Melbourne Water Corporation v Green Edge (IPCO) Pty Ltd - [2009] APO 26

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 785180 in the name of GREEN EDGE (IPCO) PTY LTD

Title: System for Upgrading an Environment and for Recovering Valuable Constituents from the Environment

Action: Opposition by MELBOURNE WATER CORPORATION under section 59 of the Patents Act 1990

Decision: Issued 24 December 2009
Abstract

The opponent pursued the grounds of novelty, inventive step, section 40 and manner of manufacture. The opponent has been unsuccessful on all grounds.
I have found that none of the claims were shown to be not novel. Further none of the claims lacked an inventive step in light of the common general knowledge alone and also when combined on an individual basis with the citation raised by the opponent. The issues raised by the opponent regarding lack of clarity were not supported as the claims and specification did not present any construction issues which could not be resolved by the skilled addressee. The opponent was unable to establish that the opposed invention did not constitute a manner of manufacture.
I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
Both the applicant and opponent indicated that costs should follow the event. The opponent also sought costs for a further two events in the opposition process where they indicated that the finding of the delegate for the substantive opposition should not impact on the award of costs in their favour. The opponent has been unsuccessful on all grounds of the substantive opposition. For the two events the opponent was unsuccessful for the second event and I apportioned costs for the first event as per Item 11 of Schedule 8 to the sum of $650. Accordingly, I award costs against the opponent Melbourne Water Corporation in accordance with Schedule 8, of the Patents Regulations 1991, minus the sum of $650.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 785180 by GREEN EDGE (IPCO) PTY LTD and an opposition under section 59 of the Patents Act 1990 by MELBOURNE WATER CORPORATION.

BACKGROUND

Green Edge (IPCO) Pty Ltd filed patent application No. 785180 as a complete application on 22 March 2002. The application claims priority from an Australian Provisional application filed on 22 March 2001. The application was examined and advertised accepted on 19 October 2006.
Melbourne Water Corporation filed a notice of opposition on 19 January 2007. A statement of grounds and particulars was filed on 19 April 2007. The service of evidence in support, evidence in answer and evidence in reply was completed on 21 May 2009.
The hearing to deal with the substantive opposition was held in Melbourne on 27 October 2009. Helen Rofe of counsel instructed by Nick Hunter patent attorney, Griffith Hack, Melbourne, represented the applicant. They were accompanied by Eliza Saunders patent attorney, Griffith Hack, Melbourne, John Hall, inventor and Robert Gell, inventor. Ian Horak of counsel instructed by Anthony Selleck patent attorney and solicitor, Allens Arthur Robinson, Melbourne, represented the opponent.
EVIDENCE
Evidence in support consists of declarations by:
· Alan J.M. Baker, dated 17 January 2008 and exhibits AJB-1 to 3. He states that he is presently employed as a Professor of Botany (Ecology and Environmental Science) at the University of Melbourne and also heads the Applied Ecology Research Group (the Group) within the School of Botany. He further states that the Group was established in September 2000 with the aim of conducting research and undertaking projects for industry involving the restoration and revegetation of mineral wastes, and remediation of contaminated land.
· Christopher John Bird, dated 17 January 2008 and exhibits CJB-1 to 25. He states that he is a registered Patent and Trade Marks Attorney and a partner of the firm Allens Arthur Robinson Patent and Trade Marks Attorneys (patent attorney for the opponent).
Evidence in answer consists of a declaration by:
· John Sydney Hall, dated 21 November 2008 and exhibits JSH-1 to 4. He states that he is a scientist and engineer consulting (currently working on a part time basis) to Access Environmental Pty Ltd, a parent company of Green Edge (IPCO) Pty Ltd. He further states that he is co-inventor of the application presently being opposed.
Evidence in reply consists of a declaration by:
· Alan J.M. Baker, dated 19 May 2009 and exhibits AJB-4 to 9.
THE SPECIFICATION
The specification under consideration is the specification as accepted. The specification commences with an indication of the environment in which it operates and then specifies what it is trying to achieve. In particular it states:-
“The present invention is concerned with environments that include a land mass and a water mass that is contaminated, for example with heavy metals (including precious metals such as gold, silver and platinum), pathogens, and nutrients (such as nitrogen and phosphorous).
The present invention is concerned particularly, …with environments that include waste streams/slurries that contain contaminants.
Examples of such environments include sewage treatment plants, municipal landfills, and mine tailings.
The present invention is concerned with reducing the level of contaminants in such environments by effectively and cost efficiently reducing the overall level of contaminants in the land mass and the water mass thereby remediating the land mass.
The present invention is also concerned with reducing the level of contaminants in such environments by effectively and cost efficiently reducing the overall level of contaminants in waste streams/slurries (in situations where the environments include waste streams/slurries).”
The specification further states that:-
“The present invention is also concerned with recovering valuable constituents from such environments. In this context, the term valuable constituents include recoverable energy, nutrient enriched compost, base metals and precious metals, such as gold, silver, and platinum.”
The specification then refers to the Western Treatment Plant for sewage in Melbourne and the processes used therein. In particular it describes what it calls as natural biological processes used to treat sewage at the plant, in particular, lagoon treatment, land filtration and grass filtration and then identifies the defects of this prior art (some of which are listed below) as:-
·    Heavy metals and other contaminants retained by the land mass restrict its uses.
·    Large stockpile of contaminated (including heavy metals and pathogens) biosolids (processed sludge) raises public health issues and is a loss of potentially valuable material.
·    Excessive nutrient load in water discharged into a marine aqueous environment may cause algal blooms which impacts on the environment
·    High levels of heavy metals in water discharged into a marine aqueous environment may affect marine organisms via bio-accumulation of heavy metals.
·    Migration of contaminants off-site via groundwater and wind-borne migration of noxious odours off-site raises loss of amenity issues.
Next the specification provides an indication of the invention as follows:-
“…the present invention is a system for reducing the level of contaminants in an environment and for recovering valuable constituents from the environment, the environment including a land mass that is contaminated for example with heavy metals (including precious metals).
At a fundamental level, the system includes the steps of:-
(a) planting biomass in a section of the land mass; and
(b) harvesting biomass.
Preferably the system includes supplying water to the biomass to encourage growth of the biomass.
The water may be water derived from treating a water stream/slurry that contains contaminants. By way of example, the water may be water derived from treating a waste stream/slurry by the use of biodigestor tanks or other suitable technology.”
The specification then indicates that the selection of biomass in any given situation is subject to a number of considerations. Some examples of the basis of selection have regard to the objectives of:-
·    Subsequently treating the biomass to recover an energy source from the biomass. On this basis, biomass selection would focus on maximising the amount of biomass produced.
·    Maximising removal of contaminants (such as heavy metals) from the land mass.
·    Growing cash crops that are not affected adversely by contaminants in the land mass (for example, flowers).
This is followed by a detailed description of optional variations/embodiments of the invention. The specification ends with 26 claims of which two are independent claims. The independent claims read as follows:
1. A system for reducing the level of contaminants (such as, heavy metals, pathogens, and nutrients) in an environment and for recovering valuable constituents from the environment, the environment including a contaminated land mass and an output stream of a waste stream/slurry that contains contaminants from a waste treatment unit, which system includes:
(a) planting biomass in a section of the landmass;
(b) supplying the waste stream/slurry continuously or periodically onto the section of the land mass to facilitate growth of biomass and thereby
(i) decontaminating the land mass and the waste stream/slurry by take-up of the contaminants in the biomass and
(ii) producing an upgraded effluent from the waste stream/slurry; and
(c) harvesting biomass from the landmass.
5. A system for reducing the level of contaminants (such as, heavy metals, pathogens, and nutrients) in an environment and for recovering valuable constituents from the environment, the environment including a contaminated land mass and a waste stream/slurry that contains contaminants in the form of sewage and/or partially treated sewage, which system includes:
(a) planting biomass in a section of the landmass;
(b) supplying the waste stream/slurry continuously or periodically onto the section of the land mass to facilitate growth of biomass and thereby
(i) decontaminating the land mass and the waste stream/slurry by take-up of contaminants in the biomass and
(ii) producing an upgraded effluent from the waste stream/slurry; and
(c) harvesting biomass from the landmass.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of Novelty, Inventive Step, Section 40 and Manner of Manufacture. The opponent pursued all these grounds at the hearing.
DECISION
Both parties made oral submissions at the hearing and had filed written submissions prior to the hearing. I shall refer to these as well as any earlier filed evidence wherever relevant in my decision.
Section 40 – Lack of clarity
The opponent submitted that the claims lacked clarity and were ambiguous with consequential uncertainty on determining the scope of the monopoly sought. The opponent made the following submissions:-
“The patent application claims a “system” which comprises both physical objects and method steps. All claims (and the description) use the word “system”. This suggests that the invention resides in a physical object rather than a method.
A physical object may be defined by reference to a method where that method is fairly capable of dictating the features of the object for the purposes of the claim.
Here, the system of the claims is said to ‘include” a number of method steps, namely [II] planting [III] supplying; and [IV] harvesting. These steps purport to take place on the environment but it is unclear/ambiguous how the method steps can adequately characterise the environment and time during those steps when the environment is defined (during the planting, supplying or harvesting).
The uncertainty in the claims is amplified when one considers the dependent claims to method claims which are dependent on a system.
As a consequence, the claim is unclear (both from the claims and the description of the patent application) as to how the system [I] is properly and unambiguously defined by reference to steps [II], [III] and [IV] as a combination of an environment and method.
It is unclear when and what components/actions would infringe such a claim. In reality, what would be practised upon land would either reside in a method (using the land) or the land itself (suitable for use in the method). Each construction will in turn affect the consideration of novelty and inventive step.
The limits of the claims are unclear and, in the circumstances, they lack clarity and are framed contrary to section 40(3) of the Patents Act 1990 (Cth) (the Act).”
The applicant responded that the invention resided in a combination of physical and process integers. They asserted that the invention described and claimed in the application provided a system which takes the inputs of (a) contaminated land, (b) contaminated stream (e.g. sewage or tailings), (c) biomass and produces the beneficial outputs of (i) decontaminated land, (ii) treated effluent, and (iii) biomass containing valuable constituents.
A patent specification is addressed to a person skilled in the relevant art of the specification. This person brings their understanding of the terminology and workings of the art to the construction of the specification. For instance, Lord Shaw in B.T.H. v Corona Lamps, 39 RPC 49 stated:
"A specification must take its rank among all ordinary documents which are submitted to a reader for his guidance or instruction, and a reader ordinarily intelligent and versed in the subject matter. Such a reader must be supposed to bring his stock of intelligence and knowledge to bear upon the document, not unduly to struggle with it, but anyhow to make the best of it"
Thus the specification is to be construed in the light of the common general knowledge in the relevant art at the priority date of the application - see Welch Perrin v Worrel (1961-62) 106 CLR 588 at 610, which states:
"If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, that, of course, is an end of the matter. But this objection is not established by reading the specification in the abstract. It must be construed in the light of the common general knowledge in the art before the priority date."
I note that Decor Corp v Dart Industries 13 IPR 385 and John Stanley Melbourne v Terry Fluid Controls Pty Ltd (1994) AIPC 91-058 address this issue.
Claims 1 and 5 read clearly and both parties including the opponent’s declarant had no difficulty in determining what the claim was saying. Differences arose in terms of whether the claim was confined to a particular size of operation, that is, for instance, is it a small scale garden operation or does it define a large scale metropolitan sewage works size operation. The claim does not specify a particular size but it is very clear on the method steps and the physical inputs involved in the system defined therein.
Another issue raised by the opponent related to infringement where they stated that “It is unclear when and what components/actions would infringe such a claim.” The opponent in this instance seems to refer to separate integers of the claim rather than the claim as a whole. If the claim consists of a combination of several integers then for infringement to occur one would need to find a single disclosure of the combination of integers rather than several disclosures of separate integers of the claim.
I do not find that the claims are lacking in clarity. In fact the opponent’s declarant had no difficulty in construing the claims as was evident from his first declaration wherein he systematically dissected the claims and clearly construed terms which were open to misinterpretation. The issues of clarity seemed to relate to issues of size of the operation and infringement which I have addressed above.
Novelty
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 at 235 states:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
The reverse infringement test teaches that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
Before considering the documents raised by the opponent against novelty, I shall proceed to determine the features of the invention set out in claim 1 of the specification. The opponent has not been able to establish that any of the features of the independent claims are inessential. Consequently I shall assume that all features of the independent claims are essential (See Catnic Components v Hill & Smith Ltd, (1982) RPC 183 at page 227). I note that independent claim 5 has fairly similar features to claim 1 but that there is a difference which I shall address when considering the matter of novelty for claim 5. The features of claim 1 are:-
1. A system for reducing the level of contaminants (such as, heavy metals, pathogens, and nutrients) in an environment and for recovering valuable constituents from the environment,
2. The environment including a contaminated land mass and an output stream of a waste stream/slurry that contains contaminants from a waste treatment unit, which system includes:
3. Planting biomass in a section of the landmass;
4. Supplying the waste stream/slurry continuously or periodically onto the section of the land mass to facilitate growth of biomass and thereby
(i) decontaminating the land mass and the waste stream/slurry by take-up of the contaminants in the biomass and
(ii) producing an upgraded effluent from the waste stream/slurry; and
5. Harvesting biomass from the landmass.
The feature of claim 5 (specifically the portion in italics) which is different to that of claim 1 is in feature 2:-
“2. The environment including a contaminated land mass and a waste stream/slurry that contains contaminants in the form of sewage and/or partially treated sewage, which system includes:”
Thus this feature of claim 5 specifies the content of the waste stream as sewage or partially treated sewage, whereas claim 1, more generally refers to an output stream from a waste treatment unit (which would include within its scope a sewage treatment plant).
Feature 1 clearly states, “A system for (my emphasis). In this regard Thurston Catton's Application, (1978) AOJP 3666) would seem to suggest that the words "for", "for use in" and the like in claims of the form "Apparatus for ..." are merely indicative of the environment in which it is intended to use the apparatus, and do not limit the apparatus to use solely in that environment. However as the claims here are defining a system with method steps included I would need to construe the word ‘for’ in context of the claims and specification as a whole. From a reading of the specification I am satisfied that the system defined in the claims is clearly restricted to a particular environment. This is made clear throughout the specification where the environment in which it operates is specified as a contaminated land mass (examples of which are provided in the specification) and contaminated waste streams/slurries (examples of which are provided in the specification). Thus I am satisfied that there is a genuine difference in scope between claims 1 and 5 with regard to feature 2. I shall now proceed to consider the issue of novelty.

The opponent and applicant provided detailed submissions on novelty against the cited documents which I have taken into consideration. Rather than listing all those submissions for each citation I shall refer to them wherever relevant in my decision. The opponent cited sixteen documents including a patent specification in their statement of grounds and particulars. At the hearing, the opponent argued lack of novelty based on two documents including a patent specification. I shall address these two documents.
“The optimization of sewage sludge and effluent disposal on energy crops of short rotation hybrid poplar, AJ Moffat, AT Armstrong, J Ockleston, Biomass and Bioenergy (30 September 2000) 20:161-169 (exhibit CJB-13, Bird declaration) (henceforth Moffat)
The opponent argued that claims 1-6, 8-11, 15, 21, 22 and 25 lacked novelty in light of Moffat. The essential aspects of the study carried out in the Moffat document is encapsulated in the abstract which states:-
An experiment was set up to test the effect of sewage sludge application and waste water irrigation on the biomass production of two poplar varieties,…Three sludge applications were examined factorially with two irrigation schemes (with and without), over the two final years of a three-year rotation. The effects of treatment on soil and soil water were monitored, and the amount of heavy metals removed in the biomass was quantified. Irrigation had a significant effect on biomass of both poplar varieties,….sludge application was not effective in increasing biomass yield, but the experiment was valuable in identifying that modest amounts of sludge (approximately 100 m³ha^-1yr^-1) were acceptable environmentally and did not compromise biomass production. Cadmium uptake was detected in the poplar biomass, but the amounts were small and insufficient for poplar to be used in phytoremediation of metal-contaminated land.
I shall refer to detailed aspects of the study if necessary when comparing the various features of claim 1 with the disclosure of the document. Moffat does disclose a system as it does refer to physical inputs and outputs as well as process steps. I have to determine if it discloses the system as defined in claim 1 of the opposed application. Moffat clearly discloses feature 3 which relates to, “Planting biomass in a section of the landmass”, wherein certain poplar varieties have been planted on a piece of land (see 2.1 page 163 of the document). Moffat also discloses feature 5, “Harvesting biomass from the landmass”, wherein the poplar trees are harvested (see 2.2 page 163 of the document).
I shall now examine feature 2 which states, “The environment including a contaminated land mass and an output stream of a waste stream/slurry that contains contaminants from a waste treatment unit”. The two key aspects of this feature are (i) a contaminated land mass and (ii) an output stream of a waste stream/slurry that contains contaminants from a waste treatment unit.
(i)A contaminated land mass
Moffat discloses the following:-
The land used in the experiment had periodically been used for sludge disposal wherein sludge had last been applied in May 1991. The two tree varieties were planted in February 1993 and for a year following no sludge application was made. For the following two years sludge was applied periodically.
An analysis of soil properties before and after treatment is provided in Table 2 of Moffat. Even though the land in question had been previously subject to sludge application there is nothing to indicate that the land was considered to be contaminated. The document does not indicate whether the levels of Potentially Toxic Elements (PTEs) specified therein constitute a contamination. The opponent’s declarant in his second declaration states,
“I understand the word ‘contamination’ in the context of the claims to mean the introduction of a substance into an environment that causes instability, disorder, harm, or discomfort to that environment. The contaminating substance (or ‘contaminant’) can be a foreign or naturally-occurring substance. An environment can be said to be contaminated with a naturally occurring substance if the substance is present in the environment in quantities in excess of their normal levels.’
The applicant did not challenge this definition which I shall apply to the Moffat paper. The Moffat paper has not indicated if the land used in the experiment was considered to be contaminated prior to the commencement of the experiment. The opponent submitted that “Professor Baker considers that in the context of heavy metals (i.e. Zn, Cu, Ni, Cd, Pb, Cr and Hg) any level would be undesirable and fulfil the requirement that there be contaminants”. This statement is at odds with Professor Baker’s previous statement (see above) which states, “An environment can be said to be contaminated with a naturally occurring substance if the substance is present in the environment in quantities in excess of their normal levels (my emphasis).” The soil analysis provided does not indicate if the contents therein are at natural levels or at contaminant levels. The reference to PTEs does not indicate levels at which they are considered to be toxic. The analysis after sludge application for the experimental period shows an increase in content of most elements in the soil but no clear statement or indication that the levels are contaminant levels. In fact at paragraph 3.2 on page 164 the paper states:-
“Nearly all plots had potentially toxic element (PTE) concentrations within acceptable levels, as prescribed by the Sludge (Use in Agriculture) Regulations 1989, although three sub-plots had slightly higher lead concentrations.”
There is no indication that the soil was definitely contaminated at the end of the experiment or at the commencement of the experiment with regard to PTEs. I note that the opposed application at page 3 of the description indicates that contaminants could include nutrients such as nitrogen and phosphorous. The Moffat paper has not indicated what it considers to be the normal levels of nitrogen and phosphorous in the soil being used for the experiment. However at Table 2 on page 165 it provides figures for soil properties at the beginning and end of the experiment. Both nitrogen and phosphorous content have increased at the end of the third and final year of the experiment. Hence one cannot definitely conclude that the soil was contaminated with nitrogen and phosphorous at the commencement of the experiment but that there was an increase in their levels at the end of the experiment. Consequently I find that the feature of ‘a contaminated land mass’ has not been disclosed.
(ii) An output stream of a waste stream/slurry that contains contaminants from a waste treatment unit.
The paper refers to ‘Irrigation with final effluent waste water’ wherein concentrations of total nitrogen, total oxidised nitrogen, ammonia and phosphate are specified (para 2.1 page 163). There is no statement indicating if these concentrations are considered to be at contaminant levels. Further there is no indication of the presence of other contaminants in the effluent other than the statement that it is sourced from the Bracknell sewage treatment works (STW), Berkshire. The paper at paragraph 4.1, page 166 states that “The combined analytical results over the three growing seasons suggest that the effluent was more responsible for enhancing tree biomass than sludge application”. There is nothing to suggest that the effluent had any contaminants present which were then taken up by the biomass.
In the absence of any disclosure establishing that the effluent was contaminated I find that the feature of “An output stream of a waste stream/slurry that contains contaminants from a waste treatment unit” has not been disclosed. Thus feature 2 of claim 1 has not been established as being disclosed in Moffat.
I shall now consider feature 4. The first aspect is “Supplying the waste stream/slurry continuously or periodically onto the section of the land mass to facilitate growth of biomass”. This has been quite clearly disclosed in the abstract and throughout the document. The second aspect refers to “decontaminating the land mass and the waste stream/slurry by take-up of the contaminants in the biomass”. As discussed previously the document did not conclusively establish that the land mass and waste stream/slurry were contaminated. Consequently I do not find that this second aspect of feature 4 has been established as being present in the Moffat paper. The third aspect refers to “producing an upgraded effluent from the waste stream/slurry”. The opponent was clearly of the view that soil moisture remaining after irrigation with the waste stream/slurry fell within the ambit of the term “effluent”. The applicant strongly opposed this interpretation. The Macquarie Dictionary, Third Edition, reprinted 2001, gives several definitions for the term effluent the most relevant of which are, (i) flowing out or forth, (ii) the outflow from sewage during purification. Thus there is a clear reference to an outflow. The Moffat paper refers to irrigation with a waste steam/slurry and the analysis of water retained in the soil after irrigation but there is no indication of an effluent being produced subsequent to the irrigation step of the Moffat paper. The opponent refers to one of the objectives of the Moffat paper which states, “the environmental implications of using such additions (effluent irrigation) in the SRC system especially on soil and drainage waters”. I note that though soil water analysis is provided in the paper there is no analysis of drainage waters provided subsequent to irrigation with effluent. Also the soil water analysis shows an increase in nitrate concentration and the paper concludes that “the results only after one year of monitoring suggested that application rates (of sludge) in excess of 200m³ha^-1yr^-1 could cause water pollution of the soil type under study”. Thus if one somehow concluded (which I don’t) that soil water was an effluent the paper discloses an effluent which is contaminated rather than being an upgraded effluent as claimed in claim 1 of the opposed application. I find that the third aspect of feature 4 is not present in the Moffat paper. Consequently as the second and third aspects of feature 4 have not been revealed in the disclosure of the Moffat paper I find that feature 4 has not been disclosed in this citation.
Finally looking at feature 1, I note that it has two aspects. The first aspect relates to a system for reducing the level of contaminants (such as, heavy metals, pathogens, and nutrients) in an environment, and the second aspect relates to a system for recovering valuable constituents from the environment. In my analysis of feature 2 I had determined that the Moffat paper did not show that there was contamination of the land subsequent to treatment and hence if contamination was not established I do not see how a reduction in contamination can be established. The paper at paragraph 4.2 page 167 states, “Compared to the amounts added to the soil in the sludge treatments (Table 1), all metals except cadmium were removed at a smaller rate than that applied”. Thus the metals (if they were at contaminant levels) were applied to the soil in the sludge as opposed to the soil being contaminated. Further the removal of these metals (except for cadmium) was at a rate smaller than the rate of application. This clearly implies a build up of metal concentration over time rather than a removal of metals if their presence was considered to be at contaminant levels. Thus there is no disclosure of a removal of contaminants. Regarding cadmium uptake, the paper at paragraph 4.2, page 163 concludes, “However, it is unreasonable to propose that poplar SRC could phytoremediate cadmium-contaminated soil, as others have done for willows [33]. It is clear that the rate of removal is too slow for this to be a realistic proposition, as others have revealed [28]. For the other heavy metals, the implications from Tables 1 and 6 are that poplar SRC treated with sludge will lead to heavy metal accumulation in the soil.” The clear conclusion one can draw from this is that there is nothing to support a finding of a system which reduces the level of contaminants in the soil.
Now I shall assess the second aspect of recovering valuable constituents from the environment. The opposed specification at page 3 states, “…the term ‘valuable constituents’ includes recoverable energy, nutrient enriched compost, base metals and precious metals such as gold, silver, and platinum.” The Moffat paper at page 161 discloses that the use of suitable poplar species have shown via research a potential for biomass yields in excess of ten oven dry tonnes ha^-1yr^-1, to be used for energy generation, composting or as fibre for board manufacture. This clearly falls within the aspect of recovering valuable constituents from the environment. However feature 2 defines the environment as “including a contaminated land mass and an output stream of a waste stream/slurry that contains contaminants from a waste treatment unit”. I had previously determined that the Moffat paper did not disclose the environment as defined in feature 2 of claim 1. Thus overall I find that feature 1 of claim 1 has not been disclosed in the Moffat paper.
In conclusion, features 3 and 5 of claim 1 are disclosed in the Moffat paper whereas features 1, 2 and 4 of claim 1 are not disclosed in the Moffat paper. Thus the system defined in claim 1, comprising physical aspects and method steps has not been disclosed in the citation. Thus opposed claim 1 is novel in light of the Moffat paper.
In the matter of independent claim 5 I had identified that claim 5 differed from claim 1 only in that the environment of feature 2 included “a waste stream/slurry that contains contaminants in the form of sewage and/or partially treated sewage”. The Moffat paper disclosed a waste stream/slurry that was an effluent originating from a sewage treatment plant. However there was no disclosure of the effluent containing sewage and/or partially treated sewage (my emphasis). Thus overall feature 2 of claim 5 is not disclosed in the Moffat paper. I find that claim 5 has not been shown to be lacking in novelty by the Moffat disclosure. As independent claims 1 and 5 are found to be novel I consider that dependent claims 2 to 4 and 6 to 26 do not lack novelty in light of the Moffat paper.
WO 00/61822 (exhibit CJB-1, Bird declaration)
The opponent submitted that this patent specification disclosed opposed claims 1, 2, 5, 6, 7, 12, 25 and 26 as it disclosed a method of phytoremediation of contaminated materials by use of a biomass consisting of fern plants. The applicant submitted that the cited document did not disclose the use of a waste stream as irrigation or the production of an upgraded effluent from the waste steam/slurry.
WO 00/61822 discloses a process for removing a pollutant from a contaminated material wherein the process comprises the steps of growing a fern plant on a contaminated material, whereby the fern plant removes said pollutant from said material and the plant can then be processed to recover the pollutant. The pollutants have been disclosed as arsenic, phosphorous, lead, gold, selenium, copper, cadmium, chromium, nickel, and zinc. The contaminated materials have been disclosed as soil, sediment, waste, and water.
Opposed claim 1 has a clear requirement for reducing the level of contaminants in an environment wherein the environment includes a contaminated land mass and an output stream of a waste stream/slurry that contains contaminants from a waste treatment unit. The cited document, however, discloses decontamination of environments including contaminated:-
(i) soils, (ii) groundwater/surface water, (iii) wetlands, (iv) wastewater, and (v) waste materials,
wherein, each environment is treated on an individual basis. There is thus a disclosure of treating a single environment but none of the single environments disclosed in the citation include an environment consisting of a contaminated land mass and an output stream of a waste stream/slurry that contains contaminants from a waste treatment unit. Neither is there any disclosure of supplying a contaminated waste stream/slurry continuously or periodically onto a section of contaminated land. In particular, page 15 of the cited document discloses supply of contaminated groundwater and wastewater as irrigation for fern plants which then take up the pollutants from the contaminated water. There is no reference to both the soil and groundwater/wastewater being contaminated. Looking at the five features of claim 1 as set out above:-
·Feature 1 is not disclosed as the environment defined therein is not revealed in the citation
·Feature 2 is not disclosed as decontamination of only a land mass or only contaminated water is disclosed but decontamination of both contaminated land and water in combination is not disclosed
·Feature 3 is clearly disclosed
·Feature 4 is not disclosed as the combination treatment of contaminated land and water is not disclosed.
·Feature 5 is clearly disclosed
Thus some essential features of independent claim 1 (and hence claim 5) have not been disclosed in the citation. I find that all the opposed claims have not been rendered as lacking in novelty in light of WO 00/61822.
Inventive Step/Obviousness
The opponent submitted in essence that the claimed invention lacked an inventive step in light of (a) the common general knowledge (henceforth cgk) available to the skilled addressee in Australia, and (b) the common general knowledge when combined with the disclosure of the Moffat paper. Regarding the common general knowledge reference was made to disclosures in “Sludge into Biosolids: Processing, Disposal and Utilisation (Exhibit AJB-4)” and “Metcalf & Eddy Wastewater Engineering: Treatment, Disposal and Reuse (Exhibit AJB-5&6)”.
The applicant was of the view that neither the cgk on its own or in combination with the Moffat paper showed the claimed invention to be lacking in inventiveness. The applicant objected to the opponent’s declarant relying on the Metcalf & Eddy text as this text was only raised in the evidence in reply and had not been referred to in the evidence in support. They requested that I disregard the text in my assessment of inventive step as it strictly did not constitute evidence in support.
The Metcalf & Eddy text was not referred to in the evidence in support though I note that it had been listed in the statement of grounds and particulars. Thus the applicant was clearly aware that the opponent was going to rely on some or all of the documents listed in the statement of grounds and particulars. The evidence in reply was filed on 22 May 2009. The applicant had ample opportunity to study the evidence and raise any objections to the matter filed therein. I note also that no objection was raised prior to the hearing. There was nothing to prevent the applicant from (a) filing further evidence to counter any matter raised which was strictly not in reply to the applicant’s evidence in answer or (b) requesting the delegate to disregard any evidence which they considered to be not strictly in reply.
Irrespective of whether or not the Metcalf & Eddy text constitutes evidence in reply it is now part of the evidence on record. As a matter of public interest I have to determine its relevance to assessing the validity of the patent specification under opposition. The said text relates to the various aspects of the treatment, disposal and reuse of wastewater. In terms of the use and upgrading of contaminated wastewater which is an aspect of the opposed claims I find that this document has relevance to an assessment of the inventive step aspect of the opposed claims. I therefore will have regard to this document for the purposes of assessing inventive step of the opposed claims. I note also that the applicant had ample opportunity to make submissions on this document and did so at the hearing. Thus the applicant has not been substantially disadvantaged in this regard.

I note that the opposed application had a filing date of 22 March 2002. Subsections 7(2) and 7(3) of the Patents Act 1990 (prior to 1 April 2002) indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available 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.
The following tests typify the basic approaches which the courts have used to establish obviousness:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not." [Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286]
"was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end." [Allsop Inc & Another v Bintang Ltd & Ors 15 IPR 686 at page 701, (1989) AIPC 90-615 at page 39,332]
"Would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result]." [Olin Mathieson v Biorex (1970) RPC 157 at page 187, and approved by the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 (12 December 2002)]
"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." [Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1979-80) 144 CLR 253 at page 293]
"so easy that any fool could do it" [Edison Bell v Smith (1894) 11 RPC 389 at page 398].
I shall apply the test set out by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286, noting that it is not inconsistent with the other tests.
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
- a determination of the problem sought to be solved by the opposed patent specification
- a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
- a determination of the common general knowledge in Australia at the priority date (22 March 2001)
In order to determine the problem the invention sought to solve I shall have regard to the opposed specification. A reading of the specification reveals the following issues which it seeks to address:
The present invention is concerned with reducing the level of contaminants in such environments by effectively and cost efficiently reducing the overall level of contaminants in the land mass and the water mass thereby remediating the land mass.
The present invention is also concerned with reducing the level of contaminants in such environments by effectively and cost efficiently reducing the overall level of contaminants in waste streams/slurries (in situations where the environments include waste streams/slurries).”
“The present invention is also concerned with recovering valuable constituents from such environments. In this context, the term valuable constituents include recoverable energy, nutrient enriched compost, base metals and precious metals, such as gold, silver, and platinum.”
By implication therefore the problems of the prior art would seem to lie in the removal of contaminants (including nutrients) from land masses and waste streams and recovering the same (for further use).
The non-inventive skilled worker in the filed would consist of a team with differing skills. The applicant and the opponent agreed that the skilled addressee would be a team of skilled workers composed of a phytoremediation expert, an environmental engineer/officer, and a chemical/process/waste treatment engineer. The opponent’s declarant, Professor Baker, is a phytoremediation expert with relevant qualifications and experience and he was an expert in this area (phytoremediation) at the relevant priority date based on the information provided in his first declaration. The applicant has not challenged his standing in this regard.
The applicant filed submissions prior to the hearing where it sought to challenge the independence of Professor Baker as a declarant for the opponent. The applicant provided material which they alleged showed that Professor Baker had several dealings with the opponent which would establish that he was not an independent witness. The applicant sought to include this material in the proceedings as further evidence. The applicant had filed with IP Australia on 26 October 2009, (a) A summary of the submissions to be presented by the applicant at the hearing and (b) A statutory declaration in the name of Nicholas Hunter together with Exhibits NHH-1 to NHH-12.
The opponent was of the view that the statutory declaration constituted further evidence, and consequently they objected to it being filed at this late stage and also sought a time period in which to respond to the declaration.
After having heard from both parties on this matter and having considered the statutory declaration in question I found that the declaration in question did not constitute further evidence as it did not have any direct relevance to the grounds of opposition pursued by the opponent. The declaration relates to alleged connections (on the basis of research work projects) between the opponent and the opponent’s declarant prior to the current opposition matter. As such this ‘evidence’ does not address/relate to any of the grounds of opposition. I shall treat it as submissions which may have relevance to the weight I might give to the submissions made by the opponent’s declarant. This was made clear to both parties at the hearing.
I note that the opponent did provide a brief response to this declaration at the hearing. However they had not had sufficient time to provide a full response. At the hearing I received agreement from both sides that the opponent would have fourteen days from the date of the hearing to provide a full response to the declaration. Consequently I directed that:-
1. The Statutory Declaration in the name of Nicholas H Hunter together with Exhibits NHH-1 to NHH-12 (filed on 26 October 2009) for the purposes of the hearing shall be treated as submissions.
2. The opponent has until close of business on 10 November 2009 to file a response to the Statutory Declaration mentioned in 1 above.
I have received the opponent’s response to the written submissions made by the applicant on 26 October 2009. On consideration of the material provided by the applicant and the response from the opponent I have no substantial evidence before me of a direct link between Professor Baker and Melbourne Water Corporation. The material shows that the Australian Research Council provided funding to various research bodies, universities and collaborations between universities and private bodies. There is no evidence of Professor Baker working directly for Melbourne Water Corporation either as an employee or as a contractor. The material provided seems to indicate that ARC grants were provided to various research teams at Melbourne University and that Professor Baker was a member of some of these teams.
I shall consider Professor Baker’s evidence on cgk as a person skilled in the art of phytoremediation but not one with skills/expertise in the areas of environmental engineering, and chemical/process/waste treatment engineering. Consequently for any assertions made by Professor Baker regarding cgk which lie outside his field of expertise, I shall be seeking corroboration of his assertions whenever they are challenged by the applicant.
The applicant’s declarant, Dr Hall, based on his declaration, has qualifications/expertise in the area of biochemistry and mineral engineering. He has no formal qualifications in the arts relating to the claimed invention but is one of the inventors. Thus even though he could not make a definitive statement on what constituted the cgk in the art he could provide some idea of the background art relevant to the invention at the priority date.
Based on Professor Baker’s declarations the opponent asserted that the following material constituted cgk in Australia at the relevant priority date:-
·Phytoremediation:- which involved the planting and harvesting of biomass thereby resulting in a useful biomass which has extracted contaminants from the environment.
·Phytoremediation was known for treating a variety of sites, including land areas contaminated with sewage sludge and other pollutants. Similarly, the patent application refers to a range of sites that find application of the alleged invention – sewage treatment plants, municipal landfills, and mine tailings.
·Phytoextraction (a subset of phytoremediation):- a process in which high-biomass, metal-accumulating plants and appropriate soil amendments are used to transport and concentrate metals from the soil into the above-ground shoots, which are harvested with conventional agricultural methods.
·The practice of growing crops and other biomass on land contaminated (for example, by sludge application) was well known to the person skilled in the art (even if that person was a waste water treatment engineer only) at the priority date (reference was made to exhibits AJB-4, 5&6). Such processes known include where ‘trace metals are trapped in the soil matrix and nutrients are taken up by plants and converted to useful biomass.
·Waste streams were known as a means of irrigating planted crops and commonly used for irrigating crops.
·The use of various waste water treatment processes involving the use of natural treatment systems (including the use of a biomass) was well known before the priority date. Such treatments include (i) slow rate; (ii) rapid infiltration; (iii) overland flow and (iv) constructed wetlands. Slow rate treatment involves the application of waste water to vegetated land to provide treatment and to meet the growth needs of the vegetation but at the same time producing a treated waste water stream.
·An example of slow rate treatment is the grass filtration referred to at page 6 line 30 of the patent application. The known wastewater treatment processes, such as treatment of sewage by land or grass filtration, also form part of the common general knowledge.
The applicant responded as follows:-
·As at the priority date the state of sewage processing in Australia, as exemplified by the Western Treatment Plant, involved storing biosolids, no remediation of land, primary and secondary treatment in lagoons or mechanical tanks, disposal of effluents into port Phillip Bay [Hall para 23 and specification].
·Also at the priority date there was reluctance to use effluent high in nutrients due to disease risk and potential crop failure when reticulated potable water was cheap and available [Hall para 24].
·At#2 Baker para 87 Professor Baker asserts that the Invention is no more than a well known natural treatment system, in which crops are harvested and valuable constituents recovered or a well known phytoremediation system using the throughflow of waste water as irrigation. The Invention is neither. It was not well known (or known) to use waste water for irrigation for phytoremediation [Hall para 22(i), #1 Baker para 74]. The Invention operates by utilising streams on much greater scales. In both cases there is no upgrading of effluent.
I shall now assess the documents which the opponent claims provides evidence of the common general knowledge in the art. The opponent has submitted that these disclosures may not cover all the technical fields required to perform the invention but do cover the fields of phytoremediation and wastewater engineering. The documents in question cover disclosures from
·Phytoremediation of Toxic Metals, edited by Raskin and Ensley, John Wiley & Sons, 2000 (hence forth Raskin, exhibits CJB-18 to 20)
·Phytoremediation of Contaminated Soil and Water, edited by Terry and Banuelos, CRC Press LLC 2000 (henceforth Terry, exhibits CJB 21 to 25)
·Sludge into Biosolids: Processing, Disposal and Utilisation, 2001, Edited Spinosa, L and Vesilind, PA, IWA Publishing, London (henceforth Spinosa, exhibit AJB-4)
·Metcalf & Eddy Wastewater Engineering: Treatment, Disposal and Reuse, (Third Edition), 1991, Tchobanaglous, G and Burton, FL, published by McGraw Hill, Inc. (henceforth Metcalf, exhibits AJB-5, 6, 8, 9)
All the documents above seem to fall into the category of standard texts and handbooks. The applicant has not challenged this categorisation. There is no evidence before me to establish that these textbooks/handbooks were unavailable in Australia at the relevant priority date. Also there was no submission made that the disclosures therein were not accepted by the person skilled in the relevant art in Australia as forming part of the cgk in the arts of phytoremediation and wastewater engineering. I shall now assess the relevance of these disclosures for the purpose of determining if the claimed invention is rendered obvious to a person skilled in the relevant art in the light of this common general knowledge in the art.
Raskin teaches the extraction of metal contaminants from soil by the use of plants specially selected for that purpose. Raskin also teaches rhizofiltration wherein plant roots grown in aerated water, precipitate and concentrate toxic metals from polluted effluents. There is no disclosure of the combined decontamination of polluted soil and effluent and production of an upgraded effluent by a plant/biomass selected for that purpose (feature 4 of the independent claims) as defined in the opposed claims.
The Terry document (Chapters 1 and 3) disclose phytoremediation of Pb (lead) and Se (selenium) contaminated soils. The study relating to Pb extraction by plants does not disclose the use of contaminated waste stream/slurry for irrigation. The study relating to Se extraction refers to the production of effluent containing Se. Thus even though the plants are extracting selenium from the soil thus reducing contamination in the soil, irrigation of that soil does produce a selenium contaminated effluent. The document suggests decontaminating the effluent by using it for irrigation of plants which selectively extract Se from the effluent. However the document notes that, “…unless plants take up Se faster than evapotranspiration, the net effect of irrigating land with Se-enriched water may increase the soil Se level, unless leaching or volatilization by plants and microorganisms is occurring.” Chapters 7 and 12 of Terry do not add any further disclosure in terms of the features of the opposed independent claims. There is no disclosure of the combined decontamination of polluted soil and effluent and production of an upgraded effluent by a plant/biomass selected for that purpose (feature 4 of the independent claims) as set out in the opposed claims.
Chapter 4 of the Spinosa document discusses landfilling. At page 75 it discloses the application of sludge to land wherein pollutant concentrations in the sludge are higher than those permitted for land application for the purposes of agriculture. These sites may be used to grow crops for specific purposes, provided that suitable management practices are adopted to protect the environment and public health. On page 77 it discloses that in Australia (as per Osborne 1996) only 19% of sludge goes to landfill with the remainder in beneficial use. There is no indication of the pollutant levels that the sludge creates on the land on which it is used. Also there is no disclosure that the growth of selected plants on land treated with sludge is for the purpose of removing pollutants from the land treated with sludge. Thus this disclosure will not show the opposed claims as lacking an inventive step.
The Metcalf document provided is rather extensive in nature and I shall concentrate on those areas relevant to the issue at hand. Exhibit AJB-6 provides Chapter 13 of the Metcalf document which discusses Natural Treatment Systems. These systems discuss the treatment of wastewater by various methods including soil-based or land treatment systems and aquatic-based systems wherein most of the methods have a need for the presence of vegetation. They teach wastewater treatment with removal of excess nutrients such as nitrogen and phosphorous. Regarding metals these are also removed from wastewater but depending on local conditions are mostly retained in the soil. It also indicates that there could be some take up of metals in plants and this acts as limiting factor in terms of determining the agricultural use of the land. Overall there is a disclosure of remediation of wastewater (including the presence of vegetation) but no disclosure of remediation of contaminated land irrigated with contaminated wastewater with the growth of vegetation to take up the contaminants. Exhibit AJB-8 relates to aerated lagoons for the treatment of wastewater including solids removal. Once again there is no disclosure of the combined treatment of contaminated land and wastewater to achieve remediated land and upgraded effluent while recovering contaminants from harvested biomass grown thereon. Exhibit AJB-9 covers chapter 16 of Metcalf which relates to Wastewater Reclamation and Reuse. The reclamation technologies are a combination of physical and chemical processes depending on the end product quality that is required. There is no indication of the use of vegetation/biomass in these processes. There is no disclosure of the use of biomass to recover contaminants from polluted land masses which are irrigated with contaminated waste steams/slurries resulting in decontaminated land and an upgraded effluent (feature 4 of the independent claims) as set out in the opposed claims.
Overall none of the disclosures set out above (which constitute cgk in the arts of phytoremediation and wastewater engineering) show the opposed claims as lacking an inventive step. I shall now assess the combined disclosures of the cgk with the Moffat document raised against the opposed claims for the purpose of novelty and inventive step.
“The optimization of sewage sludge and effluent disposal on energy crops of short rotation hybrid poplar, AJ Moffat, AT Armstrong, J Ockleston, Biomass and Bioenergy (30 September 2000) 20:161-169 (exhibit CJB-13, Bird declaration)
Firstly, I need to establish if this document would have been ascertained, understood and regarded as relevant by the person skilled in the art. The document would have been ascertained as it was made available in the British Library on 19 March 2001 which was before the relevant priority date of 22 March 2001. The document broadly discloses:-
An experiment to test the effect of sewage sludge application and waste water irrigation on the biomass production of two poplar varieties where three sludge applications were examined factorially with two irrigation schemes (with and without), over the two final years of a three-year rotation. The effects of treatment on soil and soil water were monitored, and the amount of heavy metals removed in the biomass was quantified. Irrigation had a significant effect on biomass of both poplar varieties wherein sludge application was not effective in increasing biomass yield, but the experiment was valuable in identifying that modest amounts of sludge (approximately 100 m³ha^-1yr^-1) were acceptable environmentally and did not compromise biomass production. Cadmium uptake was detected in the poplar biomass, but the amounts were small and insufficient for poplar to be used in phytoremediation of metal-contaminated land.

Based on the disclosure in the abstract, as the paper is clearly related to the problem of removing contaminants from polluted land or water and also recovering the contaminants, the skilled addressee would have studied the paper in detail. On reading the paper the skilled addressee would have discovered that the sludge that was applied had to be applied in carefully regulated amounts to avoid water pollution (Para 4.3 of Moffat) and heavy metal accumulation in the soil (Para 4.2 of Moffat). Also, I had previously determined under Novelty that “The clear conclusion one can draw from this is that there is nothing to support a finding of a system which reduces the level of contaminants in the soil”. Thus though the skilled addressee would be quite capable of understanding this document, there is no support for a finding that the skilled addressee would regard this document as relevant to the problem faced by the prior art. There is no indication that the situation is one where the soil is contaminated. The opponent refers to the application of sludge constituting a contaminated soil. This is not accurate as the soil analysis provided does not indicate initial soil contamination. In fact the paper points to possible soil contamination after repeated application of sludge. Thus I cannot conclude that the skilled addressee would be motivated to combine the teachings of the Moffat paper with the cgk. Further even if they did there is no indication of how they would arrive at the use of biomass growth on contaminated soil irrigated with a contaminated waste stream wherein the biomass would extract the contaminants to reduce soil contamination and produce an upgraded effluent (feature 4 of the independent claims). I find that the opposed claims do not lack an inventive step in light of the cgk when combined with the disclosures of the Moffat paper.
Manner of Manufacture
The issues raised in the opponent’s submissions were:-
- The claims are a collocation of integers, some of which are physical (that is, land) and some of which are method steps (that is, planting, supplying waste and harvesting a biomass). There is no sufficient working interaction between the physical features and method step. Each integer does its own expected thing without any synergistic effect.
- Furthermore, the invention disclosed on the face of the specification can be assessed taking into account the acknowledged practice (on the face of the specification) of grass filtration. See page 6 line 30 to page 7 line 9 of the patent application. Grass is a biomass. Grass filtration involves a throughput of treated sewage over grass resulting in take up of contaminants (for example, nutrients). The step of harvesting the grass (i.e. cutting) will inevitably occur and is, in any event, not sufficient to give inventiveness.
The applicant responded as follows:-
(A) The invention is more than a mere collocation of two processes:
(i)phytoremediation of a contaminated land area; and
(ii)irrigation of crops by application of a waste stream from a waste treatment facility in order to produce an upgraded effluent.
(B) There is no evidence that item (ii) is a matter of common general knowledge. As discussed above whilst it may be known to use a waste stream as a source of irrigation for crop growth, in such cases there may be some filtering and absorption of components from the waste stream however there is the greater concern not to contaminate the site or ground water via the use of the waste water. As a result, the quantities of waste water used are limited and closely monitored to prevent soil and ground water contamination.
(C) Furthermore, the Invention is more than the sum of (i) and (ii), it overcomes inadequacies in both processes and in operation operates on a scale which processes significant volumes of materials not achievable with either (i) or (ii) separately.
Regarding collocations, the opponent had referred to the teaching of Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142 (9 October 2009) wherein reference was made to Palmer v Dunlop Perdriau Rubber Co Ltd [1937] HCA 43; (1937) 59 CLR 30 at 73. In the latter case, Dixon J elaborated on the notion of a collocation of integers. His Honour first cited with approval the speech of Lord Davey from Re Klaber’s Patent (1906) 23 RPC 461 where his Lordship said (at 469):
“A proper combination for a patent is the union of two or more integers, every one of which elements may be perfectly old, for the production of one object which is either new, or at any rate is for effecting an old object in a more convenient, cheaper or more useful way. But the point in a combination patent must always be that the elements of which the combination is composed are combined together so as to produce one result.”
There are two key features that the opponent focuses on. The first relates to the phytoremediation of contaminated soil and the second relates to the remediation of contaminated waste streams. The teaching of cgk regarding phytoremediation of contaminated soil by growth of biomass to take up contaminants does not disclose that the soil is irrigated with contaminated waste water. Thus there is no disclosure that the growth of biomass thereon results in producing an upgraded effluent from the contaminated wastewater.
Looking at the second feature the cgk does disclose phytoremediation of wastewater but with an indication that the soil could become contaminated as a result. Thus there is no disclosure that contaminated wastewater was applied to contaminated soil and no indication that both soil and wastewater are remediated via the growth of biomass. Thus the result produced by the opposed claimed invention is remediation of both soil and water whereas the individual features produce either a remediated soil, or an upgraded effluent but not both. Hence there is no firm basis to support the assertion that the claimed invention is a mere collocation of known integers. Consequently I find that the opposed invention is a proper combination patent.
The opponent was of the view that the opposed invention when considered on the face of the specification itself and the disclosures therein, does not disclose a new invention and hence does not constitute a manner of manufacture. The opponent made reference to the disclosures within the specification of phytoremediation of contaminated sewage by grass filtration. This teaches decontamination/upgrading of waste streams/slurries but the specification also refers to problems arising from such processes which include heavy metal contamination in the soil, excessive nutrient load and heavy metals in water discharges after the filtration. This does not disclose the invention which teaches removal of contaminants from both soil and wastewater streams by growth of biomass on contaminated soil. There is no evidence which renders the claimed invention as obvious on the face of the specification. Consequently I do not find that the opposed invention does not constitute a manner of manufacture when considered against the disclosure of the opposed specification.
The opponent has not shown that the opposed invention does not constitute a Manner of Manufacture
CONCLUSION
The opponent pursued the grounds of novelty, inventive step, section 40 and manner of manufacture. The opponent has been unsuccessful on all grounds.
I had found that none of the claims were shown to be not novel. Further none of the claims lacked an inventive step in light of the common general knowledge alone and also when combined with the citation raised by the opponent against inventive step. The issues raised by the opponent regarding lack of clarity were not supported as the claims and specification did not present any construction issues which could not be resolved by the skilled addressee. The opponent was unable to establish that the opposed invention did not constitute a manner of manufacture.
I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
The opponent indicated that costs should follow the event. However, they also sought costs for a further two events in the opposition process where they indicated that the finding of the delegate for the substantive opposition should not impact on the award of costs in their favour. The first event related to the adjournment of the current hearing which was initially scheduled for 27 August 2009. The opponent submitted that the scheduled hearing was adjourned without much prior notice (they referred to a letter from IP Australia dated 21 August 2009) and that costs of an adjourned hearing can be awarded against a party where the party applies for late adjournment and the circumstances warrant (they referred to Craige Jonathan Henrick v Granite Works Pty Ltd [2008] APO 21 (12 September 2008), and Super Internet Site System Pty Ltd v Sensis Pty Ltd [2006] APO 27 (16 August 2006). The second event related to the preparation and filing of a Statutory Declaration of Professor Baker in response to a declaration of Mr Hunter of 26 October 2009.
The applicant submitted that costs should follow the event. They did not see how additional costs were incurred as a result of the adjournment of the scheduled hearing date as a week’s notice had been provided seeking adjournment. Further they were not sure as to what costs would arise in view of the week’s notice provided seeking adjournment.
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. In terms of the substantive opposition, the opponent has been unsuccessful on all grounds. Accordingly I award costs in accordance with Schedule 8, of the Patents Regulations 1991, against the opponent Melbourne Water Corporation and in favour of the applicant Green Edge (IPCO) Pty Ltd.
I shall now address the matter of costs regarding the adjournment of the hearing. The opponent provided a copy of a letter issued by the Patent Oppositions, Hearings and Legislations section of IP Australia wherein the delegate had indicated that the hearing was to be adjourned but also stated, “I regret that the opponent may have been put to unnecessary expense and inconvenience due to the way that this matter has been handled. These matters might be raised in relation to the award of costs.”
I note that regulation 22.8 further prescribes the costs that may be awarded. It also provides that the Commissioner must not award costs, other than costs (including expenses and allowances) specified in Schedule 8, unless each party to the proceedings has had the reasonable opportunity to make a submission on the matter of the award of those costs. Thus, any award of costs for a greater quantum than specified in the schedule, or for a matter not specified in the schedule, cannot be made unless the parties have had a reasonable opportunity to make submissions. Usually this will be at the hearing which determines the proceedings.
In this instance both parties have had an opportunity to make submissions in this matter. Costs are generally awarded on the basis of which party won the case overall, rather than which party prevailed on particular points of the case. On the other hand, an apportionment of costs can be made if a particular issue is a separate and distinct from the main issue being considered; see Dr Martens v Figgins Holdings (No 2) [2000] FCA 602 at [54] where Goldberg J said:
“A court should not be too ready to disallow costs simply because a party has failed upon an issue, unless it is quite a separate and distinct issue from the issues in respect of which it succeeded or unless there be some element of unreasonableness or inappropriate conduct in relation to that issue.”
Looking at the circumstances in this particular case the sequence of key events (via correspondence on file) is as follows:
1. IP Australia informs both parties of a Hearing date of 27 August 2009 via letter dated 2 July 2009.
2. The applicant indicates via e-mail dated 12 August 2009 that both parties are agreeable to holding the hearing in Melbourne and also holding it at a date in late September 2009.
3. IP Australia indicates via letter dated 13 August 2009 that the hearing can be postponed to 28 to 30 October 2009.
4. The applicant via e-mail dated 13 August 2009 indicates that the patent attorney handling the case will be on leave on the set hearing date of 27 August 2009 and that they are in the process of retaining and briefing counsel while noting that the opponent had indicated that they had briefed counsel to appear at the hearing.
5. The opponent via e-mail dated 17 August 2009 indicated that they only had become aware recently of the applicant’s desire to postpone the hearing. They were willing to do so by a couple of weeks but no more as a delay of two months was unacceptable to them.
6. The applicant via e-mail dated 19 August 2009 puts forwards arguments to postpone the hearing alleging a denial of natural justice if the hearing proceeded on 27 August. The applicant’s attorney says they became aware in an e-mail dated 13 August 2009 from the opponent that the opponent was retaining counsel and consequently they recommended to the applicant that the applicant do the same. They also indicated that their patent attorney was going to be on leave on the hearing date and hence extra expense would be involved in briefing another attorney as well as counsel.
As indicated above IP Australia issued a letter agreeing to the postponement albeit reluctantly. The circumstances show that the applicant was fully aware of the hearing date of 27 August 2009 on or around 2 July 2009. About two weeks before the hearing they suddenly determine that the patent attorney handling the case will be on leave and that they need to retain counsel as the opponent has decided to retain counsel. The opponent has already briefed counsel and is prepared for the hearing of 27 August 2009. I am rather puzzled as to why the applicant’s attorney decides to go on leave when he was aware of the hearing date for about a month a half before he decided on his need to take leave. Further the applicant’s attorneys have made no alternative arrangements for another attorney to appear at the hearing claiming that it would entail extra expense. Attorneys and counsel do take leave from time to time. This should not involve work being postponed whenever people go on leave. Most large law/attorney firms can make alternative arrangements to cope with staff going on leave. No evidence has been provided in the correspondence to show that there were extenuating circumstances or circumstances beyond the control of the attorney that led to the attorney going on leave when he was fully aware well in advance of the hearing date. For instance there is no indication of an emergency situation (including health or business) or a family emergency. Also the request for postponement is not for a matter of two weeks but for a large period of time exceeding a month. Clearly the applicant is worried about the extra expense it will incur for providing a substitute attorney but has had no consideration for the unnecessary expense the opponent is being subject to by a rather sudden postponement of the hearing date. The behaviour of the applicant, although clearly not misconduct, has definitely caused a great deal of inconvenience and unnecessary expense to the opponent. Given the circumstances set out above, I do not find any basis to deny the opponent an apportionment of costs.
The opponent has sought costs for two events. I am in agreement that costs should be awarded for the first event. Looking at the details provided of costs incurred I see no need to award costs beyond the Schedule 8 costs. The opponent has indicated the actual costs incurred but sought costs against Item 12 of Schedule 8 which refers to attendance at the hearing of a registered patent attorney or solicitor without counsel. This is incorrect as the opponent has noted that this was time spent by attorneys on correspondence and organisation relating to the adjournment. I view this as preparation for the hearing as there is no appearance involved in these actions. The opponent has sought $910 representing three and a half hours of a single attorney’s time. The applicant disputed this figure suggesting that only one and a half hours time was required by the attorney for the opponent for rescheduling activities. As I don’t have precise details of the relevant activities undertaken and the time spent on each activity to help me arrive at a suitable time spent on rescheduling activities, I shall take the average of the times suggested by the opposing parties. Accordingly I award costs to the opponent based on two and a half hours of a single attorney’s time. This works out to $650 (based on a $260 per hour rate) against Item 11 of Schedule 8 which relates to preparation of the case for the hearing.
For the second event I note that I treated the further evidence sought to be adduced by the applicant as submissions. I see no sound reason for the opponent to file further declarations in response to the alleged further evidence when they could have filed submissions. I note that I had given a direction (dated 2 November 2009) that the further evidence was to be treated as submissions. Thus I do not award an apportionment of costs for the second event.
In conclusion taking into account the above awards of costs I award costs against the opponent Melbourne Water Corporation in accordance with Schedule 8, of the Patents Regulations 1991, minus the sum of $650.
Jacob Elijah
Delegate of the Commissioner of Patents
24 December 2009
Patent attorneys for the applicant : Griffith Hack, Melbourne
Patent attorneys for the opponent : Allens Arthur Robinson, Melbourne