R&C Products Pty Ltd v the Clorox Company
[1999] APO 51
•9 August 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 657547 in the name of R & C PRODUCTS PTY LTD
Title: Insecticidal Bait Composition
Action: Opposition by THE CLOROX COMPANY under section 59 of the Patents Act 1990
Decision: Issued .
Abstract
The grounds of opposition of Lack of Novelty, Lack of Inventive Step and Manner of Manufacture found not to have been established.
In the matter of section 40 the specification, as accepted and incorporating amendments as filed on 3 April 1997, found to lack clarity. Specifically, claim 1 and related parts of the description suffers from the following defects:
a) The term "substantially non-crumbling" has not been fully defined.
b) The percentage ranges (in the bait composition) applicable to the food ingredient and the fats/oils component (edible by the target insect species) has not been clearly specified.
Noted that proposed amendments filed by the applicant on 29 September 1998 are directed to overcoming the defect relating to the term "substantially non-crumbling.
Applicant granted 60 days from the date of this decision to file suitable amendments.
Costs awarded against the applicant R & C Products Pty Ltd and in favour of the opponent The Clorox Company.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application No. 657547 by R & C PRODUCTS PTY LTD and an opposition under section 59 of the Patents Act 1990 by THE CLOROX COMPANY.
BACKGROUND
Application No. 18651/92 was filed by R & C Products Pty Ltd on 26 June 1992 as a further application of 50875/85 (576034). Application 50875/85 was based on Australian Provisional Patent Application PG 8494, filed on 10 December 1984. Application No. 18651/92 was advertised accepted on 16 March 1995 under the number 657547.
The Clorox Company filed a notice of opposition on 16 June 1995. The service of evidence in support, evidence in answer and evidence in reply was completed on 21 August 1997. The opponent applied to file further evidence on 7 October 1998. The request was granted on 5 November 1998. Subsequently the filing of further evidence and evidence in response was completed on 5 January 1999.
The hearing was held in Canberra on 6 May 1999. Mr. Paul Whenman, patent attorney of F B Rice & Co, Sydney represented the applicant. Dr. Colin Bodkin, patent attorney of Spruson & Ferguson, Sydney represented the opponent.
Proposed amendments to accepted Patent Application 657547 were filed on 3 April 1997 and their allowance was advertised on 11 March 1999. A further proposal to amend was filed on 29 September 1998. The hearing was based on the application as amended by the request of 3 April 1997. Both parties also made submissions on the application as proposed to be amended by the request of 29 September 1998.
EVIDENCE
The evidence in support consists of declarations made by:
Colin Lewis Bodkin, patent attorney, dated 18 December 1995 and exhibits CLB-1 to 33.
Graham Neville Arthur, dated 15 December 1995 and exhibits GNA-1 to 54. He states that he is a qualified agricultural scientist and currently provides a consultancy service to the Agricultural and Veterinary Chemicals Industry largely related to establishing governmental approval of chemicals and products consistent with Commonwealth requirements.
John Stuart Loughnan, dated 15 February 1996. He states that he is a Chartered chemist and in 1987 retired from W.A. Flick & Co Pty Limited ("Flick"), a leading manufacturer of pest control products in Australia. Prior to retirement he had held the position of Chief Chemist and Production Manager since 1970 when he had joined Flick.
Alec Walker, dated 17 April 1996. He states that he is currently a marketing consultant to the agricultural and pest control industries and the Director of a company that develops and markets pesticide products. Previously he was the Manager of the Division of Rentokil Environmental Services ("Rentokil") which was responsible for the development and marketing of pesticide products. He was employed by Rentokil for approximately 17 years until January 1995.
Peter Ross Meadows, dated 14 June 1996 and exhibit PRM-1. He states that he is a qualified agricultural scientist and currently provides a consultancy service to a number of industry sectors including the pest management industry. He was employed by W.A. Flick & Co Pty Limited ("Flick") between 1979 and October 1995 in various capacities including having responsibility for the pesticide formulation plant of Flick. Prior to that he was employed from 1963 to 1979 with Rentokil Limited (UK) or Rentokil Pty Ltd in Australia ("Rentokil") in various capacities including responsibility for the formulation plant of Rentokil.
The evidence in answer consists of declarations made by:
Thomas Peter Anderson, dated 19 February 1997 and exhibit TPA-1. He states that he is currently employed as Technology Manager of Crop Care Australasia Pty Limited a subsidiary of Incitec Limited. He states also that his experience prior to the Priority Date (of the opposed application) was predominantly with pesticide formulations including insecticides with new technologies and with improving existing formulations.
The evidence in reply consists of declarations made by:
Graham Neville Arthur, dated 18 August 1997 and exhibits GNA-55 to 64.
John Stuart Loughnan, dated 13 August 1997.
Peter Ross Meadows, dated 8 August 1997.
Kenneth Frederick Howard, dated 20 August 1997. He states that he is currently the National Secretary to the Australian Institute of Packaging. He also states that he has been a Packaging technologist in Australia for over 25 years.
Further Evidence consists of:
Evidence in support with declarations of:
John Stuart Loughnan, dated 1 December 1998 and exhibits JSL-1 and 2.
Alec Walker, dated 3 December 1998 and exhibits AW-1 and 2.
Evidence in response with a declaration of:
Ian Andrew Thompson, dated 5 January 1999 and exhibits IAT-1 and 2. He states that he is currently a Principal Research Scientist (Pest Control Research & Development) with Reckitt & Colman Australia, an operating unit of R&C Products Pty Ltd, the applicant in this matter. He indicates that he joined Reckitt & Colman in 1985 and was employed as a Senior Development Chemist, Pest Control Division prior to his present position. Prior to joining Reckitt & Colman he had worked for Ciba-Geigy Australia as a Quality Control Chemist, Development Chemist and Senior Development Chemist in their Plastics, Chemicals and Agricultural (pesticide, herbicides and fungicides) Divisions
THE SPECIFICATION
The specification under consideration (as amended by the amendments filed on 3 April 1997) relates to insecticidal bait compositions and a method of preparing the same. It states:
"Conventional baits have included an active insecticidal compound and a food material. …have generally been of a dry nature being formed by compressing the ingredients into a biscuit like tablet or similar. Such a bait tablet is usually contained in a bait housing…"
The prior art defects have been identified as:
"These biscuit like bait tablets…generally have a crumbly consistency particularly as they age. This means that the tablet can break up in the housing and crumbs of poisonous material may fall from the housing if it is handled."
The specification then states:
"In patent application PCT/US85/00405 (WO85/04074) there is disclosed a bait composition in which an insect controlling material is dispersed in a gelatinized starch matrix. ….The present invention seeks to provide an alternative to the composition disclosed in PCT/US85/00405."
In contrast to the compositions disclosed in PCT/US85/00405 which are gels, the compositions of the present invention are able to be readily filled into a bait housing by virtue of their flowability. When filled into a bait-containing cavity of a bait housing, the composition solidifies to produce a substantially non-crumbling bait. This offers considerable economic advantages in the manufacture of the bait and housing combination."
A consistory statement of the invention then follows:
"The present invention consists in a method of forming an insecticidal bait composition which includes:
(a) from 0.01 to 30% by weight of an insecticidal composition active against at least one species of insect;
(b) from 0 to 80% by weight of a food ingredient selected from the group comprising lipids, carbohydrates, proteins, essential oils, water, spices and mixtures thereof; and
(c) from 25 to 95% by weight of a material selected from the group consisting of fats and mixtures of fats and oils, and edible by at least the said species of insect, comprising mixing the components, heating the mixture so as to make it flowable, as hereinbefore defined, filling the flowable mixture into a bait housing and cooling the mixture to form a solid, substantially non-crumbling insecticidal bait composition."
A detailed description of the various features of the invention is then provided. An example practising the invention then follows together with a comparison of the product with prior art bait tablets. The specification concludes with nine claims as set out below:
1. A method of forming an insecticidal bait composition which includes the components:
(a) from 0.01 to 30% by weight of an insecticidal composition active against at least one species of insect;
(b) from 0 to 80% by weight of a food ingredient selected from the group comprising lipids, carbohydrates, proteins, essential oils, water, spices and mixtures thereof; and
(c) from 25 to 95% by weight of a material selected from the group consisting of fats and mixtures of fats and oils, and edible by at least the said species of insect, comprising mixing the components, heating the mixture so as to make it flowable, as hereinbefore defined, filling the flowable mixture into a bait housing and cooling the mixture to form a solid, substantially non-crumbling insecticidal bait composition.
2. A method as claimed in claim 1 wherein the bait composition includes a preservative.
3. A method as claimed in claim 1 or claim 2 wherein the material is heated to at least 40oC to make the mixture flowable.
4. A method as claimed in claim 3, wherein the mixture is heated to a temperature of at least 55oC.
5. A method as claimed in any one of claims 1 to 4, wherein the bait composition includes an insect attractant.
6. A method as in claim 5 wherein the attractant is fenugreek.
7. A method as claimed in any one of claims 1 to 6, wherein the material is additionally the food ingredient.
8. A method as in any one of claims 1 to 7 wherein the carbohydrate is a sugar.
9. A method substantially as hereinbefore defined with reference to example 1.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars, filed 20 September 1995 and amended on 11 April 1996, contains the following grounds of opposition:
1. The nominated person is not entitled to a grant of a patent for the invention.
2. The invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b).
3. The specification filed in respect of the complete application does not comply with Sub-section 40(2) or (3).
The opponent indicated that they would not be pursuing item 1 of the grounds of opposition. I note that no evidence has been served in support of this ground. Consequently I shall not make any finding in respect of Ground 1 of the statement of grounds and particulars.
SUBMISSIONS
I shall refer to submissions from both parties wherever necessary in my decision.
DECISION
Section 40/Fair Basis
I shall consider the section 40 issues raised by the opponent, on an individual basis, as itemised in the statement of grounds and particulars.
"1. The specification of the Opposed Application does not comply with Sub-section 40(2) because it does not fully describe the claimed invention. The only description of a method of forming an insecticidal bait composition appears with reference to one specific bait composition in Example 1 at page 7, lines 21 to 29 of the specification. The remainder of the specification is directed to a description of the prior art or to a description of insecticidal compositions."
Section 40(2) of the Patents Act 1990 states:
"A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and…."
The courts have indicated that the requirement that the patentee fully describe his invention in his complete specification has two aspects. First, he must describe the nature of the invention so that others will know the area over which he claims his monopoly. Secondly, he must describe the manner in which the invention is to be performed (Edison & Swan Electric Light Co. v Holland (1889) 6 RPC 243 at 280 (Lindley L.J.); No-fume Ltd. v Frank Pitchford & Co. Ltd. (1935) 52 RPC 231 at 243 (Romer L.J.)). He is not required to do this in minute detail: he is entitled to assume that the addressee is a person normally skilled in that art and possessed of the common general knowledge pertaining to that art (Osram Lamp Works Ltd. v Pope's Electric Lamp Co. Ltd. (1917) 34 RPC 369 at 391 (Lord Parker); Welch Perrin & Co. Pty. Ltd. v Worrel (1961) 106 CLR 588 (H.C.).
Regarding insufficiency, Romer L.J. in No-Fume v Pitchford (supra at 243) stated:
"…if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omission without the exercise of inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
On consideration of the submissions and evidence put forward by the opponent I find that none of the declarants have had difficulty in understanding the method described. Some reservations have been expressed about the meaning of certain terms used in the description and claims but no doubt has been expressed as to what constitutes the invention.
The specification in its present form indicates:
a) At page 2, line 1, "The present invention relates to insecticidal bait compositions."
b) At page 3, line 3, "The present invention seeks to provide an alternative to the composition disclosed in PCT/US85/00405."
c) At page 3, line 11, (consistory statement) "The present invention consists in a method of forming an insecticidal bait composition which…".
Thereafter details are provided of various components of the insecticidal composition followed by an example of a particular composition manufactured by the method set out in the consistory statement. The claims are directed to a method of forming an insecticidal bait composition.
There is no indication from the opponent of the difficulties faced in determining the invention being described and claimed. Also, no indication has been provided of any ambiguities arising from reference to insecticidal compositions and methods of manufacture of those compositions. Also the applicant need only describe a "best" method of performance, not all methods of performance.
I note that the specification describes both an insecticidal composition and a method of manufacture of the same. The applicant is entitled to claim both the product and method for producing the same if they both constitute patentable subject matter. I cannot conclude that the specification does not fully describe the claimed invention.
"2. The claims of the Opposed Application do not define the invention. The purpose of the alleged invention is set out at lines 3 to 4 of page 3:
"The present invention seeks to provide an alternative to the composition disclosed in PCT/US85/00405."
Further, at page 3, lines 13 and following of the specification is a statement of the alleged invention:
"The present invention consists in an insecticidal composition comprising…"
The claims of the Opposed Application do not define an insecticidal composition, however; rather they define a method of forming an insecticidal bait composition. The specification does not state that the alleged invention, which is the subject of the Opposed Application, is a method of forming an insecticidal bait composition. Accordingly, the claims of the Opposed Application do not define the alleged invention stated in the Opposed Application to be its subject."
I note that the opponent has referred to the specification at acceptance. In light of the evidence mentioned under item 1. (above), I do not consider that the opponent has shown that the claims of the opposed application do not define the invention described.
"3. The specification of the Opposed Application does not comply with Sub-section 40(3) because the claims of the Opposed Application are not fairly based on the matter described in the specification. The claims of the Opposed Application relate to a method of forming an insecticidal bait composition. The only disclosure of a method of forming an insecticidal bait composition in the description is at page 7, lines 21 to 29 of the specification, in relation to Example 1. No other description of a method of forming an insecticidal bait composition is provided and accordingly all of the claims except claim 9 are wider in scope than what is described in the specification and are therefore not fairly based."
The Mond Nickel Rules (Mond Nickel Company Ltd.'s Application (1956) RPC 189 at page 194) as adapted to fair basis of complete specifications states:
a) Is the alleged invention as claimed broadly described in the specification?
b) Is there anything in the specification which is inconsistent with the alleged invention as claimed?
c) Does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?
Applying the test set out above to the opposed specification;
For a) I note that the specification at acceptance had made a disclosure at page 7, lines 21 to 29 describing a method of forming an insecticidal bait composition. Even though the description referred to insecticidal compositions it did make a broad disclosure of a method of making that composition. I consider that part a) of the Mond Nickel Rules has been complied with.
Now looking at b) I do not find any matter in the specification that is inconsistent with the invention as claimed. The description discloses an insecticidal composition, the various components of that composition and a method of making that composition. There is no indication in the specification that the invention to be claimed is to be strictly limited to an insecticidal composition. The current description at page 3, lines 11 onward states "The present invention consists in a method of forming an insecticidal bait composition which includes…". The description has revealed various aspects of the invention, ie a composition and a method of manufacture of the composition. The applicant is entitled to claim any one or both aspects of the invention if he so wishes. I do not consider the claiming of a single aspect of the invention to be an inconsistency within the specification. Thus part b) of the Mond Nickel Rules has been complied with.
Looking at c) the opponent has not indicated any characteristic feature of the claims about which the specification is wholly silent. I have reviewed the current claims and have not found any feature which is not disclosed in the description. Therefore I consider that part c) of the Mond Nickel Rules has been complied with. I consider that the opponent has failed to establish that the claims of the opposed specification lack fair basis.
"4. The claims of the Opposed Application are unclear for the following reasons:
a. It is unclear how the insecticidal bait composition described in any of the claims can include from 0 to 80% by weight of component (b) since any amount over 74.99% by weight would prevent the composition from including at least 0.01% by weight of component (a) and simultaneously at least 25% by weight of component (c)."
Consideration of this matter reveals an inconsistency in the claims. Claim 1 reveals three components with varying ranges of percentage by weight. Other components of the bait composition as disclosed in the description and claims are attractants and preservatives. In order to determine if there is an inconsistency, as the opponent has indicated, I shall select an embodiment of the composition as set out in claim 1. Looking at a composition where there need not be any attractants or preservatives the following components and weight ranges are disclosed.
(a) from 0.01 to 30% by weight of an insecticidal composition;
(b) from 0 to 80% by weight of a food ingredient; and
(c) from 25 to 95% by weight of a material selected from the group consisting of fats and mixtures of fats and oils, and edible by at least the said species of insect
Assuming a minimum percentage of components (a) and (c), that is a total of 25.01% by weight, component (b) would need to be 74.99% by weight (not 80% as claimed) for the composition to total 100%. Taking another embodiment, and assuming a minimum of (a) and a maximum of (b), that is a total of 80.01% by weight, component (c) would need to be 19.99% by weight (not 25% as claimed) for the composition to total 100%. Thus it is not clear as to what ranges should be applied to components (b) and (c) (at least) to satisfy the requirements of claim 1. I am in agreement with the opponent that claim 1 (and any claims appended thereto) lacks clarity as a result.
"4 b. It is unclear what is the scope of the components (b) and (c) at least referred to in claim 1. In particular, it is unclear what is encompassed by the terms "lipids", "carbohydrates", "proteins", "essential oils", "spices", "fats" and "oils"."
The opponent focussed on the terms "fats" and "oils". The first Arthur declaration sets out, at paragraphs 16 and 17, the issues involved, and also provides the meaning of those terms as they would be understood by a person skilled in the art at the relevant date. Loughnan has similarly discussed the issue in his first declaration at paragraph 9 and provided his understanding (as a skilled addressee) of the meaning of the terms "fats" and "oils". The applicant has not disagreed with the interpretation of the opponent of the meaning of these terms. The Federal Court in Leonardis v Sartas 35 IPR 23 at 32 states:
"It is not inadmissible to use in a claim an imprecise word, in an appropriate context, where it conveys the necessary meaning."
Thus I conclude that the claims in question do not lack clarity as the skilled addressee is able to determine the meaning of those terms by reference to those terms as they are understood in the art. I would further note that claim 1 at part (c) clearly indicates that the fat or mixture of fats and oils is edible by the species of insect targeted by the insecticidal composition.
"4 c. The claims of the Opposed Application are unclear with regard to the expression "substantially non-crumbling". It is unclear under what conditions the insecticidal bait composition defined in the claim is required to be "substantially non-crumbling". Further, the results shown in Tables 1 and 2 on pages 8 and 9 show that, under the conditions of the tests carried out, the claimed baits did lose weight and accordingly did crumble at least to some extent. Therefore, it is unclear how a potential infringer would ascertain whether a given method did or did not infringe the claims of the Opposed Application, if they were to be the claims of a granted patent."
The specification does not give a clear indication of the scope of the term "substantially non-crumbling". The description at page 8 states:
"The trial was repeated where the embodiment had been filled into a typical housing (described in our provisional patent application PG 8493). In this case it was found that after 300 revolutions, there was no loss in weight. Although these trials were not designed to necessarily simulate crumbling that might occur in normal use, it was expected that the conditions of these trials were more stringent."
The description has also disclosed comparative tests on bait samples (not in a bait housing) where loss of weight has occurred for both the bait of the invention as well as the prior art bait. Thus I agree with the opponent that the term "substantially non-crumbling" lacks clarity. I note that in the latest set of proposed amendments (filed 29 September 1998) the applicant has amended the relevant part of claim 1 to read,
"…and cooling the mixture to from a solid, substantially non-crumbling insecticidal bait composition, which when tested in an Erweka TAR friability testing machine as described herein, loses no weight after 300 revolutions."
Thus the lack of clarity has been removed by indicating that substantially non-crumbling bait (in a bait housing) is required to lose no weight after 300 revolutions under testing in an Erweka TAR friability testing machine.
The opponent then raised the issue that the specification did not teach how non-crumbling bait may be obtained and that the reader has to discover this. Also no direction has been provided in this case of avoiding non-crumbling compositions.
The applicant indicated that the Erweka test provides a clarification of the meaning of substantially non-crumbling. They noted that none of the opponent's declarants had any difficulty with the Erweka test. The applicant also submitted that the feature of substantially non-crumbling was a property and not a qualitative term, it was a relative term.
The opponent referred to Evans Medical Ltd's Patent [1998] RPC 517 at 537 in which Laddie J. refers to the findings of the Technical Board of Appeal of the EPO in Unilever/Stable bleaches (Decision T 226/85) [1988] OJ EPO 336:
"Even though a reasonable amount of trial and error is permissible when it comes to the sufficiency of the disclosure in an unexplored field or - as it is in this case - where there are many technical difficulties, there must be available adequate instructions in the specification or on the basis of common general knowledge which would lead the skilled person necessarily and directly towards success through the evaluation of initial failures or through an acceptable statistical expectation rate in the case of random experiments."
The opponent's declarants, Loughnan and Walker have indicated no difficulty in an understanding of the feature relating to the Erweka testing. They indicate that the products that they dealt with could fall within the requirements set out in the new feature. The opponent's declarants do not indicate that the field is largely unexplored. Also, no evidence has been provided by the opponent, of:
a) technical difficulties encountered, failures experienced; or
b) acceptable statistical expectation rate in the case of random experiments
The onus is on the opponent to provide relevant evidence to support their submissions. I do not consider that the opponent has shown that addition of the Erweka testing feature results in the insufficiency of the description.
Regarding particulars d and e under ground 4, the opponent did not raise those issues at the hearing. The applicant indicated that none of the opponent's declarants had indicated any difficulty with the clarity of that particular subject matter. Consequently I do not consider that the claims lack clarity with regard to those issues. In conclusion I have found the claims lack clarity with regard to the issues raised in ground 4, items (a) and (c).
Lack of Novelty
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
On consideration of claim 1, I consider the essential features to be the following:
A. A method of forming an insecticidal bait composition which includes the components:
B. from 0.01 to 30% by weight of an insecticidal composition active against at least one species of insect,
H. 80% or less by weight of a food ingredient selected from the group comprising lipids, carbohydrates, proteins, essential oils, water, spices and mixtures thereof,
C. from 25 to 95% by weight of a material selected from the group consisting of fats and mixtures of fats and oils, and edible by at least the said species of insect,
Comprising:
D. mixing the components,
E. heating the mixture so as to make it flowable, as hereinbefore defined,
F. filling the flowable mixture into a bait housing and
G. cooling the mixture to form a solid, substantially non-crumbling insecticidal bait composition.
The feature H set out in claim 1 reads "from 0 to 80% by weight of a food ingredient selected from the group comprising lipids, carbohydrates, proteins, essential oils, water, spices and mixtures thereof." The 0% option provided for this component clearly indicates that it may not be added to the composition. I consider it an essential feature of the invention that the food ingredient constitutes 80% by weight or less of the bait composition.
The description at page 4, line 18 onwards states "The term "flowable" in the context of this specification means that the insecticidal bait composition is able to be filled into a container using positive displacement filling equipment." At page 3, line 27 onwards it states "The term "insecticidal composition" used herein to mean any chemical composition which will, when consumed by insects of at least one species, reduce the population of that insect species at least by the next generation of such insects of (or?) which will affect the behaviour of an insect species either at a distance or when eaten. The insecticidal composition may poison and kill the insect which consumes it or it may affect the fecundity of the insect by sterilising it by causing a mutation of its gametes, or by hormonally affecting growth regulation in the next generation."
The opponent raised a number of citations relating to lack of novelty. I have read and considered all these citations. Some of them did not disclose a number of essential features of the opposed invention. Accordingly, I shall discuss only those of the closest relevance to the opposed specification.
AU 509949 (US 4049460) - Exhibits GNA-15 and 12
This specification (published in Australia on 28 September 1978) discloses (as per claim 1):
"A bait composition comprising an intimate mixture of from 20 to 54.75% by weight of a non-repellent binder; from 79.75 to 45% by weight of a food attractant selected from the group consisting of dry dog food, maltose, brown sugar or mixtures thereof; and from 0.25 to 5% by weight of 0, 0-diethyl-0-(3, 5, 6-trichloro-2-pyridyl) phosphorothioate."
The specification indicates that the non-repellent binder could be a wax including various natural and synthetic waxes, carboxymethyl cellulose, starches etc. Example 1 of the specification discloses mixing of dogfood and insecticide into melted paraffin wax at 125 oF and then extending the mixture into 5 gram cylindrical bait pellets.
The opponent and the declarant Mr. Arthur submitted that:
"Feature B is disclosed as "0, 0-diethyl-0-(3, 5, 6-trichloro-2-pyridyl) phosphorothioate".
Feature H is disclosed as "79.75 to 45% by weight of a food attractant selected from the group consisting of dry dog food, maltose, brown sugar or mixtures thereof."
Feature C is disclosed as "20 to 54.75% by weight of a non-repellent binder."
Features A, D to G were disclosed in Example 1."
On comparison with the opposed specification I find that, features A and B are disclosed. Feature H, the food ingredient, is also disclosed. I note that the opposed specification indicates that feature C could additionally be composed of the same materials as listed in feature H but that they are still required to be edible by the species of insect being targeted. The citation requires a separate binder and food ingredient as features of the invention. The opposed specification has a food ingredient and a material that must be edible by the insect species being targeted, whereas the citation requires a food material and a binder that is non-repellent to the insect species being targeted. This non-repellent binder has been disclosed as wax and the citation quotes prior art stating "..cockroaches will eat through waxy materials to reach a bait material." The prior art in question, J W Eversole, Journal of Economic Technology (1971) 64, 1316-1317, Exhibit GNA-24, makes the following disclosure (at page 1316, column 2, lines 23-28);
"There was a considerable amount of feeding on the baits within 24 hr. Bits of wax were seen around the baits situated on platforms, indicating that the cockroaches did not consume the wax. Apparently they removed wax with their mandibles to reach the bait."
Thus feature C, requiring a material that must be edible by the insect species being targeted, has not been disclosed.
I shall now address the process steps. The feature E refers to heating the mixture so as to make it flowable as herein before defined. The specification indicates that this means that the composition is able to be filled into a container using positive displacement filling equipment. The citation discloses the mixing of a food ingredient and insecticide into melted paraffin wax. The liquid composition thus formed clearly satisfies the requirement of being flowable. Feature D requires mixing of the components prior to heating the mixture. This feature has been disclosed in the citation. Feature F, which discloses filling of the mixture into a bait housing has not been disclosed. Feature G discloses cooling the mixture to form a solid, substantially non-crumbling insecticidal bait composition. This feature is disclosed in the citation. Regarding the substantially non-crumbling aspect I have indicated previously that the specification has not clearly defined this aspect. Mr. Arthur has indicated in his declaration at paragraphs 10 and 33 his understanding of this term. He has provided the dictionary definition (Macquarie Dictionary) of crumbling, which states:
1. to break into small fragments or crumbs. 2. To fall into small pieces; break or part into small fragments. 3. To decay; disappear piecemeal.
He has thus taken the plain meaning and I am in agreement with this definition. He has indicated with regard to the citation that he would expect at least the baits described in the Examples which have the highest amounts of paraffin wax not to be crumbly. The applicant did not challenge this and I accept his statement. I consider that feature G has been disclosed in the citation. I note that with the proposed amendment to feature G to clearly define the substantially non-crumbling aspect, the citation will not make a disclosure of the amended feature. Thus at present features C and F have not been disclosed
In conclusion the citation has not disclosed each and every one of the essential features of the opposed invention and thus does not render the specification lacking in novelty.
US 4353907 - Exhibit GNA-16
This patent specification indicates that it was published in the US on 12 October 1982. It discloses preparation of an insecticidal composition by dissolving from about 1% to about 10% by weight of an insecticide (1,5-bis(a,a,a-trifluoro-p-tolyl)-1,4-pentadien-3-one-(1,4,5,6-tetrahydro-5,5-dimethyl-2-pyrimidinyl)hydrazone) in a fatty acid of oleic acid, linoleic acid, linolenic acid, stearic acid or mixtures thereof wherein the acid is used in a 1:1 to 2:1 weight ratio to the toxicant, and at a temperature range of from about 30oC to about 80oC, and then adding to the thus obtained solution an edible oil of soybean oil, cottonseed oil, corn oil, coconut oil, olive oil, peanut oil, palm oil, tall oil or mixtures thereof, in amounts sufficient to total the formulation to 100% by weight.
On comparing with the opposed specification I find that the following features are disclosed.
Features A, B, C, D and E. In respect of feature E I note that the citation refers to edible oils but does not indicate that the oils must be edible by the targeted insect species. However the opposed specification has disclosed the use of soybean oil which is also disclosed in the citation.
Feature F is disclosed in that the composition is filled into soda straws (Col. 3, lines 2,3). However Feature G is not disclosed. The declarant Arthur at paragraph 38 of his first Declaration states:
"It is implied that the baits are used at ambient temperatures: when stearic acid is the fatty acid (see col. 2 line 39) and/or hydrogenated vegetable oil is used (see col. 2, lines 45-47) the obtained composition will be solid on cooling."
Having read the specification I find that it does not disclose the composition in a solid form. Example 1 shows the insecticide being reacted with the fatty acid to form a salt and the salt then being dissolved in soybean oil. Col. 4, lines 11-14 states
The resulting mixtures were centrifuged while hot and allowed to cool to room temperature (25oC). Excess salts were observed in all cases.
This does not indicate a solidified composition. Examples 2-4, 6-8 clearly refer to finally obtaining a clear solution of insecticide, fatty acid and soybean oil at room temperature (col. 7, lines, 30-38, 46-53, 58-64; col. 9, lines, 19-23, 41-54, 59-66). Example 5 at col. 9, lines 6-15 indicates that the toxicant crystallizes out of such a solution, when the solution is cooled to room temperature.
Thus feature G has not been disclosed. I do not find that this citation has disclosed all the essential features of the opposed invention. Consequently I do not consider that this citation has rendered the opposed invention lacking in novelty.
Miles, J W et al., Journal of Agricultural and Food Chemistry, 10, No 3, May-June 1962, pp. 240-244 - Exhibit GNA-19
This citation discloses:-
"The insecticide DDVP (trade name Dichlorvos) formulated with a number of anhydrous hydrophobic materials to produce a series of solid products containing up to 60% toxicant. The materials are cetyl and other higher alcohols; high molecular weight glyceryl esters, including animal and vegetable fats and oils and hydrogenated vegetable oils; and various waxes, including beeswax, carnauba, and montan wax. All of these materials mixed readily with DDVP when melted, and when the mixture was poured into a mold, most solidified into a hard mass upon cooling. Prior to mixing with DDVP the materials were vacuum dehydrated and after this treatment DDVP was added under an atmosphere of nitrogen. Solid formulations containing up to 60% DDVP were successfully prepared. Examples disclose formulations with 25 weight % DDVP the rest being made up of hydrogenated cottonseed oil OR a 50-50 mixture of cottonseed oil and montan wax.
The montan wax would be the most practical hydrophobic carrier for reasons of economy, but when it was used alone with DDVP, there was excessive cracking and crumbling of the formation as it aged, which was deemed undesirable. The addition of cottonseed oil, hydrogenated cottonseed oil, phthalate esters, and other liquids usually eliminated this difficulty."
I shall now consider the features of the citation to determine if there is a full disclosure of all the essential features of the opposed invention. I note the citation discloses the use of the solid formulation in two ways; (a) vaporizer units to enable DDVP to act as an insecticidal vapor and (b) in aqueous sugar solutions where the toxicant bleeds out to maintain an effective liquid bait.
The opposed specification claims an insecticidal bait composition and defines the term at page 2 as:
"Insecticidal bait compositions are materials that will be eaten by insects of at least one species and will either directly kill the insects, affect the fecundity of the insects so that the insect population is reduced in the next generation or alter the behaviour of the insects in a manner that will bring about their destruction."
The citation does not require the solid formulation be eaten by the insects, rather it is used to generate toxic vapors or toxic aqueous solutions.. There is also no disclosure of feature C, which requires that the material mixed with the insecticide be edible by the species of insect it is targeting. I consider that the citation does not render the opposed invention as lacking in novelty.
J W Eversole, journal of Economic Entomology (1971) 64, 1316-1317 - Exhibit GNA-24
C G Wright et al., Journal of Economic Entomology (1973) 66, 1277 - Exhibit GNA-25
These citations disclose:
"Keponeâ (an insecticide) bait pellets embedded in paraffin wax. Waxed paper cups are filled with melted paraffin wax and bait pellets are poured into the cups and the paraffin allowed to solidify. Use of this bait showed that the wax was not eaten but the bait was consumed."
The declarant Mr. Arthur states that related literature indicates that the Kepone bait pellets contain the insecticide and peanut meal/oil, and hence the opposed invention has been disclosed by these citations.
Thus these citations have disclosed a combination of paraffin wax and bait pellets. The opposed specification requires feature C to be "25 to 95% by weight of a material selected from the group consisting of fats and mixtures of fats and oils, and edible by at least the said species of insect." This feature is not disclosed in the citations, which disclose; compositions with a very high proportion of paraffin wax, and non-consumption of the wax by the target insect species.
I consider that these citations do not render the opposed invention as lacking in novelty.
J Sipaila, Pest Control (1975) 43 (8), 18-35 - Exhibit GNA-30
This citation discloses a rodenticide bait block comprising 22.5lbs. (88.23%) waste vegetable shortening, 2.5lbs. (9.8%) paraffin and 0.5lbs. (1.96%) chlorophacinone mineral oil concentrate (a rodenticide). The method of preparation is similar to that disclosed in the opposed specification.
The citation does not disclose all the essential features of the method of making the insecticidal composition as I have set out previously. The features B and C in particular have not been disclosed. The feature of the added paraffin in the citation has not been established as being edible by the target insect species.
Thus this citation has not shown the opposed invention to be lacking in novelty.
US 4152436 & US4191768 (AU-48407/79), US 4322422, US 4349553; Exhibits GNA-32, 36, 35, 37 and 38
These citations make fairly similar disclosures. The disclosures are directed to insecticides for ants. I have summarised the disclosures regarding bait preparation as follows:
"Baits can be prepared, for example, by admixing these (insecticidal) compounds with peanut butter or citrus pulp, vegetable oils such as soybean oil, animal fats such as lard and tallow, and with or without an organic filler such as bran, and/or an attractant such as lecithin. The composition is then placed in soda straws or on a carrier such as puffed grain, corncob grits and/or starch matrix and distributed in the area of the colony or infestation.
Thus features A-D, F and H of the opposed invention are disclosed. The citation does not disclose features E and G. Thus heating of the mixture of insecticide and bait to make it flowable, and cooling of the mixture to form a solid, substantially non-crumbling insecticidal bait composition have not been disclosed. Also there is no indication that such bait may be formulated without a food ingredient.
Consequently, I do not consider that these citations render the opposed invention as lacking in novelty
S B Hays and F S Arant, Journal of Economic Entomology (1960) 53 188-191 - Exhibit GNA-39
The Abstract states:
"Baits containing tankage, fish meal, ground insect bodies, processed vegetable (cooking) oils, digested corn and soybean protein plus fat (Staley SPIB FA-19C & 39), peanut butter and certain other mixtures high in protein and/or fat were the most attractive….formulations offered the imported fire ant. The insecticides heptachlor and Keponeâ were acceptable to the ant and effective in control…"
The description states:
"Each toxicant was used at rates of 1.0%, 0.5%, 0.25%, 0.125%, 0.0625% and 0.03125% respectively.
In preparing the baits, different procedures were used for incorporating the intoxicant. In one series of tests, the toxicant was dissolved in acetone before mixing with the bait; in another series, it was mixed directly with the liquid or solid bait; in still other tests, the toxicant was dissolved or emulsified in a liquid portion of the bait, which was then mixed with a dry component. All baits were applied within 96 hours after mixing. To facilitate distribution, peanut butter formulations were injected into soda straws with a grease gun.
The imported fire ant was attracted to and accepted only those bait materials that contained considerable quantities of protein and oil. Most oils were accepted alone or in combination with solids. Some of the mixtures were more readily accepted than either the oils or solids alone. In mixing with a solid bait, it was important to use only enough oil to ensure uniform distribution throughout the mixture. Too much oil resulted in a sticky or lumpy bait, which was difficult to distribute."
Comparison of the above with the opposed invention shows that features A, B and C have been disclosed. The method steps however, ie steps E, F and G have not been disclosed. The disclosure of formulations being injected into soda straws with a grease gun do not indicate heating of the mixture to make it flowable and/or cooling of the mixture to form a solid, substantially non-crumbling insecticidal bait composition.
Thus this citation does not render the opposed invention as lacking in novelty.
I shall now consider the issue of lack of novelty by prior use.
The Loughnan Declaration
I have summarised relevant disclosures from Mr. Loughnan's declaration as follows:
""Flick Ratblox" contained cereal food, paraffin wax, a rodenticide, an insecticide, a fungicide, a preservative, stearin and a silicone compound. The components of "Flick Ratcakes" were essentially the same as those of "Flick Ratblox" but the setting point and free oil content of the paraffin wax, the proportion of stearin and the forms of the food material were chosen to ensure good mixing, ease of producing a freely flowable mix, and stability of the resultant bait against temperatures up to 45o, weathering and attacks by rodents, insects and fungi. In the production of "Flick Ratcakes" the paraffin wax and stearin were first melted at 60 to 65oC, then the other ingredients were stirred in while maintaining the mixture flowable. The flowable mix was then poured into rubber moulds and allowed to set. The product so obtained after setting was both solid and non-crumbling."
On comparing with the opposed invention I note that the composition is not an insecticidal bait composition. Thus feature C requiring the material to be edible by at least said species of insect is not satisfied, as paraffin wax has been included. Further a rodenticide and fungicide are required to be added. It would appear that other features of the invention are disclosed but they clearly relate to a method of forming rodent bait. Thus the declaration does not render the opposed invention as lacking in novelty through prior use.
Even if all features of the opposed invention were disclosed, in order to establish lack of novelty in this instance, I have to determine if this information was made publicly available through doing an act anywhere in the patent area, prior to the relevant priority date.
Regarding "publicly available" and "publication by use", Whitford J. in Monsanto Company (Brignac's) Application [1971] RPC 153 at 159 quoted Bowen , LJ in Humpherson v Syer (1887) 4 RPC 407 at 413 where he said:
"I put aside questions of public use, and treat this as a question of whether there has been a prior publication; that is, in other words, had this information been communicated to any member of the public who was free in law or equity to use it as he pleased. …"
Also, Lindley, LJ in Gadd and Mason v The Mayor, &c., of Manchester (1892) 9 RPC 516 at 527, stated:
"But by the publication of an invention is meant an addition to the stock of knowledge which the public either has, or can acquire by consulting some source of information open to it."
I shall now consider the evidence before me to determine if the invention was made available to the public. Mr. Loughnan states:
"As I had investigated and trialed cakes of insecticidal and rodenticidal baits using thermosetting and gelling bases while working with another company before I joined Flick, I reformulated "Flick Ratblox" and Flick commenced manufacture of a new product in 1972. That product was marketed in Australia by Flick under the name of "Flick Ratcakes" from 1972 until beyond August 1987 when I retired from Flick."
However the opponent has not shown that the information regarding the formulation was freely available to the public. The opponent has not shown if the availability of "Flick Ratcakes" in the public domain constituted an enabling disclosure (see Stanway Oyster Cylinders Pty Ltd v Marks (1996) AIPC 91-255). The onus in this instance is on the opponent to prove their case. In this case, supporting evidence to show public availability/possession of an enabling disclosure has not been provided. I find that the Disclosure of the Loughnan Declaration does not render the claims of the opposed specification lacking in novelty by virtue of prior use.
The Walker Declaration
Extracts from the declaration relevant to the issue of novelty, state:
"…in the 1970s and into the early 1980s Rentokil manufactured in Australia a product known as Iodofenphos Gel which was dispensed by Pest control Operators by extruding from a cartridge having a nozzle at one end. I am aware that Iodofenphos Gel was an insecticidal product with the insecticide Iodofenphos as the active ingredient and lard or some other fat forming at least part of the carrier for the insecticide. However, I am unaware of the quantities of the components present in the Iodofenphos Gel or of the details of how Iodofenphos Gel was manufactured by Rentokil.
Rentokil manufactured in Australia (since at least the early 1980s) a rodent bait known as Bromakil in a solid block form, containing the rodenticide Bromadiolone. The baits contained about 0.005% by weight of rodenticide, about 50% by weight of paraffin wax, 1% by weight of propylene glycol and a solid carrier to make up 100% by weight. The solid carrier was either a cereal grain mix, ground peanuts, wheat, flour or a poultry feed known as 14-day old chicken crumbles, or a combination of one or more of these. The baits were manufactured by melting the wax at about 50-55oC, stirring in the other ingredients and then pouring the molten mixture into containers to cool and harden. The baits were solid and could be broken into smaller pieces without crumbling.
In the early 1970s and early 1980s and afterwards Rentokil also manufactured and/or marketed in Australia a bait for rats and mice… The bait is and was known as Bromard and contained about 0.01% by weight of Bromadiolone, in excess of 50% lard as carrier and attractant, and other ingredients. The …baits were made …by melting the lard with the other ingredients by heating them up to about 60oC and then pouring the melted mixture into cartridges to cool. Bromard, when extruded from a caulking gun, is semi solid and non-crumbling in nature."
The composition of the insect bait Iodofenphos Gel has not been fully disclosed, nor its method of manufacture, hence it does not challenge the novelty of the opposed invention.
The other two disclosures refer to rodent baits. Bromakil has rodenticide of about 0.005% by weight which falls outside the range of 0.01% to 30% specified for the insecticide in the opposed invention. Also the material corresponding to feature C does not require that it be edible by the target insect species. The paraffin wax is not shown to be edible by insect species. Thus I consider that features B and C of the opposed invention have not been disclosed. The Bromard bait referred to, discloses a rodenticide, lard, and "other ingredients". Thus a full disclosure of the composition of the Bromard bait has not been provided. I note that an insecticide has not been disclosed and that the final product is semi-solid. Thus I do not consider that the Bromard bait has disclosed features B and G of the opposed invention. I conclude that neither of the three disclosures render the opposed invention as lacking in novelty. Consequently I do not need to consider the issue of determining if this information was made publicly available through doing an act anywhere in the patent area, prior to the relevant priority date.
The Meadows Declaration
Mr Meadows refers to a period between 1963 and 1979 when he worked for Rentokil limited (UK) or Rentokil Pty Ltd in Australia ("Rentokil"). Extracts from his declaration relevant to the issue of novelty:
"The trial insecticidal bait formulations which I prepared at Rentokil consisted of mixtures of insecticidally active components with other ingredients selected from various animal and vegetable fats and oils, cereal or farinaceous ingredients, meat meal, fish meal, sugar and flavourings. I can remember trialing formulations including an insecticide and lard, butter, margarine or safflower oil in various combinations with starch or a flour such as cornflour, wheat flour or oat flour. Usually these formulations also included meat meal and/or fish meal, some sugar and flavouring. In these formulations the amount of fat, or fat and oil together, was typically about half of the total weight of the composition. The remainder, aside from the insecticide, was made up by the mixture of the flour or starch and other powdered components. The trial insecticidal bait formulations…were generally semi-solid in consistency and were often applied by extruding them through a caulking gun. In any event, the semi-solid compositions which I prepared were essentially non-crumbling in consistency. I do not remember whether any of the trial insecticidal bait formulations….were prepared by heating and melting the components. However, where the composition obtained was a semi-solid, an obvious way of preparing the compositions would have been to melt the fat before mixing it (with) the other components, and pouring the molten mixture into containers."
This disclosure does not indicate the weight percentages of the various components. It does indicate that the fat or fat and oil component was approximately 50% and that the final product was semi-solid. The actual method of manufacture has also not been disclosed. I conclude that this disclosure does not render the opposed invention as lacking in novelty. Consequently, therefore, I need not consider the issue of determining if this information was made publicly available through doing an act anywhere in the patent area, prior to the relevant priority date.
Lack of Inventive Step
In essence subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge together with information publicly available in a single document, provided that document could be reasonably be expected to have been ascertained, understood and regarded as relevant to in the relevant art in the patent are by the person skilled in the art.
A reading of the specification indicates that the problem to be solved is to manufacture a substantially non-crumbling bait, which is flowable and sets to a solid on cooling. A further requirement is that the fat/fat &oil component of the bait must be edible by the target insect species.
Firstly one would need to establish the common general knowledge in the relevant art. In Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd, (1980) 144 CLR 253 at 292 Aickin J said:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The state of common general knowledge in the art will generally be determined on the basis of evidence from persons with the appropriate background.
Messrs Arthur, Loughnan, Walker, Meadows and Howard provided evidence for the opponent in this matter. Mr. Anderson and Mr Thompson provided evidence for the applicant in this matter.
Mr Arthur clearly has knowledge of the field and extensive experience in the art of insecticidal baits. Messrs Loughnan, Walker, Meadows and Howard are clearly experts in the field of rodent baits
I shall make reference to the main arguments provide by Mr Arthur as they are the most relevant. He made the following statements:
"Insecticide baits were in common use in Australia at the claimed priority date and had formed the subject of prior patents. Insecticidal baits were marketed in Australia which were not of a dry nature, for example liquid formulations such as ANT RID. The formulation of baits by mixing poisons with food materials such as peanut butter, oils and animal fats had been described in the prior art and such formulations had been demonstrated as effective in controlling insects.
The use of food ingredients including fats, oils and waxes in bait compositions was also commonly known among persons skilled in the formulation of insecticidal baits in Australia at the claimed priority date. In particular, it was commonly known that the acceptability of food ingredients varies from insect species to insect species.
Before the claimed priority date details had been published of bait compositions which included waxes or other binders of sufficient hardness to hold the bait in place at room temperature yet of sufficiently low melting point to facilitate processing into bait pellets or tablets.
It was commonly known in Australia at the claimed priority date to include preservatives into formulations of various kinds, including insecticidal baits. The preservatives named at page 6, lines 26-33(of the opposed application) were commonly known among persons skilled in the formulation of insecticidal baits in Australia at the claimed priority date to be preservatives suitable for use in insecticidal baits.
The placement of bait compositions into a bait containing cavity of a bait housing and the extrusion of bait compositions into pellets, tablets and the like was known.
It was common knowledge among persons skilled in the formulation of insecticidal baits in Australia to include attractants in insecticidal bait formulations, and bait compositions including attractants had been described in the literature and patent specification before the claimed priority date."
On consideration of the above statements I note that various features have been individually disclosed as forming part of the common general knowledge. The opponent has separately listed documents for the grounds of novelty and inventive step, claiming both sets of documents were relevant for the purpose of inventive step. Based on the evidence provided by the opponent, I consider that these documents would have been ascertained, understood and regarded as relevant by persons skilled in the art of manufacturing insect bait.
The opposed invention indicated the following problems with the prior art. The lack of flowability of the mixture of components of the insecticidal bait composition and the tendency of the prior art bait to crumble. The question of whether the claimed solution to the problem is obvious in light of the disclosure of a citation amounts to asking whether the reader 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). Another way of stating the test is to ask whether it would have been obvious to try, with a reasonable expectation of success: "it is enough that the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial" (Johns-Manville Corporation's Patent [1967] RPC 479 at 494).
I shall now consider the documents listed by the opponent. I have read and considered all these citations. Some of them did not disclose a number of essential features of the opposed invention. Having considered and assessed those documents I find that the following documents have relevance to the issue of lack of inventive step.
US 4049460, Exhibit GNA-12 and Exhibits GNA-24, 25 and 30
The citation (US 4049460) indicates that the composition is flowable (ie, able to be filled into a container using positive displacement filling equipment). The citation discloses the mixing of a food ingredient and insecticide into melted paraffin wax. The liquid composition thus formed clearly satisfies the requirement of being flowable. Regarding the substantially non-crumbling aspect I have indicated previously that the opposed specification has not clearly defined this aspect. Mr. Arthur has indicated in his declaration at paragraphs 10 and 33 his understanding of this term. He has provided the dictionary definition (Macquarie Dictionary) which states:
1. to break into small fragments or crumbs. 2. To fall into small pieces; break or part into small fragments. 3. To decay; disappear piecemeal.
He has thus taken the plain meaning and I am in agreement with this definition. He has indicated with regard to the citation that he would expect at least the baits described in the Examples that have the highest amounts of paraffin wax not to be crumbly. The applicant did not challenge this and I accept his statement.
The question I have to ask is "Would the person skilled in the art, equipped with the common general knowledge available, seek an alternative to paraffin wax by substituting the paraffin wax with fats of the kind specified (ie, edible by the target insect species) as a matter of routine?" There is no support to show that this would indeed be carried out as a matter of routine as the citation indicates that paraffin wax is essential and acts as a binder. Thus this citation does not show the opposed invention as lacking an inventive step. I note that Exhibits GNA-24, 25, and 30 also use paraffin wax as an essential ingredient hence I conclude that these documents also do not show lack of inventive step of the opposed invention.
Exhibits GNA-32, 35-39, and 41-44
These citations disclose various insecticides, including Keponeâ when formulated with peanut butter/peanut oil and various other food ingredients as baits. These baits are in slurry/paste/semi-solid form and crumbling of the bait is not identified therein as an issue. Bait pellets prepared from "equal parts of peanut butter and peanut meal and polymerized granules of peanut butter" are disclosed but aspects of the preparation of the pellet and the flowability of the mixture prior to solidification is not disclosed. The specifications disclose various methods of incorporating the toxicant into the bait,
"In preparing the baits, different procedures were used for incorporating the intoxicant. In one series of tests, the toxicant was dissolved in acetone before mixing with the bait; in another series, it was mixed directly with the liquid or solid bait; in still other tests, the toxicant was dissolved or emulsified in a liquid portion of the bait, which was then mixed with a dry component."
Thus it seems that the toxicant was incorporated into previously prepared bait pellets (solid form of bait) or bait having both liquid and solid portions. There is no indication of the formulation being a liquid mixture, which is then solidified into bait, or the mixing of some solid components into a liquid component, which then solidifies into bait. The citations also indicate that "peanut butter formulations were injected into soda straws with a grease gun". Thus the bait is semi-solid as it is still capable of being injected. There is no indication that it sets to a solid state. A defect of the prior art identified in the citations is the issue of the peanut butter bait melting at warm temperature, which is addressed by addition of 3% by weight of paraffin or agar agar. Most prior art documents including those relating to rodenticides suggest the use of paraffin to avoid crumbling of the bait. None of the prior art identified, together with the common general knowledge suggest the exclusive use of fats/oils (restricted to those edible by the target insect species) together with insecticide for making bait by mixing and melting the ingredients into a flowable form which then solidifies on cooling.
There is no evidence before me to show that the person skilled in the art, looking at these citations and equipped with the relevant common general knowledge, would have carried out the steps of claim 1 of the opposed invention as a matter of routine. I consider that these documents, when considered individually, or when combined with the common general knowledge have not established lack of inventive step of the opposed invention.
Manner of Manufacture
The Dictionary of Schedule 1 of the Patents Act 1990 defines "invention" as:
"any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention".
Section 18(1)(a) of the 1990 act states:
"a patentable invention is an invention that, so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies."
The definition of "invention" in Schedule 1 therefore incorporates both the aspect of newness and the aspect of manner of manufacture, whereas sec 18(1)(a) omits reference to the aspect of newness. In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 the majority of the High Court concluded that "newness" was imported into sec 18(1)(a) to the extent that sec 18(1)(a) should be interpreted as retaining the threshold requirement of "an invention" as excluding from a "patentable invention" any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles. The High Court also expressed the view that "it would border on the irrational" if something could only be unpatentable according to traditional principles if, but only if, the facts that lead to that conclusion were disclosed by the specification itself.
The opponent made three submissions with regard to manner of manufacture. I shall deal with these on an individual basis. The opponent submitted that:
"a) The bait composition referred to in the claims is merely a mixture of components each of which was known at the relevant priority date and each of which performs a function in the composition which was a known property of that component. There is no new working inter-relationship between the components. The "method" steps recited in the claims were also part of the relevant common general knowledge at the claimed priority date. The claims therefore merely recite well known steps for the formation of mere admixtures of components and hence do not define a manner of new manufacture."
The claims are directed to a method of forming a bait composition. As I have indicated both under Novelty and Inventive Step, none of the citations disclose the exact combination of features defined in the claims. In particular I note that the prior art used paraffin wax to overcome problems of crumbling of the bait whereas the opposed invention specifically includes fats/oils, which are edible by the target insect species. Where the prior art had a similar composition the issue of crumbly bait did not arise as the bait was in a paste/semi-solid form or the toxicant and fat/oil was poured onto a carrier. The method of preparation of that prior art bait was also different to the method of the opposed invention. The features of non-crumbling aspect, the edibility of the bait as well as its flowability may provide advantages for manufacture of the bait as well as ensuring that the bait does have a minimum of material that is non-consummable by the target insect species. Therefore I do not consider that "the claims therefore merely recite well known steps for the formation of mere admixtures of components and hence do not define a manner of new manufacture". The opponent has not shown that the combination of features of the opposed process was well known in the art.
"b) The claims merely define a use for known components, being a use for which the known properties of the components inherently make them suitable. Hence the claims do not define a manner of new manufacture: Commissioner of Patents v Microcell (1959) 102 CLR 232"
The claims define a process in this case. The composition disclosed therein:
a) uses fats/oils which are required to be edible by the target insect species,
b) is required to be flowable, and
c) should be substantially non-crumbling when it is in solid form at room temperature.
The prior art discloses the use of paraffin wax to overcome the problem of crumbly bait, as opposed to the use of edible fats/oils of the opposed invention. I do not consider that the opponent has established that the prior art shows the combination of features of the opposed invention to be well known.
"c) The selection by the patent applicant of compositions having certain properties inherent in those compositions, namely becoming flowable above a certain temperature and setting on cooling to a substantially non-crumbling consistency, is directly analogous to the actions of the patentee in Philips v Mirabella (1995) 132 ALR 117. Hence on the face of the specification the element of inventiveness necessary to confer patentability is absent and the claims do not define a manner of new manufacture."
As I have indicated under Novelty and Inventive Step the precise combination of composition and method steps have not been disclosed and nor has it been shown to be obvious. The opponent has not shown that selection of the combination disclosed would have been obvious. In this instance the opponent has omitted reference to the feature of edible (ie, by the target insect species) nature of fats/oils chosen as opposed to the use of paraffin wax along with fats/oils disclosed in the prior art. The prior art taught towards the use of paraffin wax to overcome the crumbling of the bait. I do not consider that the opponent has shown that the element of inventiveness necessary to confer patentability is absent on the face of the specification.
In conclusion the opponent has failed to establish that the opposed invention does not constitute a manner of manufacture.
SUMMARY
I have found that the specification does not comply with section 40 in that the claims are not clear, specifically:
a) The term "substantially non-crumbling" as used in the claims has not been fully defined. The proposed amendments filed by the applicant on 29 September 1998 are directed to overcoming this defect.
b) The percentage ranges applicable to the food ingredient and the fats/oils component edible by the insect species has not been clearly specified. This defect will not be overcome by the proposed amendments filed by the applicant on 29 September 1998
I have found that the opponent has been unsuccessful on the grounds of, Lack of Novelty, Lack of Inventive Step and Manner of Manufacture.
COSTS
The opponent sought award of costs in the proceedings. They stated that they should be awarded costs up until 28 September 1998 in any case irrespective of the decision going against or in their favour.
The applicant stated that costs ought to follow the outcome of the event, and if the opponent is successful, should only be awarded if the success is on a substantive ground, namely novelty and inventive step.
The opponent has only been successful on the Section 40 issue of clarity. I note that after the opposition was filed on 16 June 1995, the applicant has amended the specification once (amendments proposed 3 April 1997) and sought a second amendment on 29 September 1998. It is quite possible that the actions of the opponent might have been different (ie not filed an opposition) had the claims not lacked clarity. I note that the proposed amendments filed on 29 September 1998 do not overcome one of the specified clarity defects. Consequently I award costs against the applicant R & C Products Pty Ltd and in favour of the opponent The Clorox Company.
However the defects in claim 1 are not of such a nature that they cannot be overcome by suitable amendments. I allow the applicant sixty days from the date of this decision to file suitable amendments to overcome the defects in the specification.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : F B Rice & Co, Sydney
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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