kaolin clay, long fibres and cellulosic fines and other solid components comprising:
(a) pulping means for producing a pulp slurry from waste paper containing kaolin clay, long fibres and cellulosic fines and solid components;
(b) screen means for screening the pulp slurry from the pulping means to retain long fibres for papermaking and to produce a reject stream;
(c) clarifier means for floating and concentrating solid material in the reject stream from the screen means;
(d) press means for removing water from the concentrated solid material from the clarifier means
(e) agglomerating means for forming granular material containing the solid material from the press means; and
(f) drying means for drying granules from the agglomerating means so that the granules have a solids content greater than 90%
16. Granules obtained from waste paper, said granules comprising inorganic fillers, including kaolin clay, and organic material, including cellulose fibres, characterised in that the cellulose fibres having a length greater than 1 mm in length constitute less than 10% by weight of the fibres in the granules.
MANNER OF MANUFACTURE
Section 18 (1) identifies the essential characteristics of a “patentable invention” for the purposes of the Act. It provides:
(1) Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and
(c)is useful; and
(d)was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.”
Section 18 (1) must be read in conjunction with the definition of “invention” contained in the dictionary which constitutes Schedule1 to the Act. That definition reads:
“invention” means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.
Section 18 (1) must also be read with section 7 and the definitions of “prior art base” and “prior art information” contained in the dictionary.
The opponent argued that on the face of the specification there was no invention. In particular they pointed out page 1 line 28 to page 2 line 6. This passage describes a prior art process for recovery of short fibres and inorganic material from pulped waste paper. It describes how the waste paper pulp is split into a long fibre stream for recycled paper making and another so called waste stream. It relates that this waste needs to be disposed of. It describes how this has been dewatered and the solids sent to landfill or incinerated. It also states that, as an alternative, it has been proposed to turn this dewatered reject into useful material such as absorbent granular material. The description then goes on to give examples of US patents that allegedly disclose such processes. The opponent argued that for there to be a patentable subject matter there must be invention, and that novelty alone will not sustain a patent.
In the decision of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 (which was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), the majority of the High Court concluded that "newness" was imported into sec 18(1)(a) to the extent that that sec 18(1)(a) should be interpreted as retaining the threshold requirement of "an invention" as excluding from a "patentable invention" any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles.
To me the very existence of other patents for similar types of processes, apparatus and product indicates that patentable subject matter is present. In my view the question of whether such subject matter is new, is best dealt with under the headings of novelty and inventive step. The specification is directed to patentable subject matter and passes the so called threshold test in Philips and Mirabella supra.
There was some argument that the apparatus claim 11 was a mere collocation of known integers and thus not a true patentable combination. No real evidence was presented to demonstrate that each of the integers of this claim were truly known in Australia. There was also no evidence to support the proposition that there was no working interrelationship between the integers. I am therefore of the view that even claim 11 is directed to patentable subject matter.
NOVELTY
The test for determining whether the invention lacks novelty is the " reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235 where Aiken J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement occurs when "each and every one of the essential features" of the claim have been disclosed in the prior document: See Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at page 391. However, the claim will still lack novelty even if the citation does not disclose all of the features of the claim provided all essential features are disclosed: See Nicaro Holdings v Martin Engineering (1990) 16 IPR 545 and Catnic Components Ltd v Hill and SmithLtd (1982) RPC 183.
The essential features of claim 1 are:
A paper mill process for making a granular absorbent material from recycled paper containing kaolin clay, cellulose fibres and other solid components comprising:
Treating the waste paper with water to form a liquid slurry;
Separating fibres from the slurry and sending them to a paper making machine;
Adding a flocculating polymer with air to the remainder of the slurry upstream of the clarifier;
Sending the flocculated slurry to a flotation clarifier;
Skimming floatate off the liquid surface of the clarifier;
Dewatering the floatate to produce a cake having a consistency between 40 and 50%;
Forming the cake into generally spherical granules; and
Drying the granules to a water content less than 10% by weight.
The essential features of claim 10 are:
Any [my emphasis] apparatus capable of performing all the process steps of claim 1
The essential features of claim 11 are:
Any [my emphasis] apparatus capable of making granular absorbent material from recycled paper containing kaolin clay, long fibres and cellulosic fines and other solid components comprising:
any pulping means capable of producing a pulp slurry from waste paper containing kaolin clay, long fibres and cellulosic fines and solid components;
any screen means capable of screening the pulp slurry from the pulping means to contain long fibres for papermaking and to produce a reject stream;
any clarifier means capable of floating and concentrating solid material in the reject stream from the screen means;
any press means capable of removing water from the concentrated solid material from the clarifier means;
any agglomerating means capable of forming granules of the solid material containing the solid material from the press means; and
any drying means capable of drying the granules of solid material from the agglomerating means so that the granules have a solids content greater than 90%.
I note that this apparatus is not limited to necessarily performing the process of claim 1, but must merely be capable of doing so. For instance, it does not specify the moisture content of the floatate cake, or any polymer addition with air. It also does not specify that the cake has to be agglomerated into generally spherical granules.
The essential features of claim 16 are:
Any granules obtained from waste paper the granules comprising;
Inorganic fillers including kaolin clay;
Organic material including cellulose fibres; and
The cellulose fibres characterised in that they contain less than 10% by weight longer than 1mm.
The word "including". means that the particular component must contain the feature but does not have to. In this case I must construe the claim as requiring that both kaolin and cellulose fibres must be present in the granules.
I will now refer to each of the citations in turn. I note they were all available to the public in Australia before the priority date of the specification in suit. They must all be construed in the light of the common general knowledge in Australia as of the priority date. In order to assist me in determining this I have the proposition that the disclosure in the specification at page 2 lines 1 to 10 can be considered part of the common general knowledge. (Bristol-Myers Squibb Co v F.H.Faulding & Co Ltd [2000] FCA316). Here the applicant appears to indicate that turning the reject stream from waste paper recycling into some kind of useful product is known. This is supported by a number of US patents including the Fleischer patent below. Thus in my view the common general knowledge in Australia before the priority date may be taken as the general proposition that turning waste paper or a waste paper reject stream into some kind of useful product was known.
In the light of this, the citations may be analysed as follows.
US Patent 4,621,011 to Fleischer
This citation discloses a method of making an animal litter which is low dust producing and doesn't disintegrate when wet. It comprehends using waste paper as the source of the cellulosic material. It does not disclose repulping waste paper and removing the long fibres to make paper. The present invention is directed to using only the short fibres, unsuitable for paper making, to make absorbent granules.
The citation does not disclose the process steps of claim 1. The granular material does not have the fibre size limitation of the claimed invention. The citation does not disclose any apparatus for flotation clarification.
Thus all of the claims of the patent in suit are novel in the light of this document.
US Patent 4,721,059 to Lowe
This citation is directed to the use of waste material from new paper manufacture rather than from recycled paper. It describes having to shred the material to reduce the fibre length to 1mm to 10mm. This is in direct contrast to the present invention, which is a means of utilising material that is already too short for paper making. In any case, the granules of the present invention are claimed as containing fibres having a length substantially below 1mm.
The citation does not disclose either the entire process or complete apparatus of the present invention. In my view it only discloses part of the process and part of the apparatus and by having the process step of shredding the pulped waste paper sludge it teaches directly away from the claimed invention. Thus in my view all the claims are novel in the light of it.
US Patent 5,002,633 to Maxham
This is directed to a process and apparatus for recovering paper making fibre from waste solids produced by a conventional paper making process. That is not a process which starts from purely waste paper [as in the present invention] but from a process for making new paper from raw materials. The citation certainly discloses the first step of the claimed process namely removal of the long fibres from the waste slurry stream. I do not think it is important that the waste stream that is treated is from a different source to the claimed invention. However the Maxham patent only contemplates dewatering the slurry from which the coarse fibres have been removed and dumping the sludge formed. There is absolutely no disclosure of dewatering the sludge to form it into granular material. There is no disclosure of the apparatus of the claimed invention and thus all the claims are novel in the light of this document.
US Patent 5,109,564 to Lowe
This citation is directed to the use of de-inked waste material from recycled paper. Whilst this is the same feed material as the present invention the citation describes having to shred the material to reduce the fibre length to 1mm to 10mm. This is in direct contrast to the present invention, which is a means of utilising material that is already too short for paper making. In any case, the granules of the present invention are claimed as having a fibre length substantially below 1mm.
The citation does not disclose either the entire process or complete apparatus of the present invention. In my view it only discloses part of the process and part of the apparatus and by having the process step of shredding the pulped waste paper sludge it teaches directly away from the claimed invention. Thus in my view all the claims are novel in the light of it.
US Patent 5,094,604 to Chavez
This merely discloses an apparatus for agglomerating cellulosic fibre feed stock. It does not anticipate any of the claims.
US Patent 5,173,208 to Chung
This discloses a flocculant system said to be particularly useful for treating paper and pulp wastewater. This does not anticipate any of the claims.
Thus lack of novelty of the claimed invention has not been established.
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 information could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by a skilled addressee.
The common general knowledge must be as it existed in the patent area before the priority date of the relevant claim. That is in Australia before 9 September 1993.
I have already commented on the part of the common general knowledge that is disclosed in the specification in suit. It is a very minor disclosure, and alone in no way suggests the claimed invention. I also have to consider the statutory declarations adduced as evidence.
The first is the declaration by David Kraske. He states that he is a retired professor of Chemical Engineering from the University of Maine in the USA. He makes no claim that he has ever lived or worked in Australia. Thus he is not in any position to attest to the state of the common general knowledge in Australia as of the priority date.
The statutory declaration of Mr Thurley on the other hand is far more relevant. He states that he is now running a consulting business specialising in waste water treatment and the pulp and paper industry. He has a degree in chemistry and extensive experience in the pulp and paper industry in Australia. He has travelled extensively around the world and believes he is able to attest to the state of the common general knowledge in Australia, as of the priority date of the specification in suit. He states that the unit operations of cleaning, screening and washing/thickening are well known in the industry in Australia and have been used for more than 30 years. This does not necessarily make them part of the common general knowledge in Australia before the priority date.
He then refers to each of the cited specifications and states what additional information he believes needs to be added to them to anticipate the claimed invention. In the case of the Lowe patent he states that he believes that the use of dissolved air flotation is [not was as of the priority date] part of the common general knowledge in Australia. He also makes the point that the applicant's declarant [Duffy] differentiates, unfairly in his view, between secondary process streams and material that has become a sludge. As I have already indicated I do not believe it makes any difference whether the material being treated is from repulped waste paper or a waste stream from new paper production. What matters is the kind of material contained in the stream.
There is also a statement that the use of a floatation clarifier and dewatering the floatate were common in the pulp and paper industry in Australia before the priority date of the specification in suit. Again, no unequivocal statement that they were part of the common general knowledge in Australia before the priority date.
There are a number of other statements about what was or is common in Australia, plus some others asserting certain things were common general knowledge in Australia without specifying the date at which this was allegedly so. There are also some statements that one particular paper mill in Australia [in Allure] was removing material by sedimentation and pressing in 1981, not I note that this process was common general knowledge.
One of the applicant's declarents Mr Marcalus is the President and CEO of the applicant's company. He is a resident of the USA. His declaration merely goes to the success of the process and product of the present invention in the USA. He explains how the non fibrous nature of the granule product produced has an advantage in cat litter, as it has nothing protruding to cling to the animal's coat. His declaration, whilst providing useful technical background, is of no value in establishing common general knowledge in Australia.
The applicant's other declarant, Professor Duffy, is an Australian national domiciled in New Zealand. He states that he is currently the professor of Chemical Engineering at the University of Auckland. He also states that he has wide experience in the field of pulp and paper and has consulted widely in Australasia, USA, Europe and Scandinavia. He makes particular mention of the fact that he has visited the Australian paper industry frequently over the past 30 years and even worked in a paper mill in Australia between 1959 and 1963 and lectured in Australia until 1969. On that basis he appears to me to be at least as well qualified as Mr Thurley to comment on the state of the common general knowledge in Australia before 9th September 1993.
He spends most of his declaration attacking Kraske's first declaration. Since I have already found that neither of the Kraske declarations is particularly useful, this declaration of Duffy's is not useful on that point. However Duffy does state that he believes that the problem that the Marcal specification overcomes are twofold. The first is the making of absorbent granules that are not friable by utilising the kaolin clay present as a filler in waste paper, rather than absorbent granular products made from other clays. The other is the use of the waste material from waste paper recycling. Professor Duffy clearly states that none of the earlier processes had managed to make non friable granules from waste paper pulp from which the useful long fibres had already been removed to make recycled paper.
Counsel for the opponent has sought to convince me that, because all the various parts of the invention were common general knowledge or at least public knowledge, the entire invention is obvious.
On the evidence before me I cannot accurately determine the state of the common general knowledge in Australia as of the priority date. Although I am prepared to concede that all the individual unit processes which make up the component parts of the claimed process and apparatus may be common general knowledge in Australia, it seems to me that what is not common general knowledge in Australia is the combination of these unit processes to disclose the claimed invention.
I am therefore unable to find that the claimed invention lacks an inventive step.
CONCLUSION
The opponent has failed to establish that the claimed invention is not a manner of manufacture. The opponent has also failed to establish that the claimed invention lacks novelty or an inventive step. The opposition therefore fails on all counts. I therefore direct that the application proceed to sealing 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
Both parties asked that costs follow the event in the usual way. There is nothing to suggest that there any reason to deviate from this practice. I therefore award costs against Grantek.
R.A. Melvin
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Spruson and Ferguson, Sydney
Patent attorneys for the opponent H.R.Hodgkinson & Co.Sydney
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