Raymond Ludwig John Tettman v Technological Resources Pty. Limited
[2017] APO 40
•10 August 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2017] APO 40
Patent Application: 2009304592
Title:A method of sorting mined, to be mined or stockpiled material to achieve an upgraded material with improved economic value
Patent Applicant: Technological Resources Pty. Limited
Opponent: Raymond Ludwig John Tettman
Delegate: Dr N.R. Madsen
Decision Date: 10 August 2017
Hearing Date: 15 June 2017, in Canberra
Catchwords: PATENTS – a method for sorting mined material – section 59 – opposition to grant of a patent – grounds of full description, novelty, inventive step, manner of manufacture – specification is fully descriptive – particular claims are not novel – substance of the invention is determining whether material is upgradable by: assessing grade, in particular whether material is low grade or waste grade material that is to be mined or is in a stockpile; assessing whether ore particles in a volume can be dry sorted into streams above and below a threshold grade; and by assessing undefined other factor(s) – all claims are not for a manner of manufacture – opposition successful – costs awarded against the applicant – opportunity to amend
Representation: Patent applicant: Greg Munt, Patent Attorney of Griffith Hack
Opponent: Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009304592
Title:A method of sorting mined, to be mined or stockpiled material to achieve an upgraded material with improved economic value
Patent Applicant: Technological Resources Pty. Limited
Date of Decision: 10 August 2017
DECISION
The opposition is successful. None of the claims are directed towards a manner of manufacture. Claims 1, 2, 3, 6, 10, 14 and 22-25 are found to lack novelty. No other grounds are made out.
I award costs for a section 59 opposition in accordance with Schedule 8 of the Patent Regulations against the applicant.
I herein provide two (2) months from the date of this decision for the applicant to file amendments after which time a final determination will be made. Absent any amendments and subject to appeal, I will proceed to refuse the application.
Background
This matter relates to patent application 2009304592 in the name of Technological Resources Pty. Limited (the applicant), filed on 16 October 2009. The application was filed under the Patent Cooperation Treaty as application number PCT/AU2009/001364. The application claims priority from Australian provisional application number 2008905365 and has an earliest priority date of 16 October 2008.
The request for examination of the patent application was filed on 25 March 2013. As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 do not apply to the present patent application. This includes the addition of subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Further to this point I note that the law that applies to the present grounds of opposition is that prior to amendment by the Raising the Bar Act.
The application was advertised as accepted on 8 October 2015 and was opposed on 8 January 2016 by Raymond Ludwig John Tettman (the opponent). The only evidence before me is prior art documents D1-D11 forming evidence in support. These documents were filed with the statement of grounds and particulars. There is no declaratory evidence from any experts.
The grounds pressed by the opponent are that claims are not fully described, not novel, not inventive, and are not for a manner of manufacture.
The applicant was represented at the hearing by their patent attorney via teleconference while the opponent chose to rely upon written submissions completed two days before the hearing.
Onus
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
The Specification
The invention described in the specification relates to the field of sorting mined material, and particularly the mining of large blocks of ore from benches. On page 1 of the specification it is described that it is known to mine large blocks, typically containing up to 8000 tonnes of ore. Sections of the bench are typically chemically analysed by taking samples from drilled holes to determine whether ore is high, low or waste grade material on a mass average basis. After analysis, regions of high, low or waste grade material are marked with boundaries separating different regions defining blocks to be mined. Blocks of ore are then blasted using explosives, removed, and then processed. Ore is processed depending on its grade. For example waste ore is used as mine fill, low grade ore is stockpiled or blended with high grade ore, and high grade ore is processed further to produce a marketable product.
Page 2 of the specification adds that further processing of high grade ore ranges from simple crushing and screening to a standard size range through to processes that beneficiate or upgrade the ore. These processes may be wet or dry.
The specification then continues to state that a significant portion of low grade material is not blended and remains stockpiled. These stockpiles can have potentially significant economic value notwithstanding the low grade of the ore. Thus, the present invention seeks to overcome this issue providing a method of sorting mined material such as iron ore, that comprises assessing if the material is upgradable and, if so, separating the material on the basis of grade. It is the case that the present invention is directed exclusively to using techniques of dry sorting.
The specification continues to define the term “upgradable” as meaning that the material is a material that is capable of being dry sorted to improve the actual or potential economic value of the material. On page 3 and 4 the specification defines the term “grade” as meaning an average of the amount of selected constituent in a given volume of particulars of a mined material. Following on from this the term “dry sorting” is defined as any sorting process that does not require added moisture for the purpose of effecting separation. The specification also discusses that determining whether a volume of material is upgradable includes assessing the grade of material by taking samples and performing analysis. At page 6 the specification makes it clear that any suitable technique may be used to analyse samples.
The invention is described with reference to 10 figures. Figure 1 is an example of a blockout plan for a section of a mine bench in a conventional mining operation. The plan shows drill holes 53 indicated by crosses, wherein high grade, low grade and waste blocks are referred to as HG, LG and W respectively in the figure.
Remaining figures 2-10 show various flowsheets illustrating different sorting methods that may be used with the present invention. Figure 2 is a good example of these and shows ore being crushed before being passed through scalping screens that sort the material by size. Oversized material from a first screen 5 is passed to a secondary crusher with the material fed back to the first screen. Undersized material from the first screen is transferred to a second screen 9, where fines are sent away and correct size material is sent to product screen 11. The product screen separates the particles by size. Output from screen 11 travels back to the secondary crusher or is further sorted at product screen 13. Correct size particles from screen 13 are then dry sorted at 15 on the basis of grade.
The claims
The specification ends in 25 claims whereby claims 1 and 22-25 are independent as follows:
1. A method of sorting material that comprises:
(a) determining whether a volume of a material to be mined is upgradable as defined herein and mining the volume of material or determining whether a volume of a material in a stockpile of mined material is upgradable as defined herein, wherein determining whether the volume of the material is upgradable includes assessing grade of the volume of material and other factors including whether ore particles in the volume of material can be dry sorted into streams that are above or below a threshold grade; and
(b) dry sorting the mined or stockpiled material that is determined to be upgradable and producing an upgraded material.
22. A method of mining material that comprises:
(a) determining whether a volume of material to be mined is upgradable, as defined herein, wherein determining whether the volume of the material is upgradable includes assessing grade of the volume of material and other factors including whether ore particles in the volume of material can be dry sorted into streams that are above or below a threshold grade;
(b) mining the volume of material; and
(c) dry sorting the mined material that is determined to be upgradable and producing an upgraded material.
23. A method of mining material that comprises:
(a) determining whether a volume of material in a stockpile is upgradable, as defined herein, wherein determining whether the volume of the material is upgradable includes assessing grade of the volume of material and other factors including whether ore particles in the volume of material can be dry sorted into streams that are above or below a threshold grade; and
(b) dry sorting the stockpiled material that is determined to the upgradable and producing an upgraded material.
24. A method of mining material that comprises:
(a) determining whether a volume of material to be mined is upgradable, as defined herein, the volume of material being material that would otherwise be classified as low grade material or waste material, as defined herein, wherein determining whether the volume of the material is upgradable includes assessing grade of the volume of material and other factors including whether ore particles in the volume of material can be dry sorted into streams that are above or below a threshold grade;
(b) mining the volume of material; and
(c) dry sorting the mined material that is determined to be upgradable and producing an upgraded material.
25. A method of mining material that comprises:
(c) determining whether a volume of material in a stockpile is upgradable, as defined herein, the volume of material being material that would otherwise be classified as low grade material or waste material as defined herein, wherein determining whether the volume of the material is upgradable includes assessing grade of the volume of material and other factors including whether ore particles in the volume of material can be dry sorted into streams that are above or below a threshold grade; and
(d) dry sorting the stockpiled material that is determined to the upgradable and producing an upgraded material.
Full Description
The test for sufficiency of description under s40(2)(a) of the Patents Act is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 (Kimberly-Clark) at [25]:
"... will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
Clearly, whether a specification is sufficiently descriptive may be determined with reference to evidence of the skilled addressee (Universal Oil Products Co v Monsanto Co (1972) 46 ALJR 658 at [661]).
The opponent raises points in arguing that the specification is not fully descriptive of the invention. In particular they argue that:
· “…there is no explanation in the specification of how an addressee should assess ‘whether ore particles in the volume of material can be dry sorted into streams that are above or below a threshold grade’…”
· “There is also no explanation of how the addressee should analyse samples to make an assessment of ‘whether the material in the volume of material (or in the stockpiled material) is upgradable’…”
In response, the applicant points to the specification at pages 13 and 14 that relevantly states:
“Upgradable ore includes ore that that has discrete particles that are above the threshold grade and discrete particles that are below the threshold grade.”
The applicant also argues that:
“The specification makes it clear that there is a wide range of analysis options… [and] a wide range of dry sorting options that can be used to process “upgradable” material.”
The applicant’s arguments appear to me to essentially state that the implementation of these features is within the skill of the addressee. Here it is argued that the person skilled in the art would have no difficultly in making the required assessment and analysis.
Importantly, the opponent has presented no evidence from a skilled person to indicate that difficulty would be faced in performing the claimed invention. Without evidence, in the present case I cannot consider it clear that the addressee would need to engage in any additional effort as required by Kimberly-Clark. On the face of the specification, how one determines whether ore particles can be dry sorted and also how samples are analysed, appears to me well within the reasonable competence of a skilled addressee in the field of ore mining and processing.
Therefore I find that the claimed invention is fully described.
Manner of Manufacture
21. The High Court in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (NRDC), laid out the proper question for determination when one is considering patentable subject matter in the context of section 18(1)(a) of the Patents Act which refers to a “manner of manufacture”. They stated at [269] that the correct question is:
“Is this a proper subject according to the principles which have developed for the application of s. 6 of the Statute of Monopolies?”
22. With this at the fore of their considerations in respect of a claim to a process for eradicating weed from a stretch of land, the High Court in NRDC described subject matter that would be considered patentable (at [275]):
“The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour.”
Whether an invention is a manner of manufacture can also be assessed by asking whether the claimed invention lacks the necessary quality of inventiveness on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 at [9]; [1995] HCA 15; (1995) 183 CLR 655 at 655).
Also relevant is the law found in Commissioner of Patents v Lee [1913] HCA 22; 16 CLR 138 (Lee) which states that mere working directions to produce an identical product do not comprise a manner of manufacture according to s6 of the statute of monopolies. Here a variation will be a “mere” variation in the working of existing apparatus or process only if it involves no inventive ingenuity.
More recently, it has been made clear that the assessment as to whether a claimed invention is properly the subject of a patent (i.e. is a manner of manufacture) is one of substance over form. As per D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) 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.”
Additionally, their Honours in Myriad pointed out that the High Court in NRDC was not laying down a precise formulation that can be applied unthinkingly. Their Honours referred to Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 253 CLR 284 at 328 [83] where Hayne J noted that:
“Nothing said in the Court’s reasons for decision in that case can be taken as an exact verbal formula which alone captures the breadth of the ideas which effect must be given.”
27. An approach to assessing the substance of a claim for patentability rather than its literal form is well founded in the established case law. For example, in Virginia-Carolina Chemical Corp's Application [1958] RPC 35, Lloyd-Jacob J said at [37]:
“In considering whether or not an application discloses a patentable invention, it is proper that attention should be directed to the alleged contribution to the art rather than the form of words tentatively put forward as defining the invention.”
28. Useful to considering patentability in a case-by-case sense, particularly when considering the substantive or formative presence of technology in a claim, are the following factors that were framed by the Full Court of the Federal Court in Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177 at [99] in the context of computer related inventions:
· It is necessary to ascertain whether the contribution to the claimed invention is technical in nature.
· One consideration is whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
· Does the claimed method merely require generic computer implementation?
· Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
29. The opponent argued that the claimed invention was not for a manner of manufacture on two bases. Firstly, they argued that it is clear on the face of the specification that the alleged invention is the use of known methods for known purposes and is therefore not a manner of manufacture. Secondly, the opponent argued that the claimed invention constitutes mere working directions.
30. Additionally before the hearing, 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. In my letter of 17 May 2017 to the parties 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 us:
· Determining whether a volume of material is upgradable
· Wherein this determination includes assessing the grade of material and other factors including whether the material can be dry sorted
· Sorting and producing an upgraded material
This appears to be a purely logistical process with none of the claimed substance providing a technical contribution. At this stage, to me there does not appear to be any invention or ingenuity in the implementation of technology in the claim.”
Are the claims directed towards a mere scheme?
31. In making their submissions the applicant primarily pointed to NRDC. In summary, the applicant submitted that:
“…the process defined by the claims produces a new result – it transforms what would otherwise be unused low grade ore into a combination of usable high grade ore and waste. That technological transformation gives rise to a material effect or advantage within the principles expressed by the High Court in NRDC [1959] HCA 67 and distinguish[es] the invention defined by the claims of the patent application from a mere scheme.”
32. To determine patentability, as per Myriad above, I should first consider the substance of the invention. To do this I will initially turn to claim 1.
33. Claim 1 is directed towards a method of sorting material that determines whether a volume of material to be mined or a volume of material in a stockpile is upgradable. This determination is characterised in the claim by the following criteria:
· Assessing the grade of material
· Assessing whether ore particles in the volume can be dry sorted into streams above and below a threshold grade
· Assessing at least one other factor
34. Following this, the upgradable material is then dry sorted and an upgraded material is produced.
35. There is little difference between claim 1 and the remaining independent claims. Claim 22 differs from claim 1 in that the material is initially limited to material to be mined and that said material is subsequently mined. Alternatively claim 23 is limited to material in a stockpile. Claims 24 and 25 differ respectively from claims 22 and 23 in that the initial volume of material would otherwise be classified as low grade or waste material.
36. Turning to the background discussion in the specification, it is clear that it is normal practice to mine blocks of ore from benches and to classify these blocks by way of grade (see figure 1). Page 2 of the specification also discusses that large volumes of material are left in stockpiles because they are classified as low grade. It is also clear from the specification that dry sorting to produce an upgraded material forms an aspect of the state of the art. The second paragraph of page 2 reads:
“The further 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. The processing may be wet or dry.”
37. Given the state of the art as clearly articulated in the specification, I consider that the substance of the invention as presented in the independent claims is determining whether material in a volume is upgradable by: assessing grade, in particular whether material is low grade or waste grade material that is to be mined or is in a stockpile; assessing whether ore particles in the volume can be dry sorted into streams above and below a threshold grade; and by assessing undefined other factor(s).
38. Turning to the applicant’s submissions I note that the guidance of NRDC should be applied with caution. The High Court in Myriad made it clear that the exact formulation of the terminology within NRDC was not an exhaustive or complete test for patentability. A case by case approach is what is required. I accept it is true that the method of the claims produces an advantage of economic benefit being production of upgraded material. However, the dry sorting and production of upgraded material itself is not where the contribution to the art lies.
39. The substance of the invention is a determination that is based upon a set of criteria. There is no subject matter within this determination that I can consider as technical subject matter. On this point, the steps of assessing both grade and dry sortability as defined in the independent claims can be as broad as a mere visual inspection of material. Moreover, classification of the grade of a volume of material as high, low or waste is admitted by the specification to be entirely subjective. On page 1 of the specification it is stated:
“The cut-offs between high and low grades 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.”
40. I consider it clear that the invention’s substance in the independent claims is nothing more than a decision as to whether to deploy a dry sorting process (of any non-descript type) based upon a non-technical or abstract analysis and logic. In itself, such a substance has no material advantage or economic significance being merely a set of analytical steps leading to a decision. Such subject matter has traditionally failed for patentability as being a mere scheme, or even intellectual information.
41. Turning also to the themes articulated in Research Affiliates and RPL, there is no functioning of technology within the independent claims beyond that which is generic. Here, material is generically mined and dry sorted to generically produce material. The problem allegedly addressed by the claimed invention is not one of the technical limitations in sorting, but a logistical or business problem. In other words: “What do I do with material that is to some degree relatively valuable but that I don’t presently use commercially?” The solution of the claims is to work out, in a generally abstract sense, whether it can be dry sorted and whether dry sorting is viable from a logistical point of view. This is not patentable subject matter. It is business innovation, not technical innovation.
42. Therefore I find the subject matter of independent claims 1 and 22-25 are not directed towards a manner of manufacture.
Appended claims
43. I have considered the appended claims and find that they do not add any patentable subject matter.
44. All appended claims turn to claim 1 for antecedence. For example, claim 2 simply adds that the volume of material is classified as low grade or waste material. Claims 3 and 4 are directed toward the general taking of samples to constitute analysis. Claims 5 and 6 add further features of using x-ray analysis for dry sorting, and dry sorting on the basis of grade.
45. Regarding claim 2, in accordance with the discussion above there is no patentable subject matter in merely assigning a grade of low or waste to material. Furthermore, none of claims 3-6 add subject matter to the substance of the invention beyond that already discussed in terms of independent claims. It is clear on the face of the specification that analysing material, using known forms of x-ray detection, and dry sorting on the basis of grade are normal practices in the art (see for example page 1 paragraph 5, page 6 paragraphs [3], [6] and [7]). They do not constitute an alleged contribution to the art.
46. Claims 7-21 are similar appended claims in that they all characterise the dry sorting process as having different arrangements of steps selected from actions such as sorting on the basis of grade, size reduction by means such as crushing, and size separation using devices such as screens. Figure 2 reproduced above is a typical example of such a process having a range of steps (I note that none of claims 7-21 are limited to any particular parameters such as particle size). Figures 2-10 of the specification provide basis for many of the features described in claims 7-21. As an example, I will discuss claims 7, 10 and 14.
47. In appending to claim 1 insofar as it is directed towards a stockpile of material with correct particle size distribution, claim 7 adds that dry sorting comprises a first dry sorting step that selects material on the basis of a first grade determination and a further dry sorting step or a series of such steps on the material selected in the first dry sorting step. In other words, the claim is directed towards a form of sequential dry sorting. Claim 10 adds the features whereby the volume of material contains oversized product and dry sorting involves first reducing size by crushing, followed by a size separation step that separates material into required product size distribution and an oversize material. Finally, claim 14 adds further features to claim 10 wherein the size separation step produces an oversize and undersize fraction whereby dry sorting is performed on the oversize fraction.
48. Importantly, in the context of the various flowsheet options presented in figures 2-10 for dry sorting the upgradable material, the specification makes no reference to any particular material benefits or advantages of any of these methods. They appear to be presented as alternatives that are within the skill of nominal addressee. In particular I make reference to relevant discussion in the specification at page 5 paragraph 2 and page 24 paragraph 4 respectively:
“The method also makes it possible to take the as mined material or stockpiled material and, given current mining practices, to subject the material to particle size reduction (such as crushing) and size separation to separate the material into a required product particle size distribution or distributions, and then to dry sort (as opposed to wet sort) the material that is in the required product size distribution to recover valuable material.
…
The above-described embodiments are examples of a number of possible embodiments for sorting ore in accordance with the present invention. Each embodiment has particular features that may be appropriate depending on the requirements of a particular mining operation. The present invention extends to a significant range of other combinations of size reduction and dry sorting steps that would be readily apparent to a skilled person.”
49. There is no further reference within the specification that would suggest that any of the aspects of the flowsheets embodied in the relevant claims form part of the substance of the invention. In particular when this point was raised at the hearing the applicant submitted:
“Each of the flowsheets is a function of the nature of the upgradability of the material and the characteristics of the dry sorter… The patent specification is addressed to the skilled person… The skilled person would see that each of these process flowsheets is focussed on a particular particle size distribution and other factors that are relevant to the upgradability of the material, and would have no difficultly at all with that proposition.”
50. With no reference in the specification to the nature of input material or dry sorter characteristics, the disclosure of the specification and the applicant’s submissions suggest to me that the alleged contribution to the art made by the invention disclosed in the specification must not be in regard to the arrangement of steps of the dry sorting processes that are defined in claims 7-21. Each of these claims simply presents an ordering of steps that have no clear material or technical advantage on the face of the specification. While the claims are not limited to particular particle size ranges, the figures themselves do present such ranges (see for example figure 2). However, no reasoning is present in the specification as to why certain sizes may be preferred for certain flowsheets particularly in the context of process parameters. It appears to me that the person skilled in the art would consider the alleged ingenuity of the invention to not lie in appended claims 7-21 but instead the scheme articulated in the independent claims.
51. I find the appended claims do not add subject matter that would alter my finding regarding the patentability of the independent claims.
52. Therefore I find the subject matter of claims 1-25 is not directed towards a manner of manufacture as being, in substance, a mere scheme.
Patentability on the face of the specification
53. The opponent argued in general that:
“…it is clear on the face of the specification that dry sorting of ore particles, size reduction (by crushing) and size separation (by screening) must all be taken to have been well-known processes prior to the priority date. The specification clearly assumes that a person skilled in the art is familiar with all of these processes.”
54. I do not have any issue with the points raised by the opponent in this submission. In fact, it is consistent with my finding under the ground of full description, that the general use of techniques such as dry sorting, crushing, and screening is uninventive on the face of the specification. Importantly however, the generic steps described in this general submission by the opponent do not reflect what is claimed. Relevant subject matter in the claims includes features of determining whether a volume of material is upgradable by assessing the grade of material and other factors including whether the material can be dry sorted into streams that are above or below a threshold grade. Furthermore independent claims are limited in various ways to determinations to upgrade low or waste grade material, or to upgrade either material that is yet to be mined, or material in a stockpile. At this point I make reference to the specification at pages 1 and 2 where it is stated that as currently performed in the art:
“It is known to mine iron ore in large blocks of the ore from benches. Typically, the blocks of ore are substantial, for example 40 m long 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 grades 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. When the analysis is completed, a blockout plan of the section is prepared. The plan locates the drilled samples on a plan map of the section. Regions of (a) high grade, (b) low grade or (c) waste material are determined by sample analysis (such as chemical assay and/or mineral/material type abundances) and are marked on the plan, with marked boundaries separating different regions. The boundaries are also selected having regard to other factors, such as geological factors. The regions define blocks to be subsequently mined. Each block of ore is blasted using explosives and is picked up from a mine pit and transported from the mine pit. The ore is processed inside and outside the mine pit depending on the grade determination for each block. For example, waste ore is used as mine fill, low grade ore is stockpiled or used to blend with high grade ore, and high grade ore is processed further as required to form a marketable product.
The further 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. The processing may be wet or dry.”
55. Reading this part of the specification it is clear that an assessment of grade occurs for material that is to be mined, and that that material is subsequently mined. It is also clear from the specification that dry sorting to discard undesirable “lower grade” material from high grade material is generic in the art. However, not taught by the specification as being already known or obvious is the making of a determination that “to be mined” material (i.e. unmined material sitting in-situ) can be dry sorted on the basis of grade. Additionally there is no teaching that assessment and sorting of a stockpile is already known in the art. At best, the specification teaches that high grade material that has been mined is dry sortable for the purpose of upgrading. It says nothing of when and upon what stage of material such a determination of sortability is made in the art. There is also no admission that it is known to dry sort low grade or waste material on the basis of grade.
56. The applicant submitted that:
“… the opponent has filed no evidence and the inferences in the specifications as to what was known or done in the art do not amount to admissions or concessions about what was ‘well known’, ‘generally known’, or common general knowledge.”
57. This is true. Without any evidence as to the construction a person skilled in the art would apply to the specification I cannot consider the present specification self admits a lack of the necessary qualities of inventiveness. There is no suggestion in the specification that the claimed invention is not new or inventive.
58. Therefore, the opponent’s opposition to the claimed invention on this basis of patentability fails.
Are the claims directed towards mere working directions?
59. As noted above, mere working directions do not comprise a manner of manufacture. Here a variation will be a “mere” variation in the working of existing apparatus only if it involves no inventive ingenuity. Without expert evidence to convince me that any working directions are “mere” working directions, this argument also fails.
Novelty
For the purposes subsection 7(1) of the Patents 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 prior art information.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at [235]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]).
I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at [576]:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
Documents D1-D11 were raised by the opponent as depriving the claimed invention of novelty. A listing of these citations, as provided by the opponent in their submissions, can be found as an annex to this decision. Document D1 appears to be discussed in the opponent’s submissions as representing the closest prior art. The primary submissions of the applicant were made in relation to document D1 with the same comments being said to apply to other documents. Here the applicant submitted:
“D1 does not disclose the combination of method steps defined in claim 1 of (a) determining whether a volume of material to be mined or that is already mined and stockpiled is ‘upgradable’ and (b) dry sorting the material that is determined to be ‘upgradable’. In addition, D1 does not disclose the specific method steps defined in dependent claim 10 and the method steps defined in claims 11-21 that are dependent directly or directly (sic) on claim 10. In addition, D1 does not disclose the focus on “low grade material or waste material” defined in independent claims 24 and 25, with particular relevance to iron ore.
No particular detailed submissions were provided as to why claims were novel except for the submission provided at the hearing where the applicant stated:
“[The documents] are talking about sorting run of mine material… All of the citations are predicated on taking everything that’s mined, and sticking it through a sorter. That’s not what we claim. We say we don’t want to do that … We want to determine that material, particularly low grade material that is graded, and we want to dry sort that.”
The opponent makes submissions that claim 1-11, 14 and 22-25 lack novelty. I have reviewed the submissions of the opponent with respect to all documents and claims but will focus primarily upon documents that lead to a lack of novelty in certain claims, providing comment with respect to other documents where necessary. Absence of comment regarding a claim, with respect to a particular document, can be taken as a finding that the claim is found to be novel in view of that document.
Claim 1
Document D1
Document D1 and the references identified therein by the opponent point to a disclosure of dry sorting of materials using techniques of electronic selection (page 7-5). On this page there is brief discussion of traditional hand-sorting (sorting by eye and hand) processes before reference is made to the fact that modern electronics have enabled more automated processes to become common place. It is clear from the discussion on page 7-5 that dry sorting material that has been mined for the purpose of “concentrating” and producing more valuable material is known.
After discussing various techniques for electronic dry sorting, pages 7-20 and 7-21 discuss general considerations for such dry sortability. Here the document states:
“For practical mineral sorting three conditions are necessary. (1) The proposed feed must contain some particles sufficiently rich in the valuable constituent and other particles sufficiently low in the valuable constituent to permit an adequate concentration of the valuable material or an adequate removal of the nonvaluable material. (2) The valuable or nonvaluable particles must be coarse enough for sorting equipment to effect the desired separation at an acceptable rate. (3) Some detectable characteristics or combination of properties must be present to allow a discrimination of the valuable from the nonvaluable material.
…
Optimum sorting size will depend upon: (1) the nature of the deposit and the minerals involved, (2) the sorting method employed, and (3) the objectives to be satisfied by the sorting.”
Document D1 discloses the determination of whether a volume of material to be mined is upgradable. Here, the document clearly envisages recovery exercises where lower grade deposits are preconcentrated. This necessarily involves assessment of to be mined material. In this regard, the opponent points to pages 7-20 to 7-22 whereby at various places it is stated that:
“Sedimentary deposits containing either high-grade or impure layers may provide good sorting prospects, depending upon the thickness of the bands and other geological features. During the mining and crushing of such deposits there will be a tendency to fracture along the bedding planes with the generation of relatively homogenous fragments and a minimum of mixed mineral fragments.
With vein or similar deposits providing irregular or segregated mineralization the sorting prospects become variable. Material from each deposit must be treated as an individual case. It must be examined to see if there is a sufficient preponderance of the valuable constituent in enough pieces of sortable size, a sufficient lack of this constituent in enough others, and the extend of mixed or ‘middling’ pieces. A high proportion of middling pieces generally will make a sorting type system impractical.”
…
“A low or marginal grade deposit could be made acceptable through high-capacity low cost sorting.”
…
“An assessment of sorting as an adjunct to the solution of a mineral recovery problem would involve: (1) a decision as to whether it would materially help the situation. (2) an examination of the technical feasibility, and (3) consideration of economic factors.”
Document D1 also discloses the determination of whether material in a stockpile of mined material is upgradable at page 7-22 where reference is made to waste dumps as follows:
“Waste dumps or low grade rejected in selective mining may be sorted to recover residual mineral values.”
In terms of determining dry sortability there is necessarily a determination of grade disclosed as per above, and also disclosed is a determination of whether dry sorting is possible above and below a threshold grade. At page 7-21 there is a discussion of ore deposit characteristics necessary such that ore is amenable to dry sorting. More specifically, document D1 discloses that:
“When sorting is to produce one or more finished products, the object is concentration. This requires that the feed contain sufficient pieces in a sortable size range, which are of a grade equal to or above that of the desired product, to make sorting worthwhile”
Considerations such as whether sorting would materially help the situation, technical feasibility, and economic factors constitute “other factors” that form part of the determination as to whether material is upgradable. However I note that “other factors” may be construed as broadly as a simple consideration that relevant material has commercial value.
Importantly, the applicant’s submission as articulated at the hearing is not of relevance because there is no limitation present in claim 1 that precludes “run of mine” processing. In any event document D1 is clearly not limited to “run of mine” processing.
Therefore claim 1 lacks novelty in view of D1.
Document D3
Document D3 discloses a method of dry sorting to be mined material via radiometric sorting of low grade deposit after it is mined (page 2 ‘Abstract’ and ‘Introduction’). To be mined material is assessed for grade by taking drill core samples and performing tests wherein the tests determine sortability in terms of cut-off grade (page 4 paragraph 1). Economic considerations are taken into account as part of this determination (page 4 paragraph 1). Figure 9 demonstrates that run of mine ore is sorted and an upgraded product material is produced.
Therefore claim 1 lacks novelty in view of D3.
Other documents
Claim 1 is also disclosed in: D2 (page 261 under heading ‘Introduction’, page 262 under heading ‘Ore Characteristics’, page 264 column 2 and ‘Feed grade’, ‘Accept grade’, ‘Reject grade’); D4 (page 1 under heading ‘The Model 16 Sorter’, page 3 under heading ‘Economic Considerations’, page 2 under heading ‘The Data Processing System’); D5 (page 420 paragraph 1, page 421 under heading ‘Upgrading by Radiometric Sorting’); D6 (page 781 paragraph 2, figures 1 and 2, pages 783-785 under the heading ‘Benefits of Sorting’ in particular items 3-7); D7 (page 798 under heading ‘Methods in Electronic Sorting’ and page 812 under heading ‘Summary’); D8 (page 1 under heading ‘Introduction’ and last paragraph to page 2 second paragraph, page 4 second last paragraph); D9 (page 1 paragraph 6, first paragraph under heading ‘Ore sorting options’, pages 4 and 5 under heading “Ore sorting economics’); D10 (page 1 paragraph 1 under heading ‘Abstract’, page 284 column 1 items (a) and (b), page 292 under headings ‘Developing Low Grade Deposits’, ‘Reclaiming Low Grade Stockpiles or Waste’); D11 (page 6 under heading ‘Waste Removal’).
Claim 2
Claim 2 adds to claim 1 in that it involves determining whether the volume of material is low grade or waste grade. This feature is disclosed in document D1 as per the discussion above.
Therefore claim 2 lacks novelty in view of D1.
Claim 2 is also disclosed in: D2 (page 262 column 1 ‘low head grade’, page 265 under heading ‘Sizing of Sorters’); D3 (page 2 under heading ‘Introduction’ discusses low grade ore); D4 (page 3 under heading ‘Development of Low-grade Deposits’); D5 (page 420 paragraph 1 which mentions ‘lower grade deposits’, page 421 under heading ‘Upgrading by Radiometric Sorting’); D6 (pages 783-785 under the heading ‘Benefits of Sorting’ in particular item 7); D8 (page 4 second last paragraph); D9 (first paragraph under heading ‘Ore sorting options’); D10 (page 292 under headings ‘Developing Low Grade Deposits’, ‘Reclaiming Low Grade Stockpiles or Waste’); D11 (page 6 under heading ‘Waste Removal’, in particular ‘recovery of previously uneconomical material from existing waste stockpiles’).
Claims 3 and 4
Claims 3 and 4 add the features to claims 1 or 2 whereby a plurality of samples are taken from the volume of material (be it in-situ or when in stockpile) and these samples are analysed. Claim 3 is disclosed in document D3 at page 4 paragraph 1 where the taking of diamond drill cores from different regions of the deposit is disclosed. There is no disclosure in document D3 in regard to taking samples from a stockpile as required by claim 4.
Claim 3 is also disclosed in: D2 (page 261 paragraph 5, page 264 under heading ‘Prediction of Sorter Performance’, page 267 under heading ‘Conclusion’); and D8 (page 1 last paragraph to page 2 second paragraph).
Therefore claim 3 lacks novelty, but claim 4 is considered novel.
Claim 5
Claim 5 adds the feature to claim 1 of dual energy x-ray analysis for dry sorting. Document D9 is the closest prior art in this instance and discloses the use of x-ray sensors and in-particular, dual x-ray technology similar to luggage scanners, to perform sensing for sorting (page 2 paragraph 5). This use is taught to be for materials of high atomic number for separating heavy from lighter elements such as galena from sphalerite, and ash from coal. The teaching is generic in terms of what starting material is sorted using such scanning technology. Hence there is no clear direction to using dual energy x-ray sensors in the context of either stockpile sorting, or sorting of to be mined material as claimed.
Remaining documents disclose nothing more than single energy x-ray analysis.
Therefore claim 5 is novel.
Claim 6
Claim 6 adds the feature to claim 1 of dry sorting on the basis of grade. As per the discussion above in respect of D1, particles rich in valuable constituent are dry sorted from particles sufficiently low in valuable constituent. The particles are dry sorted on the basis of grade.
Therefore claim 6 lacks novelty in view of D1.
Claim 6 is also disclosed in: D2 (page 261 under heading ‘Introduction’, page 264 column 2 ‘Feed grade’, ‘Accept grade’, ‘Reject grade’); D3 (page 4 under heading ‘Radiometric Ore Sorting’, ‘cut-off grade’); D4(page 2 under heading ‘The Data-Processing System’); D5 (page 421 under heading ‘Upgrading by Radiometric Sorting’); D6 (page 781 paragraph 2); D7 (page 798 under heading ‘Methods in Electronic Sorting’); D8 (see above and also page 3 under heading ‘Rock Separation’); D9 (first paragraph under heading ‘Ore sorting options’); D10 (page 1 paragraph 1 under heading ‘Abstract’, page 284 column 1 items (a) and (b)); D11 (page 6 under heading ‘Waste Removal’, in particular paragraph 2 and associated dot points).
Claims 7-9
Claim 7 adds the features to claim 1 whereby a stockpile of particles is of the correct size distribution required for a product and requires no size reduction prior to sorting, where dry sorting comprises a first dry sorting step that selects material on the basis of a first grade determination and a further dry sorting step or a series of such steps on the material selected in the first dry sorting step (claims 8 and 9 append to claim 7). The opponent points to document D1 at page 7-22 items 3-6, in particular:
“3) In some situations a salable product may be obtainable and the remainder separated into a retreatable middling and waste.
4) It may be practical to recover a salable product and to retreat the remainder by additional sorting or some other processes.”Here, the disclosure does not provide a clear direction that the particle size distribution relates to material in a stockpile that has a particle size distribution required for a product. Further, the disclosure seems to merely suggest the further sorting of rejected material and not the further sorting of material selected in a first step. Similar can be said of the disclosure of the other citations.
Claims 7-9 are novel.
Claims 10, 11 and 14
Claim 10 adds the features to claim 1 whereby the volume of material contains oversized product and dry sorting involves first reducing size in a size reduction step by crushing for example, followed by a size separation step that separates material into a required product size distribution for a product and an oversize material (claims 11 and 14 append to claim 10). It is considered that figure 9 of document D3 provides a disclosure of claims 10 and 14. Figure 9 is reproduced below and its contents is discussed on pages 7 and 8 under the heading ‘A Proposed Flowsheet’.
Here run of mine material is sorted in accordance with the previously described sorting methods, but it is crushed and screened before it is sorted. Undersized and oversized fractions are produced. Both of these fractions are required product size distributions forming part of an industrial process. Here the end product of U3O8 constitutes material formed from the undersize fraction and oversize fractions of the screening step. In the flowsheet of figure 9, dry sorting is performed on the oversize fraction from the size separation step as required by claim 14. Document D3 fails to disclose dry sorting of material that is not the oversized material as required by claim 11.
Therefore, claims 10 and 14 lack novelty in view of document D3. Claim 11 is novel.
Claims 10 and 14 are also disclosed in document D4 (page 4 under headings ‘Crushing Costs’ and ‘Preparation’, and also Table 2).
Claims 12, 13 and 15-21
The opponent did not present any submissions regarding these claims. Reviewing the citations I find no disclosure of these features.
Therefore, claims 12, 13 and 15-21 are all novel.
Independent claims 22-25
As I noted earlier in this decision, independent claim 22 differs from claim 1 in that the material is initially limited to material to be mined and that said material is subsequently mined. Alternatively claim 23 is limited to material in a stockpile. Claims 24 and 25 differ respectively from claims 22 and 23 in that the initial volume of material would otherwise be classified as low grade or waste material.
100.I make reference to the disclosure of D1 discussed with respect to claim 1. There is clear disclosure in D1 of dry sorting whereby a deposit is determined to be low or marginal grade. Document D1 also discloses dry sorting where a stockpile such as a waste dump or rejected low grade material is sorted to recover mineral value. There is therefore a disclosure of a determination of low or waste grade that is made in respect of either “to be mined” or “mined” material as required by identified claims.
101.Therefore claims 22-25 lack novelty in view of D1.
102.Documents D6 and D8-D11 also disclose each of claims 22-25 (see citation references identified above).
103.Claims 22 and 24 are also disclosed in D2, D3, D4, and D5 (See citation references identified above). These citations contain directions to “run of mine” sorting but not necessarily to stockpile sorting as required by claims 23 and 25.
104.Claim 22 is also disclosed in D7 (See citation reference identified above). There is no disclosure of low or waste grade material or stockpile sorting as required by claims 23-25.
Summary
105.I find that claims 1, 2, 3, 6, 10, 14 and 22-25 lack novelty.
Inventive Step
106.A test for obviousness was provided by Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at [286] as follows:
“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.”
107.The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]-[53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187] in which Graham J had posed the question:
“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]?”
108.The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
109.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. Documents D1- D11 provided as evidence by the opponent are all non-patent literature documents. Some are extracts from particular books; some are journal articles; while others are conference papers.
110.No declaratory evidence has been provided by the opponent from any skilled persons in the art. Given this, while it is clear that the documents would be understood and regarded as relevant by a person skilled in the art, the opponent has failed to discharge their onus in demonstrating they could have been reasonably ascertained. Furthermore, there is no evidence as to the common general knowledge in the art.
111.It follows that I cannot consider the documents any further regarding the ground of inventive step. Having no evidence of common general knowledge before me it follows that I must find the claims inventive.
Conclusion
112.I find none of the claims are directed towards a manner of manufacture. The absence of evidence from any persons skilled in the art primarily prevents me from finding that claims are not fully described or are obvious. The opposition is successful because claims 1, 2, 3, 6, 10, 14 and 22-25 lack novelty.
113.I herein provide a period of two (2) months from the date of this decision for the applicant to propose amendments, as I do not consider it clear from the information before me that there is no patentable subject matter that could potentially be claimed. For example, a sorting process characterised by particular parameters such that a material or technical advantage is present may be patentable.
114.Absent any amendments and subject to appeal, I will proceed to refuse the application
Costs
115.The opponent has been successful. The applicant argued that:
“…the case presented by the opponent could have been presented in a request for re-examination of a patent granted on the subject application. The opponent has chosen to rely on opposition proceedings that have delayed the grant of a patent. The applicant understands that is the right of the opponent to present his case as he considers appropriate to do so. The submission of the applicant is that the applicant is entitled to recover costs in relation to the decisions of the opponent to select an opposition option that is no more than a form of re-examination and has delayed patent grant and placed an increased cost burden on the applicant.”
116.It is the case that the opponent has not filed any evidence beyond documents D1-D11. In fact, these documents were relied on as being filed in the statement of grounds and particulars (by way of a direction of a delegate of the Commissioner of Patents) meaning the opponent did not take the usual advantage of the opportunity to file evidence in support. However on this note, the applicant chose to file no evidence in answer to these documents.
117.I do not have any information as to the motivations of the opponent in taking their course of action. Nonetheless it appears entirely reasonable to me that an opposing party might prefer a pre-grant validity proceeding to the alternative of challenging a patent after grant by means of either re-examination or in invalidity proceedings before a Court. As noted by the applicant, it is the opponent’s right to present their case as they see appropriate. It was also the applicant’s right to file evidence answering not only to these documents, but also the contents of the statement of grounds and particulars. The applicant chose not to file any such evidence.
118.I see nothing unusual or untoward in relation to the opponent’s actions. On the basis of the information before me, I see insufficient grounds to depart from the usual practice of awarding costs against the unsuccessful party.
119.Therefore, I award costs in accordance with Schedule 8 of the Patent Regulations against the applicant.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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