Richard John Johnson Et Al v the Broken Hill Proprietary Company Limited

[1998] APO 26

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 651839 in the names of Richard John JOHNSON, Christopher Richard JOHNSON, Stephen Alexander JOHNSON, and Cheryl Noeleen JOHNSON

Title:          ANFO Composition

Action:          Oppositions by: THE BROKEN HILL PROPRIETARY COMPANY LIMITED; and

ICI AUSTRALIA OPERATIONS PTY. LTD.; and  

TECHNOLOGICAL RESOURCES PTY. LTD.

Decision:          Issued            .

Abstract

Sawdust found to be an essential feature of the composition of the invention. The meaning and scope of the unqualified term "sawdust" in the claims then construed intrinsically on the basis that where an unqualified term in a claim is potentially susceptible of a range of included or excluded meanings, then it is beholden upon the notional addressee to seek guidance from a reading of the specification as a whole in order to construe what is the intended scope of that term in the context within which it is being used.

The opposition succeeds on the grounds of obviousness and not a manner of manufacture.

The grounds of non-compliance with section 40, prior publication, and otherwise not novel, found not established.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 651839 by Richard John JOHNSON, Christopher Richard

JOHNSON, Stephen Alexander JOHNSON, and Cheryl Noeleen JOHNSON; and

oppositions thereto by THE BROKEN HILL PROPRIETARY COMPANY LIMITED; and 

ICI AUSTRALIA OPERATIONS PTY. LTD.;  and  TECHNOLOGICAL RESOURCES

PTY. LTD.

background

Patent Application No.651839 was lodged in the names of John Andrew WILLEMS, Alan Gordon FRITZ, Malcolm John HALL and Richard John JOHNSON on 10 December 1987 as Australian Application No. 82431/87, claiming priority from Australian Provisional Application No. PH9447 lodged on 10 December 1986.

Following settlement of an ownership dispute, the application then proceeded for a while in the name of JOHNSON'S EXPLOSIVES (QLD) Pty. Ltd., and then later (only) in the names of Richard John JOHNSON, Christopher Richard JOHNSON, Stephen Alexander JOHNSON, and Cheryl Noeleen JOHNSON (these four joint applicants together constitute one of the parties to the present action and are hereinafter referred to as “the patent applicant”).

651839 was advertised accepted on 4 August 1994. The Broken Hill Proprietary Company Limited, ICI Australia Operations Pty.Ltd., and Technological Resources Pty. Ltd. all filed, through a common representative, separate notices of opposition on 4 November 1994 (these three parties to the present action are hereinafter referred to as “the opponents”). Three Statements of Grounds and Particulars, which grounds and particulars were the same for each opponent, were filed on 6 February 1995. Three amended Statements of Grounds and Particulars, each dated 27 April 1995, were allowed by letter from the Patent Office dated 12 September 1995.

The services of evidence in support were completed on 24 August 1995. No evidence in answer as such was served.

By Request and Statement of Proposed Amendments filed 27 May 1996, the Applicant proposed amendments “to limit the scope of the claims to exclude subject matter which may otherwise render certain of the claims invalid”. There was no opposition to the proposed amendments which were advertised as allowed on 2 January 1997.

Subsequently the services of further evidence (by the opponents), evidence in response (by the patent applicant) to the further evidence, and evidence in reply (by the opponents) to the evidence in response to the further evidence, were completed by 19 September 1997.

The matter was heard in Canberra on 18 and 19 December 1997. The patent applicant was represented by Mr Peter Fisher, patent attorney of Fisher Adams Kelly. The opponents were represented by Mr Barry Hess of counsel, assisted by Mr Greg Munt, patent attorney of Griffith Hack.

As the opposed application was lodged before but accepted after the commencement of the Patents Act 1990, Section 59 of the Patents Act 1952 and Chapter 5 of the Patent Regulations 1991 apply in relation to the opposition.

THE SPECIFICATION

The specification commences by stating that the invention relates to ammonium nitrate based explosive compositions, a process of preparing the compositions, and a method of blasting the compositions.

As background to the invention the specification continues:

"Ammonium nitrate based explosive compositions are in use in an extensive variety of applications. However, ... there are many applications where there is no ... ammonium nitrate based explosive composition which is satisfactory particularly with reference to :
(a) energy types and values, required to fragment specific rock types; and (b) expense and uniformity in final wall blasting in open pit mining.

A known ammonium nitrate based explosive which is widely used and relatively inexpensive has relatively high detonation pressure, high density and low volume. This particular composition has been applied by the present inventors to rock types which require a low density, low velocity of detonation and low pressure explosive in order to achieve breakage and subsequent fragmentation.

Not unexpectedly this application has meet with failure to break these rock types and it has been found that the high borehole pressure resulting from the detonation of the above explosive, only compresses surrounding borehole rock and does not provide uniform, or in many instances, any rock breakage. Further, as far as the present inventors are aware there is no other ammonium nitrate based explosive composition which satisfies the above requirements.

An earlier attempt to overcome the problems with prior art high detonation velocity ammonium nitrate/fuel oil (“ANFO”) compositions utilised expanded polystyrene beads as a bulking agent.

These compositions were quite unsuccessful as the large difference in density between the ammonium nitrate prills and the expanded polystyrene beads gave rise to separation during mechanical mixing thereby preventing uniform distribution in the mixture. Moreover, the very low material content of the expanded polystyrene beads contributed little, if any, fuel value to the explosive composition.

It is further believed that the highly compressive nature of the expanded polystyrene beads may have contributed a “shock absorbing” effect in the explosive charge in a borehole which shock absorbing effect may have contributed to the unreliable nature and variable performance of such compositions.

It is an object of this invention to provide an ammonium nitrate based explosive composition which ameliorates the above described disadvantages.

... it has been found that an ammonium nitrate based explosive composition which includes sawdust can provide a low density, high gas volume explosive composition having a low detonation velocity/pressure.”

Various embodiments of the invention, all characterised by the components ammonium nitrate and a combustible oil and sawdust, are then described. The ammonium nitrate is said to preferably be in the form of prills. Suitable combustible oils are listed, with fuel oil said to be especially preferred. It is pointed out that sawdust properties such as moisture content, mesh size and type of wood can affect the explosive properties of the explosive composition.

At the passages bridging pages 4 and 5 of the specification, compositions according to the invention are said to have the following advantages:(I) Low density, (II) High volume - as sawdust levels are increased, density decreases, volume of product increases, (III) All components readily available, (IV) No segregation of composition (after mixing) during handling and storage, (V) Safe handling characteristics (composition is not cap-sensitive), (VI) Composition is readily identifiable even without dye, (VII) To an extent sawdust is a waste product, (VIII) Due to high volume/low density, less explosive composition is used, (IX) Potential to reduce costs in limit blasting, i.e. final wall blasting in open pit mining, (X) Detonation of an explosive composition of the invention results in a low velocity explosion, (XI) The sawdust contributes substantially to the gas volume which in soft to medium hard rock is very desirable.

The invention is then further described by reference to three Examples. The first Example describes the provision of an explosive composition according to the invention by mixing ammonium nitrate prills with fuel oil in an explosives agitator mix truck, the resultant mixture then being blended with sawdust. Examples 1 and 2 both report the results of trial blasts. Example 3 relates to thermochemical calculations.

THE CLAIMS

The specification as amended after acceptance ends with 26 claims. Claims 1, 11, 12, and 18 read as follows:

"1. An explosive composition comprising:
(a) ammonium nitrate;
(b) combustible oil; and
(c) sawdust wherein the weight ratio of (a) + (b):(c) is in the range 10:90 to 99:1 and the weight ratio of (a):(b) is in the range 88:12 to 98:2.

11. A process of preparing an explosive composition which process comprises mixing:

(a) ammonium nitrate;
(b) combustible oil; and
(c) sawdust;

in any order, wherein the weight ratio of (a) + (b):(c) is in the range 10:90 to 99:1 and the weight ratio of (a):(b) is in the range 88:12 to 98:2.

12. A process of preparing an explosive composition which process comprises:

(1) mixing (a) ammonium nitrate and (b) combustible oil wherein the

weight ratio of (a):(b) is in the range 88:12 to 98:2 to provide a mixture; and

(2) mixing said mixture with (c) sawdust wherein the weight ratio of

(a) + (b):(c) is in the range 10:90 to 99:1.

18. A method of blasting at a locus which method comprises applying or locating an effective amount of a composition as defined in any one of claims 1 to 10 or claim 17 at the locus and detonating the composition."

THE GROUNDS OF OPPOSITION

Apart from matters of form, the texts of the amended statements of grounds and particulars by each opponent are the same. The grounds identified in each statement of grounds and particulars are that the complete specification does not comply with section 40 and that the invention is prior published, is otherwise not novel, is obvious and is not a manner of manufacture.

EVIDENCE

The same evidence was adduced throughout by each of the three opponents.

The evidence in support consists of statutory declarations by:

- Gwyn HARRIES (with Exhibits GH-1 to GH-11) a resident of Australia who states that from 1965 to 1995 he worked in Australia for ICI Australia’s Explosive Business and CRA Advanced Technological Development; and

- Dr Carolyn Lesley ROLLS (with Exhibits CLR-1 to CLR-5) a resident of Australia who states that prior to joining the patent attorney firm of Griffith Hack in 1995 she was employed by ICI Australia Operations Proprietary Limited and that she regards herself as a person versed in the art of the subject of the opposed application; and

- Dr Neville Thomas MOXON (with Exhibits NTM-1 to NTM-6) a resident of Australia who states that he is a Product Manager, Packaged Explosives for the Explosives Business of ICI Australia Operations Proprietary Limited; and

- Vladimir J. SUJANSKY (with Exhibits VJS-1 to VJS-8) a resident of Australia who states that he has worked for ICI Australia Operations Proprietary Limited (and its predecessors) since 1969; and

- (in relation only to the publication of documents) Gregory Richard MUNT, Kerrie Anne CARSTENSEN, Fiona BATHGATE, Tony CARGNELUTTI, Kevin BOND and Carolyn Leslie ROLLS (the second Rolls declaration, with exhibit CLR-1[a]).

The further evidence adduced (by the opponents) before the hearing consists of statutory declarations by:

- Gwyn HARRIES (the second Harries declaration, with Exhibits GH-12 to GH-18); and

- Vladimir J. SUJANSKY (the second Sujansky declaration, with Exhibits VJS-9 to VJS-14).

The evidence in response (by the patent applicant) to the further evidence  consists of statutory declarations by:

- George Allen BOUCHER (with Exhibits GAB-1 to GAB-5) a resident of Australia who states that he is a Principal Blasting Research Engineer employed by Dyno Nobel Asia Pacific Limited and that he also operates his own explosives engineering consultancy under the business name MGB Engineering; and

- Richard John JOHNSON (with Exhibits RJJ-1 to RJJ-12) a resident of Australia who is one of the inventors of the subject of the opposed application; and

- Dr Sarma S. KANCHIBOTLA (with Exhibit SSK-1) a resident of Australia who states that he is a project leader at Julius Kruschnitt Mineral Research Centre, University of Queensland; and

- George L GRIFFITH (with Exhibit GLG-1) a resident of the United States of America who states that he is President of Griffith Consultants Inc.

The evidence in reply (by the opponents) to the evidence in response to the further evidence consists of statutory declarations by:

- Gwyn HARRIES (the third Harries declaration); and

- Richard Eugene DANELL (with Exhibits RD-1 and RD-2) a resident of Australia who states that he is employed by The Broken Hill Proprietary Company Limited; and

- Vladimir J SUJANSKY (the third Sujansky declaration with Exhibits VJS-15 to VJS-18); and

- Carolyn Leslie ROLLS ( the third Rolls declaration with Exhibits CLR-1 to CLR-9); and

- (in relation only to the publication of documents) Ngaire PETTIT-YOUNG.

SUBMISSIONS

I summarise Mr Hess’s main submissions, including references to the statement of grounds and particulars, on behalf of the opponents as follows:

Section 40

- In Claim 1 the range 10:90 to 99:1 defined for the weight ratio of a + b:c is too broad and speculative in that there is no support in the description for any ratio either side of the range 45:55 (Table 2, #2) to 88:12 (Example 2). Similarly Claims 19,20 and 21.

- In Claim 1 the range 88:12 to 98:2 defined for the weight ratio of a:b is too broad and speculative in that there is support in the description only for the ratio 94:6 (Examples 1 and 2). Similarly Claims 19,20 and 21.

- At paragraphs 3ii and 9 of his declaration Dr Kanchibotla opines that the properties and performance of the explosive compositions of the invention are unpredictable thereby confirming that the broad ranges of weight ratios of a + b:c and a:b defined in claim 1 are speculative in so far as they are unsupported by experimental data.

Prior Publication

- the invention as defined in all of the claims is either directly or indirectly anticipated by disclosures in each of the following patent documents:

US 3303072, G.I. Griffith, (Exhibit GH-6); published in Australia 19 October 1967;

GB 882665, Dynamit Nobel AG, (Exhibit GH-7) published in Australia 29 may 1962;

GB 1281421, Etat Francais, (Exhibit GH-8); published in Australia 4 December 1972;

AU 276321, J.M. Lawrie, (Exhibit GH-18); published in Australia 2 November 1967.

Each of these documents discloses explosive compositions comprising ammonium nitrate, combustible oil, and sawdust, or wood flour, or wood meal or other such combustible particulate material.

- Wood flour is a type of sawdust. Thus in Exhibit GH-14, the French basic corresponding to GB 1281421, reference is made to farine de bois. This term is translated in GB 1281421 as sawdust but in a French-English dictionary for Chemists (Exhibit GH-15) as “(fine) sawdust, wood flour”.

- In the specification of 651839 the term “sawdust” is the byproduct of a saw on wood. But is bagasse, obtained by milling (including sawing) of sugar cane, a non-timber sawdust?

- Saws do not produce standard size particles. There is no disclosure of disaggregation or sizing techniques to include or exclude sawdust of a particular size. The specification nowhere indicates that the term sawdust as used therein excludes such material in the form of fine particles.

- In the third Rolls declaration she states that she contacted two suppliers of sawdust in the state of Victoria and that they both advised that they sold unsieved or unsorted sawdust from sawmills and that it ranged from small shavings to fine particles. This amounts to an industry definition.

- At page 3c of the specification it is stated that “sawdust properties such as moisture content, mesh size and type of wood can affect the explosive properties of the explosive composition.” However there is no description in the specification of different types of sawdust let alone their relevant properties, leaving the inference to be made that some types could be better than others but that basically any old sawdust will do.

- Expert witness Griffith declares that what he calls the “coarse” sawdust used in the compositions of the presently opposed application, has not undergone any further processing (such as grinding, screening or drying) and is thereby distinguished from the “finer and drier” types of sawdust used in prior art compositions. There is nothing in the specification of 651839 to support these assertions by Mr Griffith since the only way in which sawdust is characterised in the specification of 651839 is in terms of its density (and even that not in the claims). Density will depend more on the type of wood than on particle size, e.g. balsawood sawdust will always be low density regardless of particle size.

- It is not permissible to vary or qualify the plain or unambiguous meaning of the claims by reference to the body of the specification (see Decor Corporation Ltd v Dart Industries Inc (1989) 13 IPR 385 per Lockhart J at 391 and Shepherd J at 397-8).

- If made, any suggestion that the subject matter of 651839 constitutes a selection will be rebutted on the basis that the so-called “IG Farben criteria” are not met.

Obviousness

- Each of the components of the composition of the invention as claimed is a well known material.

- The evidence filed by the opponents establishes that in the explosives industry in Australia, prior to the 10 December 1986 priority date of 651839, the following were common general knowledge:

(a) the use of ANFO/expanded polystyrene beads;

(b) the use of sawdust and other low density combustible materials as additives to nitroglycerin explosives;

(c) that mixing combustible particles (such as expanded polystyrene beads, sawdust, and bagasse) with prills of ANFO explosives would have a predictable effect on the overall density of and the blast performance of the resultant explosive compositions.

The most relevant expert statements concerning CGK are at paragraphs 17 to 21 of the Moxon declaration, paragraphs 6 to 9 of the second Harries declaration, paragraphs 5 to 12 of the second Sujansky declaration, and generally in the Danell declaration.

- At the priority date of 651839 it would have been obvious in the light of the CGK in Australia to the non-inventive person, skilled in the art formulating explosives, to try combining ANFO with sawdust in order to provide a low density, high gas volume explosive composition having a low detonation velocity/pressure.

- The existence of the XPLODE program is relevant to the issue whether it would have been obvious to try sawdust with ANFO.

Manner of Manufacture

- The use of sawdust with ANFO is using a known material for a purpose for which its known properties make it useful and is not then a new manner of manufacture (see Commissioner of Patents v Microcell Ltd., 102 CLR 232 at 251).

- The claims define no more than a working direction and seek to exclude others from developing and using known explosives compositions in the most efficient manner.

- Since the principle of the invention was already known in Australia e.g. from the XPLODE program (Exhibit CLR-1a to the second Rolls declaration), the Applicants can give no consideration to support any patent grant (see R v Patents AppealTribunal; ex parte Benchman [1974] AC 646 per Lord Diplock at 677/680).

Otherwise Not Novel

- The alleged invention is wholly lacking in subject matter on the basis of the documents and references relevant to prior publication and the evidence relevant to manner of manufacture and obviousness (see Werner RD & Co Inc. v BaileyAluminium Products Pty Ltd., 13 IPR 513 at 531, Lockhart J.).

I summarise Mr Fisher’s main submissions on behalf of the patent applicant as follows

Section 40

- The ranges of ratios of constituents in e.g. Claim 1 are quite broad but given the context are fairly based reasonable extrapolations from ranges exemplified in the description. The fair basis attack by the opponents appears in reality to be going to the unavailable ground of inutility. In any case there is no authority that the scope of the Claims must be limited to the Examples.

Prior Publication

- No disclosure in any of the citations relied upon by the opponents discloses all of the essential features of the present invention.

- The unqualified term "sawdust" in the present claims means a mixture of fine, medium and coarse sized particles such as can be purchased cheaply on an industrial scale. In the context of the invention, which lies in the art of cheap explosives, no addressee would think that the word "sawdust" without qualification was meant to include such material which had been subjected to the expense of further processing or refinement such as by grinding or sieving.

- Both woodflour and woodmeal are expensive products from the processing of sawdust into very fine particles. The terms woodflour and woodmeal might be interchangeable with each other but certainly not with the unqualified term sawdust.

- The French word for sawdust is "sciure", not "farine de bois".

- The so-called "industrial definitions" of the term sawdust in the third Rolls declaration, said to have been obtained over the phone from sawdust suppliers, are hearsay to which little weight should be attached. Furthermore, to include "shavings" in a definition of sawdust (paragraph 4.2 of the third Rolls declaration) is nonsense.

- None of the references cited by the opponents refer to sawdust per se (an essential feature of the present invention). And that includes the disclosure in AU 276321 of a mixture of ANFO with finely divided sawdust.

Obviousness

- The patent applicant disputes the contention by the opponents that mixing combustible particles such as sawdust with ANFO would have a predictable effect on the blast performance of the resultant explosive composition.

- It requires a leap of imagination to go from dynamite with woodflour to ANFO with sawdust. Nitroglycerin (used in dynamite) is a very sensitive explosive material whereas ANFO is relatively insensitive (see Kirk-Othmer, Encyclopedia of Chemical Technology, 3rd Edition, pages 600 to 604). With nitroglycerin (which is a liquid), sawdust acts as a primary fuel and absorbent, whereas with ammonium nitrate (which is a hygroscopic solid) sawdust acts primarily as a bulking agent, notwithstanding that when sawdust is mixed with ANFO it will be consumed as a secondary fuel (the primary fuel being the fuel oil).

- In Australia, most of the research and development work in the field of explosives is done by ICI Australia. However, it does not follow, as the opponents appear to suggest, that whatever is known within ICI Australia is the same as the CGK in Australia. ICI Australia tend to keep their explosives knowledge to themselves and this militates against attempts to show that particular items of such knowledge were CGK in Australia. This should be taken into account when determining the appropriate weight to be given to statements concerning the CGK by Harries, Moxon, Sujansky and Rolls all of whom have been employed by ICI Australia. In fact none of declarants for the opponents, including Danell, who have made statements concerning CGK, are independent of the opponents. Harries and Sujansky make broad sweeping statements about the CGK for which the only corroboration is each other's virtually identical statements.

- In considering the use of sawdust, rather than other materials, mechanical properties, chemical properties and cost considerations all matter.

Manner of Manufacture

- The XPLODE program, referred to in the second Rolls declaration, was not in the public domain and is merely a system for mixing and matching ingredients from a long list of materials which may be used in explosives. Some of the possible combinations are fanciful. To suggest that the existence of the program somehow demonstrates the principle of the present invention is to deny "the gorilla test" of Beecham Group Ltd v Bristol Myers Co., 1 NZLR 192 at 218.

DECISION

Before the hearing I ascertained from the Patent Office file for 651839 that each side disputed the admissibility of some of each others late-filed evidence and that this matter remained unresolved. The evidence in question is the Griffith declaration filed by the patent applicant and the third Harries, Danell, the third Sujansky, the third Rolls and Ngaire Pettit-Young declarations filed by the opponents.

At the hearing I was informed by Messrs Hess and Fisher that both sides had recently agreed that all evidence filed prior to the hearing should be a part of the hearing. I advised that I was prepared for the hearing to proceed on that basis but that I would later need to consider whether there were any other factors that I should take into account concerning whether or not the evidence in question was admissible. I have since decided to admit all of the evidence in question since I am satisfied that its probative value substantially outweighs any danger that any of it might be unfairly prejudicial to a party, or be misleading or confusing, or to have been filed sufficiently out of time so as to have caused inordinate delay.

Before considering the issues relating to prior publication, obviousness, manner of manufacture, otherwise not novel and section 40, I shall first determine which features of the claimed invention I consider to be essential.

Essential Features

A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential (Catnic Components v Hill & Smith Ltd., [1982] RPC 183).

Claim 1 of 651839 can be broken down into the following features:

A composition characterised by being a mixture of:

(A) ammonium nitrate; and
(B) a combustible oil; and
(C) sawdust,
and wherein
(D) the weight ratio of ammonium nitrate plus combustible oil to sawdust is in the range 10:90 to 99:1; and
(E) the weight ratio of ammonium nitrate to combustible oil is in the range 88:12 to 98:2.

In terms of "essentialness" features (D) and (E) were not disputed as such but are the subject of a section 40 issue which I shall come to later. Subject to that, and the dispute as to the meaning of characteristic (C) which I shall deal with below, I find that characteristics (A), (B), (C), (D), and (E) are essential features of the invention as presently claimed. However, I note that (D) and (E) are so broadly defined as to indicate that preferred relative proportions of the ingredients would be readily determinable by routine optimisation and thus are not of any particular importance in terms of the inventive concept. That presumption is confirmed from a reading of the specification as a whole.

The real issue as to what is or is not essentially included within the ambit of Claim 1 (and all the other claims) revolves around the term "sawdust" and the question of what is the scope of that term? As is apparent from the evidence in the opposition adduced by the opponents and the submissions made by Mr Hess at the hearing, a wide variety of materials having differing characteristics are at least potentially within the ambit of the unqualified word "sawdust".

In Catnic Components Ltd v Hill and Smith, (supra) at page 243:

"A patent specification should be given a purposive construction rather than a purely literal one .... The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked."

In George Kent Limited v Email Limited (unreported Australian Patent Office decision on Application No. 515373, issued 20 August 1984), the Assistant Commissioner at page 6:

"One further point about the specification which requires comment is the unqualified term 'polytetrafluoroethylene' or PTFE.  Like all polymers, PTFE has no fixed molecular weight - it can exist in a range of molecular weights.  There appears, then, to be two possible ways of construing the claims : firstly, as including all possible PTFE's; or secondly, as including only those PTFE's normally obtainable commercially, i.e. not deliberately modified either during or after production to obtain unusually high or low molecular weights.  As will appear later, I understand the addressee of the specification to be a person who is not primarily a polymer expert and for that reason I regard the second construction to be the one which would be adopted by the addressee as a user, as opposed to a manufacturer, of plastics."

In Kiren Amgen Inc v Board of Regents of University of Washington, and Genetics Institute Inc 33 IPR 557, the Deputy Commissioner at 562:

"At the hearing I sought clarification of the scope of the term erythropoietin. After some considerable debate the applicants advised that the term erythropoietin, when unqualified, was .....

Having regard to the drafting of the specification I conclude that erythropoietin (unqualified) refers to ....."

I find support from the above for the proposition that where an unqualified term in a claim is potentially susceptible of a range of included or excluded meanings, then it is beholden upon the notional addressee to seek guidance from a reading of the specification as a whole in order to construe what is the intended scope of that term in the context within which it is being used.

Turning now to the specification of 651839 I can find nothing to suggest that the sawdust for use in the invention is envisaged as being derived from anything other than wood. In particular, I note that “type of wood” is referred to as being a characterising property of sawdust, (see page 3c lines 18 to 20). Also, there is no indication anywhere in the specification of any performance advantage to be gained from the use of a material obtained from sawdust by refining or otherwise value adding. In fact, I gather that the sort of art with which the invention is concerned is not exactly one where highly-purified ingredients are measured out on an analytical balance, but rather one where compositions are mixed up on the back of a truck (see the passage bridging pages 5 and 5a). I conclude that in the context of the presently opposed specification the term sawdust (unqualified) means small particles of wood available in bulk quantities from large-scale sawing operations and which have not been subject to further processing.

Prior Publication

The generally accepted test for anticipation is the “reverse infringement” test as set out in Meyers Taylor Pty Ltd v. Vicarr Industries Ltd (1977) 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.”

Infringement of a patent occurs when each and every one of the essential integers of the claim have been taken (Rodi and Wienenberger AG v. Henry Showell Ltd [1969] RPC 367).

To establish anticipation all that is required is to see whether if one is to carry out the teaching of the prior document, that action would inevitably constitute an infringement of the patent in suit. It is not necessary that the prior art be equal in practical utility or disclose the same invention in all respects as the patent in suit. (Decision of the English Court of Appeal in Glaverbel SA v. British Coal Corp. [1995] F.S.R. 254 at 277).

The opponents mainly relied on 4 cited patent documents for their prior publication attack on the presently opposed application.

Patent document AU 276321 discloses a pelletising process for the manufacture of a free-flowing blasting agent from a mixture of finely divided feed materials and a hot aqueous solution of ammonium nitrate. The only Example discloses a dry solids feed mixture, for use in the process, which contains crystalline ammonium nitrate, rye flour, finely-ground ferrophosphorus, fuel oil and finely divided sawdust. It is stated that “The wood sawdust is of such a fineness that all passes a 6 mesh standard Tyler sieve and all is held on a 24 mesh sieve .... .” This “finely divided sawdust” appears to have been prepared by processing (sieving) of raw sawdust and consequently is not within the scope of the term sawdust (unqualified) in 651839.

Patent document US 3303072 discloses explosive compositions containing ammonium nitrate, a solid carbonaceous fuel such as bagasse, shredded corn stalks or shredded synthetic plastics, and optionally a small amount of a liquid carbonaceous fuel. There is no suggestion that wood sawdust could be used as the solid carbonaceous fuel.

Patent document GB 882665 discloses explosive compositions containing ammonium nitrate, liquid fuel and wood meal. Patent document GB 1281421 discloses explosive compositions containing ammonium nitrate, a domestic fuel and wood flour. Since both wood meal and wood flour are powdered materials derived by processing from raw sawdust, neither is within the scope of the term sawdust (unqualified) in 651839.

None of the documents tendered in evidence, and published prior to the priority date, disclose an ANFO-based composition including a material which falls within the scope of the unqualified term sawdust as used in 651839. Since such a material is an essential ingredient of the compositions of the present invention, and which compositions characterise all of the claims, I find that all of the claims are not prior published in the light of the documentary prior art before me.

Obviousness

Obviousness considerations under the 1952 Act involve a determination of the common general knowledge in the art in Australia at the priority date of the claims; per Aicken J in The Wellcome Foundation v VR Laboratories (1981) 55 ALJR at 251:

"... the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."

In the decision of The English Patents Court in Union Carbide Corp. v. BP Chemicals Ltd [1998] RPC 1, Jacob J. at 16:

"Patent law attributes to its notional skilled person a background technical knowledge which goes by the jargon 'common general knowledge'. Such knowledge is 'part of the mental attitude of a well constructed representative of the class to whom the specification is addressed' (British Ore Concentration Syndicate v. Minerals Separation Ltd (1909) 26 RPC 124 at 138) or 'generally regarded as a good basis for further action' (General Tire & Rubber Co v. Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 483 line 20). It is not good enough to show that a matter was known to some but not to others and in particular it is not good enough to show that knowledge (or prejudice) was confined to one or a limited class of suggested exemplars of the skilled person."

To establish obviousness where a combination invention is involved it must be shown that each of the integers that makes up that combination is common general knowledge in the field in question, and that it would have been obvious to a non-inventive skilled worker in the field to not only select the separate integers which make up that combination, but also to select the particular combination of those integers in question [see Minnesota Mining & Manufacturing Co v. Beiersdorf Australia Ltd, (1980) 144 CLR 253 at 292-293)].

The invention of 651839 lies in the art, well established at the priority date, of explosive compositions suitable for the blasting of rock in mining operations.

The problem addressed is that of devising an ANFO-based explosive composition having a sufficiently lowered detonation velocity and pressure such as to overcome difficulties encountered with no or non-uniform breakage in the blasting of certain types of soft-to-medium hardness rock.

As to the relevant CGK in Australia at the priority date (10 December 1986), the assertion by the declarants for the opponents that it was CGK that sawdust (or similar particulate carbonaceous material) was well known as an ingredient of dynamite-type explosive compositions was not controverted by the patent applicant. What was challenged was the further assertion by the declarants for the opponents that the addition of sawdust to ANFO would have predictable effects on the blasting characteristics of the resulting explosive composition.

On behalf of the patent applicant, Mr Fisher pointed out that highly sensitive nitroglycerin-based dynamite explosives are, in terms of cost, safety issues and explosive properties, markedly different than much less sensitive ANFO explosives (see paragraph 21 of the Boucher declaration). Just because sawdust was known to be suitable as a fuel and absorbent in dynamite-type explosives, why should it follow that the addition of sawdust to ANFO would have the effect of reducing the detonation velocity and pressure?

The likelihood of success necessary to render a routine investigation obvious was considered in Beecham Group Ltd’s (Amoxycillin) Application [1980] RPC 261 at 290:

“It is clearly established that, for a particular step or process to be obvious .... it is not necessary to establish that its success is clearly predictable: Johns-Manville Corporation’s Patent [1967] RPC 479 at 494. It will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile: Technograph Printed Circuits Ltd v. Mills & Rockley (Electronics) Ltd [1972] RPC 346 per Lord Reid at 355 and 356; Johns-Manville, supra, per Lord Diplock LJ at 493 and 494; Tetra Molelectric Ltd v. Japan Imports Ltd [1976] RPC 541 at 581, 583-4.”

In the present case then, the question is not whether it was predictable that adding sawdust to ANFO would solve the problem addressed by the applicant, but rather, would such a solution to the problem have been considered worth trying ?

Declarant (for the opponents) Harries, at paragraph 9 of his second declaration states:

"I believe that ... in the mid-1930's in Australia, in order to reduce the shock energy .... flour was replaced with sawdust ....  It is relevant to comment that the applicant adds sawdust to the claimed explosive composition for the same purpose. I believe that explosives with sawdust as fuel have been used in Australia extensively since the 1930's."

Declarant (for the patent applicant) Boucher, at paragraph 25 of his declaration states:

"I do not agree with the suggestion made in paragraph 9 of Mr Harries (second) affidavit in which he states that 'as the fuel ... the applicant adds sawdust to the claimed explosive composition for the same purpose.' In my opinion, unlike dynamite, the Johnson formulation would not be using the sawdust primarily as a fuel or absorbent, but would instead use the sawdust as a bulking agent for the purpose of detonation property modification."

Declarant (for the patent applicant) Griffith, at paragraph 7 of his declaration states:

"From my position as a 'person skilled in the art', I do not consider that the Johnson invention as claimed would have been obvious to any persons skilled in the art before the priority date as it would have been adopted by explosives manufacturers or users long before now in view of its commercial significances and overall reliability. To me, the Johnson invention is a unique selection of sawdust as a highly effective form of combustible particle from a wide range of possibilities at a time when others were experimenting with far less effective, more inconvenient or more costly solutions."

Declarant (for the opponents) Danell, at paragraph 7 his declaration states:

"It was, and still is today, generally regarded that sawdust is one option amongst a number of low density materials that can reduce the shock energy of the explosive. .... These were at the priority date and are today generally accepted to act to significantly reduce the peak blasthole pressure through reducing both the density and velocity of detonation of the explosive blend."

Declarant (for the opponents) Sujansky, at paragraph 5 of his third declaration states:

"In clause 35 of the Boucher statutory declaration and clause 53 of the Johnson statutory declaration, Messrs Boucher and Johnson question the statements in my statutory declaration made on 17 March 1997 (the second Sujansky declaration) that it was well known to me, and I believe to other persons in the explosives industry in Australia before the priority date of 10 December 1986, to use sawdust (and other combustible) particles in explosive compositions. By way of reply, I attach hereto as Exhibits VJS-15 to VJS-18 copies of extracts from publications which disclose the use of sawdust and other combustible particles in explosive compositions."

In the reference work "Encyclopedia of Chemical Technology", Kirk-Othmer, Third Edition, Volume 9, (established publicly available in Australia 10 September 1980), (Exhibit VJS-16 to the third Sujansky declaration), sawdust is disclosed at page 601 as a fuel, absorbent and energy modifier component in typical dynamite formulations.

In the reference work “The Chemistry of Powder and Explosives” by T.L. Davies, (Exhibit VSJ-15 to the third Sujansky declaration, established publicly available in Australia from 10 June 1958), at page 334:

"A cheaper explosive of less power could be made by mixing the gelatinised nitroglycerin with .... a combustible material, such as .... sawdust .... ."

And at page 340:

"In commercial practice the dope sometimes contains coarse combustible material, like .... sawdust, .... which makes the explosive more bulky and has the effect of reducing the velocity of detonation."

In considering the weight attributable to the evidence by various declarants, going to the issues of CGK and obviousness, I note that at the priority date:

(a) Boucher was a geology assistant (vacation student) with BHP Iron Ore (Mt. Newman Mining Co.) and appears to have had but limited experience in the explosives industry at that time. It seems unlikely that in late 1986 he was sufficiently skilled in the art to know what would or would not be obvious in the light of the CGK as it existed at that point in time.

(b) Griffith was a resident of USA who had never worked in the explosives or any other industry in Australia. It appears therefore that he is not well placed to comment on what was at that time the CGK in Australia or what would or would not have been obvious to a person skilled in the art in Australia.

(c) None of Danell, Harries and Sujansky are independent of the opponents. However, all appear to be well placed to comment on the relevant CGK at the relevant time and what would or would not have been obvious to a person skilled in the relevant art in the light of that CGK.

On balance, I believe that the opponents have established, by way of credible expert evidence in declaratory form corroborated by relevant texts from reference works, that it was CGK in Australia at the priority date for sawdust (and other combustible materials) to be used in dynamite compositions for the purpose inter alia of reducing the detonation velocity. Particularly in view of the fact that the use of sawdust as an energy modifier in one type of explosive composition (dynamite) was CGK, I consider that the balance of probabilities is that the person skilled in the art would have considered the use of sawdust for the same purpose in another type of explosive composition (ANFO) to be worth trying as a solution to the problem which the claimed invention solves.

I find that it would have been obvious, in the light of the CGK at the priority date, to the person skilled in the art of explosive compositions for use in mining operations, to solve "the problem" by selecting the particular combination of essential features claimed in Claim 1.

With regard to the other claims, I note that whereas some of the claims are directed to processes and methods such claims are, in terms of the invention, characterised by the nature of the composition. I also note that varying ranges of  proportions of ingredients are defined across the claims but that these appear to represent mere preferments derived from routine optimisation. By the same reasoning applied above to Claim 1, I find all of the other Claims (2 to 26 inclusive) also obvious.

Manner of Manufacture

In Commissioner of Patents v Microcell (1959) 102 CLR 232, the High Court considered an application for a patent relating to the use of reinforced plastics for rocket projectors. The Full Court unanimously held that the application was not directed to a manner of new manufacture, the reasons (at page 251) being as follows:

"We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do."

An application for the manufacture of the parts of electricity meters, which are subject to wear, from oxide-coated aluminium was rejected, since it was known that the coating of aluminium with oxide rendered it resistant to wear (see L. & G.'s Application, (1941) 58 RPC 21 at 24).

In the majority decision of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Ltd (1995) 183 CLR 655 at 667:

".... 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' .... if, but only if, that fact were not disclosed in the specification."

I note that passage was reiterated at paragraph 39 of the majority decision of the High Court (unreported) in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA dated 26 March 1998.

In the present case, I believe that my findings above about the relevant CGK in relation to obviousness considerations, are also relevant to the manner of manufacture considerations presently at issue. Similarly my comments above about the preferred ranges of ratios of ingredients defined in the claims being merely the outcome of routine optimisation.

Sawdust, when blended with ANFO, exhibits no more than its known properties, which as I have found above include detonation energy modifier and fuel. Thus, none of the claims define a manner of manufacture because the composition of the invention does not utilise any hitherto unknown or unsuspected property of any of the ingredients or their relative proportions.

Otherwise Not Novel

This ground was not pursued in much depth at the hearing. I have already found the invention to be not anticipated in the light of the cited documentary prior art. Upon consideration of that prior art in conjunction with what I have found above to be the established relevant CGK in the art at the priority date, I have to say that I can see no basis for a finding that the invention as claimed is otherwise not novel. That is, putting the practice taught by combining the teachings of any one of the cited documents with the CGK would not inevitably otherwise reverse infringe.

Section 40

I agree with Mr Fisher's submission that although the ranges of ratios of constituents of the composition of the invention are broadly defined (e.g. in Claim 1), they appear to be no more than reasonable extrapolations from various ranges exemplified in the description. Accordingly I find the claims to be fairly based on the matter described in the specification and to meet the requirements of section 40 of the Patents Act 1952.

CONCLUSION

I find that the opposition succeeds in that the invention, so far as claimed in all of the claims (1 to 26 inclusive), (i) was obvious and did not involve an inventive step having regard to what was known in Australia before the priority date of those claims, and (ii) is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. On those grounds, I accordingly refuse the presently opposed application for a patent.

COSTS

The power to award costs, which is based on section 210 and regulation 22.8, is discretionary and consequently I must take all relevant considerations into account.

At the hearing Mr Hess submitted that regardless of the event, costs up to the date of allowance of the amendments filed after acceptance should at least be awarded against the patent applicant.

The opposition has succeeded on the substantive grounds of obviousness and not a manner of manufacture. Awarding costs against the patent applicant is appropriate in such a situation.

I award costs in accordance with Schedule 8 against Richard John Johnson, Christopher Richard Johnson, Stephen Alexander Johnson, and Cheryl Noeleen Johnson.

Alan Moore
Delegate of the Commissioner of Patents

Patent attorneys for the applicants  :  Fisher Adams Kelly, Brisbane

Patent attorneys for the opponents   :  Griffith Hack & Co, Melbourne