Midrex International B.V. Rotterdam, Zurich Branch v Iron Carbide Holdings Limited

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 669089 in the name of MIDREX INTERNATIONAL B.V. ROTTERDAM, ZURICH BRANCH

Title: Iron Carbide Production in Shaft Furnace

Action: Opposition by IRON CARBIDE HOLDINGS LIMITED under Section 59 of the Patents Act 1990 and an application to file further evidence

Decision: Issued .
Abstract

The opponent had filed a request to file further evidence just prior to the hearing. Taking all factors into account the opponent failed to make their case to justify an exercise of the Commissioner's discretion in allowing the further evidence. The application to serve further evidence was refused.
In the substantive opposition the opponent pursued the grounds of lack of inventive step and manner of manufacture.
Based on the evidence provided from both parties the common general knowledge in the art in Australia was considered to include:
· US Patents 3,764,123 and 4,046,557 relating to the Midrex process for the direct reduction of iron oxide to metallic iron
· Knowledge of thermodynamic data upon which the production of iron carbide is based.

Found that the invention claimed in the opposed application did not lack an inventive step in light of the common general knowledge alone.
The opponent also cited several documents which when read individually with the accepted common general knowledge in the art, did not render the claimed invention as lacking an inventive step.
Both parties agreed to defer submissions on costs until after issue of the delegate's decision on the substantive opposition. Accordingly I direct both parties to file their submissions on costs to the delegate within 21 days of the date of issue of this decision.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 669089 by MIDREX INTERNATIONAL B.V. ROTTERDAM, ZURICH BRANCH and an opposition under section 59 of the Patents Act 1990 by IRON CARBIDE HOLDINGS LIMITED and a request to file further evidence.

BACKGROUND

Patent Application No. 669089 was filed by Midrex International B.V. Rotterdam, Zurich Branch (hereafter referred to as Midrex) on 7 April 1995. The application claims convention priority from US 237786 filed in USA on 4 May 1994. The application was examined and advertised accepted on 23 May 1996.
Iron Carbide Holdings Limited (hereafter referred to as ICH) filed a notice of opposition on 23 August 1996. The statement of grounds and particulars was filed on 25 November 1996. The service of evidence in support, evidence in answer and evidence in reply was completed on 4 July 2000.
A request to amend the specification was filed on 14 May 1997 and the allowance was advertised on 13 November 1997. Another request to amend was filed on 14 August 1998 and subsequently, after a hearing, its allowance was advertised on 15 November 2001.
The hearing to deal with the substantive opposition was held in Perth on 7 February 2002. Mr. Bruce Caine of Counsel instructed by Mr. Peter Caporn, patent attorney of Wray & Associates, Perth represented the applicant. Also present were Mr. Todd Shand (attorney observer Wray & Associates) and Mr. Paul Pupazzoni (representing Midrex). Mr. Richard Baddeley, patent attorney of Watermark, Perth represented the opponent. Also present were Matthew English, patent attorney and Tymen Brom both from Watermark, Perth.
EVIDENCE
Evidence in support consists of declarations made by:
·Richard Hiram Baddeley, patent attorney, Watermark, dated 19 February 1997 and exhibits RHB-1 to 13.
·Frank Stephens Jr, dated 14 May 1997 and exhibits FMS-1 to 3. He states that he is currently the chairman of the board of Iron Carbide Holdings Limited. He states that he has extensive experience in various metallurgical fields including pyrometallurgy, having spent twenty-three years as a metallurgical researcher.
Evidence in answer consists of declarations made by:
·Brian Charles Cunningham, dated 11 December 1998 and exhibit BCC-1. He states that he has recently retired (April 1998) but has had a long standing involvement in Australia with, and knowledge of, the direct reduction of iron, direct smelting, and iron carbide technologies.
·David C. Meissner, dated 11 December 1998 and exhibits DCM-1 to 5. He states that he is currently Manager of Research and Development for Midrex Direct Reduction Corporation. He further states that he has both a B.S. and M.S. in Chemical Engineering and over 35 years experience in the development of direct reduction technology.
Evidence in reply consists of declarations made by:
·Richard Hiram Baddeley, dated 22 June 2000 and annexure RHB-13 which is a copy of a declaration by Frank Stephens Jr. dated 11 April 2000.
·Frank Stephens Jr, dated 24 June 2000 and exhibits FMS-3a* to 9.
* As there is already an exhibit FMS-3 in the previous declaration I have called this exhibit FMS-3a
Further Evidence
On 31 January 2002 the opponent filed further evidence with the Patent Office and indicated that they would be formalising this shortly. On 6 February 2002 the attorney for the opponent formally requested leave to file further evidence. The request was accompanied by a declaration from Richard Hiram Baddeley dated 6 February 2002. The further evidence consisted of 2 exhibits RHB-14 and 15.
In a letter dated 5 February 2002 the applicant indicated that they intended to vigorously oppose the filing of the further evidence.
The matter was dealt with at the hearing of the substantive opposition and I shall address this issue before proceeding to address the substantive opposition.
DECISION (Further Evidence)
I have summarised the applicant's submissions as follows:
·    The legislative framework of regulation 5.10(4) confers a discretionary power on the Commissioner. The Commissioner must be satisfied that the power can be exercised in the circumstances. The applicant must provide justification for putting forward the further evidence.
·    The teachings of Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd ((1993) 27 IPR 421) were relevant to the determination of the admissibility of further evidence. These teachings were upheld in further Patent Office decisions, e.g. Imperial Chemical Industries PLC v Mitsubishi Gas Chemical Co ((1994) 29 IPR 285) and National Starch and Chemical Investment holding Corporation v Goodman Fielder Ltd ((1998) 43 IPR 421).
·    The cases refer to five criteria relevant to a determination of the allowance of further evidence and we shall show that these are not satisfied in the present case.
·    No reasons have been provided for the filing of further evidence. There is no evidence to show that the documents now filed could not have been found earlier. If these were important documents why were they not referred to in earlier declarations.
·    There is no indication of the importance of the particular documents. If these documents are relevant to the ground of obviousness then they must satisfy the criteria set out in Sections 7(2) and 7(3). There is nothing to show that they formed part of the common general knowledge in Australia. There is nothing to establish that these documents could have been ascertained understood and regarded as relevant by the skilled addressee in Australia. The documents have no probative value.
·    Delays arising from dealing with the further evidence would adversely affect our client. Further these delays would unduly protract the case.
I have summarised the opponent's submissions as follows:
·    Regulation 5.10(4) gives the Commissioner discretionary powers to admit evidence, the discretion being unfettered. The case must be decided on its merits (see A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213, Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243 and National Starch and Chemical Investment Holding Corporation v Goodman Fielder Ltd 43 IPR 421).
·    We believe the evidence will assist in establishing the common general knowledge in the art.
·    Both documents are acknowledged works in the art and declarant Stephens in his evidence in reply at paragraph 6 refers to document RHB-14 ("The Making, Shaping and Treating of Steel").
·    Document RHB-15 ("Clements, Blast Furnace Practice") is believed to be a fundamental piece of work in the art and the Hearing Officer must determine if this is the case.
·    Document RHB-14 at p. 513 describes the Midrex Process for Direct Reduction of Iron and we cannot see what prejudice would arise if this document is considered.
·    Evidence can arise and be admitted at any stage of the opposition process, the ultimate test being whether it would assist in a proper determination of the opposition.
·    Under Regulation 5.11 the Hearing Officer can inform themselves of facts subject to both parties making submissions.
·    Costs should follow the event in accordance with the scale.
The applicant provided the following submissions in rebuttal:
·    The Commissioner does not have unfettered discretionary power. The Hearing Officer does not act judicially but quasi-judicially. The Officer acts on proper material and having regard to established criteria for the proper exercise of the discretion.
·    The Commissioner may inform herself in a bar-to-sealing action on documents but unless there is supporting evidence these documents cannot be elevated to meet the requirements of Sections 7(2) & 7(3).
·    We are not challenging the lateness of the request. The request must be found appropriate in all the circumstances. We are just referring to all the relevant criteria.
·    There will be an irrecoverable loss of costs as indemnity costs are not awarded. As there are large costs involved which will prejudice the applicant we seek indemnification of costs.
·    The National Starch (supra) case did not change the criteria for admission of further evidence. It proceeded on the facts of the case. The Hearing Officer found that the material filed could have had an important influence on the result of the case.
The filing of further evidence is governed by regulation 5.10. The relevant subregulations state:
(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion - ensures that the parties are notified of the proposed action; and
(c)in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
I am satisfied that Midrex has been notified, and the parties have had a reasonable opportunity to make representations on the further evidence at this hearing. I now have to determine if the serving of further evidence is appropriate in all the circumstances.
The opposing parties have referred to apparently differing case law in this matter. A review of the cases referred to by both parties reveals that the same/similar criteria have been found applicable in this matter. In a recently issued Office Decision (Transgene S.A. v Virax Holdings Limited [2002] APO 14 (17 April 2002)), the principles outlined in the Federal Court decision in Goninan (supra) were found to be relevant to a determination of whether further evidence should be granted and supersede the more narrow approach in Sandoz (supra) and ICI (supra). The reasoning in Goninan suggests that the requirements outlined in Sandoz and ICI are not prescriptive. Instead, the questions asked in those cases are only a guide to help identify the relevant aspects of a case so that “proper, genuine and realistic consideration” can be given to them as required by Goninan.
A relevant Office decision, which distils relevant criteria from the Goninan and Ferocem case is Emory University v Biochem Pharma Inc. [1999] APO 50 (5 August 1999). In that case the delegate stated:
"In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243 and Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 on the operation of regulation 5.10(5) in relation to extensions of time. The general principles that flow from these decisions are:
a)The power is discretionary:    Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay:            The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c)The public interest:                The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
·         In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
·         The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking the exercise of discretion:            The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
e)The interests of other parties:            It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
These considerations seem equally relevant to the determination of the present request for further evidence. Previous decisions of the Commissioner on further evidence illustrate different aspects of these considerations, but do not represent binding rules."
I shall apply the above criteria to the facts of this case. The informal application (filed 31 January 2002) to file further evidence states:
"In preparation for the hearing of 7 February 2002, I became aware of further documents that I believe, when taken with other supportive evidence, may assist in the resolution of the inventive step question in this Opposition."
Two documents were attached to that application:- Exhibit RHB-14 - "The Making, Shaping and Treating of Steel" and Exhibit RHB-15 - "Clements, Blast Furnace Practice".
The formal application for admission of further evidence was filed on 6 February 2002 and stated:
"The Opponent's objective in submitting this small quantity of material is to assist in resolution of the issues of inventive step and lack of subject matter (manner of manufacture) of all claims of the Opposed Application. The documents forming the further evidence supplement the evidential basis for the Opponent's contentions that the claims of the Opposed Application lack an inventive step and fail to define a manner of manufacture by providing a concise summary of variables important to operation of shaft furnaces generally (Ex RHB-15), and Midrex DRI shaft furnaces particularly, which variables and their control formed common general knowledge before the priority date of the Opposed Application (4 May 1994).
In our submission, the material should be neither controversial nor prejudicial to the Applicant who was made aware of the issues in this Opposition by way of the Regulation 5.4 Statement in 25 November 1996."
I note that Ferocem indicates that the discretionary power is a broad discretion but not an unfettered one. I shall now assess the facts relating to each of the criteria listed below.
1. Explanation of delay
The only explanation provided is the attorney's statement that "In preparation for the hearing of 7 February 2002, I became aware of further documents…". There is no indication as to how the documents were encountered. Further there is no evidence to show that the documents could not have been obtained with reasonable diligence at an earlier stage. I do not consider that a satisfactory explanation of the delay has been provided.
2. Nature and significance of the evidence
The evidence consists of extracts from texts related to blast furnaces and iron/steelmaking. A dispute arose as to their availability in Australia at the relevant priority date but the matter was settled and the issue finally raised related to the establishment of the documentation as part of the common general knowledge (CGK) in Australia.
The opponent submits that the documents are relevant to a determination of obviousness and lack of subject matter (manner of manufacture) of all claims of the Opposed Application. They contend that the documents provide a concise summary of variables important to operation of shaft furnaces generally (exhibit RHB-15), and Midrex DRI shaft furnaces particularly, which variables and their control formed common general knowledge before the priority date of the opposed application (4 May 1994). Thus I have before me two documents which the opponent's attorney asserts constitute CGK in Australia but no evidence from the skilled addressee in Australia supporting that assertion. Based on the attorney's assertions and the documents at hand I have insufficient evidence before me to determine that the documents constituted CGK in the art in Australia. Thus I shall have to refer to the evidence filed for the substantive opposition to determine the significance of the evidence.
The opponent had indicated that their declarant Stephen had referred to one of the documents in the evidence in reply (exhibit FMS-3). On looking at the evidence I find that the same textbook has been referred to (see RHB-14 and FMS-3). However different extracts from the same textbook have been identified in the exhibits. The material under consideration in FMS-3 is entirely different from that in RHB-14, and shows the operation of a typical blast furnace rather than the Midrex DRI process referred to in RHB-14. Thus the opponent's declarant had the book available to them prior to 24 June 2000 but did not raise the issues now raised by the opponent. Thus, also the opponent's expert had not considered the material now raised and available in the same book as being of significance prior to 24 June 2000 and they have not provided a declaration in regard to the new matter.
The document under exhibit RHB-14 makes disclosures in respect of the Midrex DRI process and the HYLSA DR process. I note that in evidence in support, declarant Stephen indicates that:
· US 3,764,123 (exhibit RHB-2) and US 4,046,557 (exhibit RHB-3) represent technology which is well known in Australia
· The applicant has also identified these patents as disclosing the Midrex DRI process.
Thus evidence is on file which allegedly discloses the Midrex DRI process and which the opponent's declarant contends is well known in Australia. The opponent has not established that the document RHB-14 which it now seeks to file has the potential to have a significant impact on the case over and above the evidence already filed.

The document under exhibit RHB-15 makes disclosures in respect of the operation of blast furnaces yet the opponent has asserted that "This document is offered to show that it has long been known in shaft furnaces that important factors governing the trend of reaction in the furnace are…". The invention under attack relates to a shaft furnace. No supporting declaration has been provided showing the relevance of the material relating to blast furnaces to the case to be answered under the substantive opposition. I note that the opponent's declarant Stephens has set out in the evidence in support his opinion on the factors governing the operation of shaft furnaces and the factors he considers that are well known in the art. I do not consider that the material sought to be adduced as RHB-15 is shown to be of significance in determination of the substantive opposition.
3. The interests of the opponent (ICH)
ICH's interests lie in having the new evidence available to support their opposition. The new evidence has not been shown to have the potential for significantly impacting on the proceedings. Hence ICH's interests are of a low significance.
4. The interests of the applicant (Midrex)
The consideration of further evidence would delay the determination of the substantive opposition. It would also increase the costs to the applicant as they would need to seek expert opinions for consideration, rebuttal and filing of further evidence in answer if necessary. However the evidence already filed has traversed similar ground and the new evidence would not appear to present any surprises. I consider that Midrex's interests are not hugely affected in this matter.
5. Public interest
The public interest lies in a proper determination of the opposition. The opponent has not shown that the new evidence will have a significant impact on a proper determination of the opposition. Also, I have to consider the effect of delays on the efficient and orderly administration of the Office. No evidence has been provided to show that the effect of delays would be of much significance. Thus the public interest does not carry a large weight in this particular case.
6. Other relevant considerations
Neither party raised any other issues and I am unaware of any that would impact on this determination.
The opponent has not established that the further evidence would have a significant impact on the outcome of the case. Based on the considerations outlined above the impact of further evidence is not an important one. Taking all factors into account the opponent ICH has failed to make their case to justify an exercise of the Commissioner's discretion in allowing the further evidence. I refuse the application to serve further evidence.
In the matter of costs both parties agreed to defer their submissions until after the issue of the delegate's decision in the substantive matter.
I shall now proceed to deal with the substantive opposition.
THE SPECIFICATION
The specification under consideration is the amended specification wherein the amendments were advertised accepted on 15 November 2001. It commences by stating that the invention relates to a method and apparatus for the production of iron carbide in a shaft furnace, and more particularly to a method of using carbon containing reducing gas as the process gas in a furnace for reaction with particulate metal oxide material. A description of the prior art is provided wherein reference is made to the Midrex direct reduction (DRI) process for production of steel. It states:
"…the Midrex direct reduction process … combines the technology of the shaft furnace and the gas generator in an economic direct reduction system operating continuously and using gaseous reductants produced from natural gas. While a small amount of iron carbide has always been a byproduct of the Midrex direct reduction process it generally accounted for less than two percent of the product."
The invention is stated to utilise the Midrex method of direct reduction and apparatus wherein:
"The process gas, comprising CO, CO₂, CH₄, H₂O, and H₂ in specific proportions is introduced into the furnace and flows upwardly through a downward gravitational flow of particulate metal oxide material. At a suitable temperature, the gas reacts with the metal oxide material to produce iron carbide and reaction gases. The metallized product is cooled by cooling gases introduced into the lower portion of the furnace. The reaction gases are removed from the top of the furnace and may be recycled and reintroduced into the furnace as reducing gas and/or cooling gas. The cooled, reduced metallized product is finally removed from the bottom of the furnace."
The specification further indicates that the difference from the prior art lies in that the metal oxide material is maintained within the furnace at a lower temperature and contained within the furnace for a longer residence time than currently employed, wherein a product with 85% to 91% iron carbide (Fe₃C) is produced. This is followed by a consistory statement and description of embodiments of the invention with reference to two figures. The specification concludes with 25 claims including one independent claim (claim1) and one omnibus claim (claim 25). Claims 1 and 25 read as follows:
1.        A process for producing an iron carbide (Fe₃C) product in a shaft furnace, comprising:
(a)       establishing a gravitational flow of particulate metal oxide material by charging a generally vertical shaft furnace having an upper reducing zone and a lower cooling zone with particulate metal oxide material;
(b)       introducing a reducing/carburizing gas comprising not less than about 30 percent CO by volume into the furnace intermediate the upper and lower zones at a temperature sufficient to promote a reducing reaction between the reducing/carburizing gas and the metal oxide material;
(c)       causing the reducing/carburizing gas to move upwardly and countercurrently through the downward flow of metal oxide material, thereby reacting with and reducing a portion of the metal oxide and forming a top gas at the upper portion of the furnace;
(d)       removing the top gas from the upper portion of the furnace;
(e)       maintaining the temperature of the metal oxide material in the reducing zone from about 1200 to 1400^oF (about 649 to 760^oC);
(f)        retaining the metal oxide material within the shaft furnace reducing zone for a residence time of from about 9 to 15 hours;
(g)       introducing a cooling gas near the cooling zone of the furnace; and
(h)       removing the resulting iron carbide product from the bottom of the furnace.
25.      A process according to claim 1 substantially as herein described with reference to the accompanying drawings.
STATEMENT OF GROUNDS AND PARTICULARS
ICH filed a statement of grounds and particulars on 25 November 1996. They submitted that the invention as claimed lacked novelty, lacked an inventive step, did not constitute a manner of manufacture and did not constitute a patentable invention. They also submitted that under section 40, the claims lacked clarity and were not fairly based.
At the hearing ICH indicated that they would only pursue the grounds of lack of inventive step and manner of manufacture.
SUBMISSIONS
I shall refer to the submissions from the opponent and applicant wherever necessary in my decision.
DECISION
Inventive Step
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (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 non-inventive worker in the field (or the person skilled in the relevant art) in Australia
· a determination of the common general knowledge in Australia at the priority date (4 May 1994)
The common general knowledge relevant to the question of obviousness was described by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The first step to applying the tests set out above for determining inventive step would involve the determination of those declarants who were persons skilled in the art of the direct reduction of iron and the production of iron carbide in Australia. The opponent submitted that the common general knowledge could be determined from the knowledge of all the expert declarants. The applicant on the other hand submitted that only the evidence of Messrs. Cunningham and Meissner could establish the common general knowledge (henceforth cgk) in Australia at the relevant priority date. I consider that Brian Cunningham is clearly a person skilled in the relevant art in Australia, as he has worked in the relevant field in Australia both prior to and at the relevant priority date. Frank Stephens Jr, is quite clearly, not a person skilled in the relevant art in Australia, as he has worked only in the United States of America. I note that he has not directly worked in the field in the USA for the past 21 years (see paragraph 6 of his declaration dated 14 May 1997). I consider that he will not be able to establish the state of the cgk in Australia at the relevant date. David Meissner is a representative of a corporation related to the applicant company. He has experience in the relevant field in the USA and also is an inventor/co-inventor of 22 issued US patents in direct reduction and related fields. He states that he made several visits to Australia to update local iron ore producers on the progress of direct reduced iron technology. I cannot consider Mr. Meissner to constitute the person skilled in the relevant art in Australia as he has not practised in the relevant art in Australia. Thus he would be unable to establish the cgk in Australia. I shall have regard to Brian Cunningham's evidence as well as other filed relevant evidence for the purpose of determining the common general knowledge in Australia at the priority date in question.
For the purpose of determining lack of inventive step, I have to determine if the skilled addressee in Australia, seeking to manufacture iron carbide in a Midrex DRI shaft furnace, would have taken as a matter of routine whatever steps might have led from the prior art to the invention now claimed in the opposed application. The cgk, thus, would be the cgk that was available to the skilled addressee in the field of processes relating to direct reduction of iron in a shaft furnace and processes for the production of iron carbide from iron ore.
The opponent had submitted in effect that:
1.All the claims lack an inventive step as the matter defined therein constitutes cgk in Australia, and/or;
2.All the claims lack an inventive step in light of the cgk in Australia when combined with information publicly available in several documents on an individual basis. In their opinion the documents could reasonably be expected to have been ascertained, understood and regarded as relevant to the work in the relevant art in Australia by the skilled addressee.
The opponent's inventive step submissions focused on three features from claim 1 of the opposed application. The features are:
1.        The introduction of a reducing/carburising gas having greater than 30% CO intermediate the upper and lower zones of the shaft furnace.
2.        The temperature of the reducing zone is from about 649^oC to 760^oC.
3.        The residence time in the reducing zone is from about 9 to 15 hours.
These features are not present in the prior art process and the opponent submitted that these features:
·were part of the common general knowledge in Australia, or
·could be arrived by routine experimentation based on thermodynamic data relating to the reduction of iron ore.
In support of this assertion the opponent listed several citations and made reference to the statements of declarants, Stephens, Meissner, Baddeley and Cunningham. In particular the opponent submitted that:
"Armed with this knowledge, the person skilled in the art would be able to conduct routine experimentation with reaction variables such as temperature, residence time and gas composition to develop "the optimal balance of temperature, residence time and gas component parameters for use in the economical production of iron carbide in a shaft furnace" (see Meissner decl. 11/12/98, para 44). There is no great effort in this and expectation of success would have been sufficiently predictable before the priority date (ICI v Lubrizol at 601). Therefore, there is no inventive step in claim 1."
I shall deal with the matter from the declarants in the first instance.
One of the Baddeley declarations introduces further evidence, which I have ruled as inadmissible. I have also indicated that the only declarant considered to be the person skilled in the art in Australia is Brian Cunningham. Accordingly I shall have regard to his declaration to determine the cgk in Australia. The opponent stated that Brian Cunningham regularly monitored and reviewed a common general knowledge base comprised of patent literature, which disclosed all features of claim 1. Looking at the Cunningham declaration (paragraph 3) it indicates that the declarant's role involved "…regular review of all available published patent literature in relation to specific areas of technology of interest to the Rio Tinto group of companies, for example direct reduced iron." The declarant then states, "It is my view that this opportunity and responsibility to review on an ongoing basis emerging and potentially useful technology development in specific areas relating to iron production provides me with significant knowledge in relation to the state of the development of direct reduced iron processes, including the production of iron carbide, in Australia." I note that the declarant has not explicitly indicated in his declaration as to what constituted cgk in Australia at the relevant date. He has indicated that he kept pace with various developments in the field but at no stage has he stated that he accepted these as part of the cgk in Australia or that he used them as a basis for further development in the field. I shall refer to the following teaching of the courts regarding the determination of whether material disclosed in various patents does or does not constitute common general knowledge. In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (supra) at page 294 it was stated:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levenstein Ltd (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtalds Ltd (1933) 50 RPC 259 at page 280."
In this case I have before me only a single individual skilled in the art in Australia. Thus I cannot come to any conclusion about cgk regarding the patent specifications studied by Mr. Cunningham, as there is no supporting evidence from other skilled addressees in Australia. I have considered Mr. Cunningham's declaration to determine if he had acquired knowledge of the features constituting the alleged common general knowledge through various means including study/knowledge of the patents and other technical/scientific texts/papers. My determination is based on the teaching from British Acoustic Films Ltd v Nettlefold Productions, (1936) 53 RPC 221 at page 250,
"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."(my emphasis).
and
"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."
This was affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, (1972) RPC 457 at page 482 with the qualification that "without question" should read "generally regarded as a good basis for further action"(my emphasis).
Looking at the Cunningham declaration there is one explicit statement regarding matter constituting cgk in Australia. In particular at paragraph 28 under the heading "Thermodynamic Data" (referring to US patents in the name of Hager et al - exhibits RHB-6, 12 and 13) Mr. Cunningham states:
"…the thermodynamic data upon which the production of iron carbide is based is fundamental knowledge which has been generally available for over fifty years. The phase diagrams shown as figures 2 and 3 in these documents are derivative variants of the basic data presented in a form to demonstrate the applicability to the system proposed by the opponent for iron carbide production. These data specify the environment with respect to temperature, gas and solids chemistry at which iron carbide can be expected to occur. This data is common knowledge to all and is taught universally in the study of iron and steel production. However, it is my view that this says nothing about how you might produce iron carbide in a shaft furnace in a convenient and effective manner.
Thermodynamic data does not alone constitute the basis for the development of a unique commercially viable process for the production of iron carbide. Very importantly, a vital factor in such a consideration is the reaction kinetics. Even in this light the manifestation of these principles as a practical metallurgical process requires an inventive aspect."
This submission was provided in response to paragraphs 16 to 19 of the first Stephens declaration. There is no further explicit statement of what constituted cgk in the art in Australia. However the Cunningham declaration (paragraphs 9 and 13) implies that the Midrex DRI process as set out in US patents 3,764,123 and 4,046,557 (exhibits RHB-2 and RHB-3 to the first Baddeley declaration) constituted cgk in Australia. The process disclosed therein relates to the production of iron particles by reduction of iron oxide particles in a vertical shaft furnace. Claim 1 of the opposed application defines the following features:
1.        A process for producing an iron carbide (Fe₃C) product in a shaft furnace, comprising:
2.        establishing a gravitational flow of particulate metal oxide material by charging a generally vertical shaft furnace having an upper reducing zone and a lower cooling zone with particulate metal oxide material;
3.        introducing a reducing/carburizing gas comprising not less than about 30 percent CO by volume into the furnace intermediate the upper and lower zones at a temperature sufficient to promote a reducing reaction between the reducing/carburizing gas and the metal oxide material;
4.        causing the reducing/carburizing gas to move upwardly and countercurrently through the downward flow of metal oxide material, thereby reacting with and reducing a portion of the metal oxide and forming a top gas at the upper portion of the furnace;
5.        removing the top gas from the upper portion of the furnace;
6.        maintaining the temperature of the metal oxide material in the reducing zone from about 1200 to 1400^oF (about 649 to 760^oC);
7.        retaining the metal oxide material within the shaft furnace reducing zone for a residence time of from about 9 to 15 hours;
8.        introducing a cooling gas near the cooling zone of the furnace; and
9.        removing the resulting iron carbide product from the bottom of the furnace.

I consider that only certain features (2, 4, 5, 8 and 9) of claim 1 above, are disclosed in US patents 3,764,123 and 4,046,557. Given that these features and thermodynamic data relating to iron carbide production constitute cgk, I have to determine if the skilled addressee in Australia, seeking to manufacture iron carbide in a Midrex DRI shaft furnace, would have taken as a matter of routine, whatever steps might have led from the prior art to the invention now claimed in claim1 of the opposed application.
Thus one has to determine the basis on which the three features identified by the opponent, (see below) will be chosen as part of the solution (my emphasis) to the problem of manufacturing iron carbide in shaft furnace. The claimed invention consists of a combination of process features and disclosure of these features on an individual basis does not constitute disclosure of the combination. See Olin Mathieson v Biorex, (1970) RPC 157 at page 187, which states:
"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of integers out of, perhaps many possibilities, which must be shown to be obvious."
The three features identified by the opponent are:
1.Use a reducing/carburising gas comprising not less than 30% CO by volume to reduce the metal oxide to carbide (feature 3 of claim1)
2.Maintain the temperature of the metal oxide material in the reducing zone from about 1200^oF to 1400^oF (about 649^oC to about 760^oC) (feature 6 of claim 1).
3.Retain the metal oxide material within the shaft furnace reducing zone for a residence time of from about 9 to 15 hours (feature 7 of claim 1).
Regarding items 1, 2 and 3 above the opponent refers to their disclosure in various patents. Of the patents listed only US 3,764,123 and US 4,046,557 formed part of the cgk and they disclose reducing gas temperatures of 1300^oF to 1450^oF with a gas composition of 46.2% CO for metal oxide production and particle residence time in the reducing zone of four hours. These processes relate to the production of reduced iron where less than 2% of the product is iron carbide. Would these processes provide a basis for the skilled addressee to proceed to use their teachings for iron carbide production? In view of the low iron carbide content I do not consider that these teachings would provide a good basis for the skilled addressee to proceed to manufacture iron carbide. The opponent contends that, the skilled addressee seeking to produce iron carbide from iron oxide would be aware that a reducing/carburising gas would be required. However there is no indication of the specific gas composition (not less than 30% CO) that would be found suitable for iron carbide production and how they would arrive at such a composition. The temperature of the reducing gas has been specified but there is no indication that the metal oxide material must be maintained at that temperature. No reasoning is provided of why a longer residence time than four hours would be necessary. The opponent has referred to thermodynamic data but there is no evidence of how that data would lead to the combination of features selected by the applicant for their invention. The opponent has not shown how the combination of features now claimed would be arrived at. In particular no evidence has been provided of how the claimed reducing/carburizing gas composition, temperatures of metal oxide material in the reducing zone and retention times of metal oxide material in the shaft furnace would be arrived at. The onus is on the opponent to show how the claimed features are disclosed/arrived at based on the proven cgk. The standard of proof required is the civil standard, that is, the balance of probabilities (see the teaching of the Court of Appeal in Dunlop Holdings Ltd's Application (1979) RPC 523).
I do not consider that claim 1 of the opposed application lacks an inventive step solely in light of the cgk in Australia. Consequently claims 2-24 (appended to claim 1) and claim 25 (omnibus claim possessing the same essential features of claim 1 as embodied in the description and drawings) also do not lack an inventive step in light of the cgk in Australia.
I shall now consider the issue of inventive step in light of the combination of cgk in Australia with the disclosures of cited documents on an individual basis. In their submission the opponent had indicated several features as forming part of the cgk based on disclosures of various documents and declarations of experts in the field. I have determined that only one declarant (Mr. Cunningham) is the skilled addressee in Australia and that only two documents (US 3,764,123 and US 4,046,557) formed part of the cgk in Australia. Hence I shall first determine if the other remaining cited documents could have been ascertained, understood and regarded as relevant by the skilled addressee in Australia. The documents raised by the opponent were:
United States Patent Documents:- 4,053,301, Reissue 32,247, 5,073,194, 5,118,479, 3,356,488, 2,780,537, 4,224,057, 4,584,016, 4,111,687, and 4,248,623.
International application published under the Patent Co-operation Treaty:- WO 92/02824.
All these documents are directed variously to:
· Direct Reduction of Iron (US 3,356,488, 4,224,057, 4,584,016, 4,111,687, 4,248,623)
· Manufacture of Iron Carbide in a fluidised bed (US 4,053,301, Reissue 32,247, 5,073,194, 5,118,479, 3,356,488, 2,780,537, WO 92/02824)
In view of the field in which the alleged invention lies I consider that these documents would have been ascertained and understood by the person skilled in the art in Australia. I now have to determine if these documents would have been regarded as relevant when faced with the problem of trying to produce iron carbide in a shaft furnace from particulate metal oxide material. I have found that the following documents would not have been regarded as relevant by the skilled addressee:
·    US 4,248,623 relates to the direct reduction of iron ore in a shaft furnace. This disclosure is directed to gas flows in the furnace and makes no mention of iron carbide. There is nothing in the specification to indicate that the skilled addressee would use it as a basis to try for the production of iron carbide.
·    US 5,118,479 relates to a design for a fluidised bed reactor including a baffle system wherein conversion of least 90% of iron in oxide ore to iron carbide is claimed. The claimed improvement lies in the baffle design. As the opposed invention does not lie in a new baffle design I do not consider that this document would provide a basis for moving to the solution of the opposed invention.
·    US 5,073,194 describes a method of controlling product quality in a conversion of iron ore to iron carbide. As the opposed invention relates to a process for iron carbide production, I do not consider that the method of controlling product quality would provide a basis leading to the solution of the opposed invention.
I shall now consider the remaining documents for the purpose of inventive step. The documents fall into two groups relating to the Shaft/DRI process and fluidised bed process and I shall deal with the documents in relation to the two groups.
Shaft/DRI Process
US 3,356,488
This document discloses reduction of iron ore (powder or pellet form) in fluid/moving beds wherein the reduction is carried out in a single zone using a gas rich in CO, H₂ and free carbon carried as a dust. The reduced iron product also contains sufficient carbon in the form of iron carbide (Fe₃C) in amounts at least equivalent to the residual oxygen held as iron oxide (FeO). Given that the problem to be solved is one of iron carbide manufacture in a shaft furnace, the opponent contended that mere routine experimentation using thermodynamic data would provide the solution. However declarant Cunningham has indicated that thermodynamic data alone does not provide a solution as reaction kinetics have also to be considered. The opponent contended that a large number of features were part of the cgk and that the skilled worker would arrive at the precise combination sought by mere routine experimentation. The opponent has not shown how the relevant temperature range (1200-1400^oF), gas composition (not less than 30% CO by volume), residence time (9-15 hours) and separate reducing/carburizing and cooling zones claimed could be arrived at from a vast number of possibilities. The opponent has also not provided the evidence relating to shaft furnace production of iron/iron carbide which provides the basis on which the skilled worker would be drawn towards the combination of features claimed in the opposed application. I consider that this document combined with the cgk in the art does not render the claims of the opposed application as lacking an inventive step.
US 4,224,057 and US 4,584,016:
The basic process disclosed in these documents relates to the direct reduction of iron ore in a vertical shaft moving bed reactor. The process involves moving the ore downward through the furnace past a reducing zone in the upper level and a cooling/carburizing zone in the lower level. Temperatures in the reducing zone vary from 700^oC to 1100^oC. The reducing gases have CO, H₂, CO₂ and CH₄ and the carburizing/cooling gas has the same constituents in different proportions. The reduced and carburized iron ore yields a substantially metallized product with 2 to 3% carbon content in the form of carbide. This poor yield of iron carbide would not provide a sound basis for the skilled addressee to use the teachings of this disclosure to manufacture iron carbide. No particular residence time has been identified. Faced with the problem to produce an iron carbide product, there is no indicator of how the skilled addressee, having to choose from a vast number of possible combinations, would arrive at the temperatures, gas compositions and in particular the fairly long residence time of 9 to 15 hours of the opposed application. Further there is nothing in the cgk to indicate that a single step reducing and carburizing action would yield better results than the two step process of the citations. I do not consider that each of these two documents, when read individually with the cgk in the art, render the claims of the opposed application as lacking an inventive step.
US 4,111,687
The disclosure of this document reveals a process wherein, a gaseous direct reduction process is interfaced with a melting unit, whereby the off-gas of the melting unit provides a portion or all of the gaseous reductants required for the reduction of ore, which in turn (after reduction) is fed directly into the melting unit along with steel scrap/cast iron to produce a hot metal having a carbon content of the order of 1 to 2%. The process relating to the direct reduction of iron discloses gaseous reduction of iron ore and carburization of 1.5 to 2%. This low yield would not provide a good basis to use these teachings to arrive at the opposed invention. The reducing gases contain CO and H₂ but no particular composition is provided. The residence time of the ore in the direct reduction process is not stated but prior art times of 3 to 6 hours is disclosed. Given this disclosure and the cgk in the art, how does the skilled addressee formulate a process to manufacture iron carbide. There is no indication from this document or the cgk as to the path that will be chosen to arrive at the process conditions and residence times of the opposed application. The opponent has made some assertions regarding routine experimentation but not provided any firm basis, which directs the skilled addressee to the opposed process. For instance, no reasons have been provided as to why the residence time will be altered from 3-6 hours to 9-15 hours, or that the reducing/carburizing gas must contain not less than 30% by volume CO or why a cooling step should be introduced after the reducing/carburising step. I consider that the citation in question when combined with the relevant cgk does not render the opposed invention as claimed as lacking an inventive step.
Fluidised Bed Process
US 4,053,301 and US Reissue 32,247
These patents disclose a process for direct production of steel from particulate iron oxides or concentrates in two steps. In Step 1 the iron oxides are converted to iron carbide and in Step 2 steel is produced directly from the carbide in a basic oxygen furnace or electric furnace. In Step 1 the oxides are reduced and carburized in a single operation using a mixture of hydrogen as a reducing agent and carbon bearing substances such as propane primarily as carburizing agents. Bed temperatures of 900 to 1300^oF are disclosed but residence times and reducing/carburizing gas compositions are not specifically disclosed. The process requires either that (i) the iron carbide to be at a temperature of 1100 to 1300^oF when proceeding to step 2 or (ii) that the iron carbide is cooled and then reheated prior to usage in step 2. Given the problem of production of iron carbide in a shaft furnace I have to determine what would lead the skilled addressee to the opposed process. There is no indication of the precise basis on which the skilled addressee would arrive at the defined conditions of temperature, residence time and reducing/carburizing gas composition. The opponent claimed that routine thermodynamic experimentation would provide the solution. However this assertion was not backed up by evidence from a skilled addressee in the art in Australia. Given that the citation claims a fluidised bed process for the manufacture of iron carbide, there is no indication of why the skilled addressee would be persuaded to try a shaft furnace process with differing particle sizes, residence times and temperature ranges. Also there is no indication of the teachings from the fluidised bed process that the skilled addressee would consider as being applicable in the environment of the shaft furnace. I do not consider that the claimed invention of the opposed application lacks an inventive step in light of each of the disclosures of these two US patents when individually combined with the cgk in Australia.
WO 92/02824
This document discloses a fluidised bed process for the manufacture of iron carbide wherein the conversion is controlled by monitoring temperature, pressure and off-gas composition. A stability phase diagram is generated based on the temperature. Different regions of the stability phase diagram are representative of different products being formed by the conversion of the reactor feed. Based on concentrations of the individual gases in the off-gas and the total pressure, a point is plotted on the stability phase diagram indicative of the favoured reaction product. The process parameters can then be adjusted to insure that iron carbide can be produced from the reactor feed based on the stability phase diagram. Again the issues are similar to those faced regarding US 4,053,301 and US Reissue 32,247. There is no indication of the basis on which the skilled addressee would apply the teachings of a fluidised bed process to a shaft furnace and how the claimed operating conditions would be arrived at. In particular the stability phase diagram of the citation is for a temperature of 677^oC (i.e. 1250.6^oF, which is within the range of 1200-1400^oF of the opposed invention). The gas composition refers to a CO presence of up to 20% by volume and more preferably 5 to 10%. I note that these features are linked to the phase diagram for the production of iron carbide, which as the opponent has submitted forms part of the cgk. With regard to this citation, the applicant's declarant, Cunningham, acknowledged:
·    As disclosing details of thermodynamic analysis to be applied to iron oxide direct reduction processes, with particular relevance to the production of iron carbide.
·    The thermodynamic data upon which the production of iron carbide is based is fundamental knowledge, which has been generally available for over fifty years.
·    The phase diagrams shown as figures 2 and 3 in this document are derivative variants of the basic data presented in a form to demonstrate the applicability to the system proposed by the opponent for iron carbide production. These data specify the environment with respect to temperature, gas and solids chemistry at which iron carbide can be expected to occur.
·    This data is common knowledge to all and is taught universally in the study of iron and steel production. However, it is my view that this says nothing about how you might produce iron carbide in a shaft furnace in a convenient and effective manner.
Given the above information and availability of the phase diagrams the citation itself does not reveal the opposed gas composition for a temperature within the range claimed in the opposed application. No mention is made of preferred residence times. The opponent has not shown how the use of the phase diagrams will provide the combination of features now claimed in the opposed application or how the skilled addressee will be lead to the solution. I do not consider that the claimed invention of the opposed application lacks an inventive step in light of WO 92/02824 when combined with the available cgk in the art.
US 2,780,537
This patent claims a fluidised bed process for the production of iron carbide wherein iron oxides are added to a bed containing a large proportion of iron carbide and reducing gas is introduced to the bottom of the bed as the fluidising gas. The reducing gas also converts the greater part of said iron oxides into iron carbide. The main constituent of the reducing gas is carbon monoxide and the hydrogen content does not exceed 50% by volume of the carbon monoxide content. The bed temperature is disclosed as 615^oC. Once again there is no indication of the basis on which the skilled addressee would adapt the working of this invention to a method suitable for use in a shaft furnace. Given the cgk relating to the direct reduction of iron in a shaft furnace, there is no clear basis to show how the skilled addressee would arrive at the opposed invention starting from the process disclosed in the document when combined with the cgk in the art. In particular the combination of process conditions of residence time, temperature and reducing/carburizing gas composition do not reveal themselves when the disclosure of the document is combined with the cgk. I do not find that the claimed invention of the applicant lacks an inventive step in light of US 2,780,537 when read with the cgk in Australia.
The opponent has failed to establish that the invention of the opposed application lacks an inventive step in light of the relevant citations raised when individually combined with the established cgk in Australia at the relevant date.
Manner Of Manufacture
The opponent submitted that the claims of the opposed application did not define a manner of manufacture and provided the following arguments in support:
· Production of iron carbide in a Midrex shaft furnace is a purpose analogous to the production of iron containing carbon partly in the form of iron carbide in a Midrex shaft furnace
· Midrex' s evidence, especially the specification of the Opposed Application, fails to demonstrate the practical difficulties overcome or ingenuity exercised in developing an "optimal balance" of gas composition, temperature range and residence time for the production of iron carbide.
The applicant submitted that there were significant differences between the Midrex DRI process and their invention. They pointed out the following differences:
·    Iron Carbide was the product of the claimed process as opposed to reduced iron.
·    The reducing zone temperature has a maximum value of 760^oC whereas the Midrex process uses an average temperature of 815^oC. As different products are being produced a direct comparison of temperatures alone, is not valid.
·    The Midrex process uses a maximum residence time of 6 hours. By way of contrast, the minimum residence time for production of an iron carbide product using the claimed process is 9 hours.
·    The evidence of Mr. Cunningham, the only Australian expert in this proceeding is that the process of the invention is different to the Midrex direct reduction process in important respects. Moreover his evidence is that these differences are not merely a matter of routine process condition development and would certainly not have been considered to be routine in Australia at the priority date.

The opponent has based its attack of analogous use on the use of the Midrex shaft furnace for the production of iron carbide. The invention being claimed is not the apparatus but a process for the manufacture of iron carbide. The production of reduced iron requires only the reduction of oxide to metal, whereas production of iron carbide requires an even further reduction/carburization of the reduced metal to the carbide. As the applicant has stated, there are significant differences in the process parameters such as temperature, residence time and reducing/carburizing gas compositions. I note that the opponent has not shown that there was no inventive step in arriving at the combination of temperatures, gas composition and residence times used in the opposed process. The declarant Cunningham who is the only skilled addressee in Australia has indicated that "these differences are not merely a matter of routine process condition development and would certainly not have been considered to be routine in Australia at the priority date". Based on the evidence provided by the opponent I am not satisfied that the opposed process for the production of iron carbide from iron ore is an analogous process to the Midrex DRI process for the production of reduced iron. Consequently I find that the opponent has not shown that the opposed process does not constitute a manner of manufacture.
SUMMARY
I have determined that the opponent has failed to establish that the claimed process of the applicant is lacking an inventive step.
The opponent has also failed to establish that the claimed opposed process does not constitute a manner of manufacture.
COSTS
Both parties agreed to defer their submissions on costs until after issue of the delegate's decision on the substantive opposition. Accordingly I direct both parties to file their submissions on costs to the delegate within 21 days of the date of issue of this decision. Based on a consideration of these submissions I shall then proceed to issue a decision on costs in this matter.
I find the opposition has failed. Accordingly I direct the application be sealed after 30 days from the date of this decision. If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Watermark, Perth

[2002] APO 16

3 May 2002