Nitto Electric Industrial Co. v Luminis Pty Ltd
[1994] APO 8
•24 January 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 597424 in the name of NITTO ELECTRIC INDUSTRIAL CO LTD
Title: Vermin Exterminating Element and Vermin Exterminating Method using it
Action: Opposition by LUMINUS PTY LTD
Decision: Issued .
Specification does not comply with section 40 (fair basis). Claims 1, 8 and 9 lack novelty in light of admitted prior art. One of the opponent's prior art documents deprives claim 1 of its novelty. The opponent has not established a case of lack of inventive step.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application no. 597424 by Nitto Electric Industrial Co. Ltd and Opposition thereto by Luminis Pty Ltd.
BACKGROUND
Patent Application no. 597424 by Nitto Electric Industrial Co., Ltd ("Nitto") was lodged on 18 September 1987 as a convention application relying on 3 Japanese basic applications (2 filed on 19 September 1986 and 1 filed 14 May 1987) to establish priority.
The application was advertised accepted on 31 May 1990 and on 30 August 1990, Luminis Pty Ltd ("Luminis") filed a notice of opposition to the grant of a patent. All evidence stages were completed by 22 December 1992.
On 22 July 1992, the applicant filed a request to amend the complete specification. The opponent submitted comments on the amendments on 29 September 1992 and the amendments were subsequently allowed on 20 May 1993.
The opposition was heard in Canberra on 16 September 1993. Dr John McCann (patent attorney from Spruson and Ferguson, Sydney) represented the applicant. Ms Catherine Hustwick (patent attorney from R K Maddern and Associates, Adelaide) represented the opponents and appeared by telephone. She was assisted by Professor Dudley Pinnock, a declarant in the proceedings.
As the application was both lodged and advertised accepted before the commencement of the Patents Act 1990, the provisions of Section 234(3) of the 1990 Act and regulation 23.3 are applicable that is, the opposition is essentially governed by the provisions of the 1952 Act and Regulations.
Although the notice specified the grounds of opposition as those listed in paragraphs (c), (d), (e), (f), (g), (h) and (i) of sub-section 59(1) of the Patent Act, 1952, the submissions at the Hearing was restricted to the grounds of (e), (g), (h) and (i) (i.e: prior publication, obviousness, novelty and section 40).
SPECIFICATION
The invention relates to a biological control means for exterminating certain insecticidal pests. The admitted prior art (pages 2 and 3) discloses that mold fungi (e.g. Beaveria brogniartii (tenella)) have been trialled to control long-horned beetles; the prior art method involved cultivating the mold fungi in a wheat bran culture medium and directly dusting the cultured fungi onto trees. However, this has the disadvantage that the cultured fungi are in a near-dormant state since they cannot imbibe culture medium components.
Further problems identified in the admitted prior art are:
(a)many of the dusted cultured fungi are absorbed by the soil without attaching to trees which also reduces the insecticidal efficiency;
(b)the fungi attached to trees are in danger of being leached out by natural conditions (rain, wind, etc);
(c)dusting of a culture medium containing large amounts of organic substances and high nutrients such as wheat bran, etc can indiscriminately proliferate natural microorganisms and hence, there is a danger that a large number of undesirable microorganisms are proliferated to cause secondary contamination.
The invention is said to solve these prior art problems. It is based on a carrier which has culture medium containing culture components such that the "vermin infectious microorganism" can sufficiently imbibe the culture medium components. The carrier also contains the microbes such that they will not be washed away. The preferred embodiments disclose a polyurethane foam impregnated with a culture medium and inoculated with various mold fungi.
The specification concludes with 29 claims of which claims 1, 2, 9, 10 and 29 are independent. Claim 1 (as amended after acceptance) is:
An insect exterminating element comprising a culture carrier having culture medium components containing insect infectious microorganisms and/or the spores of insect infectious microorganisms cultivated therein, said insect infectious microorganisms being at least one of Beauveria brongniartii (tenella), Beauveria bessiana, Verticillium lecanii, Synnematium jonesii.
Claim 2 (as amended after acceptance) is:
An insect exterminating element comprising a culture carrier having culture medium components containing an insect infectious microorganism and/or the spores of insect infectious microorganisms cultivated therein, said insect infectious microorganisms being Metarhizium anisopliae, wherein the culture carrier is a foam matrix obtained by foaming a foaming composition together with the culture medium components.
Claims 9 and 10 define methods of insect extermination which use the elements defined in claims 1 and 2 and claim 29 is an omnibus claim.
A critical aspect of this decision is the interpretation of what the term "carrier" in the specification and claims.
Sheppard J in summarising the rules for construing claims in Decor Corp v Dart Industries 13 IPR 385, stated that the words of the claim are to be given their plain meaning. The term "carrier" has a plain meaning in biotechnology. This is exemplified by the MacMillan Dictionary of Biotechnology by J. Coombs published by the MacMillan Press Ltd (1986) which defines a carrier as:
"a matrix placed within a bioreactor or cell culture system to act as a support on which the active biomass or cells grow and become immobilized".
Notwithstanding this, the meaning of the term "carrier" must be determined by the skilled addressee on reading the specification as a whole. A general definition of a carrier is given in the specification (see page 5A, lines 11-14):
"A carrier which can carry culture medium components and can culture vermin infectious microorganisms and/or the spores of vermin infectious microorganisms with the culture medium components therein can be used as the culture carrier in this invention."
However, this definition is ambiguous. It could mean that the carrier either:
(a)is attached to the culture medium components which in turn contain vermin infectious microorganisms; or
(b)encloses both the culture medium components and the vermin infectious microorganisms.
Since the examples given in the specification of the carrier (page 6, lines 1-3) include boards, cloth pieces, etc having bran flakes attached thereto, it seems that the first interpretation is intended. Such a definition is consistent with the dictionary definition given above and hence, with the plain meaning of the word "carrier".
I conclude that the term "(culture) carrier" is defined by its plain meaning and by the general definition given in the specification. In other words, the carrier is a matrix which is attached to culture medium components which in turn contain and culture vermin infectious microorganisms.
EVIDENCE
The evidence-in-support of the opposition consists of:
a statutory declaration by Dudley Edwin Pinnock, currently Professor of Entomology and Chairman of the Department of Entomology, Waite Agricultural Research Institute, The University of Adelaide, South Australia, and 13 supporting exhibits (labelled DEP 1-13);
a statutory declaration by Dudley Edwin Pinnock asserting that certain publications are generally available and would be well-known to persons interested in matters pertaining to the opposed patent application;
7 statutory declarations from Ellen Ann Randra and 1 statutory declaration from Margaret Jean Cottington, both librarians, establishing publication dates in Australia for certain exhibits.
The evidence-in-answer consists of:
a statutory declaration from Peter Frederick Miller, currently the head of the Bioscience Unit, University of Technology, Sydney with extensive research and industrial experience in entomology and pest control with 3 supporting exhibits (labelled PFM1-3);
a statutory declaration from Elizabeth Wilkes, a librarian, attesting to the publication date of the exhibits.
The evidence-in-reply consists of:
a third statutory declaration from Dudley Edwin Pinnock with 3 supporting exhibits (labelled DP1-3);
a statutory declaration from Ellen Ann Randva attesting to the publication date of DP-3.
Dr McCann, on behalf of the applicant, gave written submissions after the Hearing based on his oral submissions. On 20 September, he made some written revisions to these. The opponent was forwarded copies of both the written submissions and the revisions. They objected to any of this material being used in the writing of this decision. Ms Hustwick believed that the submissions were voluminous and claimed that as a result she could not ascertain whether any new evidence was being submitted.
However, I believe that the written material can be used where it does not contain new matter - see, for example, Bristol-Myers v L'Oreal 25 IPR 443 at pages 449 and 450 where a similar situation arose. I advised both the applicant and opponent that I intended to proceed on the basis outlined in the case above-viz:
-I may take into account any submissions which relate to evidence already served; and
-I will not take into account any new evidence (if any) raised in the written submissions.
I also invited the opponent to provide any written submissions in response to the revised submissions.
SUBMISSIONS
On behalf of the Opponent, Ms Hustwick argued that the claims were not novel and lacked an inventive step in light of the prior art references provided as exhibits DEP 2-13 and DP 2-3. She also submitted that the specifications had deficiencies under section 40. In particular:
(a)the specification was not fully described in that:
it provided no instructions for the evaluation and selection of appropriate strains of microorganisms;
with reference to page 13, lines 12-13, no instruction is given on how to apply the foam as a dust;
there has been no evidence that the method works in the field to achieve insect control.
(b)claims 9-15, 17-27 were not fairly based because the specification only exemplified the application of the exterminating composition to trees and the methods used were not applicable to other growing plants.
Dr McCann, for the applicant, compared each of the amended claims with the cited art concluding that none of the citations have all the essential features of the claims as amended; as a result, he contended that the claims were novel. In relation to inventive step, Dr McCann argued that there was no evidence from the opponent to show:
(a)that the citations were part of the common general knowledge of a person skilled in the relevant art at the priority date;
(b)that a combination of the publications referred to would produce the claimed invention; and
(c)that it would have been obvious to a person of ordinary skill in the relevant art to select the references supplied by the opponent to form a particular combination of features defining the present invention.
Hence, Dr McCann concluded that there was no evidence to establish that the opposed application lacks an inventive step over the prior art.
With regard to the section 40 issues that the opponent raised, Dr McCann submitted that:
(a)Professor Miller considers that it would be within the common general knowledge of the skilled addressee to select appropriate pathogenic strains of microorganisms using only ordinary experimentation.
(b)With reference to the lack of instructions on applying the foam as a dust, Professor Miller considers that a skilled addressee would be able to obtain the foam as a dust. This directly contradicts Professor Pinnocks evidence and in those circumstances, Dr McCann argued that the proper course of action would be to accord the benefit of doubt to the applicant (Commissioner of Patents v Microcell (1959) 102 CLR 232).
(c)the opponent has provided no data in support of their assertion that the "elements" would not be effective in the field. Further, the contrary opinion of Professor Miller and the experiments in examples 18 and 19 demonstrate the effectiveness of the claimed method in field tests.
(d)the opposed specification sufficiently describes methods of application of the claimed element. Professor Miller states that in his opinion "an agriculturalist would be able to apply the vermin exterminating element to trees, seedlings and other loci mentioned on page 13, line 22-24 of the specification".
DECISION
NOVELTY
The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) CLR 228 at page 225 where Aiken J stated:
"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".
Infringement of a claim has been said to occur where "each and every one of the essential integers of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367).
It follows that the first step in determining whether a claim lacks novelty is to construe the specification to determine the essential features of the claim.
The issue of determining essential features was discussed in Catnic Components v Hill & Smith [1982] RPC 183. The judges in that case concluded inter alia that a feature is essential to a claim if:
(a)it was essential to the working of the invention; or
(b)it materially effects the way an invention works.
In claims 1 and 9 (the broadest independent claims), it is the combination of all the integers in the claim that purports to achieve the object of the invention. Hence, I believe that each feature of claims 1 and 9 is essential:
"if on its true construction the claim is for a particular combination of integers and the alleged infringer omits one of them, the infringer escapes liability" (Nicaro Holdings v Martin Engineering 16 IPR 545).
Thus, the essential features of claim 1 are:
(a)a culture carrier, having
(b)culture medium components containing insect infectious microorganisms and/or the spores of insect infectious microorganisms cultivated therein;
(c)said insect infectious microorganism being at least one of Beauveria brongniartii (tenella), Beauveria bessiana, Verticillium lecanii, Synnematium jonesii.
Although the claim defines an insect exterminating element, that term is not a limiting feature of the claim. As the claim is currently drafted, the combination does not have to be used (or even intended to be used) as an insect exterminating element, it merely has to be capable of being used as an insect exterminating element.
The essential features of claim 9 are the method of applying the insect exterminating element defined in claim 1 onto turf, a tree, shrub, bush, palm, flower or other growing plant.
Claims 2 and 10 include an extra feature (a foam matrix) which I construe as essential from the specification. There is a distinct advantage to using the foam matrix as a type of carrier. The foam matrix carries the culture medium components firmly and incorporates the cultured microorganisms such that they are less likely to be washed away by environmental conditions (page 7, line 13 - page 8, line 18; page 33, lines 9-13). As a result, this feature materially effects the working of an invention, and therefore it must be essential to the claims in which it is defined.
CITED DOCUMENTS
Having completed that analysis, it is relatively straight-forward to compare the essential features of each of the independent claims with the citations raised by the opponent. The opponent relied on 13 documents (exhibits DEPs 2, 4-10, 11, 12, 13 and DPs 2 and 3) to establish a case of lack of novelty. The documents DEP 4-10, 12 and 13 do not disclose any of the specific fungi defined in any of the independent claims. The documents, DEP 2 and DP 3 disclose a fungal bait containing Metarhizium anisopliae. These documents do not disclose an infectious microorganism from the group Beauveria brogniartii (tenella), Beauveria bessiana, Verticillium lecanii and Synnematium jonesii as required by claims 1 and 9 nor do they disclose a foam matrix which is an essential feature of claims 2 and 10.
DP 2 (on pages 23 and 24) discloses the use of Beauveria bassiana in the biological control of codling moth larvae. The microorganism was incorporated into a calcium caseinate dust as a carrier but there is no suggestion in the document that the microorganism was cultivated on or within the culture carrier. In addition, although the document discloses "tree bands", these do not appear to be "culture carriers" (as required by claims 16-22) but rather marked areas to test the effectiveness of the tree treatment (see page 11, column 2 of DP-2, for example).
DEP-11 (an journal article by Refat El-Sufty entitled "Enhanced culture of Beauveria bassiana by incorporation of insect material into the growth medium" published in the Abstracts of the XVII International Congress of Entomology (Hamburg, Germany August 20-26, 1984) page 757) discloses an enhanced culture on agar of Beauveria bassiana. The agar is clearly a carrier within the general definition because it acts as a support of culture medium components which in turn contain and cultivate vermin infectious microorganisms. Thus, the document DEP-11 discloses a carrier (agar) with culture medium components (powdered dried larvae of Galleria mellonella) having a specific entomogenous fungus (Beauveria bassiana) cultivated therein. Although the document does not disclose the use of the combination as an "insect exterminating element", it clearly has this functional capacity. The fungus is still virulent after the culturing steps and would remain so even when attached to a culture carrier and with culture medium components. As a result, the document DEP-11 discloses each of the essential features of claim 1. The document was published in Australia on 21 May 1985 which before the priority date of claim 1. Therefore this claim is not novel in light of DEP 11. DEP 11 does not affect the novelty of the remaining claims. It neither discloses the microorganism Metarhizium anisopliae of claim 2, the foam matrices of claims 3-7 and 29 nor any of the methods of using an insect exterminating element defined in claims 9-28. I am not in a position to state whether Galleria mellonella is a longhorned beetle or scarab and I therefore cannnot comment on the novelty of claim 8.
I conclude that claim 1 is not novel in light of DEP 11 but that the other documents relied on by the opponent do not deprive any of the claims of their novelty.
ADMITTED PRIOR ART
At the Hearing, I also raised the issue of the novelty of claims 1, 8, and 9 in the light of the admitted prior art.
The admitted prior art (page 2, line 21 to page 3, line 2) discloses cultivating the mold fungi in a wheat bran culture medium and directly dusting the cultured fungi onto trees. If the bran flake is a "carrier" in the context of the specification, the admitted prior art will fall within the scope of the claims and render them not novel.
Professor Pinnock (for the opponent) had argued that a bran flake was a carrier (Pinnock (A) paragraph 4(b) and Pinnock (B), paragraph 5). Professor Miller (for the applicant) disagreed with this arguing in his declaration (paragraph 9) that in his opinion it is the "boards, cloth pieces, foam, matrices, etc" that are the carrier and not the bran. In his revised submissions, Dr McCann made the same point suggesting that when the carrier is read in the light of the whole specification, the bran flake is not a (culture) carrier.
I believe that the limitations that Professor Miller and Dr McCann have placed on the term are not valid. The bran flake with its "bread-like structure" falls within the scope of the term carrier which I have interpreted earlier. The fact that the bran flake is a culture medium component does not preclude it from it also being the carrier. The definition of "carrier" would include a matrix which itself formed part of the culture medium components. Other types of culture medium components (e.g. gelatin matrices, page 10) are given as specific examples of carriers in the specification and there is no explicit reference in the specification to exclude the use of the bran flake as a carrier.
Despite his submissions above, the applicant has also had some difficulties with the definition of the term "(culture) carrier" during these opposition proceedings. Firstly, the section 104 amendments made after acceptance would appear to have been made to avoid the prior art disclosed in exhibit "DEP 2" lodged as part of evidence-in-support. However, that exhibit only discloses the use of Metarhizium anisopliae cultured on bran flakes in the biological control of Aphodius tasmaniae. If bran flakes were not considered "carriers" by the applicant, the amendments would not have seemed necessary. Secondly, Dr McCann, at the Hearing, admitted that the claims could have been clearer with regard to the term.
I conclude that the bran flake is a carrier in the context of the specification and that therefore the admitted prior art falls within the scope of claims 1, 8 and 9. These claims are therefore not novel in light of the admitted prior art.
OBVIOUSNESS
Under the 1952 Act, the determination of obviousness depends on the common general knowledge in the field of the invention in Australia at the priority date (see the judgement of Aiken J in Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd 144 CLR 253). The test for obviousness is whether the invention would have been obvious to a non-inventive skilled worker in the art having regard to their common general knowledge.
Thus, the first step in determining whether a claim is obvious is to establish the common general knowledge of the non-inventive skilled worker in the art. I agree with Dr McCann's submissions that the opponent has merely asserted and not provided any evidence that the citations raised are part of the common general knowledge.
A statutory declaration from Professor Pinnock asserts that certain documents (DEP 2, 10, 11) are "well-known". It is unclear whether the term "well-known" actually means that Professor Pinnock regards the document as common general knowledge. However, even if he was asserting this, it is insufficient evidence. Firstly, there is also no suggestion in the declaration that the documents would be "well-known" to the non-inventive skilled worker in the art in Australia at the priority date of the claim. Secondly, there is no evidence that the information in the documents was "generally known and accepted without question by the bulk of those who are engaged in the particular art" (British Acoustic Films v Nettlefold Productions Ltd (1936) 53 RPC 221). I also note that two of the three of the documents Professor Pinnock refers to are in quite specialized journals (one pertaining to a conference in Germany) rather than in a textbook or other more usual source of common general knowledge.
I have no other written evidence that any of the remaining documents are common general knowledge. I also accept Dr McCann's argument that some of the documents (in particular DEP 4 - 6) are in a field of biological control using nematodes rather than fungi. The two fields are, at least prima facie, quite distinct and it would seem unlikely that documents from one field could form part of the common general knowledge in another. I note again that these citations are in specialist journals rather than in textbooks or in other more usual sources of common general knowledge.
Documents DEP 7-9 appear to be excerpts from textbooks and there is an implication in DEP-8 that the techniques of tree banding and culture traps are widely practised. I quote from DEP 8:
"It has been found that if such bands are impregnated with beta-napthol or certain other chemicals, the worms will not be noticeably repelled but they will be killed in their cocoons by the poison. Such bands have been widely adopted and are generally considered to be well worth while."
However, the techniques used are in chemical control rather than biological control and it is not clear that they would be part of the common general knowledge of the non-inventive skilled worker in the art of biological control using fungi. There is, in any case, no evidence that these particular textbooks are common general knowledge.
Consequently, I am not satisfied that there is any evidence that any of the documents raised by the opponent constitute part of the common general knowledge.
Even if I were to conclude that the citations were part of the common general knowledge, I would nevertheless find that the opponent has not proven a lack of inventive step in light of the citations. In a combination patent, the test for obviousness is the following:
"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious...The opening of a safe is easy when the combination has been already provided." (Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd 144 CLR 253).
I agree with Dr McCann's submission that there is no evidence to show that it would have been obvious to a person of ordinary skill in the relevant art to select the references supplied by the opponent to form a particular combination of features defining the present invention. Hence, I conclude that the opponent has not established that there is a lack of inventive step.
SECTION 40
Full Description:
The responsibility of the patentee with regard to sufficiency of description is governed by the statutory requirements of section 40(2)(a) of the Patents Act 1952. A complete specification must describe the invention fully including the best method known to the applicant of performing the invention.
There are two distinct duties incumbent on a patentee in preparing his complete specification to meet the requirements of full description:
"In the first place, he must "particularly describe and ascertain the nature of the invention" and, in the second place, he must particularly describe and ascertain "in what manner the same is to be performed". These two duties are distinct and have distinct objects" (Vidal Dyes Syndicate Ltd v Levinstein 29 RPC 245).
By their submissions, the opponent is suggesting that the applicant has not met the second "duty" (i.e. they have not provided enough information for a skilled addressee to perform the invention). In particular, they have argued that:
(a)there is no evidence of the efficacy of the element in the field
(b)there is no instruction on how to apply the foam as a dust;
(c)there is no instruction on how to select an appropriate pathogenic species.
The first argument concerns the issue of inutility rather than insufficiency. The difference between the two is outlined in Tetra Molectric Ltd's Application [1977] RPC 290 at 297:
"If you cannot achieve the promised invention because of deficiencies in the information given in the specification, there is insufficiency. But, if in following that information and having achieved mechanically that which the specification promises you will achieve by so following it, the end product will not of itself achieve that promise, then that is inutility".
Inutility is confined to revocation proceedings and is not available as a ground of opposition. Therefore, the arguments have no relevance in this action and will not be considered further.
In contrast, the second and third arguments are related to sufficiency of description. In reply to these arguments, the applicants have submitted that:
(a)it would be within the common general knowledge of persons skilled in the relevant art to overcome the alleged deficiencies;
(b)the opponents arguments are mere assertions with no evidence to support them - in these circumstances the benefit should be given to the applicant as in Commissioner of Patents v Microcell (1959) 102 CLR 232).
In my view, both submissions from the applicant are valid. For sufficiency, it is not necessary for a patentee "to instruct persons wholly ignorant of the subject-mattter to which the invention relates" (Edison and Swan United Light Co. v Holland (1889) 6 RPC 243). It is well established law that the specification does not need to include every detail of how to perform the invention. If the skilled addressee can supply that detail from their common general knowledge without needing an inventive step, the specification may still be valid. Thus, as was said in AMP v Utilux (1971) 45 ALJR 123:
"Specifications very frequently contain mistakes, they also have omissions. But, if a man skilled in the art can easily rectify the mistakes and readily supply the omissions, the patent will not be held invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions has been stated to be this. Can he rectify the mistakes and supply the omissions without the use of any inventive faculty? If he can, then the description of the invention is sufficient. If he cannot, the patent will be void for insufficiency."
The opponent has not provided any evidence to establish that inventive faculty is required to "supply" the apparent omissions. They have also not established that any "prolonged research" was needed outside of "a reasonable degree of skill and common general knowledge of the art in making trials" (Valensi v British Radio Corp [1973] RPC 337). Further, the specification itself is not manifestly insufficient.
I therefore conclude that the opponent has not established a case that there is insufficient instruction for the skilled addressee to perform the invention.
Fair basis
Section 40(2) requires that the claims be fairly based on the matter described in the specification. The Mond Nickel rules (in Mond Nickel Company Ltd's Application [1956] RPC 189 at 194) provide a general test for determining the fair basis of a claim:
Is the alleged invention as claimed broadly described in the specification?
Is there anything in the specification which is inconsistent with the alleged invention as claimed?
Does the claim include a characteristic of the invention a feature as to which the specification is wholly silent?
The opponent has made a number of submissions suggesting that the specification does not contain enough information to support the current breadth of the claims. In other words, they believe that the invention as claimed is not broadly described in the specification (Mond Nickel rule 1). More particularly they argued that claims 9-15, 17-27 are not fairly based because the specification only exemplified the application of the exterminating composition to trees and the methods used were not applicable to other growing plants.
In order for a claim to be "broadly described", the specification does not need to contain every detail of how to put the invention into effect. Rather, the skilled addressee:
"must....be prepared to display a reasonable degree of skill and common knowledge of the art in working trials..." (Valensi and another v British Radio Corporation [1973] RPC 337.
With regard to this submission, Professor Miller states in evidence-in-answer:
"it would be within the common general knowledge of a person skilled in the art how to place the vermin exterminating element on plants other than trees, for example using holes in the element or wire, or placing the element at the base of such plants."
If this is true then there will be sufficient support for the claim as long as there was not any "prolonged research" outside of "a reasonable degree of skill and common general knowledge of the art in making trials" (Valensi v British Radio Corp [1973] RPC 337). Professor Pinnock, in evidence-in-reply, argued that:
"Different pest species have different habitats and behaviour on different crops, and therefore the placement of these "elements" will have to be different, and possibly specific for the pest/crop system."
He did not suggest in his response that it would be outside the common general knowledge of the skilled addressee to be able to produce the relevant elements. However, he argued that the average agriculturalist would not have the degree of skill necessary to perform the invention (in other words, that an unreasonable degree of skill was required to work the invention). I do not believe that the skilled addressee of this specification is an average agriculturalist. The skilled addressee is a person who would be engaged in culturing mold fungi and producing foam matrices containing those cultures. This would be outside the realm of an average agriculturalist; a more skilled agricultural scientist specialising in biological control using fungi would perfom this task. Such a skilled addressee would have the necessary skill to adapt the placement of the relevant elements to the specific pest/crop systems. There is no evidence (other than mere assertion) that such placement would require "prolonged research". As a result, the opponent has not proved their case that the claims were not broadly described.
With regard to the remaining Mond Nickel rules, there is nothing in the specification which is inconsistent with claims 9-15, 17-27 defining the application of the element on other than trees nor do the claims include a characteristic of the invention on which the specification is wholly silent. It follows that the claims to the use of the element on other than trees are fairly based on the description.
Although I have not accepted the opponents arguments, I consider nonetheless that claims 1, 8, and 9 (at least) lack fair basis. According to the High Court, if a patentee chooses to state advantages of his invention, failure of a claim to embody the primary objects of the invention results in failure of the claim under sub-section 40(2) (AMP Inc v Utilux Pty Ltd 45 ALJR 123 at page 131). In this case, the specification outlines a number of problems in the prior art (see pages 3,4):
(a)the cultured fungi are in a near dormant state since they cannot sufficiently imbibe the culture medium components;
(b)dusted cultured fungi are absorbed by soil rather without attaching to trees;
(c)even the fungi attached to trees are in danger of being washed out by the natural conditions;
(d)dusting of a culture medium containing large amounts of organic substances and high nutrients such as wheat bran, etc, can indiscriminately proliferate natural microorganisms.
The stated object of the invention was to overcome these prior art difficulties. From the specification as a whole I conclude that the problems are solved by the following sets of features which I construe to be essential:
a carrier which contains specific microorganisms cultivated with culture medium components inside of the carrier (this type of carrier overcomes problems (a), (c) and (d) of the prior art mentioned above (see pages 7,8 of the specification)); and
a carrier which can be used in the selective placing of an insect exterminating element onto a tree wherein the carrier contains specific microorganisms cultivated in culture medium components and attached to the carrier (this type of carrier solves problem (b) of the prior art (page 13, lines 10-17)).
All the specific examples have one or both of these sets features. Claims 1,8, and 9 do not have these features and as a result, these claims are not fairly based.
CONCLUSION
I find that the opposition succeeds in part with regard to fair basis, and novelty:
-claims 1, 8 and 9 are not novel in light of the admitted prior art;
-claim 1 is not novel in light of the journal article by Refat El-Sufty "Enhanced Culture of Beauveria bassiana by Incorporation of Insect Material into the Growth Medium" Abstracts from XVII International Congress of Entomology, Hamburg, Germany, August 20-26, 1984 (page 757) (exhibit DEP 11);
- claims 1, 8 and 9 are not fairly based.
I believe that the defects I have identified can be overcome and that the applicant should be given an opportunity to amend the specification.
I therefore allow the applicant 60 days from the date of this decision to propose relevant amendments.
COSTS
In actions before the Commissioner, costs normally follow the event. I see no reason to depart from this practice and award costs against the applicant.
(Karen Ayers)
Delegate of the Commissioner of Patents
patent attorneys for the applicant: Spruson & Ferguson,
Sydney
patent attorneys for the opponent : R K Maddern &
Associates, Adelaide
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