Oz Technology, Inc v Boral Energy Ltd - [1999] APO 8

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No.639321 in the name of AMERICAN COLLOID COMPANY

Title: Animal Dross Absorbent and Method

Action: Opposition by GREENS GENERAL FOODS LIMITED

Decision: Issued .
Abstract

Adequacy of evidence discussed in relation to the ground of prior use.
Discouraging prior art, commercial success overseas and ex post facto analysis discussed in relation to the ground of obviousness.
Invention based on a previously unknown property of a particular form of a known material, discussed in relation to the ground of manner of manufacture.
Opposition wholly unsuccessful.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No. 639321 by AMERICAN COLLOID COMPANY and opposition
thereto by GREENS GENERAL FOODS LIMITED.

BACKGROUND

Patent application no. 639321 was lodged in the name of American Colloid Company on 24 April 1991 as application no. 75906/91 and claimed priority from US application no. 552823 filed in USA on 16 July 1990.

639321 was advertised accepted on 22 July 1993. Greens General Foods Limited filed notice of opposition on 20 October 1993.

By Request and Statement of Proposed Amendments filed 4 March 1994, the applicant proposed amendments to the specification. The amendments were advertised as allowed on 5 January 1995.

The support, answer and reply evidence stages in the opposition were completed on 10 February 1997.

The matter was heard in Sydney on 23 October 1998. The patent applicant was represented by Dr Annabelle Bennett SC, assisted by patent attorney Mr John O’Connor of Spruson & Ferguson. Patent attorney Mr Peter Franke of Watermark represented the opponent.

As the opposed application was lodged before but accepted after the commencement of the Patents Act 1990, Section 59 of the Patents Act 1952 and Chapter 5 of the Patents Regulations1991 apply in relation to the opposition.

THE SPECIFICATION

The specification commences by stating that the invention relates to an absorbent composition for animal dross, which composition comprises a water-swellable sodium bentonite clay, and its method of use.

Discrete particles of the water-swellable sodium bentonite clay are said to absorb animal dross and simultaneously agglomerate into a sufficiently large and stable mass, such that the wetted mass of absorbent composition can be separated from unwetted particles of the composition and removed from a litter box, even after partial or complete drying of the clay, without sticking to the animal's paws or fur. Consequently, odours emanating from the litter box are reduced or eliminated, and cost savings are achieved because the unsoiled contents of the litter box do not have to be discarded together with the soiled portion of the litter box on a periodic basis.

Prior art litters produced by compaction of fine particles into larger particles are said to produce a pet litter that is muddy when wetted. This is apparently due to particle size breakdown upon wetting, and incapable of quick absorption of liquid to form cohesive, non-sticky masses even after partial drying, so…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1999] APO 8
Decision Date: 5 February 1999

CaseChat Overview and Summary

In the case of Oz Technology, Inc v Boral Energy Ltd, the dispute involved an opposition to a patent application for an animal dross absorbent and method. The patent application was held in the name of American Colloid Company, and the opposition was filed by Greens General Foods Limited. The key legal issues addressed by the court were whether the invention was adequately defined, whether it had been anticipated by prior use, whether it was obvious in light of common general knowledge, and whether it constituted a manner of manufacture. The court found that the patent complied with the relevant provisions of the Patents Act 1990, and the opposition was unsuccessful on all grounds. The court held that the claims were not anticipated by prior use, were non-obvious, and constituted a manner of manufacture. Consequently, the court directed that the patent application and complete specification proceed to sealing, and awarded costs against the opponent, Greens General Foods Limited.

Orders