Raymond Ludwig John Tettman v Technological Resources Pty. Limited
[2018] APO 22
•27 March 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2018] APO 22
Patent Application: 2011261171
Title:Separating mined material
Patent Applicant: Technological Resources Pty. Limited
Opponent: Raymond Ludwig John Tettman
Delegate: Isaac Tan
Decision Date: 27 March 2018
Hearing Date: Written Submissions filed 16 May 2017, 6 June 2017 and 20 July 2017
Catchwords: PATENTS – bulk assessment and bulk sorting of mined material - opposition to the grant of a patent under section 59 – ground of novelty and inventive step under section 7 - ground of manner of manufacture under section 18(1)(a) - substance of the relates to an arrangement of mineral processing concepts – claims directed towards mere working direction – lack of manner of manufacture established – lack of novelty and inventive step established – lack of inventive step in light of common general knowledge alone established – confidentiality obligations of an organisation is not an indication common of general knowledge - opposition successful - costs awarded against the applicant – application refused
Representation:
Applicant: Griffith Hack
Opponent: Watermark Intellectual Property Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011261171
Title:Separating minded material
Patent Applicant: Technological Resources Pty. Limited
Date of Decision: 27 March 2018
DECISION
The Opposition is successful on all grounds.
Lack of manner of manufacture, novelty and inventive step established.
Costs according to Schedule 8 are awarded against Technological Resources Pty. Limited
I do not consider it appropriate to provide an opportunity to amend as, in the circumstances of the case, it will serve no useful purpose. The application is refused.
REASONS FOR DECISION
Background
Australian patent application 2011261171 was filed on 2 June 2011 in the name of Technological Resources Pty. Limited (the “Applicant”) as international application PCT/AU2011/000691 filed under the Patent Cooperation Treaty (“PCT”) with an international filing date of 2 June 2011 and claiming a priority date of 2 June 2010. I note that Technological Resources Pty. Limited is part of the Rio Tinto Group of companies.
On 18 June 2014, a first patent examination report was issued. The application was subsequently accepted on 7 September 2015, and advertised in Supplement to the Australian Official Journal of Patents on 24 September 2015.
On 24 December 2015, Notices of Opposition were filed by Raymond Ludwig John Tettman (the “Opponent”) and Commonwealth Scientific Industrial Research Organisation (the “CSIRO Opposition”). Matters which concern the CSIRO Opposition will be dealt with in a separate decision.
On 23 September 2016, the Applicant proposed new amendments. Leave was granted to amend and subsequently allowed. Details of the leave to amend and allowance were respectively advertised in the Supplement to the Australian Official Journal of Patents dated 3 November 2016 and 19 January 2017.
The hearing was held on the basis of written submissions filed on 16 May 2017, 6 June 2017 and 20 July 2017.
Applicable Law
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012 (the “Raising the Bar Act”), there are substantial changes to the Patents Act 1990 (the “Act”). The date of effect of those changes was 15 April 2013. The application of the Amendment Act in the present case depends on the date of the request for examination. The applicant filed its request for examination on 3 April 2013. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
This means that the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted[1].
[1] F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1992] 92 FCR 106 at [17]
Evidence and Submissions
Evidence in Support consists of:
·A declaration by Dr. Richard Anthony Bearman (“Bearman #1”) dated 6 May 2016 with Exhibits RB-1 to RB-33.
Evidence in Answer consists of:
·A declaration by Eugene Chin dated 8 November 2016 (“Chin #1”) with exhibits EC-1 to EC-3.
·A declaration by Carly Louise Painter (“Painter”) dated 21 November 2016 with exhibits CLP-1 to CLP-2
·A second declaration by Eugene Chin (“Chin #2”) dated 21 November 2016.
Evidence in Reply consists of:
·A second declaration by Dr. Richard Anthony Bearman (“Bearman #2”) dated 28 January 2017 with two exhibits RB-1 to RB-2 (“RB-34 to RB-35”)
The Opponent filed written submissions on 16 May 2017 (“Opponent’s first submissions”) and 20 July 2017 (“Opponent’s second submissions”).
The Applicant filed written submissions on 6 June 2017 (the “Applicant’s submission”).
The Grounds of the Opposition
The Statement of Grounds and Particulars identifies the following:
·Not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies under Section 18(1)(a);
·Lack of novelty under Section 18(1)(b)(i);
·Lack of inventive step under Section 18(1)(b)(ii);
·Lack of full description under Section 40(2)(a)
·Lack of clarity and succinctness under Section 40(3)
·Lack of fair basis under Section 40(3).
In their submissions, the Opponent did not press the section 40 grounds.
Regulation 5.23
On 14 August 2017 following the hearing of the CSIRO Opposition, the Applicant filed the following submission:
“One of the submissions of the applicant is that the declarants for the opponents, namely Drs Bearman, Holmes and Miljak, have significant confidential information and it is not possible to separate their confidential knowledge from public knowledge when assessing common general knowledge. The confidential information of these declarants is due to their long experience in the mining industry. It is also due to the employment of Drs Holmes and Miljak by CSIRO and the business model of CSIRO relying on contract research that carries with it confidentiality obligations.
In order to illustrate the above, we attach the following documents, which are a small selection of a much larger set of Agreements that include confidentiality obligations.
1.CSIRO Visitor Agreement binding Mark Paine of Rio Tinto to confidentiality.
2.CSIRO Visitor Agreement binding Danielle Robinson of Rio Tinto to confidentiality
3.CSIRO-TRPL Confidentiality Agreement.
4.TRPL-CSIRO Confidentiality Agreement.
5.Confidentiality Agreement between TRPL and Dr Bearman and his consultancy company Bear Rock Solutions Pty Limited.”
On 16 August 2017, I wrote back to the parties and indicated that if I decided that regulation 5.23 should be invoked in relation to these agreements, the Opponents would be provided an opportunity to provide submissions in accordance with regulation 5.23(2)(c).
The Patents Regulations 1991 (the “Regulations”) provides at Regulation 5.23:
(1)For the purpose of deciding an opposition, the Commissioner may consult a document that
(a) is relevant to the opposition; and
(b) has not been filed under this chapter; and
(c) is available to the Patent Office.
(2)If the Commissioner proposes to rely on the document, the Commissioner must give the parties:
(a) A notice of the Commissioner’s intention to do so; and
(b) A copy of, or access to, the document; and
(c) An opportunity to give evidence or make representations about the document.
In Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16, the delegate considered whether to rely on information under regulation 5.23. In this decision, the delegate noted that[2]:
“Guidance as to the interpretation of this regulation can be drawn from both the Explanatory Statement and the context of the Patents Act and the Regulations. Regulation 5.23 is not the only provision dealing with information brought to the attention of the Commissioner. Under section 97, the Commissioner can carry out re-examination on her own initiative. Reexamination is available either before or after grant, whereas regulation 5.23 can only operate while an opposition is proceeding. It is in the public interest for highly significant information to be considered within an existing opposition and not wait for re-examination after the opposition is concluded. Less significant information should be allowed to wait until after the opposition has been concluded (considering that amendments resulting from the opposition may overcome the deficiency).”
[2] Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [22]
In Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8, the following matters were considered to determine if regulation 5.23 should be invoked:
·The circumstances leading up to the evidence not being filed earlier
·What the evidence shows
·Is the information likely to be crucial to the delegate’s decision
·The public interest in having the information considered
·The balance of convenience of the parties if the information is considered
It appears that these documents confirm at a general level that where work is undertaken between Rio Tinto and external contractors, it is common practice to set up a confidentiality agreement. However the applicant has not established whether these documents are relevant to some of the evidence, all of the evidence or none of the evidence. Therefore it is not apparent whether the documents are likely or unlikely to be crucial to the outcome of the decision.
Consequently, I am unable to be satisfied that regulation 5.23 should be invoked.
The specification
The invention of the present opposition relates to a method and apparatus for identifying and separating mined material on a bulk basis and then sorting selected segments of mined material on a particle basis. The mined material may be metalliferous materials such as iron-containing and copper-containing ores, or non-metalliferous material such as coal.
According to the specification[3]:
“It is known to mine iron ore in large blocks of ore from benches. In this conventional mining operation, typically, the blocks of ore are substantial, for example 40 m long and by 20 m deep by 10 m high and contain 8000 tonnes of ore. Typically, a section of a bench is assayed by chemically analysing samples of ore taken from a series of drilled holes in the section to determine whether the ore is (a) high grade, (b) low grade or (c) waste material on a mass average basis. The cut-offs between high and low grade and between low grade and waste material are dependent on a range of factors and may vary from mine to mine and in different sections of mines.”
[3] Specification as amended on 23 Sept 2016 on Page 1 Line 35 – Page 2 Line 9
The specification then states that[4]:
“A significant proportion of low grade ore can remain as stockpiled ore. As a consequence, there are large stockpiles of mined ore that have been classified as low grade ore that have potentially significant economic value notwithstanding the low grade of the ore.”
[4] Ibid at Page 2 Line 34 – Page 3 Line 2
However the ore can be processed in order to upgrade the quality of the ore. The specification defines the term “upgradable” as meaning that economic or potential economic value of the ore is increased, or that to produce a product of a required customer specification. For example[5]:
“…processing of high grade ore ranges from simple crushing and screening to a standard size range through to processes that beneficiate or upgrade the iron ore to produce a product of a required customer specification. The processing may be wet or dry.”
and[6]:
“Low grade iron ore resources, including ore to be mined and stockpiled ore, can be upgraded using wet concentration and dry sorting plant flowsheets.”
[5] Ibid at Page 2 Line 28 – Page 2 Line 32
[6] Ibid at Page 3 Line 26 – Page 3 Line 28
The specification end with 5 Figures. Figures 1 is reproduced below:
As shown in figure 1[7]:
“…mined or stockpiled iron ore is crushed in a high grade primary crusher (HGPC) circuit 3. The primary crusher circuit 3 may be an in-pit circuit or a circuit that is outside the pit.
The crushed ore is transferred from the primary crusher circuit 3 as a feed material to a grade assessment assembly 5. The grade assessment assembly 5 comprises a transfer conveyor belt that transport a bed of the iron ore along the belt to a discharge end and a grade detection system positioned to assess the grade of the iron ore at a location along the length of the belt. “
[7] Ibid at Page 17 Lines 25 – 37
A range of grade detection systems may be used and falls into two categories[8]:
·Those which analyse the entire bed depth of the ore.
·Those which analyse the surface of the iron bed only.
[8] Ibid at Page 18 Lines 21 - 29
One grade detection option provided is Prompt Gamma Neutron Activation Analysis (“PGNAA”)[9]. Once the ore has been graded[10]:
“The iron ore that is discharged from the transfer conveyer belt of the grade assessment assembly 5 is transferred to a sorter 7 in the form of a splitter system that directs segments of iron ore that are at or above the first grade threshold into a first chute (not shown) and segments of iron ore that are below the grade threshold into a second chute (not shown).
The material in the first chute is shown in Figure 1 as an “Accepts” feed. This material may be a product specification or a feed for a downstream processing plant such as a beneficiation plant, such as a wet processing plant or a dry processing plant, to produce a product. The material in the second chute is shown in Figure 1 as a “Rejects” material that is transported away from the sorter 7 and stockpiled or used as landfill.
[9] Ibid at Page 18 Lines 34 - 36
[10] Ibid at Page 18 Lines 15 - 30
One suitable analytical technique for the dry sorting step is dual energy x-ray analysis. The specification defines this as[11]:
“The term “dual energy x-ray analysis” is understood herein to mean analysis that is based on processing data of detected transmitted x-rays through the full thickness of each particle obtained at different proton energies. Such processing makes it possible to minimise the effects of non-compositional factors on the detected data so that the data provides clearer information on the composition, type, or form of the material.”
[11] Ibid at Page 11 lines 11 - 21
Alternatively, dry sorting could also be performed via x-ray fluorescence, radiometric, electromagnetic, optical, and photometric techniques[12].
[12] Ibid at Page 11 lines 23 - 26
The Claims
The specification contains 6 independent claims and 63 dependent claims. Independent claim 1, 19, 23, 51, 59 and 63 are reproduced below:
Claim 1
A method of separating a mined material as described herein that comprises:
(a)assessing the grade of successive segments of the mined material as the mined material is transported along a pathway, and
(b)separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segments; and
(c)dry sorting particles from at least one segment and producing upgraded material.
Claim 19
An apparatus for separating a mined material as described herein that comprises:
(a)a grade assessment system for assessing the grade of successive segments of the mined material as the mined material is being transported along a pathway, and
(b)a separation system for separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold, the separation system including a dry sorter, and
(c)a dry sorter for dry sorting particles from at least one segment that is above the first grade threshold and producing upgraded material.
Claim 23
A method of separating a mined material as described herein that comprises:
(a)assessing the grade of successive segments of the mined material, and
(b)separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold; and
(c)processing at least one separated segment in a downstream processing plant and producing upgraded material.
Claim 51
An apparatus for separating a mined material as described herein that comprises:
(a)a grade assessment system for assessing the grade of successive segments of the mined material, and
(b)a separation system for separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold; and
(c)a processing plant for processing at least one separated segment that is above the first grade threshold and producing upgraded material.
Claim 59
A method of separating a mined material in the form of copper-containing ore as described herein that comprises:
(a)a size reduction step of the mined material;
(b)assessing the grade of successive segments of the mined material as the mined material is transported along a pathway, and
(c)separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold.
Claim 63
An apparatus for separation a mined material in the form of copper-containing ore as described herein that comprises:
(a)an apparatus for reducing the size of the mined material,
(b)a grade assessment system for assessing the grade of successive segments of the size-reduced mined material as the mined material is transported along a pathway, and
(c)a separation system for separating each segment on the basis of grade into a category that is at or above a first grade threshold or a category that is below the first grade threshold.
The claims can be separated into three sets.
·Set 1: independent claim 1 and 19, and dependent claims 2 to 18 and 20 to 23.
·Set 2: independent claim 23 and 51, and dependent claims 24 to 50 and 52 to 58.
·Set 3: independent claim 59 and 63, and dependent claims 60 to 62 and 64 to 69.
The Applicant has summarised the three sets as follow[13]:
[13] Painter at [9] – [9.4]
Set 1
Set 2
Set 3
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 Kiefel J identified the skilled addressee as[14]:
“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.”
[14] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481;71 IPR 615 at [16]
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated[15]:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”
[15] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70]
However in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30, the High Court noted that[16]:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”
[16] AstraZeneca AB v Apotex Pty Ltd [2015] FCA 30 at [23]
There was some dispute between the parties as to the appropriateness of each declarant’s suitability to give evidence as the person skilled in the art. The Opponent submits that[17] “…the person skilled in the art is someone with a tertiary science or engineering qualification who, as at June 2010, had experience in the processing of minerals, and particularly in the methods used to sort ores.” In contrast, the Applicant’s interpretation is that[18] “…the person skilled in the art is someone with a tertiary science or engineering qualification who, as at June 2010, worked in that section of the mining industry that is involved in mining and downstream processing of ores containing valuable metals to produce products that are suitable for supply to the market.”
[17] The Opponent’s first submission at [25]
[18] The Applicant’s submission at [33]
To my mind, the Applicant’s interpretation of the skilled addressee is unduly narrow. At a broad level, the present invention relates to a method and an apparatus for identifying and separating mined material on a bulk basis. I do not agree that the skilled addressee must have worked in that particular section of the mining industry but rather, should possess sufficient experience and have a sound understanding in the processing of mined minerals. The evidence in the present opposition is provided by a number of declarants.
Dr. Richard Anthony Bearman (“Dr Bearman”) graduated in 1987 with a Bachelor of Engineering with Honours in Mining Engineering from the Camborne School of Mines, United Kingdom. In 1990, he undertook an industrially sponsored PhD in the application of rock mechanics to comminution with Pegson Ltd, a manufacture of comminution and processing equipment. During this same period, Dr Bearman was also involved in the development of on-line size analysis and monitoring equipment based on vision systems. Between 1994 to 1997 Dr Bearman joined the Centre for Mining Equipment and Technology at the University of Queensland as a research fellow where he examined new processing equipment and how comminution and flowsheets should be designed. In 1997, Dr Bearman joined Rio Tinto through various subsidiaries and roles where he became one of Rio Tinto’s main comminution and processing advisers. Dr Bearman left Rio Tinto in 2009 where he established a professional consulting business targeted at the interface between mining and processing and the technology involved.
I am satisfied that Dr Bearman can provide relevant evidence of what was known in the art.
Eugene Chin (“Mr Chin”) graduated in 2001 with a Bachelor of Engineering with Honours in Mechanical Engineering from the University of Canterbury, New Zealand. After graduation, Mr Chin spent several years working as a Design Manager for Fisher and Paykel Healthcare in New Zealand. In 2009, Mr Chin joined MRX Technologies, a company in the JRB Engineering Group. MRX has expertise in the areas of: design, installation and commissioning of test, monitoring and inspection systems in the railway industry. During this period of employment, Mr Chin was involved in two projects involving rail technologies in relation to transporting iron ore from mines to port operation. One project was for BHP Billiton and the other for Rio Tinto. In 2012, Mr Chin joined the Bulk Sorting Project Team at Rio Tinto where Mr Chin gained skills and knowledge about the sorting of mined material, particularly iron ore.
I have some concerns regarding Mr Chin’s experience. Mr Chin did not commence working in mineral sorting and processing until 2012, after the relevant priority date. Mr Chin also states in his declaration that[19]:
…Prior to joining the Bulk Sorting Project Team, I had the basic knowledge of a technically qualified but not highly experienced Mechanical Engineer working in the mining industry. After joining the Bulk Sorting Project Team I acquired considerable knowledge about sorting of mined material, particularly iron ore. I believe it is fair to say that I am now very experienced in the sorting of mined material, particularly iron ore, as a consequence of my time working in the Bulk Sorting Project Team.”
[19] Chin #1 at [7(h)]
While Mr Chin could have obtained knowledge and experience representative of the art at June 2010, his experience appears less than that of the other declarants. Consequently where there is conflicting evidence, I will have regard to Mr Chin’s experience in order to evaluate and weight the evidence to resolve any conflict.
Carly Louise Painter (“Ms Painter”) attended Murdoch University and graduated in 2000 with a Bachelor of Science majoring in Extractive Metallurgy and Chemistry and in 2002, was awarded 1st class honours in Extractive Metallurgy. From Nov 1999 to Jan 2002, Ms Painter was employed as a process technician with Otter Gold Mines at the Tanami Gold Mine in Northern Territory, as an acting plant metallurgist with Abelle at the Gidgee Gold Mines in Western Australia, and as a Metallurgical Assistant with Murdoch University. In Feb 2002, Ms Painter joined Rio Tinto Pilbara Iron as a Graduate Metallurgist working on the design, execution and analysis of metallurgical test work programs, plant and processing control improvements. In Jan 2005, Ms Painter moved to the Rio Tinto Alcan Yarwun Alumina Refinery initially as a process engineer with a focus on process monitoring and process improvements, and later as a senior research scientist performing business case analysis of high risk strategic projects. In March 2008, Ms Painter joined the Rio Tinto Iron Ore Technology and subsequently Rio Tinto Technology and Innovation where she was involved in the identification and developing of processing innovation concepts, protection of project intellectual property, evaluation of plant performance metrics to plan and identify opportunities for improvement, integration of individual mine short and medium term plans, and assisting in the development and communication of a 5 year business strategy.
It is fair to say that Ms Painter has relevant experience and can provide evidence of what was known in the art.
Construction of the claims
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[20]:
"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".
[20] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]
In Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451, Middleton J stated[21]:
“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.”
[21] Eli Lilly and Company Limited v Apotex Pty Ltd [2016] FCA 214, 100 IPR 451 at [139]
As shown above, all 3 sets of claims involve separating a mined material via a bulk assessment step and a bulk separation step. Set 1 defines that further processing or upgrading of the mined material is done via dry sorting. In set 2, the processing or upgrading is done in a processing plant.
Set 3 does not require a processing or upgrading step. Instead, the size of the mined material is first reduced prior to bulk assessment and bulk separation.
Interestingly, all of the independent claims refer to a method or apparatus of separating mined material “as described” within the specification, the method or apparatus comprising a number of integers. Typically where the phase “as described within” is used in an omnibus claims, the scope of the claim extends to the broadest possible interpretation of the integers which follow this term, but must be contained within the confines of the specification[22].
[22] GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90
On this basis, it is clear that the phase “as described herein comprising” indicates that the scope of the claim does not extend to any manner in which the integers following this phase can be construed, but only to the extent allowable by the specification. It is also permissible that the scope of the claim may include additional integers which are not claimed, but are present in the specification.
In relation to the term “comprising”, the meaning of this term is determined according to the context in which it is used. In Asahi Kasei Kabushiki Kaisha v WR Grace and Co [1991] FCA 530; 22 IPR 491, it was held[23] that in the context of the case the term “comprise” was used in an exhaustive sense rather than an inclusive sense. In General Clutch Corporation v Sbriggs Pty Ltd [1997] FCA 499; (1997) 38 IPR 359, it was concluded[24] that the normal linguistic meaning is that comprising means “made up of, composed of, or constituted by” the integers listed. In Frensnius Medical Care Australia Pty Limited [2005] FCAFC 220; (206) 67 IPR 230[25], this term was given a non-exhaustive meaning.
[23] Asahi Kasei Kabushiki Kaisha v WR Grace and Co [1991] FCA 530; 22 IPR 491 at [514] – [515]
[24] General Clutch Corporation v Sbriggs Pty Ltd [1997] FCA 499; (1997) 38 IPR 359 at [376]
[25] Frensnius Medical Care Australia Pty Limited [2005] FCAFC 220; (206) 67 IPR 230 at [56] – [64]
Moving on to set 1 which consists of independent claim 1 and 19, it is clear on the face of the claim that bulk assessment is performed while the mined material is transported along a pathway and bulk separation is performed by dry sorting.
In set 2, which consists of independent claim 23 and 51, it is clear on the face of the claims that the bulk assessment and bulk sorting steps are not directed to any particular method. In this regard, set 2 is broader than set 1.
With set 3, which consists of independent claim 59 and 63, bulk assessment is performed while the mined material is transported along a pathway as defined in set 1. Claim 63 defines that size reduction of the mined material is performed using an apparatus. However unlike set 1 and set 2, set 3 defines that the mined material is in the form of copper-containing ore.
While the parties did not express any great difficulty in construing the claims, the specification provides the following definitions which may be useful in understand the claimed invention:
·Particle[26]: “The term “particle” is understood in a broad sense to include, by way of example, any one or more of large and small rocks, large and small stones, and particles that can be described as dust. The particles may be any size that can be processed by the method and the apparatus.”
·Dry sorting[27]: “The term “dry sorting” is understood herein to any upgrading process that does not require added moisture for the purpose of effecting separation.”
·Grade[28]: “The term “grade” is understood to herein to mean the concentration of an element of interest in an ore resource.”
[26] Specification as amended on 23 Sept 2016 at page 5 lines 8 - 13
[27] Ibid at Page 5 lines 32 - 34
[28] Ibid at Page 6 lines 1 - 3
It is also worth noting that the grade of the mined material is used in conjunction with a grade threshold. The grade threshold is determined according to[29]:
“Mineralogy of the mined material, mining costs, separation (such as dry sorting) costs, and downstream costs, including processing costs to produce a marketable product from the mined material that meets customer specifications in terms of grade and other characteristics such as particle size, and also including costs to transport that product to customers.
The first threshold grade may be a grade that meets a customer specification in terms of grade.”
[29] Ibid at Page 7 Lines 19 - 31
The grade assessment[30] “may be a direct assessment of grade or an indirect grade assessment based on detected information that provides an indication of grade”.
[30] Ibid at Page 8 Lines 2 - 5
Common general knowledge
To provide some context to common general knowledge, the Applicant relies on Ms Painter’s observation that confidentiality is particularly important in the mining industry. Ms Painter states[31]:
“Mining companies such as the Rio Tinto group of companies take particular care to protect technical and non-technical information about the activities of the companies as confidential information. At and prior to 2 June 2010, and now, this emphasis on confidentiality extended to: (a) access to operating mines, (b) details of operations in the mines, and (c) research and development projects being undertaken by research groups within the Rio Tinto group of companies and by external researchers contracted to carry out research and development work on instructions by the Rio Tinto group of companies, including control over the release of any information of the Rio Tinto group of companies.“
[31] Painter at [14]-[15]
Ms Painter explains that while there is publicly available information available, her own knowledge was more detailed as Rio Tinto would retain external contractors to provide technical input on a confidential basis. As a result, Ms Painter has no knowledge of development activities of other mining companies outside Rio Tinto and the operations of these companies beyond the limited information in the public literature[32].
[32] Ibid at [17]
Another consequence of confidentiality is that external contractors were confined by confidentiality requirements and would therefore need to compartmentalise what parts of their knowledge are via public available sources, and what parts are subjected to a confidentiality agreement[33].
[33] Ibid at [18]-[21]
Ms Painter submits that there are sections of common general knowledge described by Dr Bearman which was not known to her at 2 June 2010[34].
[34] Ibid at [25]
However Ms Painter’s states that her position is unique compared to the other declarants because[35]:
“…I worked in the Project Team that made the invention of the opposed application and am one of the inventors. Reviewing publicly available information was part of the work of the Project Team. I was aware of what was publicly known as the Project Team continued work on the project. As a consequence, I am able to discuss was known by Project Team members at 2 June 2010 and in the period leading to this date.”
[35] Ibid at [26]
Ms Painter then explains that the objective of the Project was to consider the extent to which value could be extracted from low grade ore and waste ore produced in iron ore mines[36], and that her knowledge at the time of working on projects leading up to 2 June 2010 includes the following[37]:
[36] Ibid at [27]
[37] Ibid at [28]-[29]
“My knowledge at the time of working on the project leading up to 2 June 2010 included the following knowledge:
a)Bulk sorting and particle sorting were presented as alternative sorting options; and
b)Particle sorting of iron ore particles was in its infancy.
At June 2010, I was:
a)Not aware of any commercially-available bulk sorters based on iron ore grade;
b)Not aware of any commercially-available particle sorting technologies for iron ore – there were perceived equipment and scale-up limitations of known proposals;
c)Not aware of any commercially-available sorting technologies comprising bulk sorters based on iron ore grade and particle sorters
d)Not aware of any proposals for bulk sorters based on grade and downstream processing (wet or dry) of selected segments;
e)Not aware of any proposals for size reduction of copper-containing ores, particularly primary crushed material, and then bulk sorting based on grade.
Mr Chin provides substantially the same statement[38] but adds[39]:
“…I observe that if it was the case that [sic] Rio Tinto was aware of items (a) to (e) above, Rio Tinto would have deployed such systems in mining operations, reaping the benefits of the systems and not spending significant money and effort to research, develop and test the system in a commercially viable throughput.”
[38] Chin #1 at [10]-[31]
[39] Ibid at [32]
I accept that research and development work conducted by mining companies would be subjected to some degree of confidentiality. I can also accept that this confidentiality extends to external contractors who would be retained by mining companies to provide technical input and therefore, the knowledge provided by these contractors would be more detailed.
However it does not follow that all information, even that of a more general nature, would be confidential. At best, confidentiality would typically apply to information of a more specialised level.
Ms Painter does not elaborate or point out the type of information that would be considered common general knowledge as opposed to information that would be considered confidential. Similarly Ms Painter’s statement of what she is not aware of as listed under items (a) to (e) is restricted to commercially available sorters and proposals for iron or copper ore. To my mind, this list is merely an indication of what Ms Painter, a member of the project team, or an employee of Rio Tinto could be personally aware or not aware of and could not be said to be a fair representative of publicly available information.
In contrast, Dr Bearman’s view of what was considered common general knowledge is drawn from his own personal knowledge and experience, and is collaborated with external sources such as textbooks, journals, magazines, internet searches, papers and articles[40] all of which are publicly available. Dr Bearman provides an extensive overview of the general state of the art and a summary is provided in the Opponent’s submissions[41].
[40] Bearman #1 at [24]
[41] The Opponent’s first submission at [81]
Dr Bearman begins by explaining what he would have understood at the priority date from a reading of an extract of background section of the specification[42]. He states[43]:
“The start of the processing system is defined by its entry point and this is the point at which material leaves a transport or delivery device (i.e. a truck) that is carrying “Mined Material”. A primary crusher station is the first processing stage that receives mined material. Such a station often consists of a coarse screen (grizzly) and a crusher.”
[42] Exhibit RB-3
[43] Bearman #1 at [31]
Dr Bearman then explains that bulk separation, in the context of the extract[44]:
“… is generally understood to mean the gross removal of waste from ore, which has the effect of upgrading the ore stream that then goes to further processing and then on to a final product for sale ... having the ability to remove waste early in the process reduces the amount of material going forward to subsequent equipment and it allows the application of progressively more accurate separation devices”
[44] Ibid at [33]
Some examples of bulk or mass separation techniques may include[45]:
·Surface scanning of material in a truck tray or on a conveyor belt, so that the material underneath is not actually known, but the surface is assessed as being a reasonable representation of the likely content beneath.
·Size based screening to reject waste. Depending on the feed material it is sometimes possible to say that large particles contain ore and fines are more likely to be low grade or waste or conversely fines can hold ore grade and the larger particles are predominantly waste.
[45] Ibid at [33]
After separation, Dr Bearman explains that with the sorting of selected segments of mined material on a particle basis[46]:
“Sorting on a particle basis suggests that the individual particles are assessed and a decision made on whether to reject as waste of take forward as ore. The purest form of this is where each individual particle is inspected, assessed and then accepted or rejected. “
[46] Ibid at [34]-[36]
Some methods which would also be considered single particle ore sorting include[47]:
·Gravity (using water as the medium and agitating or accelerating particles to exploit a density difference);
·Dense or Heavy Medium Separation (essentially a density technique, but where a fluid is used to match the density of the target particles);
·Magnetic separation
[47] Ibid at[38]
In relation to bulk sorting, Dr Bearman provides a number of examples[48]:
[48] Ibid at [41]
·Methods of mining grade control and approaches to the building of stockpiles of known grade;
·Down the hold grade measurement and hyper-spectral face scanning;
·In-chute, in-line, cross-belt or plough type systems for diverting material were all well-known and widely applied techniques for removing material from a conveyor belt following the detection of some key property – these are merely common sense;
·Truck based methods: This includes methods such as the use of scintilometers at uranium mines, where a truck carrying material from the mine passes under a scanner that detects the amount of radioactive material, based on scintillation.
·Coarse Screening: In iron ore mines a coarse screen (grizzly) as part of the primary crusher station would divert oversized (high grade ore) into the crusher and the undersize from the screen would go to low grade processing;
·On-Belt Measurement: In this case methods existed to have a scanner/sensor mounted over a conveyor to measure grade continuously. Methods at this time would have included PGNAA and various proprietary systems including IRONScan (iron ore) and COALScan (ash). As a lower level technology solution, colour or other optical systems could be used to detect visual differences in material on the belt.
·Load-Haul-Dump Buckets: OreSpex developed by IMA (Finland) had been used to scan the contents of LHD buckets in underground iron ore mines to determine Phosphorus content and to then determine which processing patch was required – see ABB (2004) (Exhibit RB-13).
In relation to particle sorting, Dr Bearman provides a number of publications concerning the identification and separation (i.e. sorting) of mined material on a particle basis[49] and adds that[50]:
“In addition to published works, there is common general knowledge that some materials will obviously be different to other materials on the basis of simple features such as colour. Such obvious differences have been the basis for hand sorting and even at large scale mining, such a simple feature can be used to control excavators at the mine face. It is also known that varying hardness will lead to certain materials being prevalent in certain streams within a flowsheet.”
[49] Ibid at [45]
[50] Ibid at [46]
With the above options in mind, Dr Bearman highlights that[51]:
“…there is a general principle of flowsheet design, whereby you try and design the flowsheet so that you progressively target the final product with methods and processes of increasing fidelity. Examples of such a principle are widespread and would include such cases as the various stages of flotation whereby “rougher” cells are used to reject obvious low grade material and then subsequent cells treat the produce from the rougher cells to fine tune the removal of more waste or low grade.”
and that[52]:
“I would have understood that a first pass rough (bulk) process was being applied to reject waste or low grade material and then a finer method was being applied to further reject waste of low grade material.”
[51] Ibid at [48]
[52] Ibid at [49]
Dr Bearman was also asked whether he was aware of any specific examples, in operation or in published documents prior to 2 June 2010, of mining process streams (flowsheets) involving a combination of bulk and particle sorting steps. On this point, Dr Bearman explains that this depends on the definition of bulk separation[53]:
“If you accept that coarse screening is a form of bulk separation with an upgrading potential, then there are many flowsheets that have used single particle sorting following bulk separation. It should be noted that screening just for control of particle size, is not a form of “sorting” but where a stream is created with the aim of upgrading, then it should fall under the term of “sorting”. Examples include:
·Mary Kathleen Uranium Ltd. – truck – stockpile – screen – the +100mm sent to a single particle sorter (Hubery, 1980) (Exhibit RB-21)
·Kloof Mine (2003/4) – the +16mm from the mine was sent to waste stockpiles – material reclaimed and treated through single particle sorters (Von Ketelhodt, 2009) (Exhibit RB-32)
·ERA Ranger Mine – Truck (with radiometric scanning), followed by stockpiles and screens – single particle radiometric sorting applied to a certain size fraction – “During 2008 ERA commissioned a new $44 million laterite processing plant and a $19 million state of the art radiometric sorting plant. The new infrastructure will improve the efficiency of processing operations, reduce waste, and maximize economic return from low grade ore. The radiometric sorting plant will upgrade 350 thousand tonnes of low grade ore per year expected to yield around 1,100 tonnes of primary uranium oxide” (Rio Tinto 2008) (Exhibit RB – 28)
·West Driefontein – ore screened through numerous stages, followed by photometric ore sorter (Barton and Peverett, 1980) (Exhibit RB-14)
Outside of screening, practically all diamond mines pass material through an entire crushing screening and separation plant before presenting diamonds for single particle sorting.”
[53] Ibid at [55]-[56]
It is clear from the above that common general knowledge includes the following:
·There is a wide selection of various assessment techniques which could be used to perform bulk assessment of mined material.
·There is a wide selection of various techniques which could be used to performed bulk separation of mined material.
·Methods of dry particle sorting and downstream processing are known.
·It is known to use crushers to reduce the size of mined materials.
·There is a wide selection of various techniques in which the grade of successive segments of mined materials could be assessed.
From the above options, it is also known within the general principle of flowsheet design to[54]:
“…progressively apply methods that will increase the level of metal content (by rejecting waste of gangue) to a point that can economically deliver product for sale”
and to:[55]
“…progressively target the final product with methods and processes of increasing fidelity.”
[54] Ibid at [35]
[55] Ibid at [48]
In this regard, it is clear that when designing a flowsheet, one would utilise a common sense approach to progressively process ore with a number of ore sorting and ore analysis methods beginning with bulk sorting options and eventuating with sorting on a particle by particle basis.
Novelty
Within the following section, any claim not explicitly referred to is considered to be novel in light of the cited art.
Section 7(1) provides that:
“(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information”It is well established that the general test for anticipation or want of novelty is the reverse infringement test[56], and this test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed[57]. The alleged anticipation must also contain “clear and unmistakable directions” to produce the invention as claimed[58]. However, if the alleged anticipation contains a direction which is capable of being carried out in a manner which would infringe the invention as claimed, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated[59]
[56] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]
[57] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; 16 IPR 545 at [19]
[58] Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1 at [314]
[59] General Tire & Rubber Co v The Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485-486; (1971) 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]
While a number of documents were raised in evidence, the Opponent principally relies on the following document.
· D7: Nienhaus et al., “Dilution control of Run-of-mine ore with an innovative on-line technique – Application of laser-induced fluorescence (LIF) in the mining industry”, Aachen University, Germany, 2004 (“Nienhaus”)
Nienhaus describes the user of laser-induced fluorescence (“LIF”) in order to control the filution of run of mine ore (“ROM”) on a belt conveyor. By setting up a LIF analyser above a bulk stream between the actual mining operation and the processing plant, it acts as a quality control instrument for the diversion of ROM ore to different processing lines.
Nienhaus explains that[60]:
“…rock identification in a mining operation takes place in well-defined geological and mineralogical environment with a limited number of different ore and bedrock types, respectively. Under these conditions, the standardised matching of in-field measurements with fluorescence characteristics of known reference rock types – the “fingerprints” – has been proven an effective qualitative analytical method. With this database available a LIF analyser can be set up to scrutinize belt feeds, hauler or shovel loads and muck piles. If integrated into a mining and processing system the on-line analyser is also capable of controlling bulk flows with regard to the quality properties of the material.”
[60] Nienhaus at Page 4
Once an analyser has been calibrated to a specific ore body and mining environment, it can be set up permanently on site to deliver on-line rock identification data to the process control unit of a mine. Examples of current dilution control applications by means of LIF in the mining industry include[61]:
· Limestone, dolomite and magnesite quarrying (control of MgO, Fe2O3 and Al2O3 grades).
· Iron ore operations (control of phosphor contents)
· Diamond operations (control of waste rock)
· Gold, copper and uranium mining (control of waste rock & uranium content)
· Lead-zinc mining operations (grade control)
· Lignite mining (control of waste rock)
[61] Ibid at Page 5
A typical flow sheet for a LIF analyser functioning as a “bulk sorter” is shown in Figure 3 which I’ve reproduced below:
Nienhaus describes Figure 3 as follow[62]:
“The ROM ore is analysed in its bulk state by the LIF analyser above a belt conveyor behind the primary crusher. After the waste grade has been measured on-line, the bulk mass can be diverted according to a certain cut off grade in a two or three way diverter. Low waste material is treated in an additional pre-concentration plant. By employing this method, bulk masses with excessive waste content can be sorted out. Throughput of a pre-concentration plant is maximised by pre-sorting the bulk mass with a LIF analyser in combination with diverters. A combination with other on-line sorting techniques like opto-sorter systems could even enhance the performance.”
[62] Ibid at Page 6
It is also clear from Nienhaus that LIF can be used to determine grade of copper[63].
[63] Ibid at Page 7
Dr Bearman states that an opto-sorter[64] “is a dry optical particle sorting device that was available at the time” and provides the following comments to describe Figure 3[65]:
“58.1 Material (including ore and waste of varying proportions) is treated in a size reduction machine, i.e. a primary crusher.
58.2 The mass of broken material travels along a conveyor (pathway) and an analyser measures a property of the material on the conveyor belt.
58.3 These measurements are sent by a control signal to a 2-way diverter that is actuated to separate material based on the measurement from the analyser and the applied discrimination value (threshold, or cut-off).
58.4 Material determined to be of the best grade is sent directly to a processing plant, whereas material judged to still be of a grade that is too low, is sent to a pre-concentration plant to be upgraded further. The pre-concentration plant uses coarse upgrade equipment that can include particle sorting to generate material to another threshold or cut-off grade that is deemed to be suitable to be fed to the processing plant. The actual threshold or grade values used within an operating plant will be set by the design and subsequent operational performance.
58.5 The processing plant therefore treats a direct feed from the diverter, but also an upgraded feed generated by the pre-concentration plant. The outputs from the processing plant are the final saleable product and a waste stream for disposal.”
[64] Bearman #1 at [165]
[65] Bearman #2 at [58.1]-[58.5]
The Applicant disagrees with Dr Bearman’s comments in relation to Figure 3[66]:
a.There is a reference in 58.2 of this paragraph to an analyser measuring a “property of the material on the conveyor belt”. Given that the analyser is a LIF analyser, the property being measured is the fluorescence of the surface of particles of material on the conveyor. In the context of the invention, this is not a grade assessment as required by the independent claims. In this regard, page 6 lines 1-3 of the specification defines “grade” as “the concentration of an element of interest in an ore resource”. Therefore, a requirement for any grade assessment must to measure “the concentration of an element of interest (emphasis added) in an ore resource”. Measuring the fluorescence of the surface of particles will not provide any information on the concentration of Fe in iron ore particles or Cu in copper ores, where Fe and Cu are the respective elements of interest”.
b.There is a reference in 58.4 of this paragraph to “The preconcentrator plant uses coarse upgrade equipment that can include particle sorting to generate material to another threshold or cut-off grade that is deemed to be suitable to be fed to the processing plant”. There is no disclosure of these features in the single paragraph of the description of Figure 3 of the Nienhaus paper that follows immediately after the Figure in the paper.
[66] The Applicant’s Submission at [69]
In support of these submissions, Ms Painter states[67]:
“D7 discloses a laser-induced fluorescence (LIF) sorter. The 3rd page of the paper discloses that LIF “measures only the surface of the sample and cannot analyse the whole of the material”. Surface measurement is not necessarily an indication of the average grade of a particle. Therefore, D7 does not disclose the step of “assessing the grade of successive segments of the mined material as the mined material is transported along a pathway” as required by amended independent claims 1 and 59 or the step of “assessing the grade of successive segments of the mined material” as required by amended independent claim 23.”
[67] Painter at [51]
For completeness, I note that Mr Chin makes the same statement in his declaration[68].
[68] Chin #1 at [51]
Dr Bearman agrees with Ms Painter in that LIF is a surface measurement technique. However[69]:
“It is true that LIF therefore does not directly measure a metal grade, but it is measuring a proxy to grade and just as important, the paper suggests that such sorting can potentially be followed by single particle sorting … in the case of LIF it can, and has been, used to detect the presence of phosphorus and also the proportion present (i.e. a measure of grade). With reference to the definition of grade in the opposed patent application “The term “grade” is understood to herein to mean the concentration of an element of interest in an ore resource.” As a point of clarification, it must be noted that an element of interest in iron ore, can be any of Fe, Al, Si or P. Therefore methods such as LIF that measure phosphorus are measuring an “element of interest”.
[69] Bearman #2 at [157]
It is also clear from Figure 3 of Nienhaus, that LIF is used to measure successive grade of the mined material as it is being transported along a pathway. Dr Bearman explains how the flowsheet of Figure 3 should be interpreted[70]:
“Material passes along the conveyor and it is shown passing under a LIF analyser. A dotted arrow is shown from the Analyser to the conveyor belt – this is a common convention for a non-mechanical event such as sensing. The LIF Analyser is also shown to have a dotted line indicates a non-mechanical event, i.e. a “Control Signal” that is linking the analyser with the diverter.”
[70] Bearman #2 at [56.3]
In relation to the function of the preconcentrator plant, the paragraph following Figure 3 states that high waste material is treated to an additional pre-concentration plan while low waste material is sent directly to a processing plant. Additionally, Dr Bearman makes it clear that pre-concentration[71] “is a term that refers to a stage(s) where some form of coarse upgrade is applied, to reduce the waste in the stream to allow an improved feed to be sent to the processing plant. There is no attempt to generate a final product, just simply to remove more waste prior to further processing.”
[71] iBid at [56.4]
100. It is also clear that while LIF is considered to be an indirect assessment of grade, the specification defines grade assessment as[72]:
[72] Specification as amended on 23 Sept 2016 at Page 8 lines 1 - 5
“The grade assessment of step (a) may be a direct assessment of grade or an indirect assessment based on detected information that provides an indication of grade” and that “[t]he term “grade” is understood to herein to mean the concentration of an element of interest in an ore resource.”
101. Consequently I find that all of independent claims 1, 19, 23, 51, 59 & 63 are anticipated by Nienhaus and therefore not novel.
102. In relation to the dependent claims, I consider that claims 7 – 9, 11, 14 – 15, 20, 25, 31 – 33, 36, 40 – 41, 54, 57, 60, 62, 64 and 66 – 67 are not novel for the following reason:
·Claims 7 to 9, 31 to 33 – The system of Nienhaus can be used with iron ore. It follows that prior to being processed through the system, the iron ore is considered low grade and is made up of a mixture of high grade and waste iron ore.
·Claim 11, 37 - Nienhaus describes the user of LIF in order to control the filution of ROM ore on a belt conveyor
·Claim 14 to 15, 20, 40 – 41, 54 – the ROM ore is first subjected to a primary crusher before undergoing assessment by LIF.
·Claim 25 – Nienhaus discloses that quality control of bulk mass is sorted with a LIF analyser in combination with other on-line sorting techniques like an opto-sorter system, which is a dry optical particle sorting device.
·Claim 36 – LIF is an indirect grade assessment technique.
·Claim 50, 57 –LIF is a dry sorting system.
·Claim 60, 62, 64, 66 - 67 – Figure 3 of Nienhaus shows that at least one stream is processed in a downstream processing plant where a pre-concentration plant is understood to be a form of dry sorting.
103. Therefore all of claims 1, 7 – 9, 11, 14 – 15, 19 - 20, 23, 25, 31 – 33, 36, 40 – 41, 51, 54, 57, 59, 60, 62 - 64 and 66 – 67 are not novel in light of Nienhaus.
Inventive Step
104. According to Section 7(2) and 7(3) of the Patents Act, an invention is taken to involve an inventive step unless it would have been obvious to the person skilled in the art in the light of the common general knowledge, either considered alone or together with the prior art. The prior art is information that the skilled person could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant.
105. A test for obviousness was provided by Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] FCA 12; (1981) 148 CLR 262 as follows[73]:
[73] Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] FCA 12 at [45]; (1981) 148 CLR 262 at [286]
“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.”
106. In considering the question of what constitutes “a matter of routine”, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 stated[74]:
[74] Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]- [53]
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
107. The usual approach in determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art based has been determined, the question of whether the claimed solution is obvious must be addressed.
108. In determining the problem or the “starting point” for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 as follows[75]:
[75] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [203]
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole. There are a number of reasons why this should be so.”
The problem to be solved
109. In order to formulate the problem to be solved, I will first consider what the specification states as the problem being addressed and whether the invention as claimed provides a solution to the problem.
110. According to the specification [76]:
[76] Specification as amended on 23 September 2016 at Page 2 Line 34 – Page 3 Line 2
“A significant proportion of low grade ore can remain as stockpiled ore. As a consequence, there are large stockpiles of mined ore that have been classified as low grade ore that have potentially significant economic value notwithstanding the low grade of the ore.”
111. While the specification does go on to discuss a wide variety of factors which may apply depending on the mine, what the mined material is, and the sorting thresholds. The assessment and separation of the mined material is performed on the basis of a grade, the definition of grade being entirely subjective. In this regard, it is clear that the goal is to obtain ore of significant economic value.
112. On this basis, I conclude that the problem addressed by the opposed application can be broadly formulated as “how to sort or upgrade mined material”.
Obviousness in light of common general knowledge alone
113. The Opponent submits that the features of the independent claims are obvious in light of common general knowledge alone[77]. According to the Opponent, common general knowledge includes the following[78]:
[77] The Opponent’s first submission at [82] – [83]
[78] Ibid at [84] – [85]
a)“the identification and separation of bulk material (and various techniques applied);
b)the identification and separation of particle material (and various techniques applied);
c)combining bulk sorting and particle sorting methods to progressively upgrade an ore stream to achieve a final product;
d)use of primary crushers to reduce the size of mined material; and
e)various techniques to assess the grade of successive segments (such as sensors).”
114. Based on the above, the Opponent’s position is that[79] “[t]he alleged invention is no more than assemblage of components, ‘which have been selected to fulfil well-known and well understood processing steps’ to address known problems.”
[79] Ibid at [85]
115. While individual elements may be known, the question is whether it would be obvious to combine a plurality of said elements in the same manner as the claimed invention. In my discussion of common general knowledge, I stated that it is also known within the general principle of flowsheet design to[80]:
[80] Bearman #1 at [35]
“…progressively apply methods that will increase the level of metal content (by rejecting waste of gangue) to a point that can economically deliver product for sale”
and to:[81]
[81] Ibid at [48]
“…progressively target the final product with methods and processes of increasing fidelity.”
116. In this regard, I consider that it would be obvious to combine individual elements only where it would progressively lead to a product of economic value.
117. Moving on to the independent claims, as shown above the independent claims can be characterised into three sets. All 3 sets involve separating a mined material via a bulk assessment step and a bulk separation step. Set 1 defines that further processing or upgrading of the mined material is done via dry sorting. In set 2, the processing or upgrading is done in a processing plant.
118. Set 3 does not require a processing or upgrading step. Instead, the size of the mined material is first reduced prior to bulk assessment and bulk separation.
119. At a fundamental level, Dr Bearman’s evidence makes it clear that in order to process mined material, there must always be some form of bulk assessment and bulk separation. However prior to being processed, the first point after the mined material leaves a transport or delivery device is the use of a primary crusher so that the mined material is reduced in size.
120. Once the mined material has undergone preliminary bulk assessment and bulk separation, the material may be subjected to further identification and separation techniques in order to progressively upgrade a mined material into a final product. These techniques may consist of dry or wet sorting and the mined material is typically transported on a conveyor belt.
121. One such example of bulk assessment is the use of PGNAA which is described in the specification[82]:
[82] Specification as amended on 23 Sept 2016 at Page 18 Line 34 – Page 19 Line 14
“One grade detection option is Prompt Gamma Neutron Activation Analysis (PGNAA), for the following reasons:
·Commercially available, minimising development requirements and risk.
·Proven in iron ore operations.
·High probability of satisfactory detection at primary crushed ore particle size and conveyor bed depth.
·Elemental analysis rather than mineralogical/phase analysis aligns well with current grade control methods and enables simple data analysis and control logic.”
122. Dr Bearman explains that in addition to iron ore, PGNAA can also be used to analyse copper [83]:
[83] Bearman #2 at [102]
“From a general knowledge of physics, copper responds well to PGNAA. PGNAA was a known technology prior to 2 June 2010. Any skilled practitioner would have been able to outline this process and it would have been more than a theoretical “desirable objective” as PGNAA was a known invention and simple separation systems such as splitters were commonly available”.
123. Dr Bearman also sets out that[84] “wet processing, dry sorting, segment size, assessment of full bed depth, PGNAA, size reduction and the use of a splitter system are all obvious to skilled practitioners”.
[84] Bearman #2 at [101]
124. Ms Painter does not appear to disagree but states[85]:
[85] Painter #2 at [65]
“Dr Bearman has considerable knowledge of the mining industry and this knowledge includes confidential information and publicly available information. It is difficult for me to see how it could be said that the considerable knowledge of Dr Bearman is representative of the knowledge common to the skilled person in the mining industry.”
125. I have some difficulty agreeing with Ms Painter. Dr Bearman’s explanation of what is common general knowledge in the art is provided at a fundamental level with a high degree of generality. While I accept that some of Dr Bearman’s knowledge may be subjected to a degree of confidentiality, it does not follow that all information, even that of a more general nature, would be confidential. At best, confidentiality would typically apply to information of a more specialised nature.
126. Therefore in light of the above and based on the general principle of flowsheet design, I am satisfied that it would have been obvious to at least:
·Initially reduce the size of mined material via the use of a crusher.
·Perform at least one instance of bulk assessment and bulk separation.
·Subject said mined material to at least one further processing or upgrading step depending on the required grade.
·Transport the mined material through all of the above steps via the use of a conveyor belt.
·It would be at least obvious to use PGNAA as a bulk assessment technique in order to analyse iron ore or copper.
127. Therefore I consider that all of the independent claims are obvious in light of common general knowledge alone.
128. Moving on to the dependent claims, I consider that all of the dependent claims are also obvious in light of common general knowledge for the following reasons.
129. Claims 2 to 6, 18, 24 to 30, 49 – 50, 52 - 53, 57 – 58, 67 and 69 refer to sorting against first grade threshold and a second grade threshold, wherein the second grade threshold is higher than the first grade threshold.
130. Dr Bearman explains[86] that decisions about upgrading from one grade to another, and where a second grade threshold is higher than a first is a basic design principle and would be obvious. It is also clear from the above that both dry and wet processing are viable options depending on the mined material. Therefore, it would be obvious to carry out these steps as a matter of routine.
[86] Bearman #1 at [183]-[184], [198] – [199]
131. Claims 7 to 9 and 31 - 33 indicate that the mined material is iron ore comprising of low grade, high grade, and waste iron ore. As made clear above, iron ore is commonly mined. It follows that raw iron ore would consist of low grade, high grade and waste ore.
132. Claims 10 and 34 refers to analysing the grade of an unmined section of a mine and classifying the section into blocks of high grade, low grade and waste ore prior to mining the ore. However the specification makes it clear that this step is conventional[87]. Therefore, it would be obvious to carry out these steps as a matter of routine.
[87] Specification as amended on 23 Sept 2016 at Page 1 Line 35 – Page 2 Line 21
133. Claims 11 and 37 refer to the use of a conveyor belt to transport the mined material. This is obvious for the reasons stated above.
134. Claims 12 and 38 clarify that the grade assessment step comprises assessing the grade of successive segments of the mined material by analysing the entire bed depth of the mined material. However as stated above, this is typically performed by PGNAA.
135. Claims 13 and 39 states that the grade assessment step comprises PGNAA. This is obvious for the reasons above.
136. Claims 14 to 15, 20, 40 – 41 and 54 state that, prior to performing the method of claim 1, a primary crushing step is used to reduce the size of the mined material. However as stated above, the first point after the mined material leaves a transport or delivery device is the use of a primary crusher so that the mined material is reduced in size. Therefore it would be obvious to utilise this conventional step as a matter of routine.
137. Claims 16, 21, 47 and 55 further define that the sorting of the mining mineral against a threshold is performed using chutes. However Dr Bearman explains that[88] “In-chute, in-line, cross-belt or plough type systems for diverting material were all well-known and widely applied techniques for removing material from a conveyor belt following the detection of some key property – these are merely common sense.” Therefore, it would be obvious to utilise a conventional splitter system and chutes as a matter of routine.
[88] Bearman #1 at [41]
138. Claims 17, 42 – 46 and 48 all refer to various parameters of the sorting system in relation to the segment size. Dr Bearman considers that[89] “[t]he definition of a segment size for bulk sorting will obviously be a function of the measurement time, activation of splitting or sorting, the speed of the presentation and the mechanical limites on the movement of actuators…this can be simply calculated and would be obvious to a ‘skilled addressee’.” Therefore this parameter relates to no more than mere routine optimisation involving no inventive ingenuity.
[89] Ibid at [188]
139. Claims 35 to 36 state that grade assessment is either a direct assessment of grade or an indirect assessment of grade. Dr Bearman states that[90] “[t]he use of a direct or indirect grade assessment step is material specific and relies on the availability of sensors or other ‘measurement’ devices, and or, the existence of a robust and consistent proxy parameter. It would be typical to look at both direct and indirect in an attempt to find the most suitable approach. Such detail would have been obvious to a ‘skilled addressee’”. Therefore the use of direct or indirect assessment is conventional in the art and it would simply be a matter of routine to select one or the other.
[90] Ibid at [185]
140. Claims 56 and 68 add a step of mining ore. It is apparent on the face of this claim that this step would be common general knowledge.
141. Claim 60 – 62 and 64 - 66 state that at least one separated segment is processed in a downstream processing plant which may be a wet processing plant or a dry processing plant. However as made clear above, this step is obvious.
142. Consequently I find that all of claims 1 – 69 to be obvious in light of common general knowledge alone.
Obviousness in light of Nienhaus
143. According to subsection 7(3), documentary information relevant to the assessment of inventive step must be information that the person skilled in the art, before the priority date of the claims, could be reasonably expected to have ascertained, understood and regarded as relevant.
144. Regarding Nienhaus, Dr Bearman states[91]:
[91] Bearman #1 at [163]
“I identified this document from my own research when I was previously asked about the state of the art … I provided a copy of the 2004 publication to Watermark and it has now been presented to me as document D7 (Exhibit RB-12). I subsequently located an earlier printing of the document in Australian Mining Monthly dated September 2003. A copy of this earlier printing is now attached as Exhibit RB-27.”
145. It is also clear that Nienhaus deals with the sorting and upgrading of mined material.
146. Therefore I am satisfied that Nienhaus would be ascertained, understood and regarded as relevant.
147. As I determined above, all of claims 1, 7 – 9, 11, 14 – 15, 19 - 20, 23, 25, 31 – 33, 36, 40 – 41, 51, 54, 57, 59, 60, 62 - 64 and 66 – 67 are not novel in light of Nienhaus. It follows that these claims also lack an inventive step in light of Nienhaus.
148. In relation to the dependent claims, the Opponent submits that all of the additional features recited in these claims represent no more than routine variations or elaborations to the features of the six independent claims. As set out above in my conclusion that all of the claims are obvious in light of common general knowledge alone, I am inclined to agree with the Opponent.
149. It follows that all of the claims would also be obvious in light of Nienhaus.
150. Consequently I find that all of claims 1 – 69 to be obvious in light of Nienhaus and common general knowledge.
Manner of Manufacture
151. According to section 18 of the Patent Act 1990;
(1) Subject to subsection (2), an invention is a patentable invention for the purpose of a standard patent if the invention, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
152. Section 6 of the Statue of Monopolies provides as follows:
“Provided also and be it declared and enacted that any declaration before mentioned shall not extend to any letters patent and grants of privilege, for the term of 14 years or under hereafter to be made of the sole working or making of any manner of new manufacture within this realm to the true and first inventor and inventors of such manufactures which others, at the time of making such letters or grant, shall not use, so as also they be not contrary to the law, nor mischievous to the state, by raising prices of commodities at home or hurt of trade or generally inconvenient.”
153. A detailed analysis of relevant case law was provided by the Delegate in Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2017] APO 40 (the “Tettman decision”) [92], however I will highlight that the assessment as to whether a claimed invention is properly the subject of a patent is one of substance over form as set out in Research Affiliates vCommissioner of Patents [2014] FCAFC 150 (“Research Affiliates”) and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”). More recently, this is made clear D’Arcy v Myriad Genetics Inc [2015] HCA 35 (“Myriad”)[93]:
[92] Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2017] APO 40 at [21]-[28]
[93] D’Arcy v Myriad Genetics Inc [2015] HCA 35 at [144]
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
154. On 28 July 2017, I exercised my power under section 60(3) of the Patents Act to take into account grounds of opposition not relied upon by the opponent in their statement of grounds and particulars. Here I invited the parties to provide comment in regard to a further basis for a lack of patentability. I noted that:
“On the face of the claim, the substance of the invention appears to be a mere scheme for sorting material comprising steps such as:
·Assessing the grade of mined material
·Sorting the mined material on the basis of grade into segments
·Upgrading or beneficiation of at least one segment
To my mind, this appears to be a purely logistical process with none of the claimed substance providing a technical contribution. I am unable to determine if there is any invention or ingenuity in the implementation of technology in the claim.”
155. The parties were provided two (2) weeks to file submissions addressing manner of manufacture, and a further two (2) weeks to provide responding submissions.
Are the claims directed towards a mere scheme?
156. The Applicant agreed that emphasis must be placed on the substance of the claimed invention over the form of the claims. However this contribution must be determined based on a reading of the specification as a whole and the skilled addressee understanding of the common general knowledge and prior art.
157. The parties both referred to Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371; [2007] RPC 7 where the England and Wales Court of Appeal outlined a four-step “technical effect” approach in respect to the question of excluded subject matter under UK law
158. The Applicant submitted that the substance of the claimed invention as defined in claim 1 is the combination of two different types of sorting. Bulk sorting then particle sorting, to produce an upgraded material via a series of physical steps. While each integer may have been previously known, in isolation, particle sorting is not an effective option for large volumes of ore because of the cost and practical materials handling issues for large scale sorting. Bulk sorting of itself is not an effective option to determine conclusively whether there is sortable valuable material in bulk segments.
159. The Applicant submitted that, by proceeding with this particular combination, claim 1 permits the recovery of mined material that would previously have been impossible technologically to recover at all or at least to be able to recover cost effectively. This also leads into the assessment of manner of manufacture as exemplified in Grant v Commissioner of Patents [2006] FCAFC 120 that the invention as defined by claim 1 transforms otherwise unusable mining material into usable and valuable form.
160. The Applicant submits that the contribution made by the claimed invention to the art:
“…is a novel and inventive combination of steps, which are physical processing steps, that have technical substance and provide real advantages in terms of making it possible to recover valuable material that would otherwise not be recovered. The advantages are not achieved by the individual steps. The advantages are achieved by the combination of physical steps defined in the independent claims.”
161. The Opponent agreed in part that substance of the invention is the combination of the identification and separation of mined material on a bulk basis, with a subsequent step of sorting selected segments of mined material on a particle basis. However the technical features, such as size reduction, grade assessment, bulk sorting and particle sorting are all well-known processes. Therefore it is left entirely to the person skilled in the art to accomplish this work flow or arrangement, including deciding upon each of the technical components that are required for implementation.
162. In light of the above, I agree with the parties that the contribution to the art of the claimed invention as per claim 1 resides in the combination of sorting mined material via bulk sorting then particle sorting. For completeness, I note that there is little difference between claim 1 and claim 19, and the independent claims defined by set 2 and set 3. In set 2, particle sorting is replaced with downstream processing of selected segments. Set 3 does not require particle sorting but rather, defines that copper ore is initially reduced in size.
163. While I agree with the Applicant that the system provides an advantage in that it makes it possible to recover valuable material that would otherwise not be recovered, the same could be said for any upgrading or beneficiation step which produces material in accordance to a threshold.
164. All of the steps of performing crushing of mined material, bulk assessment, bulk separation, and dry sorting or downstream processing are broadly defined in the independent claims as a mere reference to the general concept that such steps could be performed. Neither the claims nor the specification indicates exactly what technical components would be suitable but rather, has left the implementation to the skilled addressee. Therefore, in accordance with the guidance provided by Research Affiliates and RPL, it is clear that the technology defined within the independent claims is merely generic.
165. Additionally, the assessment of grade as being above or below a threshold is entirely subjective. The specification indicates that such a threshold may be determined according to[94]:
[94] Specification as amended on 23 Sept 2016 on Page 7 lines 19 - 28
“…mineralogy of the mined material, mining costs, separation (such as dry sorting) costs, and downstream costs, including processing costs to produce a marketable product from the mined material that meets a customer specification in terms of grade and other characteristics such as particle size, and also include costs to transport that product to customers”
166. It is clear that this determination is not one that I would consider technical subject matter but rather, is entirely subjective and dependent on costs or a customer specification. Therefore the problem addressed by the claims it not one of technical limitation in sorting or recovering valuable material, but a logistical or business problem.
167. In this regard, it is clear that the substance of the invention is directed towards nothing more than the arrangement of mineral processing concepts which could be used to sort and upgrade mined material. While there is a requirement that the arrangement must be able to sort and upgrade mined material in accordance with a grade threshold, as per above this threshold is entirely subjective and dependent on costs or a customer specification. It follows that the economic significance which may result from sorting or upgrading the mined material is unrelated to any improvement in the functionality of the system.
168. Consequently it is clear that the substance of the invention as defined in the independent claims is purely a logistical process. I have considered the dependent claims and find that they do not incorporate any features which would resolve the issues of patentable subject matter.
169. Therefore I find that the subject matter of all of the claims do not define a manner of manufacture.
Are the claims directed towards mere working directions?
170. On this point, the Opponent cites Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 and relies on the reasoning set out above[95]. The Applicant’s disagree on the basis that the specification makes it clear that the claims define a combination of features[96].
[95] The Opponent’s first submission at [35]-]51]
[96] The Applicant’s submission at [54]-[59]
171. A working direction is defined as the mere optimisation of a known process to more efficiently produce an old product, or to more efficiently operate a known device to an old effect amounts to no more than a working direction, provided that result could have been achieved without inventive ingenuity. Where the result is new, or where an inventive selection is involved, such processes are patentable.
172. The claims of the opposed application are directed towards the sorting or upgrading of mined material which, as set out in the evidence, is an old result. All of the claims steps which aim to achieve this old result are described with a high degree of generality. As set out above in my discussion of inventive step in light of common general knowledge, all of the claims relate to conventional steps which are either obvious on the face of the claim, or would simply be a matter of routine.
173. In this regard, it is clear that all of the claimed steps are mere working directions. I find that the invention as claimed in all of the claims defines no more than mere working directions and thus, are not directed towards a manner of manufacture.
Conclusion
174. The Opposition is successful. I find that:
·All of the claims are not directed towards a manner of manufacture;
·1, 7 – 9, 11, 14 – 15, 19 - 20, 23, 25, 31 – 33, 36, 40 – 41, 51, 54, 57, 59, 60, 62 - 64 and 66 – 67 are not novel in light of Nienhaus.
·All of the claims are obvious in light of Nienhaus and common general knowledge
·All of the claims are obvious in light of common general knowledge alone
175. Typically where an opposition succeeds on one or more grounds, it is appropriate that the Applicant is provided an opportunity to propose suitable amendments to address the issues outlined in the decision. However I consider that there is no patentable subject matter that could potentially be claimed, and there are no suitable amendments which would overcome the ground of inventive step. I find that there is no subject matter within the specification which could form the basis for an allowable claim.
176. Consequently, the application is refused.
Costs
177. The opposition is successful. It is normal practice that costs should follow the event. I award costs according to Schedule 8 against the Applicant.
Isaac Tan
Delegate of the Commissioner of Patents
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