Oz Technology, Inc v Boral Energy Ltd
[1999] APO 8
•5 February 1999
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 that the wetted animal dross-soaked litter when compacted, is often removed from the litter box by the animal's paws and fur necessitating frequent and irritating household cleaning.
At page 3 of the specification it is stated that:
"To achieve the full advantage of the present invention, the water-swellable clay used as a pet litter material in accordance with the present invention should have a particle size within the range of about 50mm to about 3350mm, and preferably 600mm to about 3350mm and should not be compacted from finer particles." And:
"The water-swellable sodium bentonite clays, and their absorbent and agglomerating properties, effectively reduce or eliminate odours associated with animal dross; reduce costs associated with litter box absorbent material replacement; and are sufficiently economical to compete effectively in a highly competitive and cost conscious industry"
At page 7 of the specification it is stated that:
"In addition to the non-compacted water-swellable sodium bentonite clay, the litter box absorbent composition of the present invention optionally can include perfumes, deodorants, odour absorbents, antimicrobial agents, disinfectants, colorants and pesticides, in an amount sufficient to perform their intended functions substantially without decreasing the water-swellability of the clay. The litter box absorbent composition can also include other typically used litter box absorbents such as other clays, sand or cellulose-based materials. However, any optionally added ingredient cannot be present in an amount that materially and adversely affects the ability of the water-swellable sodium bentonite clay to absorb liquid dross products and simultaneously agglomerate into a monolithic mass of sufficient size and cohesive strength for physical removal of the soiled and wetted mass from the litter box without a wet sticky surface. Any optional ingredients and additional absorbents are dry-blended into the water-swellable bentonite clay of the present invention and the water-swellable clay is present in an amount of at least 65% by weight of the composition, and to achieve the full advantage of the present invention and water-swellable clay is present in an amount of at least 90% by weight of the composition.
It should be noted that the animal dross absorbent of the present invention can be used in a litter box or in cages of animals including, among others, household pets such as cats, dogs, gerbils, guinea pigs, mice and hamsters; other pets such as rabbits, ferrets and skunks; or laboratory animals such as monkeys, mice, rats, goats, horses, cows and sheep. The animal litter absorbent of the present invention is especially useful for smaller animals, such as cats. Furthermore, the water-swellable sodium bentonite clay of the present invention is suitable for other uses in addition to absorbing urine, such as absorbing vomit or absorbing waste liquids in appropriate areas of slaughter houses and meat packing plants."
THE CLAIMS
The specification as amended after acceptance ends with the following 11 claims:
“1. A litter box comprising a water-impermeable receptacle having disposed therein an absorbent composition capable of agglomerating upon wetting unto a mass of sufficient size and of sufficient cohesive strength for physical removal of the agglomerated mass from the litter box without substantial adherence to an animal, said absorbent composition comprising at least about 65% by weight non-compacted particles of water-swellable sodium bentonite clay having a particle size in the range from about 50mm to about 3350mm.
2. The litter box of claim 1 wherein the clay is non-calcined.
3. The litter box of claim 1 or claim 2 wherein the clay has a particle size predominantly ranging from about 600mm to about 3350mm.
4. The litter box of any one of claims 1 to 3 wherein the absorbent composition comprises at least 90% by weight of the clay.
5. The litter box of any one of claims 1 to 4 wherein the agglomerated mass is capable of being removed from the litter box substantially as a formed agglomerated mass without substantial removal of unsoiled particles, after drying at room temperature for about 1 hour to about 24 hours.
6. The litter box of claim 5 wherein the drying is for 12 to 24 hours.
7. The method of selectively removing liquid animal dross from a litter box comprising: permitting the water-absorbent composition in the litter box of any one of claims 1 to 4, to come into contact with liquid animal dross thereby producing an agglomerated mass comprising the absorbent composition and the liquid animal dross that is of sufficient size and of sufficient cohesive strength to be removed from the litter box without substantial adherence to an animal; and
removing the agglomerated mass from the litter box thereby removing the liquid animal dross from the litter box.
8. The method of claim 7 wherein the agglomerated mass is removed from the litter box substantially as a formed agglomerated mass without substantial removal of unsoiled particles, after said agglomerated mass has dried at room temperature for a period of about 1 hour to about 24 hours.
9. The method of claim 8 wherein the agglomerated mass has dried for 12 to 24 hours.
10. A litter box substantially as hereinbefore described with reference to the accompanying drawing.
11. A method of selectively removing liquid animal dross from a litter box substantially as hereinbefore described with reference to the accompanying drawing.
THE GROUNDS OF OPPOSITION
The grounds identified in the statement of grounds and particulars are that the specification does not comply with section 40 and that the invention is prior published, is otherwise not novel, is obvious, and is not a manner of manufacture.
EVIDENCE
The evidence in support consists of statutory declarations by:
- Colin William CLAREY (with Exhibits CWC1 to CWC6), a resident of Australia. He states that he is the owner and managing director of Active Life Foods Pty Ltd a supplier of clay and mineral products to the waste, mining and pet litter industries; and
- Dr John David Gavin HAMILTON (with Exhibits JH1 to JH4), a resident of Australia. He states that he has been extensively involved in research into clay and clay minerals and that he is well placed to comment on the state of knowledge regarding bentonite clays in Australia prior to July 1990.
The evidence in answer consists of statutory declarations by:
- John HUGHES (with Exhibits JH-A to JH-E), a resident of USA. He states that he is president of American Colloid and is the sole inventor of the invention of 639321; and
- Dr I. Edgar ODOM (with Exhibits IEO-A to IEO-F), a resident of USA. He states that he is a consultant in mineralogy and vice-president (retired) of American Colloid.
The evidence in reply consists of statutory declarations by:
- Colin William CLAREY (the second Clarey declaration with Exhibit CWC1); and
- Dr John David Gavin HAMILTON (the second Hamilton declaration with Exhibits JDH1 to JDH3).
SUBMISSIONS
I summarise Mr Franke's main submissions, including references to the statement of grounds and particulars, on behalf of the opponent as follows:
Mr Franke advised that the opponent would not be pursuing documentary prior publication.
Section 40
- In Claim 1, it is not clear how the effect of the composition "agglomerating upon wetting into a mass of sufficient size and of sufficient cohesive strength for physical removal from the litter box" affects the composition's tendency to not "substantially adhere to an animal". How would a competitor be able to determine with any reasonable degree of certainty what would or would not infringe such a feature? Claim 1 is not limited to furry animals, so how is the aforesaid feature to be interpreted in relation to a smooth-skinned animal such as a pig?
- Claim 1 does not define the invention. The specification when read as a whole suggests that the main object of the invention is that of enabling the agglomerated mass to be removed from the litter box without substantial removal of unsoiled particles. Claim 5 includes wording in such terms but Claim 1 does not.
Prior Use
- In 1989, Kolclay Products, a division of Active Life Foods Pty. Ltd, began developing a pet litter product (called KITTEN KABOODLE) formulated from a sodium bentonite material. Sales to the public in Australia of this product began in March 1990, i.e. before the priority date (16 July 1990) of 639321.
This sale anticipated all of the features of the invention of 639321 as claimed in all of the claims. See the first and second Clarey declarations and the corroborative documentation exhibited thereto. Mr Clarey is independent of the opponent.
- Note particularly that at paragraph 6 of the first Clarey declaration he states that the KITTEN KABOODLE product was manufactured in 1990 from pure sodium bentonite.
- A litter box which is water impermeable is a feature of the invention but the use of such a box is inherent in the use of cat litter.
- Exhibit CWC6 to the first Clarey declaration is said at paragraph 7 of that declaration to be a copy of the packaging as used on the first KITTEN KABOODLE products sold in March 1990. It is clear from the directions on the package that the product is a clumping or clinging together litter.
- The Exhibits to the Clarey declarations establish that early in 1990 (prior to the priority date), Kolclay Ltd not only purchased sodium bentonite material from Australian Bentonite but also sold KITTEN KABOODLE product to Franklins Limited, Woolworths Limited and Pick & Pay Hypermarket.
- More weight should be given to prior use (actual practice) than to a mere disclosure in a publication (theory). In fact, the level of disclosure required where prior use is used as proof of anticipation is less stringent than that required for a paper anticipation. Lahore, Volume 1 at paragraph 12,620; Flour Oxidising v. Carr (1908) 25 RPC 428.
Obviousness
- The evidence filed by the opponent establishes that in the pet litter industry in Australia, prior to the 16 July 1990 priority date of 639321, the common general knowledge (CGK) included the following:
the normal arrangement of litter boxes including the placement of granular absorbent material (clay) within a water-impermeable receptacle;
the range of particle size for pet litter is around 0.05 to 4.0mm;
The agglomerating property of sodium bentonite is the basis for many of its known uses and that sodium bentonite would, upon wetting, “agglomerate into a mass of sufficient size and of sufficient cohesive strength for physical removal of the agglomerated mass from the litter box without substantial adherence to an animal”;
the contents of Grim R.E. ‘Applied Clay Mineralogy’ as referred to in the evidence;
that bentonites could be used as animal litter;
that the most common and readily available bentonite in Australia is sodium bentonite.
- The first and second declarations by Dr Hamilton support the proposition that the invention as claimed in all of the claims is obvious in the light of the CGK.
- Any alleged commercial success in USA of a product which might be similar to that claimed in 639321 is not relevant to the issue of inventive step in Australia.
- Neither Mr Hughes nor Dr Odom are independent of American Colloid. Also since neither of these declarants for the patent applicant has worked in Australia in the pet litter industry none of their evidence is relevant to establishing the CGK in Australia.
Manner of Manufacture
- The use of sodium bentonite as or in a pet litter material is using a known material for a purpose for which its known properties make it useful and thus the claimed invention is not a manner of manufacture (see Commissioner of Patents v Microcell Ltd., 102 CLR 232 at 251).
I summarise the main submissions made by Dr Bennett on behalf of the patent applicant as follows:
Section 40
- In Claim 1, the aspect of the invention “removal … without substantial adherence to an animal … ” is a valid definition by reference to a result to be achieved since the means whereby the result is to be achieved is specified (see Lahore at 15,135).
- The “without substantial adherence ” feature of claim 1 is not intended to be restricted to cat fur nor is there any legitimate reason for such a limitation to be read into the claim.
Prior Use
- The basis for prior use is “otherwise not novel”. Thus the tests for novelty must be met.
- At paragraph 6 of the first Clarey declaration he states that pure sodium bentonite was used in the KITTEN KABOODLE product sold in early 1990. That does not equate with saying that the product was just sodium bentonite. It is likely that if the product at that time did contain pure sodium bentonite then it was in admixture with other materials and that is borne out by the fact that analysis of a sample of KITTEN KABOODLE purchased in 1995 showed that at that time it was predominantly magnesium bentonite (see paragraph 4 of the Odom declaration).
- On the bag in which KITTEN KABOODLE was alledgedly sold in early 1990, it is stated that the product “Absorbs 5 times its own weight in water” (Exhibit CWC-6 to the first Clarey declaration). But sodium bentonite absorbs 10 to 15 times its own weight in water (see paragraph 4 of the Odom declaration). This suggests that the KITTEN KABOODLE product sold in early 1990 was not predominantly sodium bentonite.
- Also, on the bag in which KITTEN KABOODLE was allegedly sold in early 1990, it is stated that the clay consists chiefly of the mineral Montmorillonite”. The word “chiefly” in that context suggests that the contents of the bag were a mixture of materials.
- There is no corroborative evidence to support the assertion in the first Clarey declaration that the packing bag of Exhibit CWC-6 and the wording found thereon was in fact identical to the bag which contained the KITTEN KABOODLE product sold in 1990.
- There is no evidence of the KITTEN KABOODLE product sold in early 1990 being used in a litter box.
- None of the evidence filed on behalf of the opponent, is sufficient to establish that, on the balance of probabilities, the KITTEN KABOODLE product sold in early 1990 would have "reverse infringed" any of the claims of 639321.
Obviousness
- There is no evidence to support the contention by the opponent that the book Applied Clay Mineralogy by R. E. Grim was CGK.
- From the Hughes declaration (paragraph 6) it can be seen that companies which sold cat litter that did not contain any sodium bentonite prior to 1991 have since added sodium bentonite clay (in excess of 65% by weight) and others have increased the amount to greater than 65%. This argues against the obviousness of using at least about 65% of sodium bentonite in an animal litter.
- Prior attempts to find a suitable material taught away from the present invention. See pages 5 to 6 and Exhibits IEO-D and IEO-E to the Odom declaration and paragraph 31 of the Beall affidavit (Exhibit JH-B to the Hughes declaration).
- There are assertions (eg at paragraph 7 of the first Clarey declaration) that the use of a bentonite material was an obvious selection. However, none of the evidence filed by the opponent is indicative as to why sodium bentonite was an obvious choice, in view of the existing knowledge of the class of bentonites (see also page 7 of the Odom declaration). Similarly, there is no realistic evidence that makes obvious the integers of the claims and the combination of those integers.
- Of the class of bentonites known as at the priority date, and the knowledge of their properties, the properties identified and claimed could be said to constitute a selection from the class in choosing sodium bentonite with the stated properties for the use claimed.
- Dr Odom explains the importance of the particle size of the presently claimed product at pages 7 to 9 of his declaration. The "inventiveness" is apparent from the prior used cat litter being of much coarser particle size (see paragraph 21 of the Hughes declaration and Exhibit JH-B).
Manner of Manufacture
- It has not been established that the properties of sodium bentonite which render it suitable for use in the present invention were known as at the priority date. It was a combination of unsuspected properties that gave rise to the invention (see the Odom declaration paragraph 3 especially B and C and Exhibit JH-B).
DECISION
Section 40
- Whilst the feature that the agglomerated mass can be removed "without substantial removal of unsoiled particles" is not specified in Claim 1, it is apparent from a reading of the specification as a whole that the aforesaid property will be inherently possessed by any composition in accordance with that defined in the claim. I find that the claim does define the invention.
- The opponent has submitted that Claim 1 is bad because the expression, " … upon wetting … without substantial adherence to an animal" is not clear. Although the wording of the claim is somewhat clumsy, I think it is clear in context that the non-adherence feature relates to the fact that the agglomerated mass can be removed as a discrete unit from the litter box because substantially none of the wetted particles have been already removed by the animal by reason of having become stuck to the fur, smooth skin, paws or whatever other part of an animal which is likely to come into contact with a commercial litter after it has been wetted. I find that the claim does not fail for lack of clarity.
Before moving on to consider the issues relating to prior use, manner of manufacture and obviousness, I shall first determine which features of the claimed invention I consider to be essential.
Essential Features
A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential (Catnic Components v Hill & Smith, [1982] RPC 183).
Claim 1 of 639321 can be broken down into the following features:
(A)an absorbent composition;
which is:
(B) contained in a litter box;
and which composition is:
(C) capable of agglomerating upon wetting into a mass such that wetted particles do not adhere to an animal and the mass can then be removed from the litter box as a discrete entity;
and which composition comprises:
(D) at least about 65% by weight water-swellable non-compacted particles of sodium bentonite clay;
and which clay particles have:
(E) a particle size in the range from about 50mm to about 3350mm.
Each of features (A) to (E) above appears to have a material effect on the way in which the invention works. I find each of features (A) to (E) above to be essential features not only of the product of the invention but also of the method of the invention which is characterised in terms of the nature of the product.
Prior Use
The standard of proof required to establish prior use was dealt with by the UK Appeal Tribunal in Seiller's Application [1970] RPC 103, where at 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
These comments were approved by the UK Court of Appeal in Dunlop Holdings Limited's Application [1979] RPC 523 at 548.
Even though Graham J. stated that he was not attempting to lay down any rule, I think that his comments on the necessity of corroboration by documents contemporary with the facts to be proved are applicable to the present circumstances.
The standard of proof required is the civil standard, that is the balance of probabilities as set out for example by the Court of Appeal in Dunlop Holdings Application (supra), in which Buckley L.J., referring to the UK Patents Act 1949, stated:
"As to the standard of proof, there is nothing in the statute to suggest that any standard different from the normal standard of proof required in civil litigation - that is to say, the balance of probability - should be adopted. But that standard is not an absolute standard. The nature of the issue may affect the kind and the cogency of the evidence necessary to bring the scales down on one side or the other. If something is inherently improbable, more weighty evidence is required to establish that it probably occurred than if it were inherently probable.”
The standard of proof is also referred to in E.I. Du Pont de Nemours and Company (Holland's) Application [1971] RPC 7 at 21 where Graham J. said:
"The matter is, in my view, sometimes different if the question to be resolved is one of pure fact such as may, for example, arise in cases of prior user. Then if satisfied that the evidence has dealt with the matter comprehensively, so that the tribunal feels it is in a position to come to a correct answer on the question of fact, there seems no reason why it should not resolve the conflict and, in my judgement, is in a proper case under the duty of doing so, and in so doing should act upon the normal principles of proof in civil actions."
In the present case, from the invoices exhibited at CWC-2 to the first Clarey declaration, I am satisfied that a pet litter product called KITTEN KABOODLE was sold to at least 3 different major retailers prior to July 1990. Although not directly proven, I am furthermore satisfied that it is highly likely that that product would have been sold at retail to customers who would, prior to July 1990, have placed it in water-impermeable litter boxes.
But did the KITTEN KABOODLE product sold in early 1990 anticipate the essential feature of 639321 of comprising at least about 65% by weight of sodium bentonite clay particles? In relation to that question, I note the following:
- Exhibit CWC-4 to the first Clarey declaration and exhibit CWC1 to the second Clarey declaration are invoices which show that prior to July 1990, the manufacturer of KITTEN KABOODLE purchased quantities of granular product from Australian Bentonite. Although not apparent from those invoices, Mr Clarey declares that the granular material was sodium bentonite and that to his knowledge that was the only material mined by Australian Bentonite. There is no corroboration of either of those statements by Mr Clarey.
- Mr Clarey declares (at paragraph 6 of his first declaration) that the KITTEN KABOODLE product“was manufactured early in 1990 from pure sodium bentonite source material”. Those words could be regarded as carefully chosen, since they leave open the possibility that the KITTEN KABOODLE was a mixture in unspecified proportions of pure sodium bentonite and other materials.
- No chemical analysis of the KITTEN KABOODLE product sold in early 1990 has been filed in the evidence. An analysis of a sample of KITTEN KABOODLE purchased in 1995 (see page 11 of the Odom declaration) indicated the presence of a montmorillonite or bentonite wherein magnesium rather than sodium was found to be the predominant exchangeable cation. In his second declaration Mr Clarey says that was not suprising since he had sourced clay from various suppliers since 1993.
- There is no corroboration that the written information on the KITTEN KABOODLE bag which is Exhibit CWC-6 to the first Clarey declaration, was the same as that on the bag in which that product was sold in early 1990. On the bag exhibited it is stated that the product is a montmorillonite but that term is broader than, not synonymous with, the term sodium bentonite. Also on the bag exhibited, it is stated that the product absorbs up to 5 times it own weight in water, whereas according to expert declarant Odom (at page 11 of his declaration) sodium bentonite absorbs 10 to 15 times its own weight in water.
My assessment of the relative weightings attributable to the above factors is that I find that there is insufficient evidence before me to establish that, on the balance of probabilities, a product which would have “reverse infringed” the invention as claimed in 639321, was sold in Australia prior to 16 July 1990. I therefore find the ground of otherwise not novel by prior use has not been made out in relation to any of the product or method claims of 639321.
Obviousness
Obviousness considerations under the 1952 Act involve a determination of the common general knowledge in the art in Australia at the priority date of the claims; per Aicken J in The Wellcome Foundation v VR Laboratories (1981) 55 ALJR at 251:
"... the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."
In the decision of The English Patents Court in Union Carbide Corp. v. BP Chemicals Ltd [1998] RPC 1, Jacob J. at 16:
"Patent law attributes to its notional skilled person a background technical knowledge which goes by the jargon 'common general knowledge'. Such knowledge is 'part of the mental attitude of a well constructed representative of the class to whom the specification is addressed' (British Ore Concentration Syndicate v. Minerals Separation Ltd (1909) 26 RPC 124 at 138) or 'generally regarded as a good basis for further action' (General Tire & Rubber Co v. Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 483 line 20). It is not good enough to show that a matter was known to some but not to others and in particular it is not good enough to show that knowledge (or prejudice) was confined to one or a limited class of suggested exemplars of the skilled person."
The invention of 639321 lies in the art, well established at the priority date, of animal litter products.
The problems addressed were that when portions of an animal litter became soiled by wetting:
(i) soiled litter stuck to the animal and was thereafter distributed elsewhere (such as around the house) by the animal; and
(ii) because of odours emanating from the litter box, all of the litter (soiled and unsoiled) had to be regularly discarded and replaced at some cost.
The likelihood of success necessary to render a routine investigation obvious was considered in Beecham Group Ltd’s (Amoxycillin) Application [1980] RPC 261 at 290:
“It is clearly established that, for a particular step or process to be obvious .... it is not necessary to establish that its success is clearly predictable: Johns-Manville Corporation’s Patent [1967] RPC 479 at 494. It will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile: Technograph Printed Circuits Ltd v. Mills & Rockley (Electronics) Ltd [1972] RPC 346 per Lord Reid at 355 and 356; Johns-Manville, supra, per Lord Diplock LJ at 493 and 494; Tetra Molelectric Ltd v. Japan Imports Ltd [1976] RPC 541 at 581, 583-4.”
In the present case then, the question is not whether it was predictable that formulating an animal litter with at least about 65% sodium bentonite with a particle size in the range from about 50mm to about 3350mm would solve the problems addressed by the applicant, but rather, would such a solution to those problems have been considered worth trying?
I believe that the contents of the standard reference work “Applied Clay Mineralogy” by R.E.Grim would generally have been CGK to the person skilled in the art of formulating animal litter products in Australia as at the priority date in July 1990. In his first declaration Dr Hamilton notes that Grim (1962) describes several industrial uses of bentonites including where their properties rendered them useful as bonding agents (in foundry moulding sands and iron ore pelletising) and as adhesive agents (in the coating of very fine agricultural seeds).
At paragraph 6 of the first Hamilton declaration he states:
“..I would have expected prior to 1990 that when dried bentonite in the size range indicated in the claims of the patent was slightly wet, by urine or other aqueous fluids, it would form a discrete clump. The agglomerating property was well known and documented and forms the basis for many of the industrial uses of sodium bentonite.”
Dr Hamilton also refers in his first declaration to a passage at page 346 of Grim (1962) wherein attapulgite and some montmorillonite clays are said to be satisfactory for animal bedding. At paragraph 2 of the second Hamilton declaration, he refers to a “revision of that same statement ” at page 232 of Grim and Guven (1978) (Exhibit JDH1) which reads as follows:
“Granular grades of clay about 10-30 mesh are used for animal bedding, particularly for household pets. The clay serves as an absorbent and deodorizing agent and must have fairly high absorbent capacity. The clays are heated to above 4000C and below 10000C to develop absorbent capacity, and to provide a material which will not break down to fine particles on use either when wet or dry. It must not form a sticky or a plastic mass nor must it become dusty. Some bentonites have been found satisfactory for this use.”
So, in the light of the above relevant established CGK and expert opinion, would the non-inventive worker have considered the invention as presently claimed to have been worth trying as a solution to the above stated problems addressed by the present invention? On the material before me I perceive the following factors as potentially relevant in militating against such a proposition:
- It is indicative of ex post facto analysis to say that because bentonites were known to bond and adhere to other materials in certain industrial applications, it follows that sodium bentonite particles in a certain size range would agglomerate with each other, when wetted to the extent that would occur in the context of use in an animal litter, to form a clump wherein the particles of soiled clay would not adhere to an animal and could be readily removed as an aggregated mass from unsoiled particles.
- At page 7 of the Odom declaration:
" … the data presented in the affidavit of Gary W. Beall, …Exhibit B to the declaration of John Hughes … provides exceptionally unexpected results for the claimed sodium bentonite litter material in comparison to calcium bentonite or Fuller's Earth clays."
- There was prior art which disclosed that minor amounts of water swellable clays such as sodium bentonite could be used in animal litter products but that prior art discouraged using a large proportion of sodium bentonite and so taught away from the solution envisaged by the present invention. Thus US Patent 4657881 (Crampton) teaches a maximum of 10% by weight of swelling clay (column 3 lines 29 to 49), and further teaches (column 4 lines 7 to 10) that swelling clays could impair the physical integrity of the compacted absorbent particles. Also, US Patent 3286691 (McFadden) teaches the use of sodium bentonite as an aid to absorbing moisture in an animal litter product but only to a maximum proportion of 25% by weight.
- At paragraphs 8 to 11 of the Hughes declaration and Exhibit JH-D thereto, he presents plausible evidence that there was considerable commercial success in terms of sales of animal litter product conforming to the present invention in the years 1991-1994 in the USA and that that success was due primarily to the meeting of a long felt want for a more economical-in-use product rather than other factors. I think that such evidence would be more persuasive in relation to negating obviousness if it related to sales in Australia, but by the same token it seems unlikely to me that such a long felt want should have existed in USA but not in Australia.
On balance, I believe that the opponent has not established that, in Australia as at the priority date of 639321, the notional uninventive person skilled in the art would have considered the use of a high proportion of sodium bentonite in an animal litter product as being worthwhile trying as the solution to the problems which the claimed invention solves.
I find that the ground of obviousness has not been made out in relation to any of the claims of 639321.
Manner of Manufacture
In Commissioner of Patents v Microcell (1959) 102 CLR 232, the High Court considered an application for a patent relating to the use of reinforced plastics for rocket projectors. The Full Court unanimously held that the application was not directed to a new manner of manufacture, the reasons (at page 251) being as follows:
"We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do."
In the present case, the invention is based on the high cohesive strength which is a characteristic of the agglomerated mass formed when a portion of suitably-sized sodium bentonite particles is lightly wetted. In my view, it has not been established that the degree to which that feat of clay was possessed by the particular form of sodium bentonite employed in the invention, was previously known or suspected.
Accordingly, I find that the ground of not a manner of manufacture has not been made out in relation to the present claimed invention.
CONCLUSION
I have found that the complete specification complies with section 40, and that the claims are not anticipated by prior use, are non-obvious and are for a manner of manufacture. I therefore direct that the application and complete specification proceed to sealing.
COSTS
The opposition has failed on all grounds. I am not aware of any reason why costs should not follow the event.
I award costs against the opponent, Greens General Foods Limited.
Alan Moore
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Spruson & Ferguson, Sydney
Patent attorneys for the opponent: Watermark, Sydney
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