Re: Rio Tinto Alcan International Limited v Innovatherm Prof. Dr. Leisenberg GmbH+Co.KG
[2016] APO 21
•27 April 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rio Tinto Alcan International Limited v Innovatherm Prof. Dr. Leisenberg GmbH+Co.KG
[2016] APO 21
Patent Application: 2010320998
Title:Method and device for producing anodes
Patent Applicant: Innovatherm Prof. Dr. Leisenberg GmbH+Co.KG
Opponent: Rio Tinto Alcan International Limited
Delegate: Dr N.R. Madsen
Decision Date: 27 April 2016
Hearing Date: 24 March 2016, in Canberra
Catchwords: PATENTS – method of operating an annular kiln involving primary and secondary air feeds and positioning of the secondary air feed – section 59 – opposition to grant of a patent – clarity, full description, whole of contents novelty – claims are clear – specification is fully descriptive – claims are novel – opposition unsuccessful – costs awarded against the opponent
Representation: Patent applicant: Did not appear
Opponent: Dr Andrea Ruhrmann, Patent Attorney from Spruson & Ferguson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010320998
Title:Method and device for producing anodes
Patent Applicant: Innovatherm Prof. Dr. Leisenberg GmbH+Co.KG
Date of Decision: 27 April 2016
DECISION
The opposition is unsuccessful. Subject to any appeal I direct the application proceed to grant.
I award cost in accordance with Schedule 8 of the Patent Regulations against the opponent.
Background
This matter relates to patent application 2010320998 in the name of Innovatherm Prof. Dr. Leisenberg GmbH+Co.KG (the applicant), filed on 15 November 2010. The application claims priority from German patent application number DE 102009046937.0 and has an earliest priority date of 20 November 2009.
The application was advertised as accepted on 7 August 2014. A notice of opposition to grant of a patent was filed on 7 November 2014 by Rio Tinto Alcan International Limited (the opponent). This notice was followed by a statement of grounds and particulars on 5 February 2015. Evidence in support, answer and reply was all filed without the necessity for any extensions of time.
The opponent was represented by its patent attorney at the hearing. The applicant did not appear, and did not make any written submissions. The opponent pressed grounds that the claimed invention was not clear or novel, and that the specification failed to provide a full description of the claimed invention.
The request for examination of the patent application was filed on 22 November 2012. As a consequence, substantive amendments of 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 amendment to 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 Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
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 Evidence
Evidence consists of:
Evidence in support in the form of a declaration by Francois Morales dated 30 April 2015 and 2 supporting exhibits (FM-1 and FM-2)
Evidence in support in the form of a declaration by Gregory Michael Turner dated 4 May 2015 and 6 supporting exhibits (GMT-1 to GMT-6)
Evidence in answer in the form of a declaration by Robert William James Finzi dated 5 August 2015
Evidence in reply in the form of a second declaration by Francois Morales dated 28 September 2015
The Specification
The invention described in the specification relates to the production of anodes in an annular kiln. Such anodes are required for fused-salt electrolysis for the production of primary aluminium. A kiln may comprise a series of zones through which “green” or “raw” anodes to be sintered are fed. These raw anodes are formed from petroleum coke with the addition of pitch as a binding agent. A first stage is a heating phase conducted in a heating zone. This is followed by sintering or “firing” in a firing zone to temperatures of approximately 1100°C. The anodes then pass to a cooling zone. Each zone is comprised of a plurality of kiln chambers formed as heat exchangers which receive anodes to be fired. Air is fed into the cooling zone by means of an air feeding device. This air passes through the kiln from the cooling zone into the firing zone before being discharged from the heating zone in the form of flue gas by an exhaust device. (paragraphs 1 and 2 of page 1)
The specification discusses in paragraph 3 of page 1 that the progression of the heating of raw anodes during the heating phase is very important to the quality of anodes produced by sintering. It further notes that the heating gradient is determinative of the level of crack formation in high density anodes, in particular in open annular kilns. The present invention seeks to overcome these issues by means of a secondary air feeding device feeding air into the heating zone upstream of the exhaust device. The secondary air feeding device allows selective influencing of the heating gradient in the heating zone. Further, the specification notes at paragraph 4 of page 3 that it is also advantageous to position the secondary air feeding device as a function of at least one process parameter. For example, at the start of the firing cycle the secondary air feeding device may be positioned as far away as possible from the firing zone within the heating zone wherein at the end of the cycle the secondary air feeding device may be arranged in close proximity to the firing zone.
Figure 1 provides a depiction of the described invention.
Figure 1 shows an annular kiln 10 comprising plural kiln units 11. A kiln unit has kiln chambers 12 combined in different numbers to form a heating zone 13, firing zone 14 and cooling zone 15. Within the kiln chambers 12 are cavities defined on either side by heating channels extending in the longitudinal direction of the kiln unit. The heating channels are interconnected fluidically in the longitudinal direction of the kiln unit. A number of devices are arranged with respect to kiln chambers 12 and zones 13-15. In operation the zones are advanced together with the devices in a direction of circulation being from right to left of the figure.
Three firing devices 19 are provided in the firing zone each assigned to a kiln chamber 12. Cavities are equipped with raw anodes that are fired by means of the temperature applied to air circulating in the heating channels by the firing devices to approximately 1100°C, thus producing sintered anodes. The cooling zone 15 located to the right of the firing zone has six chambers in which sintered anodes are cooled using air from a primary air feeding device 21. An exhaust device 22 is arranged in the heating zone 13 to the left of the firing zone 14 for removal of heated air that has flowed from the cooling zone, through the firing zone and further, through the heating zone. Here the primary air feeding device and the exhaust device operate with suitable regulation and control mechanisms so that a predefined progression of temperature over time is reached in the heating channels, supplemented by a controlled fuel feed of the firing device (page 7, paragraph 4).
As discussed in paragraph 1 of page 8, a secondary air feeding device 24 is arranged in the heating zone to assist in controlling the heating parameters in the heating zone. The secondary air feeding device is provided with a measuring device 25 which can measure parameters such as temperature and vacuum in the heating zone. A control device 26 can receive input variables from the measurement device to control the air volume flow introduced into the heating zone via the secondary air feeding device 24. Also discussed at paragraph 4 of page 3 of the specification, the secondary air feeding device may be positioned as a function of at least one process parameter.
The claims
The specification ends in 11 claims whereby claims 1 and 8 are independent as follows:
1. A method for producing anodes in an annular kiln, comprising at least one kiln unit ("fire") having a heating zone, a firing zone, and a cooling zone, each having a plurality of kiln chambers which are interconnected by heating channels, are formed as heat exchangers and are used to receive anodes, in said method primary air being introduced into the cooling zone by means of a primary air feeding device for the passage of air through the kiln unit and, once it has passed through the firing zone, being discharged from the heating zone as flue gas by means of an exhaust device,
characterised in that
secondary air is fed into the heating zone in the direction of the primary air flow, upstream of the exhaust device, by means of a secondary air feeding device and said secondary air feeding device is positioned as a function of at least one process parameter.
8. An air feeding device for an annular kiln for producing anodes,
characterised in that
a secondary air feeding device for introducing secondary air into a heating zone of the kiln unit is also provided in addition to a primary air feeding device for introducing primary air into a cooling zone of a kiln unit and whereby the secondary air feeding device is provided with a positioning device for changeable positioning of the secondary air feeding device in the heating zone.
Clarity
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The opponent raised objections as to a lack of clarity primarily in regard to claims 1 and 8.
Claims 1 and 8: Primary and secondary air feeding devices
The opponent submitted:
“Claim 1 and claim 8 (and the dependent claims by virtue of at least their dependency on claim 1 or claim 8) each lack clarity on the basis of the terms ‘primary air feeding device’ and ‘secondary air feeding device’. In paragraphs 38 and 39 of his first Declaration, Mr Morales explains that each of these terms could be understood as being either a conduit to feed primary air or secondary air respectively, or they could be understood as requiring the device to actively feed the primary air or secondary air respectively, or they could be understood as requiring both. The specification of AU2010320998 provides no guidance to the skilled person. The meaning of these terms is unclear and the scope of claims 1 and 8 cannot be properly determined as a result.”
Regarding claim 1, a primary air feeding device is characterised in the claim as being something which introduces air into the cooling zone. Beyond this the claim applies no particular limitation. Similar can be said for the secondary air feeding device in claim 1 which is characterised as being something which feeds air into the heating zone in the direction of the primary air flow, upstream of the exhaust device. Similar characterisations apply to the air feeding devices of claim 8.
While the claim is broadly drafted in that it provides no particular form for the air feeding devices as pointed out by the opponent’s submission, this does not render the claims unclear. In this sense, the air feeding devices could either be a conduit or something which actively feeds air. If a person was seeking to determine whether what they proposed to do fell within the ambit of the claims they need only determine if air feeding devices were characterised as introducing air into the cooling zone or feeding air into the heating zone, in the manner claimed. Therefore, while broadly couched, the claims are clear.
Full Description
The test for sufficiency of description regarding 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 at [25]:
"... will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?”
Clearly, as pointed out by the opponent, 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 argued that the description is not sufficiently descriptive pointing to a number of claims suggesting that there is no described embodiment of the subject matter of those claims. With particular reference to claims 1 and 8 the opponent argued:
“In paragraph 30 of his first Declaration, Mr Morales sets out his view that there is no embodiment described in the specification of the primary air feeding device or of the secondary feeding device of claims 1 to 11. Furthermore, the feature is disclosed only schematically in Figure 1 and his view is that this disclosure does not enable him to implement the feature of the primary air feeding device or the secondary air feeding device of the claimed invention.”
“In paragraph 34, Mr Morales sets out his view that there is no embodiment described of the subject matter of claim 8, of a positioning device for changeable positioning of the secondary air feeding device in the heating zone, that there is no information concerning this feature in the Figures and that the specification as a whole does not provide him with enough information for him to construct the device described in claim 8.”
Similar arguments were made with respect to the subject matter of claims 2, 6, 7, 9 and 10.
The fact that there is no particular embodiment disclosed for the relevant claimed features, does not in itself render a specification as failing section 40(2)(a). It is the case that to find the specification as being lacking in full description, it must be clear to me that the addressee of the specification could not produce something within each claim without invention or prolonged study. This follows from the fact that in opposition matters the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue.
In the present matter, the opponent simply asserts by way of evidence of Mr Morales that there is insufficient disclosure for implementation of the invention. The evidence does not indicate what difficulties would be faced or what new invention would be required. On the face of the claimed features which are broadly presented, it appears to me highly reasonable that for example, a person skilled in the art could implement a primary and secondary air feeding device without further guidance. I also see no reason why a person skilled in the art could not implement a positionable secondary air feeding device without further guidance. I see no reason why each of the claimed features is not enabled by the disclosure which is addressed to a person skilled in the art of annular kiln engineering. The opponent provides insufficient evidence to discharge their onus in regard to this ground.
Therefore I find the specification complies with section 40(2)(a).
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.”
The prior art base, as defined in Schedule 1 of the Patents Act, includes information contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
The following document was raised as depriving the claimed invention of novelty, as a whole of contents novelty citation having Australian application number AU 2010244307:
· WO 2010/128226 A1 (Alcan International Limited) 11 November 2010
I have reviewed this document (exhibit GMT-2 being the verified English translation of published PCT application PCT/FR2010/000413) and the identified priority document FR 09/02895 (exhibit GMT-4 being the verified English translation of the French application), and am satisfied that the relevant information is entitled to a priority date (15 June 2009) earlier than that of the opposed application. I also note that the opponent’s submissions regarding novelty were made in relation to exhibit FM-1 which is a later version of the document incorporating amendments made after the priority date of the opposed application. Given this my analysis will be formulated in regard to exhibit GMT-2.
The document discloses a ring (annular) furnace and control process for the preparation of carbon anodes used in the production of aluminium by electrolysis. Figure 3 of the document demonstrates key features of the disclosed furnace.
The furnace of figure 3 comprises at least one kiln unit (elements BL, HR, PN) comprising a heating zone (PN, a natural preheating zone), a firing zone (HR, a heating zone under three heating ramps 21-23, where ignition and combustion of fuel occurs) and a cooling zone (BL, blowing zone where already baked anodes are cooled by an inflow of air). Each of these zones has a plurality of chambers which are interconnected by heating channels and are formed as heat exchangers used to receive anodes. In this regard, page 17 lines 23-30 and page 18 line 6 state:
In each chamber C hollow partitions 4 are provided, placed longitudinally, forming between them extended cells 5. Each chamber C therefore comprises several partitions 4a to 4i, as illustrated in figure 2.
Partitions 4 include thin side walls 6, generally separated by tie bricks 7 and baffles 8. The ends of the hollow partitions comprise openings 10 and are embedded in notches 9 of the transverse walls 3. These notches 9 are themselves provided with openings 10` located opposite openings of partitions 4, in order to allow the gasses circulated in partitions 4 of one chamber C through to the following chamber.
…
In cells 5 raw carbonaceous bocks 17 are piled up, i.e. anodes to be baked…
Also disclosed in figure 3 is a primary air feeding device introducing air into the cooling zone (comprising an upstream blowing ramp item 19 and blowing legs 20). Air from the primary air feeding device passes through the blowing zone BL, through the heating zone HR, and then through the natural preheating zone PN. Air is then discharged from the natural preheating zone via a suction device 12, 13 involving a suction ramp and suction legs. Figure 4 also shows that the furnace includes a secondary air feeing device for feeding air into the preheating zone in the direction of the primary air flow upstream of an exhaust device. See for example, item 11` of figure 4 showing a secondary air inlet being an open peephole upstream of suction device 12, 13. Multiple peep holes are located in the zones. All peepholes in figure 4 are closed except for peephole 11`, and those bearing measurement device 27 and suction device 12, 13.
There appears to be no contention that all features of claims 1 and 8 are disclosed except for: the feature of claim 1 whereby said secondary air feeding device is positioned as a function of at least one process parameter; and the feature of claim 8 whereby the secondary air feeding device is provided with a positioning device for changeable positioning of the secondary air feeding device in the heating zone.
Claim 1
The opponent submitted in regard to the feature of claim 1 whereby said secondary air feeding device is positioned as a function of at least one process parameter that (I note the references identified in relation to FM-1 correspond to those in GMT-2):
“The secondary air feeding device of Exhibit FM1 includes a flexible sleeve 50 provided with a system of valves 52 or special air intake systems as described on page 28, lines 4 to 8 and lines 16 to 21 and in Figure 7 of Exhibit FM1. The position of the degassing front is a process parameter. As a function of this process parameter, the position of the secondary air feeding device of Exhibit FM1 is chosen (the flexible sleeve is provided with the valve system 52 and fitted on the opened peephole 11’ placed directly downstream of the measurement ramp) to obtain a degassing front close to the suction ramp at the end of the cycle, see page 23, lines 21-23 and 28-30.”
Figure 7 is reproduced below showing the secondary air feeding device comprising valve 52, flexible sleeve 50 and open peephole 11`. The secondary air feeding device is located within the preheating zone PN1, upstream of the exhaust device 12, 13. As successive cycles are carried out in the furnace, each chamber successively moves through the phases of heating, firing and cooling. This means that various components, such as the blowing ramp (primary air feeding device), suction ramp (exhaust device), measurement device 27 and the valve and flexible sleeve 52, 50 may be moved in accordance with the moving of the heating system to successive chambers. As pointed out by Mr Morales in his evidence in reply at [10], the document discloses the flexible sleeve 50 being borne by a ramp (page 28 lines 29-21).
The document teaches the presence of multiple peepholes within the zones and adds that the particular peephole to be opened can be chosen as a function of the location of a degassing front (this being a process parameter). In this regard at page 26 lines 16-19 of GMT-2 it is stated that:
…the peephole to be opened and therefore the location of the limit between the first natural pre-heating zone and the second natural pre-heating zone may depend on the desired regulation criteria, in particular in terms of the location of the degassing front.
The opponent adds that the document:
“…teaches the skilled person to change the position of the peephole 11’ to be opened, which corresponds with the flexible sleeve 50 and valve system 52 of the secondary air feeding device of claim 1. Furthermore, the above paragraph of Exhibit FM1 teaches the skilled person to change the position of the peephole 11’ as a function of desired regulation criteria, including the location of the degassing front, which corresponds to a process parameter of claim 1.”
Turning to the feature of the claim in question being said secondary air feeding device is positioned as a function of at least one process parameter, it is clear that the entirety of the device, which feeds air into the heating zone upstream of an exhaust device in the direction of the primary air flow, is positioned as a function of a process parameter. This is the case due to the definition of “a secondary air feeding device”, and its characterisation as being changeably positioned. Being positioned as a function of a process parameter can only be construed as being that the location is changed as a process parameter changes.
The secondary air feeding mechanism described in the document involves a valve and flexible sleeve fitted to a peephole using a ramp. To move the location of secondary air feeding, a different peephole must be chosen. In this regard, a different secondary air feeding device is created by the movement of the valve, flexible sleeve and ramp to a new peephole. In other words, “said” secondary air feeding device of the document is not moved or positioned as a function of a process parameter. Instead a new air feeding device is created each time the disclosed system progresses to a heating cycle involving different chambers, or whenever a new peephole is chosen within the heating zone depending upon the location of the degassing front.
What the claim requires is a singular secondary air feeding device which may incorporate any particular components, which itself can be moved as a process parameter changes. Because each peephole of the document is stationary, it is not possible to change the location of the air feeding device as the air feeding device must include a peephole. As already noted the document essentially discloses a new air feeding device, which feeds air into a heating zone as claimed, being created each time a new peephole is chosen for secondary air flow. Therefore, the document fails to disclose said secondary air feeding device is positioned as a function of at least one process parameter.
It follows that claim 1 is novel in view of the document. Claims 2-7 add further features to those defined in claim 1 and are therefore also novel.
Claim 8
As identified above, the point of contention in relation to claim 8 is whether the document discloses that the secondary air feeding device is provided with a positioning device for changeable positioning of the secondary air feeding device in the heating zone. For reasons analogous to those already provided in regard to claim 1 there is no teaching in the document that the secondary air feeding device, which feeds air into the heating zone, is changeable in position. As the peepholes are stationary, there is no means to position the disclosed secondary air feeding device. A new air feeding device is essentially formed when relevant components of the document are combined with a new peephole.
It follows that claim 8 is novel in view of the document. Claims 9-11 add further features to those defined in claim 8 and are therefore also novel.
Conclusion
The opposition fails. The grounds of clarity, novelty and full description are unsuccessful.
Costs
The opponent has been unsuccessful in their opposition. I see no reason to depart from the principle that costs should follow the event. I was presented with no particular submissions as to the appropriateness or scale of an award of costs. I therefore simply award costs in accordance with Schedule 8 of the Patents Regulations against Rio Tinto Alcan International Limited.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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