Rio Tinto Alcan International Limited v Norsk Hydro ASA
[2013] APO 68
•16 December 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rio Tinto Alcan International Limited v Norsk Hydro ASA [2013] APO 68
Patent Application: 2004281345
Title:Al-Mg-Si alloy suitable for extrusion
Patent Applicant: Norsk Hydro ASA
Opponent: Rio Tinto Alcan International Limited
Delegate: Karen Ayers
Decision Date: 16 December 2013
Hearing Date: 21 November 2013, in Canberra
Catchwords: PATENTS - opposition to Section 104 amendment – amendments allowable under section 102 – claims as filed defined any alloy with a certain chemical composition – proposed amendments limited the alloy to particular type of alloy with specific physical properties – relationship between the chemical composition and its physical properties well recognised in specification as filed – amendments in substance disclosed in the specification as filed – no section 40(2) or (3) problems introduced as a result of the amendment.
Representation:
Patent applicant: David Longmuir (patent attorney), Phillips Ormonde Fitzpatrick Melbourne
Opponent: Greg Hunt, (patent attorney), Griffith Hack, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004281345
Title:Al-Mg-Si alloy suitable for extrusion
Patent Applicant: Norsk Hydro ASA
Date of Decision: 16 December 2013
DECISION
The opposition is unsuccessful. The proposed amendments filed on 23 December 2011 are allowable under subsection 102 and I allow the request to amend the specification.
Costs are awarded against the opponent Rio Tinto Alcan International Limited.
REASONS FOR DECISION
BACKGROUND
Patent application 2004281345 was filed in the name of Norsk Hydro ASA on 15 October 2004 under the provisions of the PCT. It claimed priority from a Norwegian basic application (NO 20034731) which was filed on 22 October 2003. The Australian application was advertised accepted on 22 July 2010 and a notice of opposition under section 59 was filed on 22 October 2010 by Rio Tinto Alcan International.
Evidence in support in the section 59 opposition was completed on 26 July 2011. On 22 December 2011, the applicant filed a request for leave to amend the specification under section 104. Evidence in answer is currently being held in abeyance under regulation 5.10(1) pending the final outcome of these amendments.
Granting of leave to amend the specification was published under regulation 10.5(2) on 5 April 2012. On 4 July 2012, the section 59 opponent (Rio Tinto Alcan International) filed a notice of opposition under section 104(4) to the proposed amendments. Evidence in the section 104 opposition was completed on 18 October 2013 and a hearing date was set for 23 November 2013. The hearing was held in Canberra with parties appearing remotely by phone (applicant) and videoconference (opponent) from Melbourne.
SPECIFICATIONThe specification as filed relates to an Al-Mg-Si alloy suitable for extrusion at a high speed. As cast, these alloys contain β-AlFeSi intermetallic particles which convert to the α-form during homogenisation. This phase transformation is critical for extrudibility and a good surface finish in the finished alloy product because the plate-like β-particles (but not the more rounded α-particles) cause local cracks (surface defects) in the extruded material.[1]
[1] For example, type="1">
When silicon is present in the alloy at levels above 0.50 wt%, β-AlFeSi particles increase in stability and there is a reduction in the transformation to the α-form. This results in a poorer quality extruded product. It was known that the addition of Manganese (Mn) at levels above 0.02% avoids this type of problem by promoting β to α phase transformation.
The current invention found that there is an additional benefit with Mn in the alloy composition because it forms AlMnFeSi dispersoid particles during homogenisation. These particles act as nucleation sites for Mg2Si particles producing a relatively large number of small Mg2Si particles. The smaller Mg2Si particles dissolve more easily during the preheating and extrusion and therefore produce a high quality billet.
However the specification also notes that alloys with too high a level of manganese have a lower strength in their extruded profiles so an upper limit was imposed on these Mn levels:
“In view of these observations, it is appropriate to impose an upper limit of the Mn level of the alloys so that one achieves the desired increase in extrudibility with a minimum increase in quench sensitivity. For the 3 examples of extrudibility above, the desired effect of Mn has been achieved for Mn levels in the approximate range 0.02wt% - 0.08wt%. Therefore it is reasonable to set 0.08wt% as an upper limit. It is thought that one in most cases may achieve the desired effect within a lower upper limit, for instance 0.06 wt%.”
The specification as filed ended with 4 claims only one of which (claim 1) was independent. This reads as follows:
Aluminium alloy containing Mg and Si, in particular useful for extrusion purposes, characterised in that it contains in wt%:
Mg 0.3-0.5
Si 0.35-0.6
Mn 0.02-0.08
Cr 0.05
Zn 0.15
Cu 0.1
Fe 0.08-0.28 and
In addition grain refining elements up to 0.1 wt% and incidental impurities up to 0.15 wt%.Amendments were filed during examination of the application to both the specification and claims. The main change to claim 1 was to narrow the concentration range of Mn from (0.02wt%-0.08wt%) to (0.035wt%-0.06wt%). Accepted claim 1 (with marked up changes) reads as follows:
An aluminium alloy containing Mg and Si, in particular useful for extrusion purposes wherein said alloy consists of in wt%:
Mg 0.3-0.5
Si 0.35-0.6
Mn 0.035-0.06Cr up to 0.05
Zn up to 0.15
Cu less than 0.1 and
Fe 0.08-0.28
In addition grain refining elements up to 0.1 wt% and Incidental impurities up to 0.15 wt%.
PROPOSED AMENDMENTS
10. The opposed amendments propose a number of changes to the specification and claims. The relevant amendments to this opposition relate to the proposed amendments to claim 1 and the addition of two new claims (claims 2 and 3). These are outlined in full below (with marked up changes underlined):
A homogenised aluminium alloy containing Mg and Si, in particular useful for extrusion purposes wherein said alloy consists of in wt%:
Mg 0.3-0.5
Si 0.35-0.6
Mn 0.035-0.06
Cr up to 0.05
Zn up to 0.15
Cu less than 0.1
Fe 0.08-0.28 andIn addition grain refining elements up to 0.1 wt% and
Incidental impurities up to 0.15 wt%Wherein the alloy further consists of AlMnFeSi dispersoid particles, which are formed during homogenisation and which act as nucleation sites for small Mg2Si particles which are formed during cooling after homogenisation.
An alloy of claim 1, wherein the rate of cooling after homogenisation is between 400oC/hour and 240oC /hour.
An alloy of claim 1 or 2, wherein the content of Mn is between 0.053 and 0.06 wt%.
Relevant Law
11. The request for examination in relation to the patent application was filed on 18 January 2008. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure.
12. Instead, the relevant sections of the Patents Act in the current case are sections 102(1) and (2) as they existed prior to the introduction of the Raising the Bar Act. These are set out below:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(2A) For the purposes of subsection (2), relevant time means:
(a)in relation to an amendment proposed to a complete specification relating to a standard patent---after the specification has been accepted; …….
13. When determining whether a matter is in substance disclosed in the specification as filed [section 102(1)], the courts have basically applied the test for fair basis. Thus for an amended claim to claim matter in substance disclosed in the specification as filed, then in effect that claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
14. The test for fair basis accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69 at [98-99] as being relevant to the consideration of fair basis is:
whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
whether the claims travel beyond the subject matter of the invention described in the specification [Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236].
15. Both parties also referred to the UK decision of Ethyl Corp’s Patent [1972] RPC 169 as support for the proposition that disclosure in substance can include both explicit and implicit disclosures.
DISCUSSION
16. The opponent argued that the amendments to claims 1, 2 and 3 resulted in matter not in substance disclosed in the specification as filed and hence contravened section 102(1). The opponent also suggested that the amendments cause a lack of clarity and fair basis in the claims contravening the provisions of section 40(3) and therefore 102(2)(b). The individual claims are discussed in detail below.
Claim 1
17. The changes proposed to claim 1 are to:
(a)add the term “homogenised” before “alloy” in the preamble of the claim; and
(b)specify that the alloy has certain changes to its microstructure which occur during the homogenisation step (formation of AlMnFeSi dispersion particles).
18. The purpose of the changes is to restrict the claims to alloys with particular physical properties introduced in the homogenisation process. The opponent argued that the specification as originally filed was directed to an alloy composition and the amendments mean that proposed claim 1 now defines a treated alloy (ie: post-homogenised) rather than the “as-cast alloy”. According to the opponent, the homogenised alloy was a “downstream” processing product of the original chemical composition and a separate invention to the composition itself. This resulted in the claim defining the matter not in substance disclosed [contravening section 102(1)] and not being fairly based [contravening both section 40(3) and section 102(2)(b)].
19. However, the original claims do not define an “alloy composition” but an alloy per se. This would include any alloy containing the listed chemical ingredients regardless of its physical form. As the opponent conceded,[2] the chemical composition of an alloy does not change between the as-cast condition and during homogenisation and therefore the original claims would have included both alloys. The proposed amendment simply narrows the scope of the claim to one of these types (homogenised alloys) with specific physical properties.
[2] Opponent’s submissions at 6.8
20. The specification as filed clearly recognised the relationship between the chemical composition of the alloy and its physical properties. Relevant passages of the specification include (but are not limited) to the following:
· With the present invention, it is found that Mn has an additional positive effect on the extrudibility of an AlMgSi alloy. In addition to promoting the transformation of the AlFeSi intermetallic phases, AlMnFeSi dipersoid particles are formed during homogenisation. These particles act as nucleation sites for Mg2Si particles during cooling after homogenisation. In a high quality billet the Mg2Si particles formed during cooling after homogenisation should easily dissolve during the preheating and extrusion operation before the material reach the die opening. With a larger number of dispersoid particles a higher number of Mg2Si particles are formed, resulting in a reduced size of particle. Since the rate of dissolution of an Mg2Si particle is proportional to its size, a high quality billet should contain a certain amount of AlMnFeSi dispersoid particles which promote the formation of a relatively large number of small Mg2Si particles (page 2, lines 4-15);
· The 3 examples on extrudibility shown above have demonstrated that higher numbers of AlMnFeSi dispersoid particles have a positive effect on the maximum extrusions speed of AlMgSi alloys. Since the positive effect of Mn on extrudibility is as a result of the effect of the dispersoid particles on the nucleation and growth of Mg2Si particles, Mn has a positive effect on all AlMgSi alloys and not only on alloys with Si contents above approximately 0.50 wt% (page 8, lines 20-25).
21. In their submissions, the opponent argued that the original (as filed) specification has no claims or statements which refer to the presence of AlMnFeSi dispersoid particles in the composition.[3] However, this argument merely restates the opponent’s thesis that the original claims merely defined the original (as cast) composition. As discussed above, this is not correct. The claims as filed defined any alloy containing each of the chemical elements present in the particle [ie: Aluminium (Al), Manganese (Mn), Iron (Fe) and Silicon (Si)]. Because AlMnFeSi dispersoid particles are produced without altering the chemical composition of the alloy, the claims as filed always encompassed both as-cast and homogenised alloys. The specification as filed clearly recognised that Mn in the alloy composition produced AlMnFeSi dispersoid particles during homogenisation[4]. These particles were also known to confer an advantage in in the extrusion process[5]. There is no suggestion that the invention has changed as a result of the amendment or that there was a separate invention downstream to the as-cast composition.
[3] Opponent’s submissions at [6.13]
[4] Opposed specification as filed at page 2, lines 4-6
[5] Opposed specification as filed at page 3, lines 35-36 (for example)
22. I therefore find that the proposed amendments to claim 1 do not claim subject matter which is not in substance disclosed in the specification as filed. As a consequence, the proposed amendments to claim 1 are allowable under section 102(1). For similar reasons, the proposed amendments is fairly based under section 40(3) and therefore complies with section 102(2)(b).
23. The opponent also argued that there were some clarity problems introduced in the claims as a result of the amendment contravening section 40(3) and section 102(2)(b). In particular, the opponent argued that the term “small Mg2Si particles” in claim 1 was unclear because it contains no indication of what is to be regarded as “small”.
24. I note that a claim does not lack clarity because it uses inexact expressions or is difficult to construe, as long as it provides a “workable standard” suitable to the intended use (as per Henrikson v Tallon Ltd [1965] RPC 434; Minnesota Mining & Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 274. While the terms referred to by the opponent are relative, this does not necessarily mean that they are unclear. In Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420, the Full Federal Court considered the relative term “substantial” portion and found:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”
25. In the current case, the opponent merely noted that the term “small” was relative without explaining why this caused a clarity problem. There is no evidence to suggest that the skilled worker had any real difficulty understanding the scope of the claim. This is a well-worked art and Mg2Si is a common constituent of homogenised aluminium alloys. It is not clear why this term would fail the “workable standard” test and hence the opponent has not established that the term “small” would lack clarity.
26. The opponent also suggested that the proposed amended claim refers to AlMnFeSi dispersoid particles without specifying any quantity or percentage of such particles. However the exact quantity or percentage of such particles is not needed to understand the scope of the claim nor does it appear to be a critical feature of the invention. I am therefore unable to understand how this could leads to either a clarity (or fair basis) problem as argued by the opponent and therefore reject this argument.
27. Finally, the opponent suggested that the words “which act as nucleation sites” in proposed claim 1 are not a proper characterisation of a claim to an alloy but a descriptive of a method. However in the context of the claim, the words aren’t method steps but properties of the alloy itself. Thus, the claim defines an alloy containing AlMnFeSi dispersoid particles which are formed during homogenisation. These particles then have the capability of being nucleation sites to form small Mg2Si particles during cooling. The skilled worker would clearly understand the scope of this claim and there are no section 40(3) issues introduced by the proposed amendment.
Claim 2
28. Claim 2 is dependent on claim 1 and further narrows the main claim to specify that the AlMnFeSi dispersoid particles are formed with a rate of cooling after homogenisation of between 400oC/hour and 240oC/hour. The opponent argued that the specification disclosed both ends of the cooling range but in the separate sections of the specification without any general discussion that the cooling rate could be anywhere within that range. [6]
[6] Opposed specification at page 4, lines 11 and 30-31 exemplifies the fastest cooling rate in the range (400oC/hour) in relation to alloys 1 and 2 in Table 1. Page 5, lines 17-18 then discusses the slowest rate of cooling in the range (240oC/hour) in regard to alloys K0-K4 in Table 3.
29. I accept that the specification does not explicitly discuss the upper and lower cooling rates as a range. Nonetheless aluminium alloy manufacturing processes are well known and the skilled worker would recognise from their CGK that there is a range of cooling temperatures which could be used. The specification clearly discusses both ends of the range and hence a range can be inferred from the slowest and fastest cooling rates points. As noted in the UK decision of Ethyl Corp’s Patent [1972] RPC 169 at page 195:
“The range is sufficiently disclosed by the marker posts. It is not necessary to draw a line around them.”
30. As the applicant’s expert argued, the claimed rate of cooling after homogenisation would have been fairly common and the skilled worker would expect that cooling rates within the two exemplified rates would produce similar results.[7] There is therefore no suggestion that there is anything special or “magic” about the narrower range proposed in claim 2.
[7] Dr Dickson in EIA at [16]
31. Further, the claims as originally drafted (and claim 1 as proposed to be amended) include an alloy produced by any cooling rate. The amendment to claim 2 is simply disclaiming a proportion of the full range of cooling rates defined in claim 1. This was clearly in substance disclosed in the specification as filed. The proposed amendment is therefore allowable under section 102.
Claim 3
32. Claim 3 is dependent on either claims 1 or 2 and further limits both claims to alloys containing a Mn content of between 0.053 and 0.06wt%.
33. The opponent has argued that the only disclosure of an alloy containing 0.053wt% Mn in the specification as filed was the alloy J4 in table 2. However this (specific) composition also contained other elements such as 0.23% Fe, 0.002% Cu and 0.016 Ti. According to the opponent, this did not support a claim to any alloy containing 0.053wt% Mn.
34. I note that the specification as filed includes multiple examples of alloys containing different concentrations of Mn (see figure 1 for example). The specification teaches that a minimum Mn concentration (0.02% wt) was needed to reduce the stability of the β-AlFeSi phase[8] but that there was a maximum level of Mn above which the AlMgSi alloys become quench sensitive[9]. The specification even explicitly suggests a specific range of Mn concentrations that would be expected to be useful in the working of the invention (see page 8, lines 6-10):
“In view of these observations, it is appropriate to impose an upper limit of the Mn level of the alloys so that one achieves the desired increase in extrudibility with a minimum increase in the quench sensitivity. For the three examples of extrudibility shown above, the desired effect of Mn has been achieved for Mn levels in the approximate range of 0.02wt%-0.08wt%. Therefore it is reasonable to set 0.08wt% as an upper limit” (my emphasis)
[8] Opposed specification as filed at page 1, line 27
[9] Opposed specification as filed at page 6, lines 33-37
35. The claims as filed mirror this range and define certain Al-Mg-Si alloy whose chemical composition also includes Mn in the range of 0.02-0.08 wt%. This Mn range was subsequently narrowed in the accepted claims to 0.035-0.06wt% and the same range now appears in claim 1 as proposed to be amended. There is no basis to read down this general disclosure to specific compositions as the opponent has suggested.
36. The same reasoning applies to claim 3. The range 0.053 and 0.06wt% sought to be included into claim 3 falls wholly within the scope of claim 1 both as filed and as proposed to be amended. There is at least one example (and no suggestion of a selective advantage) in this part of the range. Hence the narrower range was in substance disclosed in the specification as filed. The amendment is therefore allowable under section 102.
CONCLUSION
37. In my view, the proposed amendments do not claim matter which was not in substance disclosed in the specification as filed and do not introduce any section 40(3) issues as a result of the amendment. The amendments are clearly allowable under section 102 and I allow the request to amend the specification which was filed on 23 December 2011.
COSTS
38. In matters before the Commissioner, costs normally follow the event and I see no reason to depart from the normal practice in this case. I therefore awards costs against the opponent Rio Tinto Alcan International Limited.
Karen Ayers
Delegate of the Commissioner of Patents
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