Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd v Koppers Arch Wood Protection (Aust) Pty Limited - [2010] APO 29

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd v Koppers Arch Wood Protection (Aust) Pty Limited [2010] APO 29
Patent Application: 2002215690

Title:Material and method for treatment of timber

Patent Applicant:  Koppers Arch Wood Protection (Aust) Pty Limited
Opponents:  Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd
Delegate:  Dr S.D.Barker
Decision Date:  16 December 2010
Hearing Date:  29 September 2010 in Canberra
Catchwords:  PATENTS – opposition to the grant of a patent – grounds of novelty and inventive step argued – inherency of feature considered – mobility found to be inherent, but not common general knowledge – distinction between matter encompassed by citation and technical disclosure – citations did not disclose all the features of the claims – document in evidence not published in time, but family member considered to determine whether to invoke reg 5.11 – reg 5.11 not invoked – citations not relevant to the problem addressed by application – all claims are novel and inventive

Representation: Patent applicant: Gareth Dixon patent attorney of Shelston IP
Opponent:Michael Hall of counsel, assisted by George Griziotis patent attorney of Molins & Co

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2002215690

Title:Material and method of treatment of timber

Patent Applicant: Koppers Arch Wood Protection (Aust) Pty Limited
Date of Decision: 16 December 2010
DECISION
The opposition fails on all grounds.
Subject to appeal, I direct that the application proceed to grant.
I award costs according to Schedule 8 against Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd.
REASONS FOR DECISION

Patent application 2002215690 was an application under the Patent Cooperation Treaty by Koppers-Hickson Timber Protection Pty Limited. The earliest priority date of the application is 15 December 2000. The name of the applicant was changed to Koppers Arch Wood Protection (Aust) Pty Limited, and following examination was advertised accepted on 6 January 2005. A notice of opposition was filed by Osmose Australia Pty Limited and TimTech Chemicals Pty Ltd.
At the hearing the opponent stated that they relied only on the grounds of lack of novelty and lack of inventive step in relation to four documents: US 3837875, US 4750934, US 6534529 and US 4305978.
The specification
The specification relates to compositions for preserving timber building materials. The compositions are a mixture of a preservative compound in a carrier solution. The specification identifies a significant advantage of the compositions as "self healing", whereby the preservative is able to migrate within the timber to treat freshly cut surfaces of the wood:
"The applicant has found that the above mentioned material comprising a mixture of preservative and 'mobile' carrier provides an effective wood preservative which has a 'self healing' effect. Since the carrier remains mobile within the wood, it is capable of redistributing the active components of the preservative. This redistribution or migration of the carrier/preservative mixture will generally occur preferentially along the grain of the wood, however, some distribution across the grain will also occur. By providing such a migratable material, it is not necessary for the ends of the timber to be retreated after cutting since the active components of the material will be provided to the freshly cut ends with the migrating carrier oil."
(page 4)
The invention is characterised by the nature of the carrier solution. The consistory statement describes the carrier as:
"being selected such that it remains mobile within the wood and provides for migration of the preservative within the treated wood, said carrier including:
(a) a drying oil selected from linseed oil, fish oil or another drying oil, and
(b) an extender, such as heating oil"
(page 3)
The preservative agent can be any known insecticide, termicide, fungicide or mouldicide. The specification ends with 40 claims, of which claims 1 and 17 are most relevant for this opposition.
1. A non-water and non-solvent based material for treating wood comprising a preservative and a carrier, the carrier being selected such that it remains mobile within the wood and provides for migration of the preservative within the treated wood, said carrier including:
(a) a drying oil selected from linseed oil, fish oil or another drying oil, and
(b) an extender, such as heating oil;
said preservative including an insecticide, termicide, fungicide, mouldicide, or the like, or mixtures thereof.
17. A method of treating wood comprising contacting the wood with a non-water and non-solvent based material comprising a preservative and a carrier, the carrier being selected such that it remains mobile within the wood and provides for migration of the preservative within the treated wood, said carrier including:
(a) a drying oil selected from linseed oil, fish oil or another drying oil, and
(b) an extender, such as heating oil;
said preservative including an insecticide, termicide, fungicide, mouldicide, or the like, or mixtures thereof.
Construction of claim 1
Claim 1 is deceptively simple. The composition of claim 1 has three components (at least): a drying oil, an extender and a preservative. The relative amounts of these components is not limited, other than that the overall composition must be suitable for treating wood. Consequently there must be a sufficient concentration of preservative to achieve a preservative effect on a wooden product.
The composition of claim 1 must be suitable for treating wood. Wood is a broad term, encompassing everything from railway sleepers to fine furniture. There is no requirement that the product is specifically suitable for preserving timber building products, as against any other wooden product. Further, the claim is not limited to any particular method of treatment.
The key feature of the claim is that the composition must remain mobile within the wood. It is apparent that this depends on the composition of the mixture, and the way that it is applied to the wood. For instance, Dr Wakeling states at paragraph 41 of his third declaration that application at elevated temperatures would lead to reduced mobility. Claim 1 does not define how to determine mobility, however, by reference to the body of the description it is apparent that the specification refers to mobility following application by brief dipping. I believe that this is the construction that should be given to the claims.
Finally, the composition is defined as "non-water and non-solvent based". This statement must be understood in the light of the art:
"It is well known that three types of essentially different liquids are used as carriers of biocides within the wood preservation field: water, oil and solvent."
(first Wakeling declaration at paragraph 39; identical text used in first Schmalzl declaration at paragraph 40)
However, both Dr Wakeling and Dr Schmalzl explain that the distinction between these systems is not unambiguous:
"It is understood that there is sometimes a degree of overlap between oil carriers and solvent carriers if definitions are based on physical properties such as those describing volatility. It is also understood that water and oil phases are miscible upon creation of oil in water and water in oil emulsions and by production of solvent assisted aqueous solutions, typically by carefully controlled addition of appropriate emulsifiers. … Therefore, whilst overlap exists between carriers and the degree of overlap is affected by a number of factors such as choice of additive, method of mixing and process used to handle the carriers, the terminology used by the Opposed Application is sufficiently robust to convey a recognised meaning to those skilled in the art of wood preservation."
(paragraph 40 of Wakeling, paragraph 41 of Schmalzl)
Neither Dr Wakeling nor Dr Schmalzl provide a clear statement of their understanding of the scope of "non-water and non-solvent". It seems that the applicant's declarants consider that the term "non-water and non-solvent" means oil-based, but leave open the possibility that it might include some non-oil solvents and also some oil in water emulsions. I consider that an oil in water emulsion is prima facie inconsistent with the concept of a non-water system. In the absence of clear evidence that emulsions are regarded as non-water systems, I consider that emulsions are not within the scope of the claim.
Consequently, claim 1 is directed to a composition characterised by the following features:
A. The composition is a mixture of a carrier and a preservative
B. The composition is oil based
C. The amount of preservative is sufficient to achieve a preservative effect
D. The carrier is a mixture of a drying oil and an extender
E. The carrier remains mobile following application by brief dipping
Construction of claim 17
Claim 17 differs from claim 1 in that it is directed to a method of treating wood by contacting it with the composition of claim 1. All of my comments in relation to claim 1 also apply to claim 17.
Novelty
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) 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”
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) 91 ALR 513 at 517). It is well established that 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). A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim (see definition of "prior art base" in Schedule 1 of the Act).
The mobility question
Before dealing with each of the citations in turn, I will consider the issue of mobility of carriers. None of the citations specifically state that the carrier remains mobile within wood. The question thus becomes whether the property of mobility is inherent in the compositions of the citations.
Determining whether a property is inherent requires consideration of the available evidence. The clearest evidence is for a party to prepare the material of the prior art and determine its properties. In such a case inherency is clear. In the absence of such direct evidence, inherency can be inferred in some circumstances. For instance, if the examples in the citation are identical, or substantially identical, to those in the application under consideration, it is a safe conclusion that they inherently have the same properties. Alternatively, the application under consideration, or the prior art, may clearly assert that the property in question will be possessed by certain materials. It is reasonable to accept such an assertion until it is shown to be incorrect. In some cases it may be possible to predict the properties of a material from basic principles, or the known properties of related materials. In all cases, it is a matter of evaluating the available evidence and weighing it according to the standard of proof.
In the present case the opponent has not prepared and tested the prior art compositions to determine whether the carrier remains mobile. Instead I have been asked to infer that these compositions would inevitably have this property. I will carefully examine the evidence on this point.
Evidence 1: The specification
The specification under opposition states clearly that mobility can be achieved by the use of a range of carrier/extender combinations (at page 3)
"the carrier is a drying oil such as linseed oil or fish oil or any other drying oil, and may include extenders such as heating oil. These carriers remain mobile in the wood for a considerable period of time thereby allowing for migration of the preservative. The quantity of extender can be between 90 to 10% of the total carrier, preferably 30 to 70% and most preferably 40 to 60%"
The carriers specifically disclosed in the specification (at page 3) are linseed oil, fish oil, or "any other drying oil". The extender specifically disclosed is "such as heating oil". It is clearly asserted that mobility is a property of a wide range of oil based compositions.
Evidence 2: Professor Vinden
Professor Vinden repeatedly states that the mobility of oil based systems was well known, and is to be expected. For instance, at paragraph 7 of his eighth declaration he says:
"The mobility of oil type preservatives and their active ingredients is well known to those who are knowledgeable about wood preservation."
At paragraph 2 of his seventh declaration, Professor Vinden says:
"It was well known that oil based preservatives remain mobile in wood for many months or even years"
Similar statements are made throughout Professor Vinden's other declarations. This evidence is consistent with the assertion of the specification.
Evidence 3: the declarants for the applicant
The response by the declarants for the applicant is essentially to point out that the invention is based on careful selection of the carrier. Dr Schmalzl refers to this in paragraph 27 of his second declaration:
"The Opposed Application provides a useful method for achieving biocide mobility in wood and describes how this involves careful selection of a carrier."
Dr Wakeling makes a similar point at paragraph 33 of his third declaration:
"through careful selection of tailored carriers"
If there is a careful selection required, it is not disclosed in the specification. The specification suggests that the drying oil can be linseed oil (amongst others), and the extender can be anything (as heating oil is only an example). There is no suggestion of a limit on the relative amounts of the two components.
The declarants for the applicant also assert that the feature of mobility of the carrier was not recognised in the prior art. For instance, Dr Wakeling states at paragraph 82 of his third declaration:
"not tenable to argue that carrier mobility was an accepted beneficial feature of preservative treated wood"
While it is true that the citations do not recognise carrier mobility, that is immaterial. The only relevant question is whether, as a matter of fact, the carrier is mobile.
Conclusion on mobility
The specification indicates that mobility is achieved with carriers having a drying oil content of 10 – 90% and an oil extender. Clearly mobility is not a property that is confined to a narrowly selected range of oils. Professor Vinden has stated that oil based preservatives remain mobile for a period of months. This point is not directly refuted, despite the fact that it is made repeatedly. I am satisfied that mobility is an inherent property of a wide range of oil based preservatives.
The evidence does not suggest that this would have been common general knowledge. Professor Vinden's statement that mobility was "well known to those who are knowledgeable about wood preservation" is significantly different to the definition of common general knowledge as the general body of knowledge held and used by workers of ordinary skill in the industry (Minnesota Mining and Manufacturing Co v Beiersdorf (Aust.) Ltd (1980) 144 CLR 253 at 292). I am not satisfied that the mobility of such systems was common general knowledge.
US 3837875 (the Murphy patent)
Professor Vinden states that the invention is not novel in the light of Murphy (paragraphs 22 to 31 of his third declaration), as it discloses compositions containing linseed oil, turpentine, pine oil, a dryer and copper.
The Murphy patent was published on 24 September 1974. The patent relates to compositions for cleaning, sealing, preserving, protecting and beautifying articles. The invention, in summary, is
"The instant composition includes boiled linseed oil, turpentine, pine oil, a dryer, and atomised metallic copper with the copper being present in solution in the final composition in at least 0.0028 percent by weight."
(column 1)
Copper is used because of "its natural and inherent property of not supporting organic life and its property of prohibiting hydration" [column 1, lines 44 – 46], i.e. it is a preservative. The worked example is prepared from boiled linseed oil, atomised metallic copper, turpentine, pine oil and cobalt type dryer. As already discussed, I am satisfied that this composition inherently would be mobile. However, the applicant has raised a question as to whether the copper is used in an amount that would achieve a preservative effect (i.e. feature C). Both Dr Wakeling (at paragraph 32 of his first declaration) and Dr Schmalzl (at paragraph 33 of his first declaration) state that "there is insufficient copper in the formulation to be used as a preservative to achieve preservation requirements of Hazard Class 3 of Australian Standard AS 1604-2000". Professor Vinden does not address this matter.
I am not satisfied that the Murphy patent discloses feature C of claim 1. Consequently it has not been shown that the invention lacks novelty in the light of Murphy.
US 4750934 (the Metzner patent)
Professor Vinden states that the invention would have been obvious in the light of Metzner (paragraph 32 of his third declaration). However, the opponent argued that the invention also lacks novelty in the light of Metzner.
The Metzner patent was published on 14 June 1988. The patent relates to compositions for preserving wood. The invention in summary is:
"a wood preserving composition comprising an admixture of at least one insecticide, at least one organic binder or fixing agent, and at least one diluent"
(column 1)
The binder is described as "known synthetic resins and/or binding drying oils which are water-dilutable and/or soluble or dispersible or emulsifiable in the organic solvents used" (column 2). The applicant submitted that the point of Metzner is to fix the actives, and thus reduce their mobility. The second declaration of Dr Wakeling, at paragraph 39, states:
"Metzner centres upon the binding or fixation of what is otherwise a short-lived and/or poorly targeted insecticidal treatment."
Professor Vinden does not appear to address this point any of his declarations. While Metzner discloses compositions that are similar in composition to the present application, it appears that if a drying oil is used in Metzner it would be an oil that also binds, rather than remaining mobile. There is significant doubt that the active compounds in Metzner would inherently be mobile, and the evidence of the opponent does not remove this doubt. I am not satisfied that feature E is disclosed. Consequently it has not been established that any of the claims lack novelty in the light of Metzner.
US 4305978 (the Häger patent)
Professor Vinden stated that the invention is not novel in the light of Hager (paragraph 9 of his fourth declaration).
The Häger patent was published on 15 December 1981, so it is part of the prior art base. The Häger patent is not listed in the statement of grounds and particulars, even though the statement could have been amended at any time. The opposition is circumscribed by the particulars, with the consequence that Häger is not part of the opponent's case (see Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915 at page 38,625). However, the Häger patent is in evidence, and a brief inspection of it shows that the relevant example relates to the use of an emulsion. Since emulsions are not within the scope of claim 1 (or claim 17), the invention is novel in the light of Häger.
US 6534529 (the Uhr patent)

Professor Vinden stated that the invention is obvious in the light of Uhr (paragraph 36 of his third declaration). However, the opponent argued that the invention also lacks novelty in the light of Uhr.
The Uhr patent was published on 18 March 2003. As this publication date was after the earliest priority date of the present application, the Uhr patent is not part of the prior art base. Consequently, there is no lack of novelty in the light of the Uhr patent.
The Uhr patent derived from a PCT application that was published as WO 97/24032 on 10 July 1997. Consequently the Uhr PCT application is part of the prior art base. The Uhr PCT application is not in evidence, but I have obtained a copy and its disclosure is substantially the same as that of the Uhr patent. As the parties have made submissions on the Uhr patent, I have considered those submissions to determine whether the Uhr PCT application should be brought into the opposition pursuant to regulation 5.11.
Uhr relates to insecticidal compositions for the protection of industrial materials (including wood). The active compounds are a synergistic mixture of fipronil and an agonist or antagonist of nicotinic acetylcholine receptors. The active is incorporated into a composition with "solvent or diluent, emulsifier, dispersant and/or binder or fixative, water repellent, if appropriate desiccants and UV stabilizers and, if appropriate, colorants and pigments and other processing auxiliaries" (column 8). Uhr does not exemplify any specific compositions.
Dr Wakeling states (at paragraph 29 to 33 of his second declaration):
"The bulk of the emphasis of Uhr centres upon describing the chemistry of the agonist or antagonist molecule which improves the usefulness of fipronil, and upon the way in which the two synergistic molecules are brought together to form useful mixtures … Whilst use of a vegetable oil as a solvent and diluent is referred to, it is reasonably clear that emphasis is on use of vegetable oil as a binder. … Uhr emphasises 'binding' the mixture to improve functionality, e.g. by reference to the use of fixatives and reference to 'reduction of volatilisation
Professor Vinden does not dispute these statements.
While the compositions broadly described in Uhr overlap with those in the present application, that is not enough to establish lack of novelty. When considering whether a broad disclosure is sufficient to anticipate a narrower claim, I am guided by the comments of Bennett J in EI Du Pont de Nemours & Co v Imperial Chemical Industries PLC [2007] FCAFC 163 at [155], where Her Honour drew a distinction between matters that were part of the "technical disclosure" and thus disclosed for novelty purposes, and those things that were merely "encompassed by" the citation. It is not apparent that the technical disclosure of Uhr is specifically directed to compositions of the type covered by claim 1. Consequently I am not satisfied that claim 1 (and thus claim 17) lacks novelty in the light of the Uhr PCT application.
Inventive step
According to section 7(3), a document is prior art for the purposes of considering inventive step if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant". The problem addressed by the invention is to provide a composition that is self healing. In order for the citations to be relevant, it is necessary to be satisfied that a person skilled in the art could have considered them relevant to this problem. Sometimes it is readily apparent why a citation is relevant, but this is not such a case. None of the citations state that they address the problem of self healing, and I am not satisfied that it was common general knowledge that the compositions would inherently be mobil. Professor Vinden asserts that they documents would have been regarded as relevant, but without explanation. In the absence of explanation, I am not satisfied that these citations would have been regarded as relevant to the problem of self healing.
Conclusion
I have found that none of the documents in evidence establishes a lack of novelty or a lack of inventive step.
Costs
The opposition fails completely. In this situation it is appropriate to award costs against the opponent.
Dr S.D.Barker
Delegate of the Commissioner of Patents