Outotec Oyj v Commonwealth Scientific and Industrial Research Organisation - [2014] APO 83

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Outotec Oyj v Commonwealth Scientific and Industrial Research Organisation [2014] APO 83
Patent Application: 2008253577

Title:Feedwell device

Patent Applicant:                   Commonwealth Scientific and Industrial Research Organisation
Opponent:  Outotec Oyj
Delegate:  Rhys Munzel
Decision Date:  12 December 2014
Hearing Date:  Written submissions completed on 9 September 2014
Catchwords:  PATENTS – opposition under s 104(4) – allowability of proposed amendments – in substance disclosure – does the amendment give rise to a lack of clarity, fair basis, or full description? – purposive construction applied – amendments found allowable

Representation: Patent applicant: Freehills Patent Attorneys
Opponent:Shelston IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008253577

Title:Feedwell device

Patent Applicant: Commonwealth Scientific and Industrial Research Organisation
Date of Decision: 12 December 2014
DECISION
Subject to appeal I allow the amendments filed 8 November 2013 and I award costs according to Schedule 8 against Outotec Oyj.
REASONS FOR DECISION
Background of the application

Patent application 2008253577 (“the application”) entitled “Feedwell Device” was filed by Commonwealth Scientific and Industrial Research Organisation (“CSIRO”) on 14 May 2008 under the provisions of the Patent Cooperation Treaty. CSIRO filed a request for examination on 15 November 2010 and, following examination, acceptance of the application was advertised on 8 March 2012.
On 8 June 2012 Outotec Oyj (“Outotec”) served a notice of opposition to grant of a patent for the application. This decision does not relate to that opposition, which is currently ongoing. On 8 November 2013 CSIRO filed a request to amend the specification. On 4 December 2013 Outotec filed comments disputing the allowability of the proposed amendments (“the amendments”), to which CSIRO filed comments in response on 7 February 2014. The Commissioner subsequently advertised that she had granted leave to amend the specification on 6 March 2014. On 6 May 2014 Outotec filed a notice opposing allowance of the amendments. This decision relates to that opposition.
Neither party filed evidence for this opposition. Outotec filed written submissions on 9 September 2014. CSIRO did not provide any submissions however in forming this decision I have considered its previously filed comments concerning the amendments.
Relevant law
I note that, as CSIRO requested examination before 15 April 2013, substantive amendments of the Patents Act 1990 (Cth) (“the Act”) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) do not apply to this opposition. This includes an amendment to s 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure. Instead, the relevant sections of the Act are ss 102(1) and (2) and s 40 as they existed prior to Raising the Bar.
The specification as accepted and as originally filed
The specification as accepted relates to an apparatus for the flocculation of particles in a solid-liquid stream and in particular to an apparatus and method for use in a solids settling device (at page 1 lines 1-5). The specification notes that separation of a suspension of particles into supernatant liquid and concentrated sludge is a common industrial process (at page 1 lines 6 and 7). Chemical reagents such as coagulants or flocculants (the two are treated synonymously in the application – at page 1 lines 18-21) are often added to the suspension to induce bonding between the particles, thereby forming agglomerates which settle out of the suspension (at page 1 lines 16-25).
Commonly used gravity thickeners (a type of device which separates by settling) are described as follows: a suspension enters the thickener through a central feedwell, clarified liquor overflows into a launder located about the periphery of the thickener, and thickened sludge collects in a conical base and is raked to a central discharge point (at page 1 line 27 to page 2 line 3). Feedwells are noted (at page 2 lines 7-12) as being is typically designed to:
(a)act as a baffle to absorb the energy of the suspension entering the thickener;
(b)assist with flocculation of the solid particles in the suspension; and
(c)distribute the suspension exiting the feedwell uniformly across the settling area of the thickener.
Separation device performance is identified as dependent on the flow-rate of the incoming solid-liquid stream (at page 2 line 18). Turbulent flow in the feedwell hinders flocculation because agglomerates will less readily form and more readily segregate (at page 2 lines 21-27). In extreme cases the stream exits the feedwell in a turbulent state and a significant proportion of the agglomerates do not settle but instead exit via the overflow launder (at page 2 line 31 to page 3 line 3). On the other hand avoidance of turbulent flow results in the stream not spending sufficient time in the feedwell, and not being subjected to sufficient mixing to provide a desired level of flocculation (at page 2 lines 4-15).
In view of the above issues the specification identifies (at page 3 lines 20-23):
“a need for a feedwell that performs well under a range of operating conditions. Other benefits to an improved feedwell design include increased solid-liquid stream throughputs, greater operational stability of the separation device, and reduced use of coagulants or flocculants”
The specification thereafter describes the invention in various aspects or embodiments that are consistent with the claims (compare for example page 3 line 25 to page 4 line 6 with claim 1). The specification ends with 18 claims, of which claims 1, 12 and 15 are independent. Claim 1 is now reproduced:
“[a]n apparatus for the flocculation of solid particles in a solid-liquid stream, including
an enclosure, including at least one solid-liquid stream inlet; and
an upwardly converging flow diverter defining a first zone and a second zone within the enclosure, the solid-liquid stream inlet being positioned in a lower region of the enclosure to provide solid-liquid stream into the first zone at or towards the bottom of the first zone and in proximity to a lower region of the flow diverter, the upwardly converging flow diverter having an upper opening for fluid communication between the first zone and the second zone.”
Claim 12 defines a flow diverter similar to that defined within claim 1 suitable for an entry enclosure of a separation device. Claim 15 defines a separation device comprising a settling tank and a feedwell having an enclosure and flow diverter similar to that defined within claim 1. An enclosure consistent with claim 1 is exemplified by Figures 3 and 3a as reproduced below:
Flow of the incoming solid-liquid feed stream through the enclosure is described from page 4 line 18 to page 5 line 24:
- The inlet directs a solid-liquid stream at or towards the bottom of the first zone in proximity to the lower region of the flow diverter (at page 4 lines 19 and 20);
- The solid-liquid stream is directed by the outer surface of the flow diverter to flow in a direction tangential to the inner surface of the enclosure. Preferably, the solid-liquid stream spirals upwardly in the first zone directed by the contours of the flow diverter, dissipating energy as it progresses through the first zone (at page 4 lines 20-24);
- Solids will continue to circulate in the first zone at or above the top of the flow diverter until sufficient energy has been dissipated for solids and liquid to flow through the opening between the first and second zones (at page 4 line 27 to page 5 line 2);
- Downward movement of solids in the second zone draws liquid upward from the bulk of the liquid in the separation device proper (e.g. the thickener) through a central region in the second zone (e.g. surrounding the rake shaft in Fig. 3) and into the first zone above the top of the flow diverter establishing a mixing and diluting region for the solid-liquid stream and the bulk liquid (at page 5 lines 3-11).
·A flocculent inlet may preferably be provided at the entry to the second zone in an upper region of the flow diverter such that the flocculent mixes with the solid-liquid stream entering the second zone and flocculation may be initiated (at page 5 lines 17-24).
Figure 5 illustrates results of computational fluid dynamic modelling of the feedwell indicating the solid-liquid stream flow streamline (at page lines 18-20). Figure 6 illustrates results of computational fluid dynamic modelling of the feedwell indicating the solid-liquid stream velocity vectors (at page 8 lines 21-24). Each are reproduced below:
I note that amendments were allowed upon acceptance which result in differences between the specifications as accepted and as originally filed. However I do not deem those differences sufficiently significant to warrant elaboration for present purposes.
The amendments proposed
The amendments CSIRO propose involve:
- deleting accepted claims 4 and 12-14 and renumbering claims 5-11 (to 4-10) and 15-18 (to 11-14);
- amending accepted claims 1 and 15 (proposed claim 11); and
·amending consistory statements in the description to match the proposed claims.
Proposed claim 1 reads as follows (underlined font representing text introduced by the amendment):
“An apparatus for the flocculation of solid particles in a solid-liquid stream, including
an enclosure, including at least one solid-liquid stream inlet arranged such that the solid-liquid stream has a flow path which enters the enclosure in a direction substantially tangential to an inner surface of the enclosure; and
an upwardly converging flow diverter defining a first zone and a second zone within the enclosure, the solid-liquid stream inlet being positioned in a lower region of the enclosure to provide solid-liquid stream into the first zone at or towards the bottom of the first zone and in proximity to a lower region of the flow diverter, the flow path of the solid-liquid stream spiralling upwardly in the first zone directed by the contours of the upwardly converging flow diverter, the upwardly converging flow diverter having an upper opening for fluid communication between the first zone and the second zone.”
Proposed claim 11 reads as follows:
“A separation device including
a settling tank;
at least one feedwell positioned in the tank for receiving a solid-liquid stream, the feedwell having an enclosure including at least one solid-liquid stream inlet arranged such that the solid-liquid stream has a flow path which enters the enclosure in a direction substantially tangential to an inner surface of the enclosure; and
an upwardly converging flow diverter defining a first zone and a second zone within the enclosure, the solid-liquid stream inlet being positioned in a lower region of the enclosure to provide solid-liquid stream into the first zone and in proximity to a lower region of the flow diverter, the flow path of the solid-liquid stream spiralling upwardly in the first zone directed by the contours of the upwardly converging flow diverter the upwardly converging flow diverter having an upper opening for fluid communication between the first zone and the second zone, the first zone having a mixing region above the upper opening for mixing and diluting of the solid-liquid stream with liquid from the settling tank;
the solid-liquid stream from the mixing region exiting the feedwell and settling in the settling tank.”
Outotec’s submissions
Outotec submits that insertion of the term “flow path” into claims 1 and 11 would mean that those claims:
·     would define matter which is not fairly based and/or not in substance disclosed;
·     would lack clarity in that (a) use of the term is itself unclear and (b) the claims would claim matter by result and so be unclear;
·     would lack sufficiency under s 40(2) in that the specification provides no disclosure of how the claimed flow path is determined;
·     would require undue experimentation to determine whether a particular apparatus would fall within their scope;
Outotec also submits that insertion of the phrase “a flow path which enters the enclosure” and the term “contours” would mean that claims 1 and 11 would lack clarity.
The correct approach to patent construction
Much of Outotec’s submissions relate to the construction of proposed claims 1 and 11. It is therefore appropriate to consider the correct approach to construction as discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"Words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
I also note a principle of construction expressed by Lindgren J in Nesbit Evans Group Australia Pty Ltd v Impro Ltd [1997] FCA 1092 and cited in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224:
“There is a danger in considering the integers of a claim individually and in isolation: the approach can easily yield a literal rather than a purposive construction.”
Does insertion of “flow path” render the proposed claims unclear?
A claim is lacking in clarity if a third party could not ascertain whether an act would fall within the scope of the claim (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60). A lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use (Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 at [46]).
Outotec submits that the term “path” on it plain meaning describes the way or track taken by something, which may be regular or irregular, or have no discernable pattern or repeated sequence. Thus, Outotec submits, use of the term “flow path” in the claims may define irregular flow paths for the solid-liquid stream in the first zone and not necessarily flows forming part of a regular or repeated sequence. Taking Outotec’s construction I imagine turbulent flow would cause particular concern as turbulent flow is characterised by highly irregular and unpredictable flow even where a fluid in an overall sense moves in a single direction, such through a pipe or hose.
I note that Outotec provided no evidence from an expert declaring that he or she would adopt the construction it proposes. It seems to me that this construction is one that the skilled addressee would perceive as overly literal and generally unworkable. As Outotec acknowledges, one cannot readily determine a “flow path” (according to its construction) based on the arrangement or structure of an apparatus (Outotec’s submissions paragraph [18]). Stated another way, the skilled addressee could not readily arrange an apparatus to provide such specific flows and, in my opinion, there would be no clear purpose in attempting to do so in the context of providing a feedwell device. The skilled addressee could, however, arrange an apparatus to provide a flow path in a generalised, statistical sense. I note the established principle that, where a claim is capable of more than one construction, then an absurd construction should be rejected in favor of an alternative construction (Henriksen v Tallon (1965) RPC 434).
Upon reviewing claims 1 and 11 in their entirety I consider the skilled addressee would understand that “flow path” is used such that the arrangement and configuration of the inlet, enclosure and the flow diverter would actively or passively direct the solid-liquid stream to in a general sense flow a certain way, that way being the flow path. While I do not find use of the term ambiguous I note that the description as I discussed above is consistent with my construction.
In view of the above I am satisfied the skilled addressee could provide a workable construction to the additions provided to each claim. While I agree with Outotec that proposed claims 1 and 11 in part claim matter by result I do not agree that this gives rise to a lack of clarity. The structural inter-relationship of the defined features is clear.
Does insertion of “flow path” mean that the proposed claims are not fairly based or not in substance disclosed?
In discussing the test for fair basis, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69] (“Lockwood v Doric”) approved of the words of Gummow J in Rehm Pty Ltd v Websters Security System (International) Pty Ltd (1988) 81 ALR 79 at 95:
“the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd [1998] FCA 1358, Burchett J accepted the principle of "a real and reasonably clear disclosure" for testing a proposed amended claim against the original disclosure. It follows that a similar legal test applies to the ground of fair basis and in substance disclosure.
In view of the description as I have summarised above I am satisfied that there is a real and reasonably clear disclosure of what is added in the proposed claims. Outotec have not established that, as a result of the amendments, the proposed claims define matter that is not fairly based on the description or not in substance disclosed in the specification as originally filed. Outotec’s submissions on this point appear premised on a construction of “flow path” that I have not applied.
Does insertion of “flow path” mean that undue experimentation is required to determine the scope of the proposed claims?
Outotec submits that it is difficult for the person skilled in the art to determine whether a particular apparatus having the same structural features as the claimed invention would create the defined flow path in the first zone without conducting undue experimentation or numerous trials. It is firstly unclear to me what ground of opposition or invalidity under the Act this submission would relate to, though I observe a passing similarity to the test for clarity I cited above. In any event I am not satisfied that undue experimentation is required. Outotec have directed to me evidence provided in support of its s 59 opposition in which an expert declares that numerous factors and parameters are involved operating a solid-liquid separation apparatus. That evidence does not demonstrate to me that the person skilled in the art, having some familiarity with fluid mechanics, could not without undue experimentation, as a result of the amendments, determine whether a particular apparatus would fall within the scope of the claims. Outotec’s submissions on this point appear premised on a construction of “flow path” that I have not applied.
Does insertion of “flow path” mean that the proposed claims are not fully described?
Outotec submits that, as a result of the amendments, it is difficult for the person skilled in the art to readily produce an apparatus or separation device within the scope of the claims. I am not satisfied this is correct. Outotec have not established that the person skilled in the art, having some familiarity with fluid mechanics, could not configure a device having flow paths as claimed by following the directions and/or examples provided in the specification. Outotec’s submissions on this point appear premised on a construction of “flow path” that I have not applied.
Does insertion of the phrase “a flow path which enters the enclosure” render the claims unclear?

Outotec submits that it is ambiguous how a flow path enters the enclosure when it has no tangible existence – the flow path is a characteristic of the solid-liquid stream and has no independent existence separate to the solid-liquid stream. Outotec submits that it is the solid-liquid stream which enters the enclosure and not the flow path.
The construction Outotec adopts again seems to me to be overly literal and impractical. The skilled addressee may understand that the fluid path is a property of the solid-liquid stream and nevertheless provide a workable construction to the devices defined in the claims. As I discussed above I construe the claims such that the inlet is arranged to direct the solid-liquid stream to flow in a direction tangential to an inner surface of the enclosure. The flow of the solid-liquid stream through the inlet forms part of its “flow path”. It follows that I do not consider the phrase or its use in the proposed claims unclear.
Does insertion of the term “contours” render the claims unclear?
Outotec submits that the plain meaning of the term “contour” relates to an outline representing or bounding the shape or form of something. Outotec submits that, in the context of the claims, the term suggests the outline of the flow diverter. Outotec thereafter notes that the dependent claims refer to the outer surface of the flow diverter (for example proposed claim 3). The claims therefore, Outotec submits, appear to use two terms inconsistently to refer to the same feature.
In its comments dated 7 February 2014 CSIRO suggested that the skilled addressee would understand that:
- the flow diverter is a physical object that has an inner surface and an outer surface, and
·the outer surface of the flow diverter is contoured.
Following CSIRO’s construction contours would seem to form part of, but are not strictly the same concept as, the outer surface of the flow diverter. This construction is consistent with my understanding of the term “contours”, wherein a surface may be contoured or comprise contours such that these concepts are related but not identical. I agree that the skilled addressee would adopt this construction. It follows that I do not consider the term or its use in the proposed claims unclear.
Outotec also submit that the skilled addressee may interpret the amendment such that the shape of the flow path may be attributed to the contours of the flow diverter alone. I am not satisfied this is necessarily the case. The claims define that the flow diverter is upwardly converging and that the first zone is located on the “outside” (my terminology) of the flow diverter. The claim also defines that the flow-path from the inlet is tangential to an inner surface of the enclosure. I consider that the skilled addressee purposively construing the claim would understand that the contour of the flow diverter directs flow of the stream however it need not do so on its own. The examples provided in the description for example show that the inner surface of the enclosure also directs the solid-liquid stream. I do not consider this to be inconsistent with what is defined in the claims.
Conclusion
I am satisfied that the amendments proposed by CSIRO are allowable according to the criteria set out in s 102. Subject to an appeal against this decision I allow the amendments filed 8 November 2013.
Costs
It is usual in matters before the Commissioner for costs to follow the event. I see no reason to depart from the usual practice. I award costs according to Schedule 8 against Outotec.
Rhys Munzel
Delegate of the Commissioner of Patents