Memcor Australia Pty Ltd v GE BetzDearborn Canada Company
[2010] APO 19
•8 September 2010
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 19
Patent Application: 2004203856
Title:Vertical Skein of Hollow Fiber Membranes and Method of Maintaining Clean Fiber Surfaces
Patent Applicant: GE BetzDearborn Canada Company
Opponent: Memcor Australia Pty Ltd
Delegate: Jacob Elijah
Decision Date: 8 September 2010
Hearing Date: 8 and 9 June 2010, in Canberra
Catchwords: PATENTS - opposition to grant – whether claims 23 to 36 of opposed application entitled to claim priority from the parent application on the basis that the requirements of subsection 79B(1)(b) had not been met - determined that claim 37 should also be included for consideration against non-compliance with subsection 79B(1)(b) - claims 23 to 37 of the opposed application; when embodying any of the features of (i) fibres of each header spaced apart with no specific spacing, (ii) multiplicity of hollow fiber membranes “confined in a shell of a module”, (iii) lumens of the membranes (which membranes are sealingly secured in the headers) are in fluid communication with at least one permeate collection means, wherein the permeate is discharged via the fibres into a permeate collection means that is not sealingly connected to either of the headers; did not comply with section 79B(1)(b) of the Act - as a result regulation 3.12(1)(c) could not apply to determine the priority date of claims 23 to 37 (when embodying any one of the abovementioned features) of the Divisional - hence the priority date of claims 23 to 37 (when embodying any one of the abovementioned features) of the Divisional (as per regulation 3.12(1)(c)) is the filing date of the Divisional, which is 12 August 2004 – whether claims 1 and 23 lack novelty in light of citations raised – lack of novelty of claims 1 and 23 not established – whether claims 1 to 96 (excluding claims 9 to 14, 95) are obvious in light of the common general knowledge at the relevant priority date, either considered separately or taken with the relevant available prior art information - lack of inventiveness of claims 1 to 96 (excluding claims 9 to 14, 95) not established – whether opposed claims 1 to 96 comply with the requirements of section 40(3) of the 1990 Act due to lack of clarity of a particular term – lack of clarity of term not established hence non-compliance of opposed claims with section 40(3) of 1990 Act not established – opponent unsuccessful on all grounds pursued for the substantive opposition
Representation: Patent applicant: Matthew Swinn, partner and Faisal Mian, of Corrs Chambers Westgarth, Melbourne, represented the applicant.
Opponent: Stephen Burley, senior counsel, Hamish Bevan, counsel,
instructed by Rebekah Gay and Peter Heathcote (both partners), patent attorneys of Shelston IP, Sydney, represented the opponent.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004203856
Title:Vertical Skein of Hollow Fiber Membranes and Method of Maintaining Clean Fiber Surfaces
Patent Applicant: GE BetzDearborn Canada Company
Date of Decision: 8 September 2010
DECISION
The opponent pursued the grounds of novelty, inventive step, and section 40/lack of clarity. The opponent also contested the right of the opposed application to claim priority from the parent application on the basis that the requirements of subsection 79B(1) had not been met in so far as claims 23 to 36 of the divisional are concerned. I determined that claim 37 should also be included for consideration against non-compliance with subsection 79B(1). Claims 23 to 37 of the opposed application; when embodying any of the features of, (i) fibres of each header spaced apart with no specific spacing, (ii) multiplicity of hollow fiber membranes “confined in a shell of a module”, (iii) lumens of the membranes (which membranes are sealingly secured in the headers) are in fluid communication with at least one permeate collection means, wherein the permeate is discharged via the fibres into a permeate collection means that is not sealingly connected to either of the headers; did not comply with section 79B(1)(b) of the Act. As a result regulation 3.12(1)(c) could not apply to determine the priority date of claims 23 to 37 (when embodying any of the abovementioned features) of the Divisional. Hence the priority date of claims 23 to 37 (when embodying any of the abovementioned features) of the Divisional (as per reg 3.12(1)(c)) is the filing date of the Divisional, which is 12 August 2004.
The opponent was unsuccessful on the grounds of Novelty and Lack of Inventive Step for all claims. The opponent was unsuccessful on the grounds of Section 40/lack of clarity.
As the opponent was unsuccessful on all substantive grounds of the opposition, costs are awarded against the opponent Memcor Australia Pty Ltd.
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.
REASONS FOR DECISION
BACKGROUND
Zenon Environmental Inc. (now GE BetzDearborn Canada Company – henceforth GE) filed patent application No 2004203856 on 12 August 2004 as a further application (divisional) to patent application no 715364 (the parent) under the provisions of section 79B of the Patents Act 1990. The application claims priority from AU 715364 filed on 8 August 1996, which claims priority from two US patent applications 08/514119 and 08/690045 filed on 11 August 1995 and 31 July 1996 respectively. The application under opposition was examined and advertised accepted on 18 January 2007.
Memcor Australia Pty Ltd (Memcor) filed a notice of opposition on 12 April 2007. A statement of grounds and particulars was filed on 11 July 2007. This was subsequently amended with the amended statement of ground and particulars being allowed on 20 May 2010. The filing of evidence in support, evidence in answer, evidence in reply and further evidence including the related evidence in response was completed on 13 May 2010.
A hearing to deal with the substantive opposition was held in Canberra on 8 and 9 June 2010. Matthew Swinn, partner and Faisal Mian, of Corrs Chambers Westgarth, Melbourne, represented the applicant. Mr Scott Pundsack (Canadian attorney) attended via telephone on behalf of the applicant. Stephen Burley, senior counsel, Hamish Bevan, counsel, instructed by Rebekah Gay and Peter Heathcote (both partners), patent attorneys of Shelston IP, Sydney, represented the opponent. Gary Ganzi (via phone) and Matthew Roper attended on behalf of the opponent.
The opponent’s submissions were combined to address a substantive section 59 action against Patent Application No. 715364, which is the parent application of the divisional application being considered in this decision. The applicant is the same for both the parent and the divisional application and had no objection to the joint submissions for addressing both opposition actions. For the record the Patent Office by a communication dated 8 October 2009 had stated,
“The evidence served and filed in respect of the opposition to patent application 715364 is to be treated as having been served and filed in respect of the opposition to patent application 2004203856 and vice versa.”
I shall proceed to list the evidence for the current action (patent application 2004203856 – divisional) followed by a brief summary of the evidence for the parallel action on the parent (patent application 715364)
EVIDENCE (patent application 2004203856)
Evidence in support consists of declarations by:
·Dr Gregory Lawrence Leslie, dated 18 December 2007 with exhibits GLL-1 to 12. He states that he is currently Associate Professor of the School of Chemical Sciences and Engineering at the University of New South Wales (UNSW). His declaration indicates that he has a PhD in Chemical Engineering from UNSW and he further indicates that he has had extensive experience in the field of fibre membrane filtration systems, microfiltration, ultrafiltration and reverse osmosis filtration systems using membrane technology as a researcher, consultant, adviser, teacher and project manager.
·Peter Rex Heathcote, dated 5 December 2007 with exhibits PRH-1 to 33. He states that he is a patent attorney of Shelston IP, the firm responsible for prosecuting the opposition on behalf of Memcor Australia Pty Ltd.
Evidence in answer consists of declarations by:
·Pierre Cote, dated 11 September 2008 with exhibits A to F. He states that he has a PhD in Civil Engineering from McMaster University in Hamilton, Canada. He indicates that he has had a great deal of experience in the field of water and wastewater treatment including use of membrane technology. He further indicates that he worked for Zenon Environmental Inc. in various capacities during the periods 1989-1992, 1998-2006.
·Henry Behmann, dated 11 September 2008 with exhibits A to D. He indicates that from 1982 to the present date he has worked for Zenon Environmental Inc. or its successor companies including GE Water and Process Technologies Canada. He further indicates that during that time he worked under various titles as a technologist and researcher involved with membrane technology for water and wastewater treatment.
Evidence in reply consists of declarations by:
·Dr Gregory Lawrence Leslie, dated 27 February 2009 with exhibits A to E.
·Warren Thomas Johnson, dated 13 March 2009 with exhibits WJ-1 to 5. He states that he has an Honours degree (first class) in chemical engineering from UNSW. He further indicates that he has extensive experience in the field of membrane technology related to water and sewage treatment plants. His declaration indicates that he is currently the Global Director R&D, Memcor Products Siemens.
First lot of further evidence (second lot for application no 715364) consists of declarations by:
·Peter Rex Heathcote, dated 5 March 2010 with exhibits PRH-1 to 28
·Dr Gregory Lawrence Leslie, dated 2 March 2010 with exhibits GLL-17 to 28
First lot of evidence in response to further evidence (second lot for application no 715364) consists of declarations by:
·Jeff Cumin, dated 30 April 2010. He states that he is currently the UF/MBR Ideation Manager for GE Water and Process Technologies Canada, which is related to GE BetzDearborn Canada Company.
·Henry Behmann, dated 3 May 2010 with exhibits HB-E to HB-J. He further indicates that he had made a declaration in the matter of an opposition to Australian Patent Application no 2004203856 on 11 September 2008. He further indicates that he has retired since then although he still accepts contracts in the areas of patent searching and membrane research.
·Richard W. Baker, dated 5 May 2010. He states that he has a PhD in Physical Chemistry from the Imperial College London and has been involved in the membrane research community for several years. He further states that he is currently the President of Membrane Technology and Research, Inc., which he founded in 1982.
EVIDENCE (patent application 715364)
Evidence in support consists of declarations by:
·Professor Anthony G. Fane, dated 9 August 2001 with exhibits AGF-1 to 12.
·Peter Rex Heathcote, dated 9 January 2001 and 10 August 2001 with annexures PRH-1 to 16.
Evidence in answer consists of declarations by:
·John David McCormack, dated 1 June 2004 with exhibits JMC-1 to 27.
·Richard W. Baker, dated 8 September 2004 with exhibits RB-1 and RB-2.
·Vincenzo Cinanni, dated 16 December 2004
Evidence in reply consists of declarations by:
·Dr Gregory Lawrence Leslie, dated 14 April 2009 with exhibits GLL-1 to 16.
·Warren Thomas Johnson, dated 11 May 2009 with exhibits WJ-1 to 5.
First lot of further evidence consists of a declaration by
·Peter Rex Heathcote, dated 28 May 2009 with exhibits PRH-1 to 28
First lot of evidence in response to further evidence consists of a declaration by:
·Katerina Craven, dated 2 October 2009 with annexure KC-1 consisting of four exhibits.
Second lot of further evidence consists of declarations by:
·Peter Rex Heathcote, dated 5 March 2010 with exhibits PRH-1 to 28
·Dr Gregory Lawrence Leslie, dated 2 March 2010 with exhibits GLL-17 to 28
Second lot of evidence in response to further evidence consists of declarations by:
·Jeff Cumin, dated 30 April 2010.
·Henry Behmann, dated 3 May 2010 with exhibits HB-E to HB-J
·Richard W. Baker, dated 5 May 2010.
THE SPECIFICATION
The specification under opposition was advertised accepted on 18 January 2007. The specification is directed to relatively large systems for the microfiltration of liquids. It indicates initially that the invention relates to (i) a membrane device which is an improvement on a frameless array of hollow fiber membranes, (ii) a method of maintaining clean fiber surfaces while filtering a substrate to withdraw a permeate, and (iii) a method of forming a header for a skein of fibers. The specification defines the term skein as referring to an integrated combination of structural elements including (i) a multiplicity of vertical fibers of substantially equal length; (ii) a pair of headers in each of which are potted (secured within a resin) the opposed terminal portions of the fibers so as to leave their ends open; and (iii) permeate collection means held peripherally in fluid-tight engagement with each header so as to collect permeate from the ends of the fibers. This combination of structural elements is not confined in a rigid shell or module. This integrated combination of structural elements is immersed, along with several others in a large tank of multicomponent substrate such that the substrate is in fluid contact with the outer surfaces of the membrane fibers. The flow into the inner hollow part of the membrane (lumen) is initiated by the application of suction pressure at the permeate collection end. In order to stop the outer surfaces of the membranes from clogging/fouling air scouring is provided from below the vertical integrated structure to scrub the fibers. This is followed by a discussion and comparison of the current invention with specified prior art consisting of three patent specifications and two technical papers.
Some improvements identified are: -
- The doing away with the need to form a module in which the fibers are confined.
- The fibers are in a vertical skein and do not present an arcuate configuration above a horizontal plane through the horizontal centre line of a header. As a result, the path of the rising bubbles (used for scrubbing the fibers to remove deposited material) is generally parallel to the fibers and is not crossed by the fibers of a vertical skein. Yet the bubbles scrub the fibers.
- Deposits of animate and/or inanimate particles upon the surfaces of fibers are minimised when the restrictedly swayable fibers are kept awash in co-directionally rising bubbles which rise with sufficient velocity to exert a physical scrubbing force (momentum provides the energy) to keep the fibers substantially free of deleterious deposits. Thus, an unexpectedly high flux is maintained in fibers over each unit area of the surface of the skein fibers over a long period.
- The restrictedly swayable fibers, because of their defined length, do not get entangled, and do not abrade each other excessively. This is because each of said fibers has a length from 0.1% to less than 5% greater than the fixed distance between the headers, which holds the fibers in a vertical configuration.
- The side-to-side displacement of an intermediate portion of each fiber within the “zone of confinement” or “bubble zone” is restricted by the fiber’s length. The defined length of the fiber minimizes (i) shearing forces where the upper fibers are held in the upper header, (ii) excessive rotation of the upper portion of the fibers, as well as (iii) excessive abrasion between fibers.
- The swaying motion of the fiber of the invention is distinct from the vibration, which occurs when a fiber is taut, that is, when the length of the potted fiber exposed to substrate is not longer than the distance between the opposed faces of the upper and lower headers holding the fiber. Unlike the fibers of the prior art modules, there is essentially no tension on the fibers of the current application because the opposed faces of the headers are spaced apart at a distance less than the length of an individual fiber.
The specification then identifies three aspects of the invention. The first relates to a microfiltration membrane device. The second is directed to a “gas-scrubbed assembly”. The third relates to a composite header for a skein of a multiplicity of fibers. This is followed by a detailed description including reference to the drawings for various embodiments of the invention. The specification then provides six examples of the invention followed by a glossary of terms. The specification concludes with 96 claims including 12 independent claims and 5 omnibus claims. As claims 9 to 14 are not under attack by the opponent under any grounds I shall not list them here.
The independent and omnibus claims read as follows:
1. A microfiltration membrane device, for withdrawing permeate substantially continuously from a multicomponent liquid substrate, said membrane device comprising:
· a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;
· a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;
· said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin, all open ends of said fibers extending from a permeate-discharging face of at least one header;
· permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers; and,
· means to withdraw said permeate;
· said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed;
· each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;
wherein said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each said header are spaced apart to a desired lateral spacing between fibers by said potting resin which extends over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship.
5. A gas-scrubbed assembly comprising a microfiltration membrane device in combination with a gas-distribution means to minimize build-up of particulate deposits on the surfaces of hollow fiber membranes (“fibers”) in said device, and to recover permeate from a multicomponent liquid substrate while leaving particulate matter therein, said membrane device comprising:
- a multiplicity of fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;
- a first and second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance, each header being formed with a potting resin cured in a resin-confining means;
- said first header and second header having opposed terminal end portions of each fiber sealingly secured therein, all open ends of said fibers extending from a permeate-discharging face of at least one header;
- permeate collection means to collect said permeate through at least one of said headers sealingly connected in open fluid communication with a permeate-discharging face of each of said headers;
- means for withdrawing said permeate; and,
- said fibers, said headers and said permeate collection means together forming a skein wherein said fibers are essentially vertically disposed;
- said gas-distribution means is located within a zone beneath said skein, said gas-distribution means having through-passages therein adapted to have sufficient gas flowed therethrough to generate enough bubbles flowing in a column of rising bubbles between and around said skein fibers, to keep surfaces of said fibers awash in bubbles;
- said fibers, said headers and said permeate collection means together forming a skein wherein said fibers are essentially vertically disposed;
- each of said fibers having substantially the same length, said length being from at least 0.1% greater, to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;
wherein
said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and said fibers of each said header are spaced apart with potting resin extending over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship;
said through-passages discharge a cleansing gas in an amount in the range from 0.47 – 14 cm3/sec per fiber in bubbles which rise vertically substantially parallel to, and in contact with said fibers, movement of which is restricted within said column;
whereby said permeate is essentially continuously withdrawn while concentration of said particulate matter in said substrate is increased.
8. A process for maintaining the outer surfaces of hollow fiber membranes substantially free from a build-up of deposits of particulate material while separating a permeate from a multicomponent liquid substrate in a reservoir, said process comprising:
- submerging skein fibers in substantially vertical configuration within said substrate said fibers being unconfined in a modular shell and securely held in vertically opposed, upper and lower headers spaced-apart at a fixed distance, said fibers having substantially the same length and from at least 0.1% greater, to 5% greater than said fixed distance, said fibers being swayable in said substrate;
- flowing a fiber-cleansing gas through a gas-distribution means proximately disposed relative to said skein, within a zone beneath said skein, and contacting surfaces of said fibers with sufficient physical impact of bubbles of said gas to maintain essentially the entire length of each fiber in said skein awash with bubbles and essentially free from said build-up;
- maintaining an equilibrium flux initially obtained after commencing operation of said process;
- collecting said permeate in said collection means; and,
- withdrawing said permeate;
- introducing said cleansing gas in an amount in the range from 0.47 – 14 cm3/sec per fiber to generate a column of said bubbles alongside and in contact with outer surfaces of said fibers;
- restricting movement of said fibers to said vertical zone defined by lateral movement of outer fibers in said skein;
- vertically gas-scrubbing said fibers’ outside surfaces with bubbles which flow upward in contact with said surfaces, said fibers having a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to about 345 kPa (50 psi);
- simultaneously, substantially continuously, withdrawing said permeate while increasing the concentration of said particulate material in said substrate.
23. An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising,
(a) a non-pressurized reservoir for containing the substrate,
(b) a skein of hollow fiber filtering membranes immersed in the substrate wherein the membranes are disposed generally vertically between upper and lower headers such that
(i)outsides of ends of the membranes are each surrounded by potting material so as to be sealingly secured to the headers,
(ii)lumens of the membranes are in fluid communication with at least one permeate collection means, and
(iii)the membranes have a length between opposed surfaces of the headers such that the membranes may move when contacted by rising bubbles in the substrate but wherein the length is from 0.1% to less than 5% greater than the distance between opposed surfaces of the headers; wherein said fibers are subject to a transmembrane pressure differential in the range of from 0.7 kPa (0.1 psi) to 345 kPa (50 psi)
(c) a source of suction in fluid communication with the lumens of the membranes and operable to apply a suction to the lumens of the membranes to draw a component of the substrate as permeate through the membranes; and
(d) means for discharging air directly into the substrate between the membranes.
27. An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising: wherein said fibers are subject to a transmembrane pressure differential in the range of from 0.7 kPa (0.1 psi) to 345 kPa (50 psi)
(a) a non-pressurized reservoir for containing the substrate,
(b) a skein of hollow fiber filtering membranes immersed in the substrate wherein the membranes are disposed generally vertically between upper and lower headers such that
(i)outsides of ends of the membranes are each surrounded by potting material so as to be sealingly secured to the headers,
(ii)lumens of the membranes are in fluid communication with at least one permeate collection means, and
(iii)the membranes have a length between opposed surfaces of the headers such that the membranes may move when contacted by rising bubbles in the substrate but wherein the length is from 0.1% to less than 5% greater than the distance between opposed surfaces of the headers;
(c) a source of suction in fluid communication with the lumens of the membranes and operable to apply a suction to the lumens of the membranes to draw a component of the substrate as permeate through the membranes; and
(d) a gas distribution system having through passages adapted to discharge bubbles to rise through and around the skein of membranes, the gas distribution system comprising one or more gas tubes which space the first and second headers apart and which also carry air to the through passages.
29. An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising: wherein said fibers are subject to a transmembrane pressure differential in the range of from 0.7 kPa (0.1 psi) to 345 kPa (50 psi)
(a) a non-pressurized reservoir for containing the substrate,
(b) a skein of hollow fiber filtering membranes immersed in the substrate wherein the membranes are disposed generally vertically between upper and lower headers such that
(i)outsides of ends of the membranes are each surrounded by potting material so as to be sealingly secured to the headers,
(ii)lumens of the membranes are in fluid communication with at least one permeate collection means, and
(iii)the membranes have a length between opposed surfaces of the headers such that the membranes may move when contacted by rising bubbles in the substrate but wherein the length is from 0.1% to less than 5% greater than the distance between opposed surfaces of the headers;
(c) a source of suction in fluid communication with the lumens of the membranes and operable to apply a suction to the lumens of the membranes to draw a component of the substrate as permeate through the membranes; and
(d) means for discharging a gas, the means for discharging a gas having through passages through the lower header to discharge bubbles from first openings in the through passages into the substrate above the lower header.
53. An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising:
(a) a non-pressurized reservoir for containing the substrate,
(b) a microfiltration membrane device, for withdrawing permeate from the multicomponent liquid substrate, said membrane device comprising:
· a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;
· a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;
· said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin;
· permeate collection means to collect the permeate, sealingly connected in open fluid communication with a permeate-discharging face of at least one of said headers; and,
· means to withdraw said permeate;
· said fibers, said headers and said permeate discharging face together forming a vertical skein wherein said fibers are essentially vertically disposed;
· each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;
wherein said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each said header are spaced apart by said potting resin which extends over only each terminal end portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship;
(c) a source of suction in fluid communication with the lumens of the fibers operable to subject the fibers to the transmembrane pressure and draw a component of the substrate as permeate through the membranes; and
(d) means for discharging air directly into the substrate between the membranes.
57. An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising:
(a) a non-pressurized reservoir for containing the substrate,
(b) a microfiltration membrane device, for withdrawing permeate from the multicomponent liquid substrate, said membrane device comprising:
· a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;
· a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;
· said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin;
· permeate collection means to collect the permeate, sealingly connected in open fluid communication with a permeate-discharging face of at least one of said headers; and,
· means to withdraw said permeate;
· said fibers, said headers and said permeate discharging face together forming a vertical skein wherein said fibers are essentially vertically disposed;
· each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;
wherein said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each said header are spaced apart by said potting resin which extends over only each terminal end portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship;
(c) a source of suction in fluid communication with the lumens of the fibers operable to subject the fibers to the transmembrane pressure and draw a component of the substrate as permeate through the membranes; and
(d) a gas distribution system having through passages adapted to discharge bubbles to rise through and around the skein, the gas distribution system comprising one or more gas tubes which space the headers apart and which also carry air to the through passages.
59. An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising:
(a) a non-pressurized reservoir for containing the substrate,
(b) a microfiltration membrane device, for withdrawing permeate from the multicomponent liquid substrate, said membrane device comprising:
· a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;
· a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;
· said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin;
· permeate collection means to collect the permeate, sealingly connected in open fluid communication with a permeate-discharging face of at least one of said headers; and,
· means to withdraw said permeate;
· said fibers, said headers and said permeate discharging face together forming a vertical skein wherein said fibers are essentially vertically disposed;
· each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;
wherein said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each said header are spaced apart by said potting resin which extends over only each terminal end portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship;
(c) a source of suction in fluid communication with the lumens of the fibers operable to subject the fibers to the transmembrane pressure and draw a component of the substrate as permeate through the membranes; and
(d) means for discharging air having through passages through a lower of the first and second headers to discharge bubbles from first openings of the through passages into the substrate above the lower header.
67. A microfiltration membrane device, for withdrawing permeate from a multicomponent liquid substrate, said membrane device comprising:
· a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module;
· a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;
· said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin, all open ends of said fibers open to a permeate-discharging face of one or both headers;
· said one or both headers having permeate collection means to collect said permeate, sealingly connected in open fluid communication with the permeate-discharging face(s) of the or each header; and,
· means to withdraw said permeate;
· said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed;
· each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;
wherein said fibers are subjectable in use to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each said header are spaced apart to a desired lateral spacing between fibers by said potting resin, so as to maintain said ends in closely spaced apart relationship.
92. A microfiltration membrane device for withdrawing permeate substantially continuously from a multicomponent liquid substrate substantially as herein described with reference to the accompanying drawings.
93. A gas-scrubbed assembly substantially as herein described with reference to the accompanying drawings.
94. A process for maintaining the outer surfaces of hollow fiber membranes essentially free from a build-up of deposits of particulate material substantially as herein described with reference to the accompanying drawings.
95. A method of forming a header for a skein of a multiplicity of fibers substantially as herein described with reference to the accompanying drawings.
96. An apparatus for treating a multicomponent liquid substrate whilst leaving particulate matter therein, substantially as herein described with reference to the accompanying drawings.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of novelty, inventive step, manner of manufacture and section 40/fair basis/lack of clarity. At the hearing the opponent pursued the grounds of novelty, inventive step, and section 40/lack of clarity. The opponent also contested the right of the opposed application to claim priority from the parent application on the basis that the requirements of subsection 79B(1) had not been met in so far as claims 23 to 36 of the divisional are concerned.
DECISION
Both parties made oral submissions at the hearing as well as filing written submissions. I shall refer to these as well as any earlier filed evidence wherever relevant in my decision. I shall commence with consideration of the divisional status/priority claim of the application followed by novelty, inventive step and section 40/clarity matters.
Subsection 79B(1) Divisional status/Priority entitlement
The opponent submitted: -
“As the Divisional purports to be a divisional application of the Parent, the provisions of s 79B(1) apply. This means that two requirements must be established:
(a) the invention (as claimed) in the Divisional must be disclosed in the specification as filed of the Parent (i.e. the specification as filed on 8 August 1996); and
(b) the invention (as claimed) must fall within the scope of the claims of the accepted specification of the Parent.
The requirements are cumulative.
If each of the requirements of s 79B(1) is not met:
(a) the Divisional is not a divisional application for the purposes of the 1990 Act and the Patents Regulations 1991 (Cth);
(b) reg 3.12(1)(c) cannot apply to determine the priority date of the relevant claims of the Divisional;
(c) the priority date of the relevant claims of the Divisional will be the date of the filing of the specification (see reg 3.12(1)(a)) which, in this case, is 12 August 2004.”
The opponent proceeded to provide detailed submissions in support of their assertions (including comparison of the relevant specifications and claims) concluding that the requirements of subsection 79B(1) had not been met in respect of claims 23 to 36 of the opposed application. I note that claim 37 (which is appended to claim 35) has not been included in this submission. Claim 37 defines a transmembrane pressure differential within the range defined in claim 35. I shall therefore consider claim 37 along with claims 23 to 36 and wherever the opponent makes reference to claims 23 to 36 I shall treat it as including claim 37.
The applicant did not respond specifically to this issue. The relevant passages of section 79B and regulation 3.12 which are applicable in determining the priority dates of further applications state:
Section 79B
(1) If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention:
(a) disclosed in the specification filed in respect of the first - mentioned application; and
(c) where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification.
Regulation 3.12
(1) Subject to regulations 3.13 and 3.14 and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:
(a) the date of filing of the specification;
….
(c) if the specification is a complete specification filed in respect of a divisional application under section 79B of the Act and the claim is fairly based on matter disclosed in the specification referred to in paragraph 79B (1)(a) of the Act -- the date mentioned in subregulation (2C);
….
(2C) The date for a specification to which paragraph 3.12 (1)(c) applies is the date that would have been the priority date of the claim if it had been included in the specification referred to in paragraph 79B (1)(a) of the Act.
As the opposed application was filed as a further application at least 3 months after the publication of a notice of acceptance of the parent patent request and specification in the Official Journal it would have to satisfy sections 79B(1)(a) and (b) in order to meet the requirements of a further application. I note that the opponent has not contested the compliance of claims 23 to 37 with s 79B(1)(a). Consequently I shall deal with the issue of compliance of these claims with Section 79B(1)(b). The opponent identified a number of features of the disputed claims of the divisional application which they submitted caused the claims to fall outside the scope of the accepted claims of the parent specification thus establishing non-compliance with section 79B(1)(b). I shall now assess the opposed claims (23-37) with particular emphasis on the specific features raised by the opponent to determine if they were disclosed within the accepted claims of the parent specification. Claim 23 reads as follows: -
A An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising: -
B a non-pressurized reservoir for containing the substrate,
C a skein of hollow fiber filtering membranes immersed in the substrate wherein the membranes are disposed generally vertically between upper and lower headers such that
D outsides of ends of the membranes are each surrounded by potting material so as to be sealingly secured to the headers,
E lumens of the membranes are in fluid communication with at least one permeate collection means, and
F the membranes have a length between opposed surfaces of the headers such that the membranes may move when contacted by rising bubbles in the substrate but
G wherein the length is from 0.1% to less than 5% greater than the distance between opposed surfaces of the headers;
H wherein said fibers are subject to a transmembrane pressure differential in the range of from 0.7 kPa (0.1 psi) to 345 kPa (50 psi)
I a source of suction in fluid communication with the lumens of the membranes and operable to apply a suction to the lumens of the membranes to draw a component of the substrate as permeate through the membranes; and
J means for discharging air directly into the substrate between the membranes.
I shall now consider the features raised by the opponent as differing from the disclosure of the parent claims. I note that the applicant has not specifically addressed these differences. The features raised appear to indicate differences between the matter claimed in the parent application as opposed to the matter claimed in the divisional for claims 23 to 37. I shall assess now if the differences raised are actual or apparent.
1. Apparatus versus microfiltration membrane device:-
The opponent submitted that, “Each of claims 23 to 37 of the divisional is to an ‘apparatus’. There is no requirement that the apparatus incorporates a ‘microfiltration membrane device’, nor any reference to ‘microfiltration’.” I note that claim 23 refers to the presence of hollow fiber filtering membranes. Generally, a patent specification is construed like any other document. Any purely verbal or grammatical question that can be answered according to the ordinary rules for the construction of written documents is to be resolved accordingly (Welch Perrin & Co Pty Ltd v Worrel (1961-62) 106 CLR 588). In this regard, Sheppard J summarised the Rules of Construction for a patent specification in Décor Corp v Dart Industries 13 IPR 385 at 400 and this was endorsed by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224. The specification is to be considered by the skilled addressee and a determination of the invention(s) disclosed therein would follow the Rules of Construction.
Professor Leslie in this regard has indicated his understanding (see declaration dated 18 December 2007) of what the opposed specification is teaching. He states (at paragraphs 24, 25) “Membrane filtration is the common term used to describe a liquid phase, pressure driven membrane separation process employing microporous membranes. Membrane filtration is commonly employed in the water and wastewater industry to remove both dissolved and suspended solids from solution. The pressure driven membrane processes used to remove dissolved solids such as salts and organic molecules are reverse osmosis and nano-filtration membranes. The pressure driven membrane processes used to remove suspended solids such as clays, microorganisms, small particles and colloids are microporous membrane filters. Microporous membrane filters come in a broad range of sizes on the filtration spectrum. Membrane filters with a pore size greater than 1 micron are referred to as cartridge or depth filters. Microporous membranes with a nominal pore size of 0.1 microns up to 1.0 micron are commonly referred to as microfiltration membranes, while microporous membranes with a nominal pore size between 0.1 and 0.001 microns are referred to as ultrafiltration membranes.”
Thus if the skilled addressee applied the knowledge they had at the relevant date they would have construed the apparatus as one which was a microporous membrane filter but they would not be sure if the membrane was meant for microfiltration or ultrafiltration or both. In such a case they could have recourse to the description to resolve that doubt (see the Rules of Construction Décor Corp v Dart Industries (supra)). The description clearly refers to a microporous membrane filter.
Further I note that for novelty purposes the opponent and Professor Leslie (declaration of 18 December 2007) have raised documents JP ‘905 (exhibits GLL-7, 8), JP ‘268 (exhibits GLL-9, 10). These documents in their claims clearly refer to a hollow yarn membrane fiber and a hollow fiber filter membrane respectively. There is no reference to microfiltration or ultrafiltration and neither specification seems to have caused any confusion regarding which specific type of filtration was being undertaken, which for both those documents is microfiltration.
The opponent had also indicated that the ambit of the term “particulate matter” was very broad as one could not have recourse to the specification to determine its meaning (as per Jagot J in Memcor Australia Pty Ltd v GE Betzdearborn Canada Company (2009) 81 IPR 315 at 334[62] and 335[64]). However, in view of the fact that Professor Leslie has indicated that the membrane filtration generally refers to the use of microporous membranes, the particulate matter being filtered would lie in the range suitable for that purpose.
The opponent has attempted to read the term particulate matter in isolation from the membrane filter. The claims are addressed to the person skilled in the art. As Professor Leslie has had no issue with the construction of claim 23 and in fact has raised citations which have claims framed in a similar manner I do not consider that the skilled addressee would see the apparatus of claim 23 as covering ultra filtration and the skilled addressee would also have a clear idea of the size of particulate matter that the apparatus of claim 23 would be filtering. I find that the apparatus defined in claims 23 to 37 encompasses a microfiltration membrane device. Consequently this aspect of claims 23 to 37 lies within the apparatus defined in claim1 of the parent application.
2. Unconfined in a shell of a module.
The opponent noted that claim 1 of the Parent required that the multiplicity of hollow fiber membranes be “unconfined in a shell of a module” whereas in claims 23 to 37 of the divisional the only requirement is that there be a “skein of hollow fiber filtering membranes immersed in the substrate”. They submitted that “…in the same way that Jagot J *was not prepared to incorporate the definition of ‘vertical skein’ into the claims of the Parent, the glossary may not be used to incorporate the definition of ‘skein’ and thereby import a limitation on the meaning of the claims 23 to 37 of the Divisional. Instead the term skein should be understood in the plain English sense, as a bundle of fibres. Those fibres may, or may not, be ‘unconfined in a shell of a module’” *(Memcor Australia Pty Ltd v GE Betzdearborn Canada Company [2009] FCA 507 (20 May 2009))
A reading of “a skein of hollow fiber filtering membranes” in claim 23 does not lack clarity nor would the skilled addressee be at a loss to understand the meaning of the term skein as none of the opponent’s declarants expressed any lack of understanding of the term. Thus the term skein would take its ordinary meaning of a bundle of fibers. Claim 23 does not state that the skein of fibers is unconfined in a shell of a module but neither does it require that it be confined in a shell of a module. The claim clearly states that the skein is immersed in the substrate. The substrate is in non-pressurized reservoir. Thus the bundle of fibers is in direct contact with the substrate, which is in a non-pressurized reservoir. One could interpret the reservoir as constituting a shell of a module or being of such a size that it does not confine the bundle of fibers. Thus claim 23 (and the claims appended thereto) encompasses the options of (a) fibers unconfined in a shell of a module as well as (b) fibers enclosed in a shell of a module. Thus, when the option of fibres unconfined in a shell of a module is exercised, claim 23 does disclose an arrangement falling within the ambit of claim 1 of the parent application. However when claim 23 is read with the option where fibers are disclosed lying within a shell of a module then claim 23 does not lie within the ambit of claim 1 of the parent application. Accordingly the claims appended to claim 23 (claims 24-26) would also depending on the option exercised in claim 23 fall within the ambit of claim 1 of the parent application or fall outside the scope of claim 1 of the parent application. As independent claims 27 and 29 define a similar arrangement to claim 23, I consider that these claims (including the claims appended thereto 28, 30-37) would also, depending on the option exercised of the fiber arrangement fall within the ambit of claim 1 of the parent or fall outside the ambit of claim 1 of the parent application.
3. Fibres closely spaced apart.
The opponent submitted that claim 1 of the parent had to satisfy two requirements in terms of the manner in which the fibers were secured. The first was that the terminal end portion of each fibre be sealingly secured in the first and second header with potting resin. The second was that the fibres be ‘spaced apart to a desired lateral spacing between fibers by said potting resin which extends over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship’. The opponent contended that the wording of opposed claims 23 to 37 required that ‘outsides of ends of the membranes are each surrounded by potting material so as to be sealingly secured to the headers’, was equivalent to the first requirement of claim 1 of the parent. I agree. I note that for claims 23 to 37 the potting material has to surround the end of each membrane fibre. Whatever the thickness of surrounding potting material may be, this will ensure that there is some spacing between the fibres. The issue is whether this encompasses the requirement that there be a desired lateral spacing between fibers so as to maintain the ends of the fibers in closely spaced apart relationship. The description indicates that closely spaced apart relationship refers to a centre-to-centre distance between adjacent fibres of 1.2 times to 5 times the outer diameter of the fibre. Claims 23 to 37 do not appear to be specifically limited by this requirement but could have arrangements some of which would fall within this requirement and some of which would not meet this requirement. I find that claims 23 to 37 when exercising a variety of spacing options can possess the feature of fiber spacing as set out in claim 1 of the parent application and equally well fall outside the ambit of said claim 1.
4. Fluid communication with the permeate discharging face of the headers
The opponent asserted that “Claims 23 to 37 of the Divisional require that the ‘lumens of the membranes are in fluid communication with at least one permeate collection means’. The claims do not, however, require that there be any fluid communication or any connection between the permeate-discharging face of a header and a permeate collection means but neither do they exclude such an arrangement. Accordingly, claims 23 to 37 can encompass an apparatus in which permeate is discharged via the fibres into a permeate collection means that is not sealingly connected to either of the headers as well as encompass an apparatus in which permeate is discharged via the fibres into a permeate collection means that is sealingly connected to either of the headers.” Thus on the one hand we have an arrangement of claims 23 to 37 which falls outside the ambit of claim 1 of the parent application and on the other hand an arrangement which falls within the scope of claim 1 of the parent application.
5. Movement of the fibres
The opponent submitted that “Claims 23 to 37 of the Divisional require only that the fibres ‘may move when contacted by rising bubbles in the substrate’. There is no requirement that such movement is of an intermediate portion of each fibre, nor that the movement of one fibre is independent to that of other fibres.
Claim 1 of the Parent application discloses that (a) the fibres are swayable and (b) each of said fibres having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fibre, independently of the movement of another fibre.
I note that claims 23 to 37 of the divisional do not explicitly state that the fibres are swayable in the substrate but they do define that ‘the membranes have a length between opposed surfaces of the headers such that the membranes may move when contacted by rising bubbles in the substrate but wherein the length is from 0.1% to less than 5% greater than the distance between opposed surfaces of the headers’. Thus the length of the membrane fibres between the headers is clearly defined and the excess length has the same percentage ranges as the Parent. The actual lengths are disclosed in the description. Thus quite clearly the fibres of claim 23 would be swayable in the substrate or capable of movement due to agitation by the gas bubbles. The issue is whether the arrangement of claim 23 would ‘permit restricted displacement of an intermediate portion of each fibre, independently of the movement of another fibre’. Looking at the description some guidance is provided for the behaviour of the fibers immersed in a substrate: -
(a) “the restrictedly swayable fibers, because of their defined length, do not get entangled, and do not abrade each other excessively, as is likely in the ‘424 array. The side-to-side displacement of an intermediate portion of each fiber within the ‘zone of confinement’ or ‘bubble zone’ is restricted by the fiber’s length. The defined length of the fiber herein minimizes (i) shearing forces where the upper fibers are held in the upper header, (ii) excessive rotation of the upper portion of the fibers, as well as (iii) excessive abrasion between fibers. Such swaying motion of a fiber with side-to-side displacement is distinct from vibration which occurs when a fiber is taut, that is, when the length of the potted fiber exposed to substrate is not longer than the distance between the opposed faces of upper and lower headers holding the fiber.” - description page 1, line 29 to page 2 line 8.
(b) “each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;” – consistory clause of the invention page 4a, lines 16 to 22.
Thus there is no indication that the swaying motion of the fiber and the restricted displacement of an intermediate portion of the fiber independently of the movement of another fiber is possible for a reason other than the defined length (including the excess of 0.1 to 5%) of the fiber between the opposed headers. Thus I find that claims 23 to 37 do disclose the movement of the fibers as set out in claim 1 of the parent application.
Overall we have two situations wherein claims 23 to 37 fall within the ambit of the claims of the parent application and another where they do not. I have taken the two cases where: -
(a)all the features considered above, including: -
·Fibres of each header spaced apart to a desired lateral spacing.
·Multiplicity of hollow fibre membranes “unconfined in a shell of a module”.
·Permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers.
fall within the ambit of the parent claims, and
(b)a maximum of three features (see 2, 3 and 4 above)
·Fibres of each header spaced apart with no specific spacing.
·Multiplicity of hollow fibre membranes “confined in a shell of a module”.
·Lumens of the membranes (which membranes are sealingly secured in the headers) are in fluid communication with at least one permeate collection means, wherein the permeate is discharged via the fibres into a permeate collection means that is not sealingly connected to either of the headers.
which are not within the ambit of the claims of the parent application. There are possible variations to the above regarding the disclosure of claim 23 but I have considered only two situations, (a) where there is a maximum disclosure of features falling within the ambit of the parent claims and (b) where a maximum number of features are not disclosed in the ambit of the parent claims.
Regarding the omnibus claims of the parent, the opponent submitted that, “…the omnibus claims of the Parent are (directed) to the specific embodiments described in the specification. They are not to any combination or mosaic of integers described in the various embodiments. Accordingly, even if each of the individual elements of claims 23 to 37 of the Divisional can be separately identified in the various embodiments in the specification (which it is not accepted they can be so identified), this is not the proper approach. Section 79B(1)(b) is only satisfied if each of the claims of the Divisional can properly be regarded as falling within the scope of any single embodiment. They do not.”
The claims under attack are apparatus claims and the omnibus claims of the parent relevant to these claims are claims 15 and 16 which read as: -
15. A microfiltration membrane device for withdrawing permeate substantially continuously from a multicomponent liquid substrate substantially as herein described with reference to the accompanying drawings.
16. A gas-scrubbed assembly substantially as herein described with reference to the accompanying drawings.
The opponent had contended that, “…the omnibus claims of the Parent are to the specific embodiments described in the specification”. The claims, I note are directed to ‘a device/assembly substantially as herein described with reference to the accompanying drawings’.
I note from the description that a single drawing may not necessarily show all features of the inventive device/assembly. Thus the omnibus claim would be covering devices/assemblies with the same essential features wherein these features could have a variety of differing embodiments as illustrated in the several drawings leading to several possible combinations of features, each of which represents the invention. The precise combinations (each combination having differing embodiments) can only be established by having recourse to the description. Thus the first step is to determine from a fair reading of the specification the features that make up the invention, that is, those features which the applicant has indicated are necessary for the invention to work. The relevant features of the device are: -
(1) a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module; where the terminal ends of the fibers are potted in opposed headers in a closely spaced-apart substantially parallel relationship so as to leave their ends open, either protruding from or flush with a permeate-discharging face of at least one header depending on whether a conventional header or the “novel” header is used; wherein the opposed headers comprise a first header and a second header disposed in a vertically spaced apart relationship with opposed faces at a fixed distance;
(2) the fibers each have substantially equal length or individual lengths such that each fiber length is 1% to less than 5% greater than the fixed distance between the header faces such that the fibers are restrictedly swayable.
(3) permeate collection means held in fluid-tight engagement with at least one header so as to collect permeate from the ends of the fibers.
In terms of the gas-scrubbed assembly the description (page 1, lines 20 to 28) indicates a minimum requirement of: -
“…the novel configuration efficiently uses air discharged near the base of the skein to produce bubbles in a specified size range, and in an amount large enough to scrub the fibers, and to provide controlled scrubbing of the fibers one against another”. The following description and drawings disclose several embodiments of the gas scrubber.
I shall now assess if claims 23 to 37 fall within the ambit of the omnibus claims. I had determined previously that claims 23 to 37 (dependent on the options exercised within the individual claims) could disclose, as set out in claim 1 of the parent application, the features of: -
1.Fibers of each header spaced apart to a desired lateral spacing.
2.Multiplicity of hollow fiber membranes “unconfined in a shell of a module”.
3.Permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers.
I note that these features are included in the combination of features, which I determined as those the applicant has set out as essential for the working of the invention in the Parent application. Thus omnibus claims 15 and 16 of the parent application do encompass the devices/assemblies defined in claims 23 to 37 of the Divisional application dependent on the optional features selected for claims 23 to 37. Thus when the features of claims 23 to 37 (henceforth claims 23a to 37a) possess particular embodiments (features 1 to 3 above) they do comply with section 79(1)(b) of the Act. Consequently the priority date of these claims (23a to 37a) can be determined via regulation 3.12(1)(c), that is, they can have the priority of the parent application.
Claims 23 to 37 (dependent on the options exercised within the individual claims) could alternatively disclose the features of: -
4.Fibres of each header spaced apart with no specific spacing.
5.Multiplicity of hollow fiber membranes “confined in a shell of a module”.
6.Lumens of the membranes (which membranes are sealingly secured in the headers) are in fluid communication with at least one permeate collection means, wherein the permeate is discharged via the fibres into a permeate collection means that is not sealingly connected to either of the headers.
Thus these claims 23 to 37 (henceforth claims 23b to 37b) possessing any one or more of the embodiments 4 to 6 above do not fall within the ambit of the omnibus claims 15 and 16. Consequently, I find that claims 23b to 37b of the opposed application when encompassing certain features (any one or more of features 4 to 6 above) do not comply with section 79B(1)(b) of the Act. As a result regulation 3.12(1)(c) cannot apply to determine the priority date of claims 23b to 37b of the Divisional. Hence the priority date of claims 23b to 37b of the Divisional (as per reg 3.12(1)(c)) is the filing date of the Divisional, which is 12 August 2004.
Priority Date of Certain Claims
The opponent submitted that, “To the extent that the applicant contends that the relevant claims of the Parent or the Divisional encompass devices or apparatus in which the fibres and/or the ends of the fibres are not closely spaced apart, but are touching, then the claims of the Parent and the Divisional are not fairly based on matter disclosed in the priority document. That is, there was no disclosure in the priority document of a device or apparatus in which the fibres and/or their ends were touching, or in contact with each other.” The opponent made this submission on the difference between fig 2B of a priority document (US Pat Appln 08/514119) and fig 2B of the Parent and Divisional applications. They contended that Fig 2B of the Parent/Divisional showed at least some fibres or their ends touching whereas Fig 2B of the priority document showed the open ends of the fibres as being spaced apart.
The applicant has not sought to make any such submission regarding the opposed claims in respect of such a feature (open ends of fibres touching) and none of the claims of the Parent and Divisional claim such a feature. Consequently none of the claims of the Parent or the Divisional are affected in this regard with respect to their priority date.
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 list the features of the invention as set out in claim 1 of the specification, which are: -
(a) A microfiltration membrane device, for withdrawing permeate substantially continuously from a multicomponent liquid substrate, said membrane device comprising:
(b) A multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;
(c) A first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;
(d) Said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin, all open ends of said fibers extending from a permeate-discharging face of at least one header;
(e) Permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers; and,
(f) Means to withdraw said permeate;
(g) Said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed;
(h) Each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;
(i) Wherein said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and,
(j) Said fibers of each said header are spaced apart to a desired lateral spacing between fibers by said potting resin which extends over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship.
The opponent had submitted that some of these features formed part of the common general knowledge in Australia at the relevant date. I shall consider these submissions when assessing the disclosure of each feature. I shall now proceed to assess the novelty of the challenged claims against the citations raised by the opponent.
JP 63-143905 (Kunio) (Leslie Declaration 18 December 2007, Exhibits GLL-7 and 8)
The opponent submitted that claim 1 of both the Parent and the Divisional lacked novelty in light of this document. Professor Leslie’s declaration of 18 December 2007 includes copies of this Japanese document. GLL-7 is a copy of the original Japanese publication and GLL-8 is a copy of a certified translation in English of the Japanese document of GLL-7. I shall refer where relevant to the text of the English translation and to the drawings if required in the Japanese document. The document discloses a bundle of fibre membranes held between opposing headers in a vertical orientation wherein the fibres are secured by a potting resin in the headers. The invention also requires that the length of the fibres exceed the vertical distance between the headers by a specified range (1 to 4% excess). The apparatus carries out continuous microfiltration wherein the permeate is collected in the lumens of the fibres and backwashing is carried out once the transmembrane pressure differential exceeds a certain value.
Feature (a): - The difference between opposed claim 1 and the citation lies in “withdrawing permeate substantially continuously”. The citation discloses a back washing step in addition to the filtration step but I note that when filtration is occurring there is no indication of any interruptions to this process. Filtration continues until a certain pressure difference is exceeded indicating that backwashing is required. Professor Leslie indicated that such filtration with periodic backwashing was considered to be substantially continuous. The applicant has not challenged Professor Leslie’s submission. I note that the claim states, “A …membrane device, for…, said membrane device comprising.” This indicates that the device must be suitable for a particular purpose but the device is not limited to that purpose. I find that feature (a) is disclosed in the citation.
Feature (b): - Figures 1 and 2 of the citation disclose a multiplicity of fibers unconfined in a shell of a module. Figure 5 of the citation shows the fiber arrangement wherein the fibers are partially covered by a protecting tube open from the bottom, but definitely not confined in a shell of a module. The description of GLL-8, at page 8, indicates that the fibers can oscillate to a certain extent (swayable). I consider that feature (b) is disclosed in the citation.
Feature (c): - This feature is clearly disclosed from Figures 1 and 2 of the citation.
Feature (d): - This feature is clearly disclosed from figures 1and 2 and the related parts of the description (pages 2 and 3) in the citation.
Feature (e): - The citation fails to show a permeate collection means, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers. The citation at figure 5 shows several modules wherein the top headers are connected via a common diaphragm to a common permeate collecting zone. There is no disclosure of a single module wherein the top header of that module is sealingly connected to a permeate collection means. There is no permeate collection means disclosed for the bottom header. I consider that feature (e) has not been disclosed in the citation.
Feature (f): - The means to withdraw the permeate is disclosed in the citation at figure 5 which shows the pipe 11 for removal of permeate from the upper collection chamber 1b. Thus feature (f) is disclosed.
Feature (g): - The vertical skein composed of fibers, headers and permeate collection means would seem to have been disclosed in figure 5 of the citation but it is missing the permeate collection means as clearly defined in feature (e). However the feature of a vertical skein assembly is disclosed. I consider that feature (g) is disclosed.
Feature (h): - The description and drawings (figures 1 to 4) show an excess length of fiber (compared to the length between the vertically opposed headers) of 1 to 4%. I now have to determine if this permits restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber. I had determined when assessing claim 23 for divisional status that, “…there is no indication that the swaying motion of the fiber and the restricted displacement of an intermediate portion of the fiber independently of the movement of another fiber is possible for a reason other than the defined length of the fiber (including the excess of 0.1 to less than 5%) between the opposed headers”. The excess length defined in the citation of 1 to 4% falls within this range and would therefore allow for, “restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber”. I consider that feature (h) has been disclosed in the citation.
Feature (i): - The citation at page 3 merely indicates that the membrane fibres are subject to a differential pressure. No specific range or actual differential pressure is disclosed. The opponent contended that Professor Leslie’s evidence showed that the pressure ranges of 0.7 kPa to 345 kPa were known to lie within the normal operating ranges of both submerged and pressurised microfiltration systems, which were known to the person skilled in the art at the relevant priority date. Exhibit GLL-4 (Membrane Handbook edited by Ho and Sirkar, chapter 13, page 457, published 1992) of Professor Leslie’s declaration of 18 December 2007 supports this assertion and the applicant did not challenge this. I find that feature (i) has been disclosed via the common general knowledge of the person skilled in the art at the relevant priority date.
Feature (j): - The opponent contended that the citation had identified that one of the defects of the prior art was the dense packing of the fibers and further that the included figures also depicted that the fibres were spaced apart. The opponent also stated that Professor Leslie indicated that at the relevant priority date he and others working in the field understood that within a bundle of fibres, the packing density of the fibres could be varied in order to optimise the efficiency of operation and to optimise the costs associated with making and operating the device. No published material was provided to support the assertions of Professor Leslie. The citation does not indicate any spacing between the fibres at the headers, which is what feature (j) is clearly defining. In particular what is defined in the opposed claim is that the ends of the fibres must be maintained in a closely spaced apart relationship. The citation is focussed on the excess length of the fibers between the headers and indicates how a particular excess length range needs to be selected to avoid problems in terms of damage to the fibres, backwashing and filtration. The citation shows spacing between the fibers at points away from the header (and not at the header) and close to the intermediate point of the fibers (Fig 1). I find that feature (j) has not been disclosed in the citation
Looking at features (a) to (j) of opposed claim 1, I find that features (e) and (j) are not disclosed in the citation. Consequently claim 1 of the opposed application does not lack novelty when assessed against the disclosure of JP 63-143905.
WO 93/02779 (Memtec Limited) (Johnson declaration 13 March 2009, Exhibit WJ-2)
This document accompanied the declaration of Warren Thomas Johnson, dated 11 May 2009, which was part of the evidence in reply filed for the opposition to the Parent application (715364). The Patent Office (IP Australia) via a communication dated 8 October 2009 declared that all evidence filed in opposition to both the Parent and Divisional applications would be treated as common to both actions. The document discloses a bundle of fibre membranes held between opposing headers in a vertical orientation wherein the fibres are secured by a potting resin in the headers. The apparatus carries out continuous microfiltration wherein the permeate is collected in the lumens of the fibres and backwashing is carried out once the transmembrane pressure differential exceeds a certain value. Embodiments are provided wherein the fiber bundle is immersed in an open tank or may be enclosed within a shell.
The opponent submitted that claim 23 of the divisional application lacked novelty in light of WO 93/02779. In the section dealing with section 79(B)(1) I had provided a break up of the features of claim 23. In particular features A to J were identified. I shall now assess the disclosure of the citation to determine if features A to J are disclosed therein.
A An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising: -
The citation is directed to methods of backwashing microporous fibres but clearly discloses an apparatus wherein the apparatus carries out a filtration operation on a multicomponent substrate such that the permeate is collected in the lumen of the fibres while leaving the particulate matter in the original substrate. This is evident from the claims as well as the description and drawings (in particular figures 13 to 21)
B a non-pressurized reservoir for containing the substrate,
This is disclosed in figures 13 to 19 and the related parts of the description.
C a skein of hollow fiber filtering membranes immersed in the substrate wherein the membranes are disposed generally vertically between upper and lower headers such that-
Also disclosed in figures 13 to 21 and the related parts of the description
D outsides of ends of the membranes are each surrounded by potting material so as to be sealingly secured to the headers,
This is clearly evident from the drawings of figures 13 to 21 and the related parts of the description (e.g. page 1, lines 15 to18).
E lumens of the membranes are in fluid communication with at least one permeate collection means, and
The description at page 26 which relates to figure 13 shows the connection of the lumens to the permeate collection means.
F the membranes have a length between opposed surfaces of the headers such that the membranes may move when contacted by rising bubbles in the substrate but
There is no disclosure of this feature. Figures 13 to 21 and the related description provide no indication of any such movement. In fact the description at pages 36 and 37 states, “In the Fig 16 variation, the cast resin plug 103, encasing and sealing the bottom ends of hollow fibre bundles 102, is of such mass and density as to prevent hollow fibres 102 rising due to buoyancy during backwashing or filtration.” Thus there is no indication of the length of the fibres to allow movement when contacted by rising bubbles in the substrate. Further the figures 13 to 21 show the fibres as taut and without any hint of slackness.
G wherein the length is from 0.1% to less than 5% greater than the distance between opposed surfaces of the headers;
This feature finds no mention in the citation. The opponent has referred to the use of such fibres by Professor Leslie while working at Memtec. This sounds like a prior use issue but the opponent has not raised the matter, nor has it provided the relevant evidence relating to prior use. I find that feature G is not disclosed in the citation.
H wherein said fibers are subject to a transmembrane pressure differential in the range of from 0.7 kPa (0.1 psi) to 345 kPa (50 psi)
The citation at page 3 states, “…applying a source of fluid under pressure to said lumens so as to generate a differential pressure (or transmembrane pressure) across said microporous walls sufficient to exceed the bubble point of said microporous walls whereby said fluid under pressure passes through said walls”. No specific range or actual differential pressure is disclosed. The opponent contended that Professor Leslie’s evidence showed that the pressure ranges of 0.7 kPa to 345 kPa were known to lie within the normal operating ranges of both submerged and pressurised microfiltration systems, which were known to the person skilled in the art at the relevant priority date. Exhibit GLL-4 (Membrane Handbook edited by Ho and Sirkar, chapter 13, page 457, published 1992) of Professor Leslie’s declaration of 18 December 2007 supports this assertion and this was not challenged by the applicant. I find that feature H has been disclosed via the common general knowledge of the person skilled in the art at the relevant priority date.
I a source of suction in fluid communication with the lumens of the membranes and operable to apply a suction to the lumens of the membranes to draw a component of the substrate as permeate through the membranes; and
Page 27 of the citation referring to the embodiment of Fig 13 discloses this feature wherein the source of suction is a vacuum pump.
J means for discharging air directly into the substrate between the membranes
There is no disclosure of this feature in the citation. The opponent has referred to the discharge of backwash air into the lumens of the fibres and thence into the substrate. There is no disclosure of air discharge directly into the substrate and between the membranes.
In conclusion features F, G and J of claim 23 have not been disclosed in the citation. These features are strictly features of the apparatus and do not define capability features of the apparatus which would define where or how the apparatus could operate in differing environments. I find that claim 23 does not lack novelty in light of WO 93/02779.
AU-B 715364 (GE BetzDearborn Company Canada)
The opponent submitted that if claims 23 to 36 did not meet the requirements of s 79B then these claims lacked novelty in light of the Parent Application (AU-B 715364). As I had determined that claims 23b to 37b [when encompassing any one or more of the features; 4. Fibers of each header spaced apart with no specific spacing. 5. Multiplicity of hollow fiber membranes “confined in a shell of a module”. 6. Lumens of the membranes (which membranes are sealingly secured in the headers) are in fluid communication with at least one permeate collection means, wherein the permeate is discharged via the fibres into a permeate collection means that is not sealingly connected to either of the headers] were not entitled to divisional status I shall assess them against the parent application for lack of novelty. I shall now determine if the features of Claim 23 as set out below are disclosed in the Parent application.
A An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising: -
The detailed description of the preferred embodiments at page 10 of the description states, “The skein of this invention is used in liquid-liquid microfiltration processes to remove micron, sub-micron and larger suspended solids…”. Hence feature A is disclosed.
B a non-pressurized reservoir for containing the substrate, and
C a skein of hollow fiber filtering membranes immersed in the substrate wherein themembranes are disposed generally vertically between upper and lower headers such that-
In the matter of features B and C I had previously indicated that the reservoir may be of such a dimension so that the membrane fibres could be considered to be unconfined in a shell of a module (large reservoir) or the membranes could be confined in a shell of a module (reservoir closely confining the membrane fibres). In the latter situation, when assessing the disclosure of the parent I do not find any teaching which discloses a fibre membrane assembly confined in a shell of a module. Consequently for claim 23b features B and C in combination are not taught in the parent application.
D outsides of ends of the membranes are each surrounded by potting material so as to be sealingly secured to the headers,
The consistory statement of the invention at page 4a of the Parent starts, “…said fibers of each said header are spaced apart to a desired lateral spacing between fibers by said potting resin which extends over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship.” This indicates that the outsides of the ends of the membranes are surrounded by potting material. Feature D is therefore disclosed.
E lumens of the membranes are in fluid communication with at least one permeate collection means, and
Figures 6, 8-11 and 14-17 show several examples wherein the lumens of the membranes are in fluid communication with at least one permeate collection means. There is nothing to indicate that there is any break or interruption to the fluid communication between the lumens and the permeate collection means. Feature E finds disclosure in the Parent.
F & G the membranes have a length between opposed surfaces of the headers such that the membranes may move when contacted by rising bubbles in the substrate but wherein the length is from 0.1% to less than 5% greater than the distance between opposed surfaces of the headers;
Figures 5, 10 and 11 with the related parts of the description and the consistory clause (at page 4a) disclose features F & G.
H wherein said fibers are subject to a transmembrane pressure differential in the range of from 0.7 kPa (0.1 psi) to 345 kPa (50 psi)
Feature H is disclosed in the consistory clause at page 4a of the description.
I a source of suction in fluid communication with the lumens of the membranes and operable to apply a suction to the lumens of the membranes to draw a component of the substrate as permeate through the membranes; and
Example 1 at page 41 of the description discloses, “Permeate is withdrawn through lines connected to the collection pan of each header with a pump generating about 34.5 kPa (5 psi) suction.” The header is formed from the fibers potted in resin. The ends of the fibers are open to the permeate collection pan (see the description at page 27). Thus there is fluid communication between the lumens of the fibres and the source of suction via the collection pan and connecting lines. Thus feature I is disclosed in the Parent application.
J means for discharging air directly into the substrate between the membranes.
Figure 5 (feature marked 103) and the related description at page 23 disclose the presence of air outlets in the apparatus, which is the means for discharging air directly into the substrate between the membranes. Feature J is disclosed in the Parent. As some of the features of claim 23b (features B and C) are not disclosed in AU 715364, I find that claim 23b does not lack novelty in light of the Parent Application.
I shall now determine if claims 24b to 37b are disclosed in the Parent application. As claims 24b to 26b are appended to claim 23b, which is novel, they also do not lack novelty in light of the parent application.
Claim 27b is an independent claim and differs from claim 23b in feature J which reads, “A gas distribution system having through passages adapted to discharge bubbles to rise through and around the skein of membranes, the gas distribution system comprising one or more gas tubes which space the first and second headers apart and which also carry air to the through passages.”
I note that the terms first and second headers have no antecedents in the claim (an upper and lower header has been defined). The claim clearly requires the headers to be spaced apart and the additional feature in comparison to claim 23b is merely referring to the relative arrangement of the headers rather than any specific features of a particular header. The claim defines upper and lower headers and the skilled addressee would face no difficulty in determining the headers being referred to when reference is made to the first and second headers for determining the ambit of the claim (Rules of Construction - Décor Corp v Dart Industries (supra)). Figure 11 and the related description at pages 32 and 33 of the Parent disclose feature J of claim 27b. The other features A and D to I (see assessment of claim 23b) were shown as being disclosed in the Parent. Features B and C were not disclosed in the parent application. Hence I find that claim 27b and claim 28b appended thereto, do not lack novelty in light of the Parent application.
Claim 29b is an independent claim and differs from claim 23b in feature J which reads, “Means for discharging a gas, the means for discharging a gas having through passages through the lower header to discharge bubbles from first openings in the through passages into the substrate above the lower header.” Figure 5 and the related part of the description at page 23 clearly disclose this feature (J) showing both feeder air tubes and openings in the header for discharge of the air bubbles. The other features A and D to I (see assessment of claim 23b) were shown as being disclosed in the Parent. Features B and C were not disclosed in the parent application. Hence I find that claim 29b and claims 30b to 37b appended thereto, do not lack novelty in light of the Parent application. I have found that claims 23b to 37b do not lack novelty in light of the disclosures in the Parent application.
Inventive Step
The opponent stated, “…the invention as claimed is obvious when compared with the common general knowledge as at the priority date, either considered separately or taken with the relevant available prior art information. This applies to the broadest claim, claim 1, as well as to all remaining claims of the Parent and the Divisional, save for claims 9 to 14.” I note that the reference to claims 9 to 14 includes both the Parent and the Divisional. The opponent and applicant have made fairly detailed submissions with regard to inventive step and I shall refer to them where relevant in my assessment of inventive step.
I note that the filing date of the opposed application (the Divisional) is 12 August 2004. Current Subsections 7(2) and 7(3) of the Patents Act 1990 (effective for applications filed on or after 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 a combination of any 2 or more documents, provided that the document or documents 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.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at page 286:
"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."
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 relevant priority date (we have some claims which have divisional status and some which don’t)In order to determine the problem that the invention sought to solve I shall have regard to the opposed specification. Though there is no single statement outlining the defects of the prior art, the introductory part of the specification at pages 1 to 3 identifies the following matters:
• capability of usage in relatively large systems for the microfiltration of liquids, and capitalizes on the simplicity and effectiveness of a configuration which dispenses with forming a module in which the fibers are confined.
• Usage of vertical placement of fibers in a skein so that the path of the rising bubbles for scrubbing the fibers is generally parallel to the fibers and is not crossed by the fibers.
• The restrictedly swayable fibers because of their defined length do not get entangled and do not abrade each other excessively. The defined length of the fiber minimizes (i) shearing forces where the upper fibers are held in the upper header, (ii) excessive rotation of the upper portion of the fibers, as well as (iii) excessive abrasion between fibers.
• There is essentially no tension on each fiber because the opposed faces of the headers are spaced apart at a distance less than the length of an individual fiber.
• The prior art devices did not realize the critical importance of maintaining flux by aerating a skein of fibers from within and beneath the skein and the necessity of thoroughly scrubbing substantially the entire surfaces of the fibers by flowing bubbles through the skein to keep the fibers awash in bubblesThus the problems of the prior art were (i) the usage in large systems of modules in which fibers were confined, (ii) the fibers were not capable of being cleaned very effectively while the microfiltration process was occurring, (iii) the placement of the fibers in a module did not allow for the microfiltration to occur without subjecting the fibers to adverse effects of tension, shear, rotation and abrasion which shortened the useful life of the fibers and (iv) the filtration capability of the fibers was compromised by the ineffective removal of the solid matter including animate/inanimate particles during the microfiltration process.
The opponent was of the view that the opposed specification identified the starting point as US 5248424 and that there was a desire on the part of the applicant to improve the combination described in that patent. The specification commences by stating, “This invention relates to a membrane device which is an improvement on a frameless array of hollow fiber membranes and a method of maintaining clean fiber surfaces while filtering a substrate to withdraw a permeate, which is also the subject of US 5248424; and to a method of forming a header for a skein of fibers.” The description does not precisely identify the defects of US 5248424 nor does it then confine itself to those defects (whatever they may be). The description provides (as I have indicated above) a fairly detailed description outlining the defects of the prior art. Thus I shall not confine myself solely to the defects of US 5248424 for an assessment of inventive step considerations.
The non-inventive worker in the field would be a water treatment expert (chemical engineer/industrial chemist) with specialised knowledge of membrane filtration systems. The opponent has submitted that their declarants, Prof Fane, Assoc Prof Leslie and Mr Johnson qualify as persons skilled in the relevant art.
I note that Mr Johnson has provided information on the technology he was working on at Memtec and how he kept up to date with the latest developments in the art. However he has not provided any specific statement on what learning he considered as being part of the common general knowledge (henceforth cgk) in the art at the relevant date.
I note that Professor Fane’s experience in the area of membrane technology is mostly in the academic field with some consultancy services provided to industry. I shall consider his submissions on cgk while seeking to ensure that they are supported by published material wherever these assertions are challenged by the applicant. Professor Fane has clearly set out what he considered constituted the cgk in Australia at the relevant date (see below): -
1.The arrangement of fiber membranes in a vertical skein between opposed headers with the fibers secured in potting resin.
2.The application of a transmembrane pressure in the range 0.7 kPa to 345 kPa was well within the normal operating range of such systems.
3.The use of permeate collection means to collect filtrate or permeate from the ends of the fibers.
4.Spacing fibers at their ends within the respective end pots.
5.The use of bubbles to clean surfaces of membranes.
Associate Professor Leslie indicates that he has had extensive experience in the field of fibre membrane filtration systems, microfiltration, ultrafiltration and reverse osmosis filtration systems using membrane technology as a researcher, consultant, adviser, teacher and project manager. Prof Leslie has also set out in his declaration of 18 December 2007 what he considered to be cgk in Australia at the relevant date. As his submissions are rather detailed I have provided a summary of the same in my detailed consideration of cgk later on in this section.
The applicant considered that Professor Leslie had been affected by hindsight and that his evidence could not assist the Commissioner to determine the relevant steps which the skilled addressee would have taken as a matter of routine from the prior art. This submission was based on the involvement of Professor Leslie in a previous hearing (Memcor Australia Pty Ltd v Zenon Technology Partnership [2008] APO 15 (5 June 2008)) wherein he had been provided with the parent application and claims submitted on 28 October 2004 in a Request to Amend the Parent Application, wherein the 28 October 2004 claims largely overlapped with the claims of the current Divisional Application. However the parent application and the claims submitted on 28 October 2004 cannot be considered to be the same (that is, identical) as the Divisional application and no evidence has been provided to show that the parent and divisional application are the same. I note that there is a great deal of similarity in the description and drawings but that there are some major differences between the claims. Thus I shall proceed to consider Professor Leslie’s evidence on its merits. The applicant has raised concerns regarding Professor Leslie’s evidence on several grounds and I shall address these as I proceed to establish the cgk at the relevant date.
I shall now assess the submissions of the applicant’s declarants regarding cgk.
Claim 23 is directed to an apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein. It discloses in essence features of (a) a non-pressurised reservoir for containing the substrate, (b) a bundle of membrane fibres assembled in a module, (c) the fibres are secured at both ends in headers, (d) the membrane fibres have a length between opposed surfaces of the headers such that the membranes may move when contacted by rising bubbles in the substrate but wherein the length is from 0.1% to less than 5% greater than the distance between opposed surfaces of the headers, (e) the fibres are vertically oriented, (f) a source of suction in fluid communication with the lumens of the membranes and operable to apply a suction to the lumens of the membranes to draw a component of the substrate as permeate through the membranes and (g) means for discharging air directly into the substrate between the membranes. The claim does not disclose a permeate collection means attached to the header and a specific spacing of the fibres. The citation does disclose features (b) to (e) and (g) above, except that for feature (d) the excess length range is from 0.1 to 4% excess length of fibres. This clearly falls within the range of 0.1 to less than 5%. Thus the skilled addressee would consider this document as relevant for the purposes of overcoming the problems of the prior art. As this claim is directed to an apparatus, the issue of how the apparatus may be used does not arise. I note that features (a) and (f) have not been disclosed. The matter of feature (f) had been discussed previously when assessing the cgk in the art. The use of suction to generate transmembrane pressure differentials of 0.7 kPa to 345 kPa was not shown to form art of the cgk (see Exhibit GLL-4 [Membrane Handbook edited by Ho and Sirkar, chapter 13, page 457, published 1992] of Professor Leslie’s declaration of 18 December 2007). I had found that the range of transmembrane pressures identified was well known but only in respect of modules used in pressure driven systems. Thus feature (f) is not considered to form part of the cgk, as there is no indication that the cgk has taught the use of suction in this regard. Also from the established cgk there is no indication that the use of a non-pressurised reservoir (feature (a)) was well known in the art at the relevant date. Consequently this document does not disclose all the features of the opposed invention as defined in claim 23. Given the problems of the prior art, I find that the teaching of JP 63-143905 when considered alone or when combined with the cgk by the skilled addressee does not render claim 23 as lacking an inventive step. As a result, I find that appended claims 24 to 26 do not lack inventiveness in light of the citation.
100. Claim 27: - Apart from the essential features defined in claim 23, it also defines the features of claim 25 of a gas distribution system comprising one or more gas tubes which space the first and second headers part and which also carry air to the through passages. In addition to the feature of the source of suction to draw fluid through the lumens, the feature of the air supply tube spacing and positioning the lower and upper headers relative to one another has not been disclosed in the citation. There is no teaching in the cgk of the spacing and positioning of the headers by use of the air supply tube. Given the problems facing the prior art, I find that claim 27 does not lack an inventive step in light of the disclosure of JP 63-143905 when taken alone or when combined with the cgk. As claim 28 is appended to claim 27 I find that claim 28 also does not lack an inventive step.
101. Claim 29: - In addition to the essential features of claim 23, it also defines the means for discharging gas having through passages through the lower header to discharge bubbles from first openings in the through passages into the substrate above the lower header. As I had determined that claim 23 did not lack an inventive step and noting that claim 29 has all the features of claim 23 plus the means for discharging gas I also find claim 29 does not lack inventiveness in light of the citation. Accordingly Claims 30 to 37 (appended to claim 29 or any of claims 30 to 35) do not lack inventiveness in light of the citation.
102. I do not find any sound reasons for the skilled addressee to alter the features of the invention disclosed in JP 63-143905 to match those of the opposed application. Consequently opposed independent claims 1, 5, 8, 23, 27, 29, 53, 57, 59 and 67 of the divisional, the claims appended thereto and relevant omnibus claims 92-94, 96 do not lack inventiveness, when facing the problems of the prior art, in light of this document taken alone or when combined with the established cgk in the art at the relevant date.
US 5248424 (Cote et al) published 28 September 1993 (Leslie declaration 14 April 2009, exhibit GLL-10)
103. This document discloses a frameless array of fibers unconfined in a modular shell with the ends of the fibers potted in headers attached to a permeate collection means. The array may be arranged so that the fibers are arched in a vertical plane or placed in relatively flat parabolic arcs in a vertical plane (figures 9 and 10). There is no disclosure of the headers being arranged in a vertically spaced apart arrangement. In use the array of fibers is scrubbed by gas bubbles supplied from directly below the array. The scrubbing occurs during filtration. The arched arrangement permits the fibers to sway in the substrate. There is no disclosure of the spacing between the fibers other then a requirement that fibre to fibre contact be avoided. In terms of vertical orientation of the fibres the specification (column 8, line 3 to column 10, line 12) discusses the attempts of the prior art in this regard concluding that the results obtained therein were not better than the current arrangement disclosed in the citation. When assessing the teaching against the problems of the prior art I find that this invention has addressed the issues raised therein. The skilled addressee would consider this document relevant but they would not proceed any further to seek use of the cgk or other documents when confronted by the problems of the prior art. This document either alone or in combination with the cgk does not suggest or teach (a) a vertical arrangement of fibres, (b) a specified range of fibre slackness for a vertical arrangement and (c) a specified spacing between fibres. I note that Claims 23b to 37b do not have feature (c). Although the vertical arrangement of fibres is an option available to the skilled addressee as part of the cgk, the teaching of the citation would not direct the skilled addressee to try such an arrangement. In fact the citation teaches against such an arrangement. Thus when facing the prior art problems the skilled addressee on combining the cgk with the teachings of this citation would not arrive at the invention of the opposed claims. Hence I find that the opposed claims (all of which disclose a vertical arrangement of fibres and a specified range of fibre slackness) do not lack an inventive step in light of US 5248424.
JP 07-178320 (Mitsubishi Rayon Co Ltd) published 18 July 1995 (Leslie declaration 2 March 2010, exhibit GLL-18)
104. It discloses a frameless array of fibers potted in vertically spaced apart headers wherein it specifies a range of values (100 to 1.2) for the ratio of A to B wherein: -
A is the area of the fixing member face on the side where the hollow fiber membranes are exposed by the fixing member;
B is the area of the fixing member end face where the hollow fiber membranes are open.The document refers to the use of an air diffusion pipe for scrubbing and cleaning with air bubbling to be carried out in parallel with filtration operations. There is no precise disclosure of the actual length of the fibers measured against the vertical distance between the headers nor is there any indication of the spacing between the fibers. The description does disclose, however, the distance between the sheets of fibers as lying between 5 to 100 mm. The precise location of the air scrubbers with respect to the module is not disclosed. The description at page 11, paragraph 43 states, “…the module in this Invention has had an air diffusion pipe fixed and integrated into the module, making mounting in the vessel or treatment tank easy and allowing suitable scrubbing and cleaning to continue during filtration”. Further, it is not clear if there is a permeate collection pan attached to the headers. When assessed against the problems of the prior art this disclosure does not seem to be lacking in providing solutions for overcoming the problems of (i) the usage in large systems of modules in which fibers were confined – these are freestanding modules which can be immersed in large tanks, (ii) the fibers were not capable of being cleaned very effectively while the microfiltration process was occurring – the use of an air diffusion pipe in the membrane module and scouring during filtration addresses this problem, (iii) the placement of the fibers in a module did not allow for the microfiltration to occur without subjecting the fibers to adverse effects of tension, shear, rotation and abrasion which shortened the useful life of the fibers – some of the figures show that there is slackness in the fibres which would address this problem; and (iv) the filtration capability of the fibers was compromised by the ineffective removal of the solid matter including animate/inanimate particles during the microfiltration process – this has been addressed by the air scouring during filtration and /or intermittent cleaning of the fibers when filtration is temporarily halted. Thus the skilled addressee on seeking a solution to the problems of the prior art would find that this document was relevant and has provided the solution. There would be no motivation to apply the cgk or seek other documents to arrive at the combination of features of the opposed invention. In particular I find no teaching which would persuade the skilled addressee to seek (a) a specified range of fibre slackness (0.1 to 5% in excess of the vertical distance between the headers), (b) a permeate collection means attached to the header and (c) a specified spacing between fibres of around 0.6 to 6.0 mm. The citation discloses a spacing range of 5 to 100 mm between sheets of membranes but has not specified the distance between tubular membrane fibres. Further, though the citation shows a permeate collection means for membrane sheets it is not clearly specified if this is integral with the header or if it is a separate unit attached to the header. I note also that no such arrangement is shown for the tubular membrane fibres in the citation. Hence I find that given the problems of the prior art, the teaching of JP 07-178320 either on its own or when combined with the cgk does not render the opposed claims (claims 23b to 37b have feature (a) but not features (b) and (c) and claims 23a to 37a have features (a) to (c)) as lacking an inventive step.
WO 93/02779 (Memtec Limited) (Johnson declaration 13 March 2009, Exhibit WJ-2)
105. The document discloses a bundle of fibre membranes held between opposing headers in a vertical orientation wherein the fibres are secured by a potting resin in the headers. The apparatus carries out continuous microfiltration wherein the permeate is collected in the lumens of the fibres. The microfiltration is stopped and backwashing is carried out once the transmembrane pressure differential exceeds a certain value. Embodiments are provided wherein the fiber bundle is immersed in an open tank or may be enclosed within a shell. The backwashing uses air for removal of particulate matter lodged on the fiber surface. The air is provided on the lumen side of the membrane. No external scouring is disclosed. Given the problems of the prior art this disclosure does not provide or suggest a solution/partial solution to the same. Out of the four problems previously outlined at the most the citation teaches a freestanding module which can be immersed in a large tank. It does not teach: - (a) cleaning of the fibre membranes while filtration is occurring; (b) the excess length of the fibres - the fibres are stretched between the headers which does not address the problem of adverse effects of tension, shear, rotation and abrasion; (c) the effective removal of the solid matter including animate/inanimate particles during the microfiltration process. I do not think that this is sufficient to persuade the skilled addressee that the teaching of the citation would provide a solution to the problems of the prior art. Thus the skilled addressee would ascertain and understand this document but would not find it relevant for solving the problems of the prior art. I find that this document does not render the opposed claims as lacking in inventiveness.
MBR module design and operation – Desalination 250 (2010) 1073-1077 (Leslie declaration of 2 March 2010, exhibit GLL-23)
106. I had indicated previously that this document was published after the relevant priority dates. I do not have any material before me which definitely established the disclosure alleged by the opponent of the apparatus called ZEEWEED 150 in the public domain at the relevant priority date. I shall therefore not consider this document for the purpose of an inventive step assessment of the opposed claims.
AU B 715364 (GE BetzDearborn Canada Limited) published 12 March 1997
107. I had determined previously that claims 23b to 37b of the divisional application were not entitled to divisional status. I also determined that they did not lack novelty in light of the parent application. I shall now review claims 23b to 37b of the divisional to determine if they lack an inventive step in light of the parent application.
108. The problems of the prior art were identified as (i) the usage in large systems of modules in which fibers were confined, (ii) the fibers were not capable of being cleaned very effectively while the microfiltration process was occurring, (iii) the placement of the fibers in a module did not allow for the microfiltration to occur without subjecting the fibers to adverse effects of tension, shear, rotation and abrasion which shortened the useful life of the fibers and (iv) the filtration capability of the fibers was compromised by the ineffective removal of the solid matter including animate/inanimate particles during the microfiltration process.
109. The skilled addressee when seeking to overcome these problems would have ascertained the citation being considered, they would have understood this document and they would have regarded it as relevant. This document provides the solution to the prior art problems. When comparing the disclosure of this document with claim 23b for novelty I had found as follows: -
“B a non-pressurized reservoir for containing the substrate, and
C a skein of hollow fiber filtering membranes immersed in the substrate wherein themembranes are disposed generally vertically between upper and lower headers such that-
In the matter of features B and C I had previously indicated that the reservoir may be of such a dimension so that the membrane fibres could be considered to be unconfined in a shell of a module (large reservoir) or the membranes could be confined in a shell of a module (reservoir closely confining the membrane fibres). In the latter situation, when assessing the disclosure of the parent I do not find any teaching which discloses a fibre membrane assembly confined in a shell of a module. Consequently for claim 23b features B and C in combination are not taught in the parent application”
110. I now have to determine if the cgk would teach features B and C. Features B and C are well known individually in the cgk, that is, fibers enclosed in a shell which is the reservoir and a vertical arrangement of the fibers. The issue is what would persuade the skilled addressee to discard the open reservoir of the citation and seek the use of an enclosed shell when the current arrangement has already provided a solution to the problems of the prior art. In fact the use of enclosed modules is clearly identified as one of the problems of the prior art. Thus I do not consider that when facing the problems of the prior art, the teaching of AU 715364 in combination with the cgk at the relevant date would disclose the features of claims 23b to 37b.
111. The opponent referred to the inventive step requirements post 1 April 2002 which allowed a combination of the teaching of one or more documents with the cgk to establish lack of inventive step. This applies to the opposed divisional application. The opponent has not provided any arguments which specifically detail the relevant combination of documents. Consequently I shall not be assessing alleged lack of inventive step of the divisional claims in the light of a combination of documents, which combination has not been provided by the opponent.
Section 40 – Lack of clarity
112. The opponent submitted that, “…the term ‘so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber’ lacks clarity, such that the claims of the Parent and the Divisional do not satisfy the requirement s 40(3) of the 1990 Act”. In support of this assertion the opponent argued as follows: -
1. The Macquarie Dictionary defines “independent” to mean “autonomous, free” and “not influenced by the thought or action of others”.
2. The Specification identifies that “the number of fibers in a singly (sic) array is arbitrary typically being the range from about 1000 to about 10000” (p 12, l 6), and the packing density is such that there are preferably “from 4 to 50 fibers/cm2” (p 12, l 13). At such density, the movement of a fibre could not be “independent of the movement of another fibre”, in the sense that the movement of the fibre would not be “free”, “autonomous” or “not influenced by the movement of another fibre”. The term, as used in the claims, is therefore unclear.
113. The specification is directed to the skilled addressee and if the skilled addressee when applying the established cgk at the relevant date is unable to determine the ambit of the claim or the meaning of certain terms in the claim they may have recourse to the specification to determine the meaning to be given (see the Rules of Construction Décor Corp v Dart Industries (supra)). The opponent alleges that the specification does not provide any assistance in this particular case, as the disclosed packing density would not favour one fibre’s movement independently of another fibre’s movement.
114. The specification discloses (pages 11, 12) that outer diameter of the fibres typically ranges from 0.1 mm to 2 mm. Thus the area covered by the outer diameter of a single fibre (Area of a circle is calculated using the formula πr2, where r = outer radius of the fibre) ranges from approximately 0.08 mm2 (diameter of 0.1 mm) to 3.14 mm2 (diameter of 2 mm). For four fibres the area ranges from 0.32 mm2 to 12.56 mm2, which area can easily be accommodated within the specified area (100 mm2 = 1 cm2). For 50 fibres the area ranges from 4 mm2 to 157 mm2. Thus one can see that 157 mm2 (50 fibres of 2 mm diameter) cannot be accommodated within 100 mm2. The specification at page 12, lines 11 to 13 states, “The packing density of fibers, that is, the number of fibers per unit area of header preferably ranges from 4 to 50 fibers/ cm2 depending upon the diameter of the fibers. Thus the skilled addressee would adjust the number of fibers per unit area dependent on the diameter of the fibres to allow for the independent movement of the fibres. I do not find a lack of clarity in the specification as alleged by the opponent. Further, I also note that none of the opponent’s declarants have expressed any difficulty with construing the term relating to the independent movement of the fibers. The claims of the parent and divisional application do not lack clarity for the use of the term ‘so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber’.
CONCLUSION
115. The opponent pursued the grounds of novelty, inventive step, and section 40/lack of clarity. The opponent also contested the right of the opposed application to claim priority from the parent application on the basis that the requirements of subsection 79B(1) had not been met in so far as claims 23 to 36 of the divisional are concerned. I determined that claim 37 should also be included for consideration against non-compliance with subsection 79B(1).
116. The opponent was unsuccessful on the grounds of Novelty and Lack of Inventive Step for all opposed claims. The opponent was unsuccessful on the grounds of Section 40/lack of clarity. Claims 23 to 37 of the opposed application, when embodying any of the features of; (i) fibres of each header spaced apart with no specific spacing, (ii) multiplicity of hollow fiber membranes “confined in a shell of a module”, (iii) lumens of the membranes (which membranes are sealingly secured in the headers) are in fluid communication with at least one permeate collection means, wherein the permeate is discharged via the fibres into a permeate collection means that is not sealingly connected to either of the headers; did not comply with section 79B(1)(b) of the Act. As a result regulation 3.12(1)(c) could not apply to determine the priority date of claims 23 to 37 (when embodying any of the features identified above) of the Divisional. Hence the priority date of claims 23 to 37 (when embodying any one or more of certain features) of the Divisional (as per reg 3.12(1)(c)) is the filing date of the Divisional, which is 12 August 2004.
117. 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
118. The opponent submitted that costs should follow the event. The applicant submitted that if they were successful then costs should follow the event.
119. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been successful in challenging the right of claims 23 to 37 to claim priority from the parent application. However this has not resulted in any non-compliance of the opposed specification with the substantive grounds of opposition. Accordingly I award costs in accordance with Schedule 8, of the Patents Regulations 1991, against the opponent Memcor Australia Pty Ltd and in favour of the applicant GE BetzDearborn Canada Company.
Jacob Elijah
Delegate of the Commissioner of Patents
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