Ricegrower's Co-Operative Limited v Richard Laurence Lewellin
[2000] APO 28
•4 April 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : Nos. 688126 in the name of Ricegrower's Co-Operative Limited
Title: Structural and Insulative Materials and Products
Action: Opposition under Section 59 by Richard Laurence Lewellin
Decision: Issued .
Abstract
The claimed invention is directed to the production of structural or insulative products in which a
binding agent including phenolic resin is added to rice hulls and then cured.
The use of phenolic resin binders for this purpose was disclosed in a number of patent
specifications brought to notice by the opponent, and is well known in the art. The opposition
therefore succeeds on the grounds of lack of novelty and inventive step. A number of section 40
defects were also identified. The ground of manner of manufacture could not be sustained as
there is nothing on the face of the specification to suggest that the threshold requirement of
inventiveness had not been met.
No patentable subject matter could be identified. Application consequently refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 688126 in the name of Ricegrower's Co-Operative Limited and opposition under Section 59 by Richard Laurance Lewellin
BACKGROUND
Patent application 688126 was filed on 26 October 1995 by Kenneth Lindsay Pagden as a further application of application 68923/94 which claims priority from provisional application PM3250 filed on 6 January 1994. The present application was advertised accepted on 5 March 1998 and is now proceeding in the name of Ricegrower's Co-Operative Limited .
Richard Laurance Lewellin filed a notice of opposition under section 59 on 5 June 1998 followed by a statement of grounds and particulars on 4 September 1998. Service of the opponent's evidence in support was completed on 3 December 1998. The applicant was granted an extension of time to 3 June 1999 in which to serve evidence in answer without objection. However, the opponent objected to the applicant's request for a further extension to 3 September 1999, and the matter was heard on 21 July 1999. In refusing to grant this further extension (see Kenneth Lindsay Pagden v Richard Laurence Llewellin[sic] [1999] APO 54 (20August 1999)), the delegate additionally held:
"As the applicant did not appear I am unable to determine whether the applicant has any evidence ready to serve. I find the circumstances in this case similar to those in Arbor (supra)* where the delegate found it inappropriate to allow even a short period within which such evidence might be served as was suggested in the Ferocem case (supra)**. Thus I do not allow time for serving of such evidence. The time for serving Evidence-in-Answer thus ended on 3 June 1999. As no Evidence-in-Answer has been served, there will be no need to serve Evidence-in-Reply. Therefore the substantive opposition will be set down for hearing as soon as possible."
* Arbor Software Corporation v Gentia Software PLC 42 IPR 169
** Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057
The opposition came to hearing in Canberra on 25 November 1999. In a letter dated 23 November 1999 Mr Russell Davies of Baldwin Shelston Waters advised that the applicant would not be taking part in the hearing, nor did they provide any written submissions on the matter. The
opponent was represented by Mr Michael J Grant, patent attorney of Patent Attorney Services, who appeared by telephone
THE SPECIFICATION
The specification indicates that the invention relates to moulded structural and insulative products which are formed from waste rice hulls.
Each year the processing of rice for human consumption involves the removal of millions of tonnes of rice husks or "hulls" which are difficult to dispose of since they are essentially waterproof and are particularly resistant to biodegradation. One means of disposal is to incinerate the hulls at high temperature to substantially reduce their volume. However, this is relatively energy inefficient, expensive, and leads to atmospheric pollution.
Some attempts have been made to use waste rice hulls constructively. They have, for example, been used as insulation in building cavities and other applications with limited success due to the lack of structural integrity of the raw product. In an attempt to address this problem, the rice hulls have been mixed with various binding agents such as those curable by RF (Radio Frequency) radiation in order to consolidate the individual rice hulls. However, this has also been found to be an expensive process which is not cost effective on a commercial scale. Moreover, to date, the end products from this and other similar techniques have been excessively weak and prone to "crumbling". More particularly, they have lacked the requisite structural integrity for use as a self-supporting structural or insulative material, which has substantially limited their applicability in many potential fields of use.
The specification then indicates that it is an object of the invention to overcome, or at least substantially ameliorate, one or more of the disadvantages exhibited by the prior art.
The specification ends with seventeen claims which are reproduced below:
"1. A method for producing a stable structural or insulative product from rice hulls, said method including the steps of:
adding a binding agent including phenolic resin to rice hulls; and
curing said binding agent;
such that said binding agent binds said rice hulls into a stable structural mass.
2. A method for producing a stable structural product according to claim 1, further including the steps of:
mixing said rice hulls with said binding agent;
pouring the resultant mixture into a mould cavity;
applying pressure to the mixture within the mould cavity; and
curing said binding agent under conditions of increased heat to produce a stable structural product in the shape of the mould cavity.
3. A method for producing a stable structural product according to claim 1 or claim 2 wherein said binding agent is cured by a curing agent containing methyl formate.
4. A method for producing a stable structural product according to any one of the preceding claims, wherein said rice hulls are mixed with said phenolic resin in a ratio of approximately 5:1 by mass.
5. A method for producing a stable structural product according to any one of the preceding claims, wherein a fibrous reinforcing material is added to said rice hulls and said binding agent before curing.
6. A method for producing a stable structural product according to any one of claims 2 to 5 wherein said increased temperature is in the range of 80 to around 150 degrees Celcius.
7. A method for producing a stable structural product according to claim 6 wherein said increased temperature is about 130 degrees Celcius.
8. A method for producing a stable structural product according to any one of claims 2 to 7 wherein said pressure is between 2 and about 75 PSI.
9. A method for producing a stable structural product according to claim 8 wherein said increased pressure is about 40 PSI.
10. A method for producing a stable structural product according to any one of the preceding claims, further including the step of applying a polyurethane coating to the cured product.
11. A method for producing a stable structural product according to any one of the preceding claims, wherein said mould is defined by a layer of sheet metal, and wherein said mould is designed to permanently form an outer layer of a composite stable structural product after curing.
12. A method for producing a stable structural product according to claim 11 wherein said mould is configured for use as a pallet.
13. A method for producing a stable structural product according to any one of the preceding claims, wherein said binding agent further includes polyvinyl acetate or melamine fortified urea formaldehyde.
14. A method for producing a stable structural product according to any one of the preceding claims, further including the step of adding modifying agents to said binding agent to modify the fire, water, weather or rodent resistance of the cured product.
15. A stable structural product formed according to the method defined in any one of the preceding claims.
16. A method for producing a stable structural product substantially as herein described with reference to figure 1 of the accompanying drawings.
17. A stable structural product substantially as herein described with reference to any one of figures 2 to 7 of the accompanying drawings."
The specification states that the phenolic resin used is desirably based on potassium hydroxide with up to around 60% solids. Alternatively, a sodium hydroxide based phenolic resin may be used, incorporating up to about 40% solids. In some circumstances, ground rice hull may be used to supplement or even replace whole or shredded rice hull, depending on the desired characteristics of the finished product.
The specification describes a number of examples to illustrate how the invention may be employed in the manufacture of a variety of structural and insulative products. In the first of these, a mixture consisting of rice hulls and a phenolic resin based adhesive was transferred to a mould, subjected to pressure, and then cured. The resultant product may take the form of posts for use as roadside markers (figure 3), modular building blocks (figure 4) or, if extruded rather than moulded, continuous lengths of drainage pipe (figure 6). In other examples, the mixture was used to insulate surfaces or cavities by being sprayed or blown into position and allowed to cure in situ.
As a general comment, the specification asserts that the invention provides a synergisitc combination of rice hulls and phenolic resin resulting in a diverse range of cost effective products having unexpected structural integrity, while at the same time addressing the problems previously encountered in disposing of waste rice hull.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars lists four grounds of opposition: non-compliance with paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40. The particulars in support of the grounds of opposition relating to paragraphs 18(1)(a) and (b) refer to a number of published documents and patent specifications, as well as the alleged common general knowledge in the field. The particulars also set out a number of deficiencies said to exist in the description and claims in support of the grounds of opposition relating to section 40.
THE EVIDENCE
The evidence filed in support of the opposition consists of:
A statutory declaration by Michael John Grant dated 30 November 1998 together with Exhibits Grant1 to Grant9
A statutory declaration by James Albert Lawrence dated 2 December 1998 together with Exhibits Lawrence1 and Lawrence2
Mr Grant states that he is a patent attorney practising under the name Patent Attorney Services, and has been engaged to act for the opponent. Exhibit Grant1 is a copy of a statutory declaration made by Mr Grant on 3 June 1997 and accompanying Exhibits MJG1 to MJG5 filed in an earlier opposition proceeding on behalf of the present opponent (see National ResearchDevelopment Corporation v Richard Laurance Lewellin [1999] APO 11 (12 February 1999)). Exhibit Grant2 is a copy of a statutory declaration made by Mr Lawrence on 29 May 1997 and accompanying exhibits JAL1 to JAL8 also filed in the earlier proceeding. The remaining exhibits to Mr Grant's declaration comprise copies of some of the documents listed in the statement of particulars, together with evidence of their publication dates.
Mr Lawrence is a chemist and provides consultancy services in that area. He states that he has no pecuniary or other interest in the manufacture of articles such as panels from rice hulls either in his own business, the opponent's business, or any other party's business. In his earlier declaration (Exhibit Grant2) Mr Lawrence sets out his qualifications and experience in the resin industry. He states that "I have developed as a result of my academic studies and 45 years experience in the resin industry a special expertise in the formulation, development, production and use of resins and adhesives for the laminate, particle board, and related industries."
Given Mr Lawrence's independence of the parties, and his qualifications and extensive experience in the field, I place substantial weight on his evidence which has not been controverted by the applicant.
DECISION
Priority Date
Mr Grant indicated that the opponent wished to rely in part on "whole of contents" novelty, and so raised the issue of whether the present application was entitled to its claimed priority date of 6 January 1994.
As already mentioned, the present application is a further application made under section 39 ("Divisional applications") of application 68923/94 which claims priority from provisional application PM3250. For divisional status to apply, the priority date of the claims of the present specification needs to be determined as if they had been included in the specification of the parent application - such determination is made under either paragraphs (a) or (b) of subregulation 3.12(1) which provides as follows:
"Subject to regulations 3.13 ("priority dates: certain persons and applications") and 3.14 ("priority dates: certain amended claims") and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:
(a) the date of filing of the specification;
(b) if the claim is fairly based on matter disclosed
in 1 or more relevant applications-the date of
making the relevant application in which the
matter was first disclosed;
(c) if:
(i) the specification is a complete
specification filed in respect of a
divisional application; and
(ii) the claim is fairly based on matter
disclosed in the specification referred
to in paragraph 39(1)(a) or subsection
39(2) of the Act ("divisional
applications");
the date that would have been the priority date
of the claim if it had been included in the
last-mentioned specification."
It is clear from paragraph (c) above that in order to gain a priority date based on parent application 68923/94, the claims of the present specification are required to be fairly based on matter disclosed in the parent specification. A claim of that specification would, in turn, be entitled to a priority date being the date of filing of provisional application PM3250 if that claim is fairly based on matter disclosed in the provisional specification.
The specification of provisional application PM3250 states that the invention it discloses relates to new insulative materials and products made from or comprising rice hulls. The rice hulls may be joined together with an adhesive such as contact and PVA glues. No mention is made whatsoever of phenolic resins. The specification goes on say that the insulative products may be formed by shaping a mix of rice hulls and adhesive in moulds, optionally with a light press, and then air drying the formed product over a period which may be several days. There is no "real and reasonably clear disclosure" of air drying under conditions of increased heat (per Nicola Leonadisv Sartas No 1 Pty Limited (1996) AIPC 91-239), or any of the features claimed by claims 3-17 of the present application.
I therefore find that none of the claims are fairly based on matter disclosed in provisional specification PM3250. Thus if these claims had been included in the parent specification they would not be entitled to a priority date of 6 January 1994, being the date of filing of the provisional application, via the provisions of subregulation 3.12(1)(c). However, because of the divisional status of the present application, I must now determine whether any of the claims are fairly based on matter disclosed in the parent specification and thereby entitled to a priority date derived from its date of filing.
The parent specification discloses the use of a phenolic resin adhesive which when mixed with the rice hulls may be cured under pressure and increased temperature. A curing agent such as methyl formate may be used. Agents such as rice hull silica ash may be added to the mix to modify the characteristics of the cured product. Claims 1-3, 14 and 15 are as a consequence entitled to take 4 August 1994, the date of filing of parent application 68923/94, as their priority date. However, there is again no relevant disclosure of the features claimed by claims 4-13, 16 and 17. These claims are therefore not entitled to take the date of filing of the parent application as their priority date, and must instead proceed with a priority date derived from the date of filing of the present application, namely, 26 October 1995.
Novelty
The test for novelty is whether an alleged anticipation is the same in substance as the claim in suit so that the alleged anticipation would, if the patent were valid, constitute an infringement (Meyers Taylor Pty Ltd v VicarrIndustries Ltd (1977) 137 CLR 228). In applying this well-known "reverse infringement test" I must ascertain whether the alleged anticipations relied on by the opponent disclose all the essential features of the invention as claimed (Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367). I will now consider these alleged anticipations in detail.
Indian Patent Specification 142208
This patent specification is directed to a process of manufacturing moulded products (in this instance, particle boards) from "paddy" or rice husk using binding agents prepared from resins. I note here that "husk" is synonymous with the term "hull" which is used in the present specification. The process comprises mixing the husk with resin added in an amount of 10-20% by weight of husk. The resin is obtained by first condensing cardanol with formalin in the presence of caustic soda and then further condensing the resultant condensation product with phenol and formalin in the presence of sodium hydroxide. The mixture is next placed in a frame which acts as a mould and subject to hot pressing at a temperature of about 150-160oC. The pressure utilised during hot pressing can be varied between 50-300psi.
On this basis I find that Indian patent specification 142208 discloses all the essential features of claims 1, 2, 4, 8 and 15.
Indian Patent Specification 142209
This patent specification is confined to the production of the resin used in the process described by specification 142208 and, accordingly, does not add anything of significance to the latter disclosure.
Indian Patent Specification 146015
This specification relates to an improvement to the process disclosed by specification 142208 whereby use is made of water dispersible resins produced by the condensation of phenol, cardanol and/or cashew nut shell liquid with an aldehyde in the presence of an alkaline catalyst. These resins are mixed with rice husk in a ratio of 1:5 by weight. The mixture is subsequently formed into a mat and hot pressed at 160-220oC. The mat may be overlaid and/or reinforced with fibrous materials prior to hot pressing.
On this basis I find that Indian patent specification 146015 discloses all the essential features of claims 1, 2, 4, 5 and 15.
Indian Patent Specification 146025
This specification is concerned only with the production of resins for use in the process described by specification 146015 and for that reason need not be considered further.
British Patent Specification 2084212
This specification discloses a process for the production of insulating panels in which rice hull is mixed with a synthetic resin-based binding agent and hot pressed in a template or mould at a temperature of 80-120oC and under a pressure of 12-25 bar. The specification also teaches the addition of suitable additives to further improve the physical properties of the insulating panel, such as the addition of asbestos to improve its fire resistance.
The specification refers to a number of proprietary adhesives as binding agent but does not state whether these adhesives include phenolic resin as claimed by claim 1. In deciding whether each of the essential features of claim 1 are nevertheless disclosed by this specification, I note that it is legitimate to read an alleged anticipation in the light of common general knowledge (per Acme Bedstead Co Ltd v Newland Bros Ltd (1937) 58 CLR 689). However, although Mr Lawrence states that phenolic resins have been commonly employed as binders for many particulate materials including rice hulls, he concedes that "I would have understood this British patent specification as probably describing a process using urea formaldehyde resins …"
Thus British patent specification 2084212 does not disclose all the essential features of claim 1 and, having regard to the reverse infringement test, I am unable to find that this specification deprives any of the claims of novelty.
United States Patent Specification 3687877
This patent specification is directed to a process for the production of moulded articles wherein rice hulls are coated with a phenol formaldehyde resin which binds the hulls during the curing step. The coated hulls are moulded in a hot press at a temperature of 290-400oF (143-204oC) and under a pressure of about 1.5-10 tons per square inch. The final product may be additionally strengthened by including a metal screen or other fibres between layers of the moulded material.
On this basis I find that United States patent specification 3687877 discloses all the essential features of claims 1, 2, 5 and 15.
Australian Patent Specification 48947/93
This specification discloses a process for forming a body of cellulosic material, such as building and structural panels, in which rice hulls are mixed with a binder and cured through the application of RF heating. The specification states that the binder may be "any suitable binder composition" such as urea formaldehyde resins and polyvinyl acetate, but makes no express mention of phenolic resins.
In commenting on the disclosures of this alleged anticipation, Mr Lawrence again refers to the widespread use of phenolic resins as binders for particulate materials and draws the conclusion that "the disclosures of patent specification 48947/93 differ only from what appears in … claims 1, 2 and 13 for example in a detail which was well known and widely known in Australia at and prior to 1994." However, what Mr Lawrence appears to be suggesting is that it would be obvious to use a phenolic resin as an alternative binder, and not that the alleged anticipation contains "clear and unmistakable directions" regarding such use (per General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457) which is the standard of disclosure required to sustain an objection of want of novelty.
Accordingly, I am unable to find that Australian patent specification 48947/93 deprives any of the claims of novelty.
Australian Patent Specification 60599/94
This specification satisfies the criteria set by subparagraph (b)(ii) of the definition of "prior art base" in schedule 1, and thus falls for consideration under the head of "whole of contents" novelty. The specification concerns a process for producing composite particle boards from rice husk using phenolic resins. The rice husk is blended with 5-20% of resin to obtain a furnish which is subjected to hot pressing at a temperature of 150-200oC. The pressure applied to the furnish is 5-15 kg/cm2 (about 71-220 psi). One or more fibrous materials such as coconut fibre and wood strips may be incorporated to reinforce the finished product.
On this basis I find that Australian patent specification 60599/94 discloses all the essential features of claims 1, 2, 4, 5, 8 and 15.
Japanese Patent Specifications 3164201 and 3164202
Each of these specifications refers to a process for producing moulded articles having sound proofing properties and high mechanical strength by pressure forming a mixture of rice chaff, wood chips and a resin binder which may be a phenol resin. Mr Lawrence acknowledges that it is not clear whether the expression "rice chaff" refers to rice hulls, and, as a consequence, I am unable to find that either of these specifications deprive the claims of novelty.
Summary
I have found that the essential features of claims 1, 2, 4, 5, 8 and 15 are variously disclosed by a number of the patent specifications relied on by the opponent. These claims consequently lack novelty.
INVENTIVE STEP
Mr Grant submitted that the claims lacked an inventive step in the light of common general knowledge alone or when considered together with the disclosures in the patent specifications lead by the opponent under the ground of novelty.
The essential nature of common general knowledge has been defined by Aickin J in MinnesotaMining and Manufacturing Company and Another v Beiersdorf (Australia) Limited (1980) 144 CLR 253 as follows:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The state of the common general knowledge is a question of fact which must be determined on the basis of evidence from experts in the field and, as mentioned earlier, I am satisfied that Mr Lawrence is well qualified to comment on what was commonly known by those working in the field of the invention in Australia.
Mr Lawrence states that phenolic resins have been known and used in Australia as binders for numerous cellullosic and allied materials since the early 1900's. As evidence of this he refers to the technical references which comprise Exhibit Lawrence2. Mr Lawrence further states that the manufacture of products by placing a blend of resin and cellulosic or other material filler in a mould and then curing the mixture under heat and pressure is also well known. For example, natural phenol mixed with formaldehyde has been the source of "Bakelite" products since about 1910. Other examples given include insulating sheets, laminates and particle board which Mr Lawrence says has been made in Australia using rice hulls "over very many years". The specification itself acknowledges that rice hulls have been mixed with various binding agents.
Having regard to this evidence, Mr Lawrence rejects the assertion in the present specification that when used in accordance with the claimed invention the "synergistic combination of rice hulls and phenolic resins" provides products "having unexpected structural integrity substantially greater than the moulded or extruded products of the prior art". He says:
"The words "synergistic" and "unexpected" mean to me that the … specification is asserting there are exceptional properties of the final products more than could be expected from general prior knowledge of use of rice hulls in manufacture of articles and general prior knowledge of use of phenolic resins as a binder. I can see nothing whatsoever in the effectiveness of any of the processes or in the properties of any of the products described either generally in the … specification or in the particular examples that would not have been expected by any chemist or technologist knowledgeable in the relevant industry in Australia prior to 1994. For example, I state that it was well known in Australia that good bond strength was a well known property of phenolic resins and indeed is characteristic of phenolic resin binders. In fact, with other conditions and process parameters being generally comparable, a product made using phenolic resin binder would have stronger bonding than a urea formaldehyde resin which would be more friable. A melamine resin would be somewhere in between in strength. There is nothing "synergistic" occurring with rice hulls giving a phenolic resin bound article greater strength than, say, a urea formaldehyde bound article. Therefore, I believe there is no synergistic effect and no unexpected properties of the products made of rice hulls and phenolic resin. There is no attempt whatsoever in the … specification to substantiate the assertion of synergism and unexpected advantageous properties …"
On the basis of the evidence before me, I find that claims 1, 2 and 15 do not involve an inventive step in the light of common general knowledge or British patent specification 2084212 which, when combined with common general knowledge, would naturally suggest the use of a phenolic resin. These claims also lack an inventive step in the light of Japanese patent specifications 3164201 and 3164202 having regard to common general knowledge which would suggest the use of rice hulls as an obvious alternative to rice chaff.
Of the remaining claims, Mr Lawrence states that the features claimed by claims 3-9, 11-14 and 16 were well known and in some instances merely reflect standard practice in the art. By implication this analysis and the one provided in relation to claim 17 (see below) also apply to the examples described in the specification. Mr Lawrence further states, and I agree, that there is nothing inventive in applying a polyurethane coating to an article as claimed by claim 10. He says with regard to claim 17 that:
"… I consider that the particular articles depicted in Figures 3 to 9 and described in the … specification are no more than well known articles made from well known materials, namely phenolic resin bound rice hulls, and the properties of those materials were well known prior to 1994 such that the manufacture of those particular articles was either already known in Australia prior to 1994 or it would have been obvious to any competent person with basis expertise in the relevant industry that such products could suitably have been made from those materials."
I also agree entirely with these comments. In view of the foregoing, I find that none of the claims involve an inventive step.
MANNER OF MANUFACTURE
Mr Grant submitted that the claimed invention was in effect directed to the use of a known material (phenolic resin) in the manufacture of known articles for the purpose of which its known properties make that material suitable, and therefore was not in respect of a manner of new manufacture.
In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 32 IPR 449 the majority of the High Court concluded that the words "a patentable invention" in subsection 18(1) retain a threshold requirement that the alleged invention be a manner of new manufacture. The requirement of a manner of new manufacture applies irrespective of the omission of the aspect of newness in paragraph 18(1)(a). The court also held that this threshold requirement will, notwithstanding an assertion of newness, remain unsatisfied if it is apparent on the face of the specification that the subject matter of the claim is, by reason of the absence of the necessary quality of inventiveness, not a manner of new manufacture.
The court observed that "… it would border upon the irrational if a process which was in fact but a new use of an old substance could be a 'patentable invention' under s 18 if, but only if, that fact were not disclosed by the specification". The evidence before me is to the effect that the claimed invention is not merely a claim for the new use of an old substance, but a claim for the same use of an old substance. In any event, although the present specification has acknowledged the practice of mixing rice hulls with various binding agents, there is nothing on the face of the specification to suggest that it was known to employ phenolic resins for this or related purposes. Mr Grant submitted that the lack of any real detail in the specification on this point is tantamount to an admission that phenolic resins are well known. I do not accept this line of argument. The full Federal Court said in Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 (22 March 2000) that:
"In our view … Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as "known". If a patent specification, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of "the common general knowledge as it existed in the patent area". In other words, what is disclosed in such terms may be taken as an admission to that effect … If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act … Of course, once that additional knowledge is taken into account, one is applying s 18(1)(b)ii) …"
In the present case I have found that the claimed invention does not involve an inventive step but only after considering the evidence presented by the opponent, ie, "additional knowledge or information" of the type referred to in Bristol-Myers. The absence of inventiveness does not appear on the face of the specification, and my enquiry under this ground of opposition cannot be extended to matters shown by the evidence to be part of common general knowledge but on which the specification is wholly silent as Mr Grant appears to be suggesting.
Accordingly, I find that the claimed invention is directed to a manner of new manufacture.
SECTION 40
Mr Grant raised a number of issues under this ground but in my opinion only two of these potentially affect the validity of the claims.
First, Mr Grant took me to the first line of claim 1 which refers to "a stable structural or insulative product". He submitted that it was not clear whether the word "stable" qualifies the word "structural" alone or whether it also applies to the "insulative product". In my view, and applying the principles of purposive construction (per Catnic Components v Hill & Smith Ltd (1982) RPC 183), claim 1 suffers no lack of clarity in this matter since there is nothing in the specification as a whole to suggest anything other than that the term "stable" qualifies both products referred to in the first line of the claim.
And second, the temperature and pressure ranges respectively claimed by claims 6 and 8 fall within the broad ranges disclosed by the specification and thus these claims do not, in my opinion, fail for lack of fair basis. However, I agree with Mr Grant that there is no disclosure of adding a fibrous reinforcing material to the rice hulls and binding agent before curing as claimed by claim 5, nor does the specification disclose a binding agent which includes melamine fortified urea formaldehyde as claimed by claim 13. As a consequence, claims 5 and 13 are not fairly based.
CONCLUSION
I have found that the opposition succeeds on the grounds of lack of novelty and inventive step, and non-compliance with section 40. In light of these findings I am unable to identify any patentable subject matter disclosed in the specification that could form the basis of a valid claim. Accordingly, I refuse the application.
In accordance with the general principle that costs follow the event, I award costs against the applicant, Ricegrower's Co-Operative Limited.
O L Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Baldwin Shelston Waters, Sydney
Patent attorneys for the opponent : Patent Attorney Services, Box Hill
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