Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd
[2015] APO 23
•1 June 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2015] APO 23
Patent Application: 2011253825
Title:Cleaning device
Patent Applicant: Orekinetics Investments Pty Ltd
Opponent: Mineral Technologies Pty Ltd
Hearing Officer: P M Spann - Deputy Commissioner of Patents
Decision Date: 1 June 2015
Hearing Date: 11 March 2015, Canberra
Further written submissions:
25 March 2015
1 April 2015
9 April 2015
Catchwords: PATENTS – opposition to the grant of a patent – section 59 –whether the claimed invention is novel – whether the claimed invention lacks an inventive step – whether manner of manufacture on the face of the specification – opposition unsuccessful on all grounds – costs awarded against the opponent.
Representation: Patent applicant: Mr B Gardiner, counsel
Mr D Rosenthal, patent attorney,
IP Gateway
Opponent: Mr G Davidson, patent attorney,
Halfords IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011253825
Title:Cleaning device
Patent Applicant: Orekinetics Investments Pty Ltd
Opponent: Mineral Technologies Pty Ltd
Date of Decision: 1 June 2015
DECISION
I dismiss the opposition and award costs according to Schedule 8 of the Patents Regulations against Mineral Technologies Pty Ltd.
REASONS FOR DECISION
Background
This matter relates to patent application 2011253825 in the name of Orekinetics Investments Pty Ltd (Orekinetics) filed on 5 December 2011. It is a divisional application of 2006202868 which claims priority from provisional applications 2005903573 (filed 6 July 2005) and 2006901591 (filed 29 March 2006). The application was advertised as accepted on 6 June 2013 and a notice of opposition to the grant of a patent was filed by Mineral Technologies Pty Ltd (Mineral Technologies) on 6 September 2013.
Statement of grounds and particulars
Mineral Technologies opposed the grant of a patent on the basis of:
not a manner of manufacture (all claims);
lack of novelty (claims 1-12, 16-23); and
lack of inventive step (all claims).
At the same time it asserted that claims 1-19 and 21-25 were not entitled to the claimed priority date.
Evidence
Evidence in support consists of declarations made by:
Dr A Farmer with exhibits AF-1 to AF-9; and
Mr O Lickiss.
Evidence in answer consists of declarations made by:
Mr D Vandenbroucke with exhibits DV-1 to DV-15;
Mr N Dawson with exhibits ND-1 to ND-15; and
Mr P Gates with exhibit PG-1.
Evidence in reply consists of declarations made by:
Dr A Farmer with exhibits AF2-1 to AF2-3;
Dr T Kojovic with exhibits TK-1 to TK-3;
Dr R Morrison with exhibits RM-1 to RM-2; and
Mr O Lickiss with exhibits OL2-1 to OL2-2
I will refer to the relevant parts of the evidence where appropriate.
The Specification
The specification indicates that the invention relates to a cleaning device for cleaning an ionising electrode in an electrostatic separator and an electrostatic separator comprising such device.
The basic operation of electrostatic separators in the mining industry is conveniently summarised in the description:
“The separation of different particles from mined ore may occur by a variety of different processes. One such process involves separating the particles of individual particle species based upon their different electrical properties. Typical equipment which are used in separating particles in this process include high tension electrostatic roll separators (HTR) , electrostatic plate and screen static field separators (ESP and ESS) and triboelectric separators.
Generally, HTR separators utilise an electrically grounded roll that transports the particles through a high voltage ionising field (corona) that charges the particles by ion bombardment. Particles with high conductivity then lose much of their charge to the earthed roll and are subsequently thrown from the surface of the roll by centrifugal and gravity forces. Particles with lower conductivity remain pinned to the roll surface and are transported further around the roll before their charge either dissipates and they are thrown off the roll or are removed by either a mechanical means (a brush for example) or a high voltage AC wiper. The particles are thus separated by collecting those particles which are thrown off or removed from the roll at different positions.”
Difficulties are said to arise however because:
“HTR separators are typically operated continuously over long periods of time, up to weeks or months. The ionising electrode has to be replaced periodically as a result of oxidation of the wire which may cause embrittlement and breakage of the wire. Replacement of the ionising electrode requires the HTR separator to be temporarily shut down. Importantly, it is noted that contamination of the wire results in efficiency loss of the separator and at the same time an increase in the power demand for the ionising electrode. This increase in power demand directly adds to the oxidation rate of the wire necessitating more frequent wire changes. This in turn results in more frequent shut downs for wire replacement, thereby reducing the process and economic efficiency of the separator and of the entire plant as well.”
10. There are 25 claims of which claim 1 and 3 are independent;
“1. A cleaning device for cleaning an ionising electrode in an electrostatic separator, the cleaning device comprising a cleaner for removing dust and other particulate matter from at least a portion of the electrode, and an actuator for moving the cleaner along at least a portion of the electrode.
3. A cleaning device for cleaning an ionising electrode, the cleaning device comprising a cleaner for removing dust and other particulate matter from at least a portion of the electrode, and an actuator for moving the cleaner along at least a portion of the electrode, wherein the device is operable during operation of the ionising electrode.”
11. In an embodiment the cleaning device comprises a movable arm with a slot or soft pad that engages the corona wire of an electrostatic separator. An actuator is operable, either manually or automatically, to move the arm along the length of the wire thereby removing dust and other particulate material. The arm is either insulated or floating with respect to the charge of the electrode thereby permitting cleaning to occur while the separator is operating.
Construction
12. There are a number of significant points of contention between the parties on the proper construction of the claims. Most significantly the meaning of the term “an electrostatic separator” is subject of dispute within the expert evidence and is pertinent because claim 1 and dependant claims are limited to a cleaning device at least suitable for use in such a device.
13. The rules of construction applicable to patents are not controversial and the statement of the Full Federal Court in Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 is particularly relevant:
“When determining the nature and extent of the monopoly claimed, the specification must be read as a whole. But as a whole it is made up of several parts which have different functions. The claims mark out the legal limits of the monopoly granted. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document. It is legitimate, however, to refer to the rest of the specification to explain the background of the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims.”
14. The statement of Justice Finkelstein in Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [49] is also apposite:
“The proper construction of the specification is a matter of law: see generally Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400. It is, however, a task that must be undertaken through the eyes of the person to whom the specification is directed, that is the person skilled in the art or science to which the specification relates: Vidal Dyes Syndicate Ltd v Levinstein Ltd and Read Holliday & Sons Ltd (1912) 29 RPC 245 at 272; Osram Lamps v Pope Electric Lamp Co (1917) 34 RPC 369 at 391. It is this person who may give expert evidence to inform the court what is the generally accepted meaning of technical terms and also to explain how things actually work: American Cyanamid Company v Ethicon Ltd [1979] RPC 215 at 254.”
‘in an electrostatic separator’
15. It seems relatively clear that the relevant art is the manufacture of electrostatic separators particularly for use in minerals separation. In this regard I consider it unrealistic to assume that a person skilled in that art would not have knowledge of general principles applicable to electrostatic separators or applications other than minerals separation, for example, waste recycling. That evidence was provided only by persons active in the mining industry is not determinative of the proper construction of the specification.
16. In relation to what is meant by ‘an electrostatic separator’, the evidence is contradictory. I however believe that the normal meaning of the term is simply a mechanism for separating or sorting particles utilizing electrostatic effects. Such separators are used for materials processing in many industries. I doubt that, within the art, an electrostatic precipitator would be considered an electrostatic separator. While closely related in principle it serves a distinctly different purpose, that is, extracting dust or other particles from a gas flow. Standard dictionaries support this distinction (eg McGraw-Hill Dictionary of Engineering 2nd Ed. available in the Patent Office library from 3 July 2003).
17. The opponent relies particularly on the text Electrostatic Separation of Mixed Granular Solids by Ralston which, while not claimed to be part of the common general knowledge, is said to reflect the common understanding in the art. It is said to show that precipitators fall within the field of particle separation. However, I do not consider the text describes precipitators as normally understood and specifically it appears that the example at page 99 referred to by the opponent is a separator for different dust particles which happens to use a gas stream as a transport mechanism. Consequently, I do not find Ralston provides support for the contention that persons skilled in the art would consider precipitators to be a type of electrostatic separator.
18. Therefore I find that the term an electrostatic separator means a device for electrostatically separating or sorting particles and does not include removing particles from a gas stream.
‘an actuator’
19. At the hearing I questioned the applicant’s counsel on whether common cleaning devices such as a brush or broom could fall within the scope of the claims. This led to a discussion of what was meant by ‘and an actuator for moving the cleaner along at least a portion of the electrode’ and I allowed the opportunity for both parties to file written submissions on this point. For the applicant, who also relies on the evidence of Dawson and Vandenbroucke, it was said that a skilled addressee would not consider a handle to be an actuator. Rather an actuator meant a device with a mechanism that converted one type of motion (eg rotational) into another type of motion (eg linear). It was further said that the term implies a mechanism for guiding the cleaning device in use.
20. I find the applicant’s submissions on construction somewhat unsatisfactory. There is no reason to assume a special or technical meaning for ‘actuator’ nor is the view of the applicant’s experts determinative of the question. It is also not correct to suggest that a common sense construction of the claim is to be determined in relation to what the drafter supposedly intended. In any event the claim itself informs me that the actuator is “for moving the cleaner along at least a portion of the electrode”. A common meaning for actuate is to incite or to put into action (The Macquarie Dictionary) and here it therefore appears that ‘actuator’ is merely a mechanism for moving the cleaner along the wire so that it is cleaned. This is a clear and workable construction and no other limitation need be imported.
21. However, while this no doubt encompasses many different potential solutions I do not consider that realistically a “broomstick or pole” is an actuator suitable for the use claimed. This in my view implies a capability to guide the cleaner along the wire which persons skilled in the art and in the context of the description would not associate with a handle merely directed by an operator. Thus I conclude that, while not necessarily limited as suggested by the applicant, the actuator included in the claims must be a mechanism that both moves and guides the cleaner in relation to the wire.
‘ionising electrode’
22. In the written submissions it was argued that the “ionising electrode” in claim 3 should be read with the further limitation “used in an electrostatic precipitator”. Consistent with what I have said previously this appears to be a clearly impermissible gloss on the plain meaning of the claim but in any event was not a construction that was pursued in oral submissions.
Applicable law
23. The examination request for the present patent application was filed on 31 May 2012. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
24. Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Priority Date
25. The opponent has challenged the priority date of the claims stating that, because of a broadening of the invention claimed, all claims not restricted to HRT separators were entitled to an earliest priority date of 29 March 2006. It further suggested that omnibus claims 23-24 were only entitled to a priority date of 4 July 2006.
26. However, having considered the cited prior art and evidence of common general knowledge, there appears to be nothing that follows from a postdating of the priority date. For example there is no indication that the state of common general knowledge changed between 6 July 2005 and 4 July 2006. When questioned about this, the opponent’s attorney merely stated that a later priority date made its assertions about what was common knowledge ‘more likely’. I do not find the evidence admits this possibility and consequently further consideration of the relevant priority date is unnecessary. Accordingly, for the purpose of this decision I will assume the claimed priority date of 6 July 2005.
Novelty
27. Mineral Technologies relied upon 2 documents against the ground of novelty (using the numbering scheme in the statement of grounds and particulars):
D2 US 4,284,420 published 18 August 1981
D3 JP-A-3-186365A published 14 August 1991
28. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], [1977] HCA 19; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
29. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486). See also AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (at [293]–[294]).
30. It was also stated in General Tire that:
“… if carrying out the directions contained in the prior inventor’s publications will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.”
D2 – US 4,284,420
31. D2 discloses an electrostatic air cleaner or precipitator with ionizing grids or plates that can be cleaned by a moveable scraper. One embodiment shows an array of ionising wires that in a cleaning operation are drawn through a comb like scraper plate. It is clear that in this application the wires cannot be cleaned while the air cleaner is operating.
32. The evidence goes to whether the cleaning device disclosed is suitable for cleaning an ionising electrode in an electrostatic separator. Essentially the evidence of Mr Vandenbroucke and Mr Dawson is that the cleaning mechanism as incorporated into the air cleaner would not be suitable for use in an electrostatic separator of the type described, for example, because the component mounting the scraper plate does not exist in a separator. The opponent has alternatively proceeded on the basis of an electrostatic precipitator falling within the definition of a separator. This as I have found above is not the case.
33. I consider that because the electrode cleaning system disclosed is adapted specifically for an electrostatic precipitator following the directions contained in this citation is most likely to produce a device that would not be suitable for cleaning an ionising electrode in a separator and therefore claim 1 and dependant claims is not anticipated. Since claim 3 and dependant claims are not limited to suitability for use in separators this is not a relevant consideration. However these claims are restricted to cleaning devices that can be used while the electrode is in operation. This in my view is not disclosed in the citation and consequently I find that D2 does not deprive any of the claims of novelty.
D3 – JP-A-3-186365A
34. D3 is published in the Japanese language however a verified translation has been provided in evidence. It is directed to cleaning an ionising wire in an electrostatic dust extraction machine. More specifically it discloses an electrode formed from an endless loop that is mounted on pulleys and in the cleaning process the wire is moved either manually or automatically past a number of fixed scraping tools. The scraping tools are formed from flat posts with V shaped grooves at different angles to scrape different sides of the wire as it is drawn through the series of grooves.
35. The disclosure does not indicate explicitly that the cleaning mechanism is adapted so that it can be used while the extraction machine is operating. However, while there is little evidence addressing this point, I consider that the device disclosed in D3 would be operable while the cleaning operation is underway, that is while the electrode loop is moving. Nevertheless I accept that the claims are limited to devices where the cleaner is moved along the electrode and not where the electrode is moved past fixed cleaners. It is also unclear that what is disclosed is suitable for use in an electrostatic separator. Consequently I also find that the claims are not anticipated by D3.
Inventive step
36. According to subsections 7(2) and (3) as they were before the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, the invention in this case is taken to involve an inventive step, when compared with the prior art base, unless the invention would have been obvious to a person skilled in the art in the light of the common general knowledge in the patent area, either on its own or together with the information specified in subsection (3). This information includes one or a combination of two or more pieces of prior art information being information that the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant. It is well established that the obviousness question can be formulated as follows:
"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." (Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at 286)
37. The High Court in Aktiebolaget Hassle v Alpharpharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 at 433 [53] stated that it is also permissible to use the "Cripps question":
“Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and the facts, directly be led as a matter of course to try the invention as claimed in the expectation that it might well produce a solution to the problem”
38. It is clear that any potential solution to a problem will not be obvious unless it would have been a matter of routine to try that solution, but with the significant caveat that there must be an expectation that the potential solution "might well" solve the problem. It is not necessary that success is guaranteed.
39. In determining the problem or ‘starting point’ for considering inventive step, the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 stated at [202]- [203]:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
40. As to whether prior art information could be ascertained, understood and regarded as relevant this has been considered by the Full Federal Court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; 67 IPR 488 at [29]- [30]) and will generally be a matter of evidence as to what the person skilled in the art would do when faced with the problem at hand (see also Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165). Evidence for this purpose encompasses conclusions that the Commissioner is entitled to make based on his or her knowledge as an administrative decision maker equipped with technical expertise.
41. An immediate difficulty for the opponent is that I do not consider that the evidence clearly demonstrates that the need for cleaning electrode wires in electrostatic separators or alternatively for frequent replacement of wires was understood and part of the common general knowledge in Australia at the priority date or disclosed in section 7(3) information. While the experts seem to agree that general cleaning of separator machines was known in the minerals processing field, the applicant’s evidence strongly suggests that wires were not cleaned specifically (Vandenbroucke at [37]-[38], Dawson at [20]-[21], Gates at [18]) but would be inspected during regular maintenance shutdowns. This contradicts the opponent’s evidence (Farmer 1st declaration at [3], Lickiss 1st declaration at [2]), however the opponent’s declarant Dr Morrison suggests at [35] that corona wire contamination was not a significant issue and that since separators need to be shutdown regularly the replacing of corona wires would not cause serious disruption. There is therefore doubt in my mind that cleaning of wires was commonly carried out and, on the evidence, it appears somewhat likely that in the art wires were inspected and replaced as required during normal maintenance. As Dr Farmer indicated “ionising electrode/corona wire was cheap so could also be replaced regularly”.
42. In this light it is difficult to conclude that, if the problem addressed by the specification is put broadly as how to deal with dirty corona wires in an electrostatic separator, a person skilled in the art would be led as a matter of course to introduce a specific cleaning means for the wires as claimed in claim 1. Many different approaches might be considered including regular replacement of the wires which do not require a significant and potentially expensive mechanical modification to the machine. It does not matter that once one decides to build such a cleaning device it may be simple to do and well within the knowledge of a person with ordinary skill in the art. It is also of no assistance to say that Dr Farmer in a matter of minutes sketched an automatic wire cleaner once suggested it should be done.
43. To the extent that claim 3 is not limited to the field of electrostatic separators it does seem possible that cleaning of corona wires is common knowledge in fields other than separators and particularly for photocopying machines. However the expert evidence provides limited assistance in determining whether in that light an arrangement where a cleaning device is moved along a wire during operation of the electrode is obvious. In particular it is not apparent why a person skilled in that broader field would be motivated to adopt that arrangement over other possibilities.
44. There is also no basis to find that the claimed invention is obvious in light of the cited prior art. Even if D3 and D4 (US 4,885,466) would have been “ascertained, understood and regarded as relevant” they appear likely to direct away from the claimed solution as they describe devices where the electrode moves past stationary cleaning means. D2 and D5 (US 3,842,273) have moveable cleaning means but being, respectively, applied to electrostatic precipitators and photocopiers, there remains the question of whether they would be considered relevant to the general problem postulated above. It appears to be overly simplistic to say that the answer to contaminated corona wires is cleaning where the evidence suggests that replacement of the wires was the standard industry approach.
45. Ultimately the onus is on the opponent to make out its case of invalidity to a standard of ‘clear or practical certainty” and it has failed to do so in relation to the ground of obviousness. As pointed out by Bennett J in Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805:
“I can accept that a lower standard may apply to proof of evidence such as whether a document has been published or, indeed, whether a prior art vessel was well-known. I do not accept that it properly applies to the factual question that itself is the test for obviousness or lack of inventive step. Where the factual question is itself the legal test, as set out in s 7(3) of the Act, it seems to me that it should be determined at the higher standard. That means that where there are two opposing expert views that are conclusive on obviousness, both presented bona fide by witnesses of accepted expertise, unless one set of views can be rejected on proper grounds, the legal burden to establish a ground of opposition is not discharged; the Court cannot be practically certain that obviousness or lack of inventive step is established.”
Manner of Manufacture
46. Section 18(1)(a) requires that an invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. The threshold requirement for a patentable invention will not be satisfied if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 at [9]; [1995] HCA 15; (1995) 183 CLR 655).
47. The opponent submits generally that the specification discusses the problem caused by contamination of the ionizing electrode in an electrostatic separator and then claims the solution of cleaning the wire. It says that what is claimed clearly lacks inventiveness on its face. The opponent also argues that what is claimed is mere automation citing BUSM v Simon Collier (1908) 26 R.P.C. 21.
48. There is no doubt what is claimed is simple particularly with the benefit of hindsight. However as indicated previously, the evidence filed in this matter does not support a conclusion that once the problem of dirty corona wires is identified the claimed solution follows inevitably. The specification also does not admit that manual cleaning of wires was known. Consequently the claims do not reflect “mere automation” and are not otherwise obvious on the face of the specification.
Conclusion
49. The opponent has failed to make out any grounds of opposition. Therefore the opposition is dismissed.
Costs
50. Orekinetics have been successful and I can see no reason for costs not to follow the event. I will award costs against Mineral Technologies.
P M Spann
Deputy Commissioner of Patents
0
17
0