QNI Limited v CESL Limited - [2013] APO 36

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
QNI Limited v CESL Limited [2013] APO 36

Patent Application: 740712

Title:Chloride assisted hydrometallurgical extraction of nickel and cobalt from sulphide or laterite ores

Patent Applicant:                   CESL Limited
Opponent:  QNI Limited
Delegate:  Dr S.D.Barker
Decision Date:  14 June 2013
Hearing Date:  22 March 2013, in Canberra
Catchwords:  PATENTS – opposition to the grant of a patent – lack of novelty in the light of one document – lack of utility and lack of fair basis found – opportunity to amend

Representation: Patent applicant: Katrina Howard SC, instructed by Shahnaz Irani and Ruth Clarkson of Spruson & Ferguson
Opponent:Tom Cordiner of counsel, instructed by David Tadgell of Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 740712

Title:Chloride assisted hydrometallurgical extraction of nickel and cobalt from sulphide or laterite ores

Patent Applicant: CESL Limited
Date of Decision: 14 June 2013
DECISION
Claims 1, 2, 23, 24, 37 lack novelty.
Claim 1 lacks fair basis.
There is a lack of utility with regard to the non-oxidative leaching of sulphide ores.
I allow CESL Limited two months from the date of this decision to propose amendments.
I award costs according to Schedule 8 against CESL Limited.
REASONS FOR DECISION

The present application was filed in Canada as a PCT application that designated Australia on 14 August 1998. The applicant is CESL Limited (CESL, formerly Cominco Engineering Services Ltd). The application was examined and accepted by the Commissioner, and subsequently opposed by QNI Limited (QNI). A hearing was held on 22 March 2013 in Canberra to decide the opposition. CESL was represented by Katrina Howard SC, instructed by Shahnaz Irani and Ruth Clarkson (patent attorneys of Spruson & Ferguson). QNI was represented by Tom Cordiner of counsel, instructed by David Tadgell (patent attorney of Phillips Ormonde Fitzpatrick).
The opposition
The opponent relied on the following grounds of opposition:
novelty
inventive step
utility
full description
fair basis
clarity
The parties relied upon evidence by several declarants. Evidence in support consists of a declaration by Malcolm John Price. Evidence in answer consists of declarations by Malcolm Lindsay Jansen and David L Jones. Evidence in reply consists of declarations by David Thomas White and Rodney Ian Lindsay Cruise. There is also further evidence on file. I will refer to the relevant parts of the evidence where appropriate.
The specification
The specification relates to the processing of ores containing nickel and/or cobalt. The ores in question are either sulphide ores (in which the metals are present as sulphides) and laterites (which are highly weathered, and the metals are present predominantly as oxides). Pyrometallurgical and hydrometallurgical processes of extraction are known, but suffer from disadvantages (discussed at page 2 of the specification). In brief, the specification describes a hydrometallurgical process for extracting nickel and/or cobalt in which
·the ore is subject to acid leaching under pressure at pH < 2,
·a first precipitation is carried out at pH about 5 to 6, and
·a second precipitation is carried out at pH about 7 to 8.
The solid formed in the second precipitation is the nickel and/or cobalt containing product.
The specification ends with 37 claims. Claims 1 to 36 are directed to a process for the extraction of metals from ores containing nickel and/or cobalt, and claim 37 is directed to the product of the process.
What is the invention as described
Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214 at [139}:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
The background to the invention
The specification starts with a background to the invention. Nickel sulphide ores are concentrated by froth flotation, and then smelted to produce a product with a high nickel content. This product can be further purified by hydrometallurgical treatment. Variations on the process are known, but are said to have disadvantages such as:
- High cost of reagents
- Formation of byproducts that are difficult to market
- High energy costs
- High capital and operating costs
The specification also states that there is a known wholly hydrometallurgical process that treats material without smelting. This process involves pressure leaching with ammoniacal solution. This process still has many problems, and is less efficient than the best pyrometallurgical/hydrometallurgical processes.
The aim of the invention
The aim of the process of the invention is not stated in simple terms. At page 2, the specification says that the aim is simply the extraction of nickel and cobalt:
"The present invention provides a process for the hydrometallurgical extraction of copper, nickel and cobalt as well as other metals from sulphide ores. It also provides a process for the hydrometallurgical extraction of nickel and cobalt from laterite ores."
At page 3 a "high recovery of cobalt and nickel at a low cost from liquors resulting from the acid leaching of laterites" is indicated. The specification then states further down page 3 that further objects are to be inferred:
"Further objects and advantages of the invention will become apparent from the description of preferred embodiments of the invention below."
There is an indication in the evidence of Jones at [12] that another advantage is the purity of the product. I cannot find any indication in the specification that this is an object of the invention, nor that it is achieved by the invention. I believe that it is a fair inference that the object of the invention is the recovery of nickel and cobalt in a way that overcomes at least some of the recognised problems with the existing processes:
- high cost of reagents
- formation of by-products that are difficult to market
- high energy costs
- high capital and operating costs
The nature of the invention
In comparison to the prior art, the process described in the present application is a hydrometallurgical process for the recovery of nickel and cobalt. The essence of the invention is a process in three parts:
(i) "subjecting the ore or concentrate to acid leaching under pressure, at pH < 2" (page 3)
(ii) "subjecting the liquor to a first precipitation stage at a pH of about 5 to 6" (page 3)
(iii) "subjecting the resultant solution to a second precipitation stage at a pH of about 7 to 8" (page 3)
The specification explains the purpose of these steps. The acid leach is intended to extract all of the nickel and cobalt into solution:
"At the low pH (pH 1.5 to 1), all the nickel/cobalt and other metal values such as copper and zinc, if present, are leached into the liquid phase during pressure oxidation 12 and practically none goes into the solid phase in the form of the basic solid salts, such as basic copper sulphate, although there is entrained liquor associated with the solids after filtration." (page 5)
The first precipitation is intended to remove all of the non-nickel and non-cobalt metals from the solution:
"The precipitation is effected at a final pH of about 5 to 6 so that, ideally, no more than about 1 ppm zinc, 1 ppm copper and 1 ppm iron remain in the solution." (page 9)
The second precipitation is intended to precipitate only the nickel and cobalt:
"The solution resulting from the liquid/solid separation 502, is subjected to a selective precipitation step 506 in which nickel and cobalt are precipitated as hydroxides or carbonates with a suitable neutralization agent … whilst minimizing the precipitation of Mg(OH)₂." (page 10)
It is explained that the process can include other steps in addition to the above three. For instance, at page 9 it is stated that the first precipitate can be subjected to acid leach. At page 11 it is stated that there can be a precipitation at pH 9 – 9.5. At page 12 it is stated that there can be an ammonium extraction. It is clear that the process that is described includes the three steps, but is not limited to these steps only.
Does the specification describe recovery from both laterites and sulphides?
The specification largely discusses extraction of sulphide ores. However, there are a number of explicit references to extraction of laterite ores. For instance, the first words of the specification are:
"This invention relates to the hydrometallurgical treatment of sulphide ores or concentrates or laterite ores for the extraction of nickel, cobalt and other metals therefrom."
At page 20 there is an explicit discussion of laterite ores:
"In the case of a laterite ore, the pressure oxidation 12 is replaced by an acid (H₂SO₄) leach under pressure at a pH of 1 or less and at a temperature of from about 250°C to about 280°C.
The copper solvent extraction can also be carried out in the case of laterite ore. Although this may not be necessary if only very small amounts of copper are present, in which case the copper can be removed in the controlled strip 624.
Laterite ores contain significant amounts of manganese, chromium, aluminium and magnesium, which must be removed during the process. These latter three are removed, along with the iron, during the purification stage 500. In order to achieve this, the temperature is maintained at 95°C - 100°C during the purification stage 500. However, some magnesium remains in solution after the purification 500, as indicated earlier, which is desirable in respect of the cobalt and nickel solvent extractions as described."
I conclude that although there is clearly an emphasis on the processing of sulphide ores, the specification provides a disclosure of the processing of laterite ores.
Does the invention include processing of sulphide ores in a non-oxidative manner?
There is no suggestion in the specification that sulphide ores are processed in a non-oxidative manner. At page 4 the specification says:
"The ore concentrate is first subject to grinding, as indicated at 30 in Figure 1, to reduce the particle size. Water is added to produce a slurry, which, in the case of sulphide ore or concentrate, is then subjected to pressure oxidation 12 in an autoclave in the presence of an acidic solution containing sulphate, chloride and, preferably copper ions."
I am satisfied that the specification only contemplates processing sulphides by an oxidative leach.
Construction of claim 1
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … 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"
Turning to the claims, claim 1 is the claim of most importance. Claim 1 states:
A process for the extraction of metal from an ore or concentrate, containing nickel and/or cobalt values and other metals, comprising the steps of:
subjecting the ore or concentrate to acid leaching under pressure, at pH < 2, to obtain a liquor at pH < 2 containing nickel and/or cobalt values in addition to non-nickel and non-cobalt metals from the resultant acid leaching slurry;
subjecting the liquor to a first precipitation stage at a pH of about 5 to 6 to produce a solid containing the non-nickel and non-cobalt metals and a resultant solution containing the nickel and/or cobalt values;
subjecting the resultant solution to a second precipitation stage at a pH of about 7 to 8 to produce a solid containing nickel and/or cobalt and a nickel and cobalt depleted liquor.
At the hearing there was extensive discussion of several aspects of the claim. I will address each of these issues in turn.
What are the steps of the process
The claim defines the process by reference to just three steps:
1. acid leaching at a pH of less than 2
2. precipitation at a first pH
3. precipitation at a second pH
The claim is silent on whether the process is restricted to these steps only, or whether other steps can be included. It appears to be well understood that industrial hydrometallurgical processes are complex processes, and there are a large number of standard steps. For instance, increasing and decreasing temperature, separating the liquor from solid material. Where oxidative leaching is employed, appropriate oxidation steps are included. Claim 1 should not be construed in a way that excludes steps that are normal and understood parts of a typical hydrometallurgical process.
This construction of claim 1 is reinforced by a consideration of claim 35, which explicitly refers to a step taking place after the leaching but before the first precipitation;
"35. The process according to claim 2 [which is appended to claim 1 and merely adds the feature that the pressure leaching is a pressure oxidation], wherein the first precipitation stage comprises a first precipitation step which is carried out at a pH of about 3 to 4 to produce a first solid and a first liquid, and subjecting the first liquid to a second precipitation step at a pH of about 5 to 6 …"
I am satisfied that the process of claim 1 is characterised by the presence of three specified steps, but the process can include additional steps.
What is the pH of the liquid leaving the acid leaching step
The acid leaching step results in "a liquor at pH < 2". When used in a technical sense, a liquor is a liquid. At what point in the leaching process does the liquid have a pH of less than 2?
Acid leaching is carried out by treating an ore with an acid to form a slurry. The acid soluble components dissolve into the acid leaving the insoluble material as a solid. The slurry is separated into the liquid and a solid residue. It is known in the prior art that the pH can be adjusted during the leaching step, so the pH of less than 2 could refer to the liquid while part of the slurry, or after it has been separated from the solid.
The words of the claim are:
"to obtain a liquor at pH < 2 … from the resultant acid leaching slurry"
The liquid cannot be said to have been obtained from the slurry until it has been separated from the slurry. Consequently I consider that the liquor (which must have a pH of less than 2) is the liquid leaving the acid leaching step, after separation from the slurry.
What is the pH of the first precipitation step
The first precipitation steps occurs at "a pH of about 5 to 6". I believe that this should be understood as defining the range of about 5 to about 6. The term "about" is inherently imprecise, and the question is always to determine (if possible) the limits imposed by the term.
I think it is important to have regard to the purpose of the pH adjustment. The claim says that the pH is adjusted to about 5 to 6 "to produce a solid containing the non-nickel and non-cobalt metals and a resultant solution containing the nickel and/or cobalt values". As noted below, this is a requirement that a large amount of the non-nickel and non-cobalt precipitates while at the same time a large amount of nickel and cobalt remains in solution. This necessarily implies that the "about" cannot travel so far that it includes pH values that do not achieve this end. It is not a requirement of the pH selection that the nickel and cobalt do not begin to precipitate.
It is apparent to me that the precipitation depends not just on the pH of the system, but also the temperature and pressure. It is the combination of pH, temperature and pressure that achieves the result, so the pH may have to be adjusted to take account of the temperature and pressure of the system. While it is not clear what pH values would satisfy the requirement that a large amount of the non-nickel and non-cobalt precipitates while a large amount of the nickel and cobalt remains in solution, I believe that it is a test that is capable of being understood by a skilled reader.
What is the pH of the second precipitation step?
The second precipitation step occurs at "a pH of about 7 to 8". I believe that this should be understood as defining the range of about 7 to about 8. In this case the purpose of the step is "to produce a solid containing nickel and/or cobalt and a nickel and cobalt depleted liquor". This is a requirement to precipitate a large amount of the nickel and cobalt. This necessarily implies that the "about" travels far enough to permit the precipitation of nickel and cobalt, but not so far that it is no longer causing any significant precipitation of nickel and cobalt.
What is the product of the first precipitation?
The claim says that the first precipitation step produces
"a solid containing the non-nickel and non-cobalt metals and a resultant solution containing the nickel and/or cobalt values"
This could be interpreted to mean that ALL of the non-nickel and non-cobalt values precipitate, and ALL of the nickel and cobalt values remain in solution. It is accepted by both parties, and I am satisfied that it is well known in the art, that there is no pH value at which this can be achieved. As the pH increases more of the non-nickel and non‑cobalt values will precipitate. However, nickel and cobalt will begin to precipitate BEFORE the non‑nickel and non‑cobalt have finished precipitating. I believe that a common sense construction should apply, and the claim is referring to the solid containing a large amount of non-nickel and non-cobalt, and the liquor containing a large amount of nickel and copper.
Does the claim include a process of non-oxidative leaching of sulphide ores
The claim does not specify whether the leaching is done under oxygen. Interpreted literally, this means that the leaching can be done either oxidatively or non-oxidatively. There is nothing illogical in such a construction, as it is well known that leaching of sulphide is normally done oxidatively, and often done non-oxidatively in the case of laterites. However, there are instances where laterites are extracted oxidatively. Equally, I see no reason to read down the claim to exclude non-oxidative leaching of sulphide ores.
Novelty

41. Subsection 7(1) of the Patents Act (the Act) states that an invention is taken to be novel unless it is not novel in the light of the prior art. 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.
42. 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"

43. 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). In order 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).

AU 708844

Australian patent 708844 ('844) was published on 30 December 1996, so it is part of the prior art base. The '844 patent relates to hydrometallurgical extraction of nickel and cobalt from sulphide ores. The process involves pressure oxidation leaching using acid, followed by precipitation at a pH of about 5 to 6, and a further precipitation at a pH of about 7 to 8. The integer that is not clearly disclosed is the pH of the liquor obtained from the initial leaching.
At page 9 of '844 it is stated:
"Enough acid is produced during pressure oxidation 12, that it is necessary to neutralizse (sic) this acid by slaked lime in the latter stages of the autoclave. This is indicated as the neutralization 501 in Figure 1. Without this neutralization, the product slurry would have low pH, resulting in significant Fe in solution, and almost all of the Cu as well.
It is preferred in the process that this product slurry contain minimal Fe in solution (less than 100 ppm) and about 1-5 g/l Cu in solution."
QNI argued that the pH during the leaching must be less than 2. While the exact pH is not stated, it is clear that a low pH (probably below 2) is produced during the acid leaching step, but that the pH is adjusted before the liquor is separated from the slurry. The reason for adjusting the pH is to ensure that the liquor does not contain too much iron and copper. Consequently, it is very likely that the pH of the liquor leaving the extraction step is not below 2.
It follows that it has not been shown that there is a lack of novelty in the light of '844.
US 3,720,749
United States patent 3,720,749 ('749) was published on 13 March 1973, so it is part of the prior art base. The '749 patent relates to hydrometallurgical extraction of nickel and cobalt from sulphide ores. The initial acid leach is conducted under conditions reported in Table 1. The pH of the liquor in Tests 1A to 2C is anywhere from 0.4 to 1.22 (Test 2D has a pH of 3.88). It seems that an acid leach at pH < 2 is clearly disclosed.
When discussing the state of the art, the '749 patent says that at a temperature of 20°
"at a pH of about 5.6, while substantially all of the iron and aluminum are precipitated, a substantial amount of nickel is brought down with the precipitate"
QNI argued that this represents a direction to use a pH of about 5.6. I do not agree. This is not a disclosure of a complete process. It is a selective reporting of a part of the prior art processes, and is presented as a warning. To overcome this problem, the first precipitation is carried out at a pH "within a range of about 0.5 to 4" (column 2). Therefore I need to consider whether the pH of "about 0.5 to 4" falls within the range "about 5 to 6". The purpose of the range of 0.5 to 4 becomes apparent from Example 2:
"when the pH following succeeding magnesium oxide additions (at 240°C ± 5° and 450 to 600 psig) reaches 4.52 (Test 3D), a substantial amount of nickel and cobalt precipitates with the iron and aluminum … the pH of the sulfuric acid leach liquor during magnesium oxide treatement should not exceed 4. This is apparent from Table 2, Test 3D, where a pH of 4.52 resulted in precipitation of 17.2% Ni and 24.4% Co from the pregnant liquor. … Thus, the pH range of 0.5 to 4 for selectively precipitating iron and aluminum from sulfuric acid leach liquor is essential in achieving the results of the invention"
It seems that the pH range of 0.5 to 4 is selected so that, under the conditions of temperature and pressure in the system, a large amount of iron and aluminium will precipitate but the nickel and cobalt have not begun to precipitate. This is different to the purpose of the range "about 5 to 6" in claim 1, so the range of 0.5 to 4 cannot be regarded as overlapping with the range of about 5 to 6. I am satisfied that the citation discloses a different first precipitation step.
It follows that it has not been established that claim 1 lacks novelty in the light of the '749 patent.
Kyle article in Nickel ‘96
The 1996 Kyle article relates to acid leaching of laterites at various projects in Australia. Of particular significance is the Cawse project. This project is described as:
“The Cawse project have chosen a two-stage iron removal process. The first stage will be done in slurry to pH 3.5, and the second stage following CCD wash, to pH 6.0. The second stage precipitate will be recycled to recover nickel and cobalt co-precipitated with the iron. The neutralised liquor will then go to hydroxide precipitation. …
The Cawse project will use hydroxide precipitation to recover nickel and cobalt from solution. The reaction is not as selective as sulphide, with copper, zinc and some manganese precipitating with the nickel and cobalt." (page 248)
The Kyle article writes about the Cawse project in future tense – it describes what will be done to process the ore. However, it seems reasonable to view this disclosure as based on research that has been done, and thus it is a disclosure of a processing methodology rather than a mere speculation. The pH of the first precipitation is given as 6.0, which clearly falls within the range of "about 5 to 6". The pH of the second precipitation is not given in the Kyle article. QNI relied upon the evidence of Mr White who stated that the pH used in the Cawse project was 7 to 8, and he knew this before the priority date. Mr White states at [155]:
"I, and others skilled in the art were well aware that hydroxide precipitation will occur at a pH of around 7 to 8. I and others would have known this through our involvement with the Cawse project before The Priority Date".
However, the Kyle article does not disclose this unless the reader was aware of the details of the operation of the Cawse project. But what about readers who were not involved in the Cawse project before the priority date? There is no evidence that details of the Cawse project had entered into the common general knowledge before the priority date of the application.
Mr White also states at [156] that a pH of 7 to 8 would be a suitable choice to precipitate nickel based on known precipitation equilibria. While I accept the accuracy of Mr White's statement, it is not clear that a reader of the 1996 Kyle article would have understood that they were being taught that the Cawse project would carry out the second precipitation at a pH of 7 to 8. It follows that it has not been established that claim 1 lacks novelty in the light of this document.
Kyle article in the proceedings of the Nickel-Cobalt 97 International Symposium
The 1997 Kyle article was published after the priority date of the claims. The article relates to processing of laterite ores, and it is alleged that it is a citation because the claims to laterite processing are not entitled to the earliest priority date.
The priority document is US 08/911,797. The basic document is chiefly concerned with extraction of sulphide ores. There are only two brief references to laterites that I can find. At page 14, when discussing adding copper to the pressure oxidation, it is stated “this will also be the case if a laterite ore is being processed”. This suggests that laterite processing is envisaged. It seems unlikely that the priority document is only referring to laterite processing in the case that copper is added to the pressure oxidation. On page 15 laterites again mentioned, but this is a very passing reference. In my opinion, while there is a minimal disclosure of laterites, I do not believe that I can dismiss the disclosure. I am satisfied that there is a disclosure of laterites in the basic document, so the claims relating to processing laterite ores are entitled to priority from the basic document, so it is not necessary to further consider the 1997 Kyle article.
"Hydrometallurgical Treatment of Blackbird Cobalt Concentrate" by Harris, Monette and Stanley (the Noranda article)
The Noranda article was presented at the 3^rd International Symposium on Hydrometallurgy in 1983. It is thus part of the prior art. The article describes the development of a pilot plant to treat cobalt concentrate. The important part of this article is at page 146. In summary, the process is described as:
Neutralisation of the pressure leach slurry to pH 1.5
Precipitation of residual iron at pH 5.0
Removal of zinc at pH 4.0
Removal of nickel at pH 2.5 using an ion exchange resin
Precipitation of cobalt at pH 8.5
One significant difference is the pH of the cobalt precipitation. QNI stated that a skilled addressee would understand a pH of 8.5 to be about 7 to 8. Mr White states at [163]:
"I and I believe other skilled practitioners would consider a pH of 8.5 included in 'about pH 7 to 8', as specified in claim 1 of The Amended Claims. Certainly, what is being achieved is the same in that the aim is to precipitate cobalt as a hydroxide to produce a cobalt-containing solid product."
I decided that "about 7 to 8" travels far enough to permit the precipitation of nickel and cobalt, but not so far that it is no longer causing any significant precipitation of nickel and cobalt. The pH of 8.5 in the Noranda article is used to achieve the precipitation of cobalt, whereas the removal of nickel is achieved by ion exchange resin at pH 2.5. Consequently, the precipitation in Noranda will not result in nickel precipitation (to any substantial degree).
It is not a requirement of claim 1 that nickel is precipitated, since the claim clearly refers to precipitation of “nickel and/or cobalt”. However, it is a matter of fact that a pH of 8.5 would result in the precipitation of whatever nickel was in solution at the time. I am satisfied that the second precipitation in the Noranda article falls within the scope of the pH range of about 7 to 8.
While the Noranda article discloses a process in which nickel is removed by ion exchange resin, claim 1 does not exclude this possibility, and I see no reason why the claim should be construed in such a way. I am satisfied that claim 1 lacks novelty in the light of the Noranda article.
The Noranda article is short on details of the steps, so consequently it is not possible to find that the features of many of the appended claims are disclosed. However, I have been able to identify that the article also discloses leaching of sulphide ores in the presence of oxygen (claim 2), and extraction at 130 to 160° (claim 23, 24). Claim 37 also lacks novelty.
I conclude that claims 1, 2, 23, 24, 37 lack novelty in the light of the Noranda article.
Inventive step
Subsection 7(2) of the Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose 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 test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention.
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 at 286
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411 approved this approach.
In the present case the problem addressed by the specification relates to the extraction of nickel and cobalt from ores or concentrates. Specifically, the problem relates to obtaining nickel and cobalt in a way that reduces at least some of the recognised problems with the prior art process.
The opponent asserts that the following were all part of the common general knowledge:
·pressure acid leaching of ores
·iron (III) will precipitate as a hydroxide at pH from 2 to 3
·iron (II) will precipitate as a hydroxide at pH from 7.5 to 8.5
·oxidation with air of leach is required during neutralisation to oxidise iron (II) to iron (III) to enable it to be precipitated before nickel precipitation
·nickel laterite pressure acid leaching is typically carried out at a temperature of around 230 to 260 degrees
·a pH above 7 is required to precipitate nickel and cobalt
·nickel solubility decreases at a pH of 7 to 8 so that there is a 99% precipitation, and at a pH of 6.5 to 8.5 there is a 99.9% precipitation
·a number of alkalis can be used to precipitate nickel and cobalt
The opponent also relies upon the prior art discussed under the ground of novelty.
It is clear that each step of the process of claim 1 was generally known. That is, leaching and precipitation were known process steps. The claimed invention carries out these steps in a specific way, and the question is whether it would have been a matter of routine to carry out the steps in that specific way in order to achieve a solution to the problem. The best that can be said in the present case is that the invention utilises steps that are each individually known in the art. I am not satisfied that the evidence shows that it would have been a matter of routine to select and combine those specific process steps in the expectation that the combination of steps could well overcome the problems of the prior art.
The Noranda article needs to be carefully considered, since I found that it discloses a process with all of the steps of claim 1. The Noranda article is published as part of the proceedings of the 3^rd International Symposium on Hydrometallugy, held in Altanta, Georgia on 6 – 10 March 1983. The article is titled “Hydrometallugical Treatment of Blackbird Cobalt Concentrate”. While it is readily apparent that the document would have been understood by a person skilled in the art, and is relevant to the problem, the key issue is whether would have been ascertained. Mr White says he had access to the document before the priority date. Mr Nice says he was not aware of the document. This is not quite enough to satisfy me that the Noranda article is of a type that it would be reasonable to expect a person to consult when dealing with problems in their art. It has not been established that the Noranda article would have been ascertained.
If it were established that the Noranda article would have been ascertained, it would have been a matter of routine follow the teaching and produce the process that I found is disclosed. That is, the subject matter that is disclosed for the purposes of novelty would also lack inventive step. However, there is no evidence that it would have been routine to make any variations to the process.
Looking at the other prior art raised in relation to novelty, each document discloses some but not all of the features of the claimed process. If it is assumed that the documents would have been ascertained, understood and regarded as relevant, the critical question is whether it would have been a matter of routine to make the variations necessary to arrive at the claimed process. While the variations may have been generally known (see above), the evidence falls short of establishing that it would have been a matter of routine to make the variations.
I am not satisfied that it has been demonstrated that there is a lack of inventive step.
Utility
It is a requirement of subsection 18(1) that the invention, so far as claimed in any claim, must be useful. The issue of utility was considered by the Full Court of the Federal Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228. Emmett J at 247 [81] stated:
"A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility"
QNI alleged that there is a lack of utility because the claims include a non-oxidative leaching of sulphides. They also allege that there is a lack of utility as a recycling step is required in order to achieve a high recovery.
I consider that claim 1 includes the possibility of non-oxidative leaching of sulphide ores (see my discussion under the heading of fair basis). I do not believe that it is contended that the specification relates to such a process. To the extent that the claims relate to non-oxidative leaching of sulphide ores, the claimed invention is clearly incapable of producing the extraction of nickel and cobalt. This aspect of the claims lacks utility.
Turning to the second point, QNI argue that the aim of high yield is only achieved where a recycling step is included. I previously stated that the object of the invention is the recovery of nickel and cobalt in a way that overcomes at least some of the recognised problems with the existing processes. Even if it is accepted that there is not a high yield of nickel and/or cobalt without the use of a recycling step, that would not be sufficient to establish lack of utility. As I stated earlier, the aim of the specification is to overcome at least some of the problems recognised with the prior art, and a high yield is only one of those problems. It would be necessary to show that the claimed invention fails to overcome any of the problems recognised with the prior art.
I am satisfied that there is a lack of utility with regard to the non-oxidative leaching of sulphide ores.
Full description
It is a requirement of subsection 40(2) that the specification must describe the invention fully. The High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25], 207 CLR 1 at 17 explained this requirement as:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"
QNI submitted that there is not sufficient description of how sulphide ores or concentrates would be processed in a non-oxidative process. I agree that there is no description of such a process. If this aspect of the invention were the sole subject of a claim, it is clear that there would be a lack of full description. However, this aspect of the invention is not the sole subject of any claim, so this ground does not succeed.
QNI also submitted that there is not sufficient description of how various impurities would be removed from laterites, such as aluminium, chromium, silicon and manganese. This submission is based on the evidence of White, who says:
"In processing nickel laterite ores, aluminium and chromium must be removed from the leach solution prior to nickel and cobalt precipitation, to avoid problems with ammonium re-leach efficiency and nickel and cobalt product contamination. Aluminium and chromium (III) tend to start co-precipitating with iron (III) at around pH 2 to 3, but, depending on temperature, require a pH of around 4 to 5 for complete precipitation."
It seems that the first precipitation at a pH of about 5 to 6 would effect the complete precipitation of aluminium and chromium, but QNI argue that the specification is deficient because it does not state that this would be achieved.
In the case of silicon, White says at [72]:
"I note that The Opposed Application is also silent with regards to the disposition of silicon … Silicon has a far higher tendency to dissolve in the typical temperature conditions of around 250°C that exist for nickel laterite pressure acid leaching, than at 160°C, the typical temperature described in The Opposed Application for pressure oxidation of nickel sulphide concentrates."
White points out that US 3,466,144 specifically refers to silicon removal. However, that document says:
"raising the pH of the solution from less than about 1 to between 3.5 and 5, advantageously, between 3.5 and 4.5, by adding lime or more advantageously, magnesia (MgO) thereto so that elements such as iron, aluminium and silicon are precipitated while the nickel, cobalt and manganese, if present, values remain in solution"

Again it seems that the first precipitation at a pH of about 5 to 6 would lead to precipitation of silicon, and the problem with the specification is that it does not tell you that this has been achieved.
Turning finally to the manganese, White says at [73]:
"manganese levels in nickel laterite ores are typically much higher, as shown in Table 2, paragraph 30. At these levels, when processing nickel laterites, significant manganese contamination of the nickel-cobalt hydroxide precipitate will occur. During leaching in ammonium sulphate and/or ammonia solutions, much of this goes into and stays in solution, unless deliberately precipitated … The Opposed Application makes no mention of precipitating the significant quantities of manganese that typically arise from processing, or dealing with it in any other way."
It is clear that the product of the second precipitation will contain manganese. It is not essential that the product of the claim is free of manganese, so this is not the basis of an objection of lack of full description. However, if it were regarded as an omission that the specification does not describe how to remove manganese, then the man skilled in the art can readily "rectify the mistakes and supply the omissions without the exercise of any inventive faculty" (No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 at 243). It is apparent from the above quote that Mr White has no difficulty in understanding that manganese would be present, and is fully aware of how to remove it using ammonium sulphate or ammonia. In the circumstances, there is a full description of manganese removal.
Finally, QNI submitted that there is not sufficient description of how to operate the process so that all of the nickel and cobalt remain in solution after the first precipitation. I have already stated that this is not a correct construction of the specification.
I am not satisfied that there is a lack of full description.
Fair basis
It is a requirement of subsection 40(3) that the claims must be fairly based on the matter described in the specification. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69], 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (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"
The aspects that the opponent asserts lack fair basis are the non-oxidative processing of sulphide ores, and the recycling aspect of the process.
Non-oxidative processing of sulphide ores
The specification provides no suggestion that sulphide ores can be processed in a non-oxidative manner. Consequently, claim 1 lacks fair basis in so far as it relates to such a process.
Recycling
Two aspects of this issue were raised. Claim 1 does not include a recycling step after the first precipitation. While it is obvious that a greater recovery would be obtained by using a recycling step, the specification does provide a disclosure of a more general process characterised solely by the three steps of claim 1. I note that Mr Jones states at [6] of second declaration:
"The key part of the purification is the specification of a higher pH than previously described, such that impurities are more efficiently and completely removed than at lower pH, but at the price of some Ni-Co co-precipitation; this latter disadvantage is countered by a secondary process for Ni-Co recovery from said precipitate."
I believe that Mr Jones is referring to the preferred form of the invention, not his construction of the teaching of the specification. I do not consider that it is essential for the recycling to be included in all of the claims.
Finally, it was asserted that claim 35 introduces some but not all of the recycling steps. As I do not consider that the recycling must be included in the claims, the inclusion of some but not all of the recycling steps does not lead to any lack of fair basis.
I am not satisfied that there is a lack of fair basis.
Clarity
It is a requirement of subsection 40(3) that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
Previously I found that the term "about" does not lead to an ambiguity as to the scope of claim 1.

100. QNI argued that claim 4 is not clear with regard to what solids are in solution, and how they are in solution. Claims 3 and 4 read:
3. The process according to claim 1, further comprising the steps fo subjecting the sold containing nickel and/or cobalt to an ammonium leach with an ammonium solution at a pH of about 6 to 8 to produce a leach solution containing nickel in solution and a solid residue.
4. The process according to claim 3, further comprising the step of maintaining the percentage solids in solution during the ammonium leach at a maximum value of about 10%.

101. Mr Price referred briefly to claim 4 at [75]:
"Claims 4 to 7 introduce particular values each of which are relatively standard in the industry. For example, claim 4 limits the percentage of solids in solution during the ammonium leach to a maximum value of 10%"

102. Mr Price expresses no concern, and in fact regards this a relatively standard value. I am satisfied that there is no lack of clarity associated with language of claim 4.
103. QNI also asserted that claim 10 is not clear in that it is not apparent how the cobalt, magnesium and nickel are extracted. Claim 10 reads:
The process according to claim 9, further comprising the steps of:
subjecting the leach solution to cobalt solvent extraction in the presence of magnesium ions to provide a cobalt loaded extractant and a first raffinate;
subjecting the first raffinate to a magnesium solvent extraction to provide a magnesium loaded extractant and a second raffinate; and
subjecting the second raffinate to nickel solvent extraction to provide a nickel loaded extractant and a third raffinate.

104. Mr Price states at [92] that:
"In my view, claim 10 merely represents part of a standard, well known and established nickel, cobalt and magnesium separation technique."

105. If the techniques are standard, then it would be clear to a person skilled in the art how to carry them out. There cannot be a lack of clarity in such a situation.
106. Finally, it is asserted that claim 35 is unclear as it includes a precipitation at pH 4 to 5, which is outside the range of 5 to 6 that appears in claim 1. It seems to me that this is an additional step, and there is no lack of clarity arising.
107. I am not satisfied that there is a lack of clarity in the claims.
Conclusion
108. I have found that the opposition succeeds on the ground of lack of novelty in relation to claims 1, 2, 23, 24, 37. Claim 1 lacks fair basis in so far as it relates to non-oxidative processing of sulphide ores. I have also found that there is a lack of utility with regard to the non-oxidative leaching of sulphide ores. The opposition fails on all other grounds. As there are claims that would be valid, I will allow the applicant time to propose amendments.
Costs
109. QNI have succeeded in the opposition. I can see no reason to depart from the normal outcome that costs should follow the event.
Dr S.D.Barker
Delegate of the Commissioner of Patents