Midrex International BV v Iron Carbide Holdings Limited

[2001] APO 53

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No 669089 in the name of MIDREX INTERNATIONAL BV

Title:          Iron Carbide production in Shaft Furnace

Action:          Opposition by IRON CARBIDE HOLDINGS Limited to allowance of an amendment of the patent specification under Section 104 of the Patents Act 1990

Decision:          Issued            .

Abstract

The amendment of the term reducing gas throughout the claims to read reducing/carburizing gas was not considered to make the claims non-compliant with section 40.

The proposed amendments were found to comply with section 102 of the Patents Act and found to be allowable.

Costs awarded against the opponent Iron Carbide Holding and in favour of the applicant Midrex International BV.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 669089 by MIDREX INTERNATIONAL BV and opposition by IRON CARBIDE HOLDINGS LIMITED to allowance of an amendment to the patent specification under section 104

BACKGROUND

Midrex International BV [Midrex] filed patent application 669089 (16367/95) on 7 April 1995 claiming priority from US patent application 237786 filed on 4 May 1994. The application was advertised accepted on 23 May 1996. Iron Carbide Holding Limited [Iron Carbide] filed a notice of opposition to the grant of a patent on the application on 23 August 1996.

Midrex filed amendments on 14 May 1997 and filed further proposals for amendment on 14 August 1998. The amendments were advertised on 3 December 1998. Iron Carbide filed a notice of opposition to the amendments on 2 March 1999 and it served it Statement of Grounds and Particulars on 29 June 1999.  Evidence in support, answer and reply were served, with some extensions of time, by 25 January 2001.

The hearing on the opposition to the amendments took place in Melbourne on 25 September 2001. The applicant was represented by Mr Bruce Caine of counsel instructed by Mr Peter Caporn of the firm of Wray and Associates, Perth. The opponent was represented by Mr Richard Baddeley of the firm of Watermark, Perth.

THE INVENTIVE CONCEPT

The inventive concept of the specification relates to the use of a known iron ore direct reduction furnace to make iron carbide rather than metallic iron. This is accomplished by using a gas flow counter current to the iron ore flow. In this case the gas both reduces and carburizes the ore, which is essentially iron oxide, to produce iron carbide.

THE AMENDMENTS

Throughout the claims the term “reducing gas” has been amended to read “reducing/carburizing” gas. Since this was the only point contested I see no need to set out the claims in detail.

THE LAW

Section 102 of the Patents Act 1990 determines what amendments are not allowable. It states:

“102     What amendments are not allowable?

(1)       An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2)       An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:

(a)     a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)     the specification would not comply with subsection 40(2) or (3).

(3)       This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification.”

Subsection 40(2) requires that a complete specification describes the invention fully, including the best method known to the applicant of performing the invention; and end with a claim or claims defining the invention. Subsection 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.

GROUND AND PARTICULARS

The statement of grounds and particulars lists as grounds:

1.The amendment does not comply with subsections 102(1) or 102(2): in particular:

• the specification would claim matter not in substance disclosed in the specification as filed; and

• the specification, as proposed to be amended, would not comply with subsections 40(2) or 40(3) of the Patents Act 1990

In relation to the grounds the opponent particularises four points:

1. Claims 1 to 8,12,13,18,21 and 24, as proposed to be amended, lack clarity in their use of the expression “reducing/carburizing”. It is not clear whether the terms “reducing” and “carburizing” are used synonymously or in alternative term. Further the terminology is not used in the specification and is not supported by it, see page 10 lines 25 to 27. Its employment is therefore both unsupported and confusing.

2. Claims 1 to 6, 8,16,17,22 and 24 are unclear in their recitation of “about” where used to qualify ranges.

3. Claims 1 to 6, 8 to 15,18 to 21 lack clarity in their use of “comprises”. It is not clear whether this term is used in an open or restricted sense so the claims are unclear.

4. Contingent on the above objection, the best method of performance of the invention is not disclosed as no embodiment describes the use of a reducing/carburizing gas. Still further, it is apparent on reading the specification that particle size is important to the invention and that appropriate residence time as recited in the claims is a function of particle size (see specification, page 15, lines 14 to 26). Particle size is described at non-optimum residence time of 15 hours. In complete contrast, the preferred residence time is 12 hour (see page 10, lines 13 and 14) for which no particle size is described. Thus, an undue burden of experimentation is placed on one skilled in the art to assess the best particle size at 12 hours residence time. Thus the best method of performance is not, in any sense, described.

THE EVIDENCE

The evidence in support comprises two statutory declarations one by Mr Baddeley and one by Mr Frank Stephens. Mr Baddeley's declaration is for the purpose of introducing into evidence the various proposals for amendment at issue in these proceeding and also to introduce declarations made by Mr Cunningham on 11 December 1998 and Mr Meissner on 11 December 1998, which are already in evidence in answer in respect of the substantive opposition.

Mr Stephens is chairman of the board of Iron Carbide Holdings Limited the opponent company.

The evidence in answer comprises two further statutory declarations made by Mr Cunningham on 23 January 2001and Mr Meissner on 8 January 2001 respectively.

Evidence in reply comprises a further statutory declaration by Mr Frank Stephens made on 20 April 2001.

DECISION

At the hearing the only point pressed by Mr Baddeley was that as a result of the amendments the specification would not comply with section 40. Namely that the use of the term “reducing/carburizing” was unclear whereas the term “reducing” alone was not.

Mr Caine argued that the present application related to a method of operating the applicant's own known direct reduction iron making furnace in a different manner to produce mainly iron carbide. As a consequence it was felt wise to further distinguish this application from the prior art by amending the term reducing gas to the term reducing/carburizing gas. In the prior art the carbon containing reducing gas merely reduced the [mainly] iron oxide to metallic iron without carburizing it all the way to iron carbide. In the present application the claims before amendment made it perfectly clear that iron carbide was to be produced and thus the reducing gas must carry the reaction right through thus both carburizing and reducing. To now further specify that this gas was a carburizing/reducing gas was only further clarifying the claims.

Mr Baddeley argued that the term reducing/carburizing gas had no specific support in the description. He further argued that it was not at all clear whether the gas was to reduce and carburize, or whether the intention was that the gas could either reduce or carburize. Thus he argued that this amendment meant that the specification and claims were no longer clear and thus as a result of the amendment the specification no longer complied with section 40.

The term “reducing” means the removal of oxygen from a compound whereas “carburizing” means the addition of carbon. However the specification at page 5 lines 12 to 14 clearly states “The invention utilizes the Midrex method of direct reduction and further provides a method for using carbon -containing reducing gas in a shaft furnace for the production of iron carbide”.

[The Midrex method refers to the applicant's own admitted prior art process for the direct reduction of iron ore to iron.] This statement clearly indicates to me that, in the context of this specification the term “reducing gas” was always intended to mean a gas that both reduced and carburized. Indeed the specification in a number of places discusses the variation of the exact composition of the reducing gas to vary its carburizing potential. Clearly the reducing gas which is claimed as being carbon containing [that is having not less than about 30 percent by volume CO] was always meant to be carburizing as well. Consequently amending the wording in the claims from “reducing” to “reducing/carburizing” merely makes explicit what was always implicit and does not alter their scope. Thus the proposed amendments cannot make the claims unclear and non-compliant with section 40. From the evidence before me I do not believe that a skilled addressee could come to any other conclusion.

CONCLUSION

On consideration of the issues raised at the hearing by the opponent I have found that the proposed amendments satisfy the requirements of section 102 of the Patents Act. I do not believe there is any other issue that may render the proposed amendments non-compliant with Section 102. Consequently I allow the amendments.

COSTS

In the normal course of events costs follow the event. Neither party made any submissions to suggest that I vary this practice. Since I have found in favour of the applicant, I award costs against the opponent, Iron Carbide Holding Limited and in favour of the applicant, Midrex International BV.

R.A.Melvin
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Wray and Associates, Perth

Patent attorneys for the opponent   :  Watermark, Perth