Rio Tinto Alcan International Ltd v Norsk Hydro ASA
[2015] APO 40
•17 July 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rio Tinto Alcan International Ltd v Norsk Hydro ASA [2015] APO 40
Patent Application: 2004281345
Title:Al-Mg-Si alloy suited for extrusion
Patent Applicant: Norsk Hydro ASA
Opponent: Rio Tinto Alcan International Ltd
Delegate: Keith Wagg
Decision Date: 17 July 2015
Hearing Date: 13 April 2015, in Melbourne
Catchwords: PATENTS – Section 59 – lack of novelty because the production and sale of the product is considered information made publicly available through the doing of an act – lack of novelty based on a citation where on following a process to make an alloy will give an inevitable consequence that the claim is infringed – lack of inventive step as conventional operating temperatures would be a matter of routine – some claims were not found clearly invalid – opportunity to amend.
Representation: Patent applicant: Malcolm Bell from Phillips Ormonde Fitzpatrick
Opponent:Bruce Caine, SC and Craig Smith from Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004281345
Title:Al-Mg-Si alloy suited for extrusion
Patent Applicant: Norsk Hydro ASA
Date of Decision: 17 July 2015
DECISION
I find that claims 1 and 4 are not novel because of the production and sale of aluminium alloys within the scope of these claims before the priority date. Claim 1 is also not novel and does not involve an inventive step when compared to a prior art document. Claims 2 and 5 do not involve an inventive step over a prior art document. Subject to appeal, Norsk Hydro ASA is given 2 months from the date of this decision to propose suitable amendments to overcome this finding or the application will be refused.
REASONS FOR DECISION
Patent application number 2004281345 (the opposed patent application) was filed on 15 October 2004. The applicant is Norsk Hydro ASA (Norsk). Examination was requested on 18 January 2008 and the application was advertised as accepted by the Commissioner on 22 July 2010. A notice of opposition was filed by Rio Tinto Alcan International Ltd (Rio Tinto). A hearing was held on 13 April 2015 in Melbourne to decide the opposition. Norsk was represented by Malcolm Bell from Phillips Ormonde Fitzpatrick. Rio Tinto was represented by Bruce Caine, SC and Craig Smith from Griffith Hack.
It is noted that the request for examination in relation to the application was filed on 18 January 2008. Consequently, substantive amendments of the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. It is further noted that any subsequent references to sections of the Patents Act relate to the Patents Act 1990 prior to amendment by the Raising the Bar Act.
The specification
The specification relates to improving aluminium alloys containing magnesium (Mg) and silicon (Si) for extrusion by the addition of manganese (Mn). The specification ends with 8 Figures and 6 claims. Claim 1 is the only independent claims and is to the alloy per se. Claim 6 is an omnibus claim.
What is the invention as described
Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
The background to the invention
AlMgSi ingots are produced by heating the alloy and extruding it through a die. The properties of the heated alloy affect its extrudability. Issues with extrudability range from tearing to poor surface properties (granular or deformed).
The specification mentions on page 1 lines 15-24 that it was previously known that Mn has a technical effect when included in AlMgSi alloys. Without Mn, the stability of the β-AlFeSi is increased and during the homogenisation stage and the transformation of the intermetallic AlFeSi from the β form to the α form is retarded. The effect of low transformation reduces extrudability and gives a poor finish. The addition of the Mn promotes transformation of the AlFeSi intermetallics from the β form to the α and thus reduces size and increases the spherodization of the intermetallic. Another issue which exists in AlMgSi alloys is that Mg2Si particles will melt together if the eutectic point of Mg2Si + Al(ss) is reached. This will cause tearing and have a negative effect on surface quality.
The aim of the invention
The aim can be gleaned from the top of page 2 which involves adding Mn to an AlMgSi alloy to improve extrudability. This is done by promoting the transformation of the β phase to the α phase and allowing AlMnFeSi dispersoid particles to be formed during homogenisation. The dispersoids act as nucleation sites for Mg2Si particles during cooling after homogenisation. This gives a greater number of smaller particles which can readily dissolve during pre-heating and then a larger number of Mg2Si particles of smaller size are formed after extrusion. Dispersoids are therefore present in the billet.
The nature of the invention
In order for the transformation of the β phase to the α phase and the dispersoids to form and serve their purpose as nucleation sites, Mn must be added. Figure 1 shows that with a typical alloy and the Mn content varied, the amount of dispersoids formed will depend on the amount of Mn. The profile of elements present in the alloy is given on page 2 and is reflected in claim 1.
The specification then discusses other factors which affect the Mg2Si particle size on page 6 lines 25-26 and lines 32-33:
“The Mg2Si particle size depend on factors like Mg and Si content of the alloy, cooling rate after homogenisation and the nucleation conditions for Mg2Si particles.”
10. The cooling rate is 240 ºC per hour in the examples in figure 5 and table 3 and 400 ºC per hour in table 1.
11. The cooling after homogenisation is discussed on page 6 in the following terms:
“The cooling rate after homogenisation is more or less given by the cooling equipment and the diameter of the billets, and an increase of the cooling rate would require major investments in the cast house.”
12. The other factor is the nucleation conditions and these are said to be governed by the Mn by this disclosure at lines 31-32 on page 6:
“As demonstrated above it is possible to alter the nucleation conditions for the Mg2Si particles by adding small amounts of Mn to the alloy.”
13. The Mn forms AlMnFeSi dispersoids and these act as nucleation sites for Mg2Si particles and this keeps their size small and gives them are larger distribution through the alloy.
14. The AlMnFeSi dispersoids are said to be formed during homogenisation (see page 1 last line). No details of the homogenisation step are provided.
The Claims
15. The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification"
16. All of the claims are to the alloy per se.
17. Claim 1 is the only independent claim and it reads:
“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
In 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.”
18. Claim 2 is dependent on claim 1 but defines the cooling after homogenisation to be between 400 ºC / hour and 240 ºC / hour.
19. Claim 3 is dependent on either claim 1 or 2 and further limits the amount of Mn to be between 0.053 and 0.06 wt%.
20. Claim 4 is dependent on any preceding claim but limits the Fe to be between 0.18 and 0.25 wt%.
21. Claim 5 is to the alloy of any preceding claim but the temperature prior to extrusion is between 430 and 510 ºC.
22. Claim 6 is an omnibus claim to the alloy of any preceding claim substantially as herein before described with reference to any one of the Examples and/or accompanying figures.
23. The claims relate an alloy with three distinct features:
1) the nature of the alloy is a homogenised aluminium with Mg and Si for extrusion.
2) the element profile is defined in wt% and includes Mn in defined amounts.
3) the alloy consists of AlMnFeSi dispersoid particles and these particles must be able to serve a function. The function is that they must act as nucleation sites for small Mg2Si particles which form during cooling after homogenisation.
24. Claims 2 and 5 have additional features which state that when the alloy is made it has been cooled after homogenisation at a particular rate and then heated prior to extrusion at a particular rate.
The opposition
25. The statement of grounds and particulars identified 5 grounds of opposition and these were:
1) Not a Manner of New Manufacture
2) Lack of Novelty
3) Lack of Inventive Step
4) Lack of Sufficiency
5) Lack of Clarity
6) Lack of Fair Basis.
26. At the hearing, the opposition was limited to the grounds of lack of novelty, inventive step, sufficiency and Fair Basis.
27. The parties relied upon evidence by several declarants with annexures.
28. Evidence in support consists of a declaration by William Ramsay Heath (Heath), and a declaration by Malcolm J. Couper (Couper). Evidence in answer consists of a declaration by Jostein Røyset (Røyset). Evidence in reply consists of a declaration by Nicholas Charles Parson (Parson), a declaration by Jian-Feng Nie (Nie), a declaration by Ryan Holton (Holton #1) and a second declaration by Ryan Holton (Holton #2). I will refer to the relevant parts of the evidence where appropriate.
Standard of proof
29. The onus of proof in this opposition proceeding rests with the opponent, who must demonstrate that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [67]; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18]; 79 IPR 426).
Novelty
30. It is a requirement of subsection 18(1) of the Patents Act 1990 (the Act) that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel in the light of the prior art. A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim.
31. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 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"
32. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
33. Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 (the General Tire case) at 485 – 486:
"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented (Flour Oxidizing Co. Ltd. v. Carr & Co. Ltd. (1908) 25 R.P.C. 428 at 457, line 34, approved in B.T.H. Co. Ltd. v. Metropolitan Vickers Electrical Co. Ltd. (1928) 45 R.P.C. 1 at 24, line 1). A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
34. Subsection 7(1) also states that an invention is taken to be novel unless it is not novel over prior art information made publicly available through the doing of an act. Such acts include prior use or sale.
35. Bennett J summarised the law on prior use in Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31 at 57-58:
“In order to destroy novelty, the information must enable the notional person skilled in the art at once to perceive, to understand and to be able practically to apply the discovery without the need to carry out further experiments (Insta Image at [124] citing Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 581-582). Mere observation in the absence of direct evidence of what could be gleaned from such observation does not discharge the onus to establish an enabling disclosure (Insta Image at [125]). In Insta Image, the evidence established that people looked in detail at the way the product, a canopy, was structured and put together and that simple visual inspection was an adequate means of giving the person skilled in the art an understanding of the invention (Insta Image at [146]), whereas in Jupiters, mere observation would not disclose the necessary features, and in the absence of direct evidence from a person skilled in the art of what could be gleaned from such observation, the Full Court was not prepared to conclude that it was sufficient to constitute an anticipation (Jupiters at [147]).
Accepting that the customer was a person of skill in the art, which is not in dispute, it is necessary, to establish lack of novelty, that the evidence established that the disclosure of the RolaShades product enabled the person to understand the invention by disclosing the essential integers of it. Mere observation of the way that it worked did not provide such an enabling disclosure. There was no evidence that any customer was in fact interested in the internal componentry of the RolaShades product, or that any customer was in fact free to examine the product as he or she pleased, or that any customer actually had the opportunity to ascertain the internal workings of the RolaShades product.”
36. Rio Tinto relied on one citation and prior use to allege lack of novelty. I will deal with these separately.
Lack of novelty based on prior use
37. Rio Tinto relied on evidence from Heath and Holton #1 that included a sales order (RH-1), a tax invoice (RH-2), a manifest enquiry (RH-3) and a certificate of analysis (RH-4) as proof of prior use. One can match the serial numbers on the certificate of analysis with the manifest enquiry and then the sales order and tax invoice. It is clear that sales of the billets in the Holton #1 annexures were in October 2001, which is before the priority date of October 2003. These billets were said to be within the scope of claims 1 and 4.
38. The sales order (RH-1) refers to “unwrought aluminium alloy billet SF6060 204 x 5950 mm homogenised”. I am therefore satisfied that these billets had been subjected to a homogenisation step.
39. There are 56 different billets which have been analysed and the opponents took an average of the analysis and included it in their submissions.
40. The example Y75242 is one that I will look at as it can be easily found to match up with the examples in RH-1-4.
41. The certificate of analysis of Y75242 shows it was made in Queensland at the Gladstone plant. It has the manifest number/serial number of 34006076-1-1 and the order#sales of 00134756-50-0. It was therefore produced and sold in October 2001, if you use the manifest number 6198 on the invoice. The customer who received the billets has been redacted for commercial reasons but it is declared in Holton #1 at paragraph 4 that the SF6060 alloys were produced and sold in Australia in October 2001. It has the following elemental analysis:
Y75242 Claim 1 Mg 0.38 Mg 0.3-0.5 Si 0.52 Si 0.35-0.6 Mn 0.04 Mn 0.035-0.06 Cr <0.01 Cr up to 0.05 Zn <0.01 Zn up to 0.15 Cu <0.01 Cu less than 0.1 Fe 0.19 Fe 0.08-0.28 42. The Y75242 sample also had Ti at 0.01 wt% and other metals up to 0.04 wt%. These are said to fall within the scope of “other grain refining metals” and “impurities” in claim 1 and this was not disputed.
43. It is clear that the elemental analysis of the billets sold in October 2001 is within the scope of the claim and that these have been homogenised.
44. The Holton #2 declaration refers specifically to the changes in the homogenisation treatment of SF6060 sold in October 2001 (see paragraph 4). However, these technical notes are dated in November 2001 which is after the billets would have been delivered to the customer. The technical notes are heavily redacted for commercial reasons but claim 1 only refers to a homogenised alloy and it is clear from the information that the alloy was homogenised as in claim 1.
45. I am therefore satisfied that the first two features of claim 1 are present in the billets sold in 2001. There is a homogenised aluminium alloy and the elemental composition.
Were dispersoids present?
46. Whether or not the feature of the dispersoids is present is another question. In the Parson declaration at paragraph 44, he states:
“Rio Tinto Alcon in Australia does not have any reports of microstructural analysis of homogenized SF6060 alloys that were produced before the priority date of 22 October 2003 of the amended Hydro specification. It was not the practice of Rio Tinto Alcan in Australia to carry out microstructural analysis of production alloys as a matter of routine at the time…. Therefore, Rio Tinto Alcan in Australia does not have any direct evidence of the microstructure of the SF6060 alloys produced before the priority date of 22 October 2003 of the amended Hydro specification.”
47. In order to show dispersoids would have been present in the ingots sold in October 2001 an ingot was made according to the same process conditions as those of 2001 by Rio Tinto Alcan in New Zealand. These new ingots were tested by Monash University for the formation of dispersoids that acted as nucleation sites for Mg2Si. The analysis is provided in the Nie declaration.
48. In paragraphs 46 and 47 of the Parson declaration I am told that the ingot produced at the New Zealand plant #S33624 “had been homogenized in accordance with the procedure that was in place at Rio Tinto operations in Australia and NZ since before the priority date”. I am told that:
“This procedure includes heat treating the alloys for 2-2.5 hours at an homogenisation temperature in a range of 570-585 ºC and then cooling the alloys at an average cooling rate of 370-740 C/hr from the homogenisation temperature to a temperature range of 100-250 ºC depending on diameter and then water quenching the alloys to ambient temperature at that point.”
49. He then goes on to tell me, as is consistent with the Nie declaration, that:
“…the microstructure of the homogenized SF6060 alloy slice comprises AlMnFeSi dispersoid particles that formed during homogenisation and small MgSi rich particles that nucleated on these dispersoids during cooling after homogenisation.”
50. He acknowledges the precise composition of the MgSi rich particles is unknown. However, the term Mg2Si is used in the art to refer to the two elements whether they are in a 2:1 stoichiometry or 1:1 (see Røyset paragraph 10).
51. Røyset responded to the Heath declaration with the following comments at paragraph 121:
“…The Comalco alloys described in Heath’s statutory declaration are said to be homogenised alloys having the compositions set out the Certificates of Analysis annexed to the Heath Declaration. However, the declaration and annexures do not provide any information as to the microstructure of the alloys nor the process conditions of homogenisation, including the duration of the homogenisation, the temperature at which the homogenisation is carried out and in particular the rate of cooling after homogenisation. As I set out above, the process conditions are important. In the absence of this information and or any analysis of the microstructure, I consider that it is impossible to draw any conclusions as to the microstructure of the alloys, let alone the formation of AlMnFeSi dispersoids during homogenisation or small Mg2Si particles during cooling after homogenisation as required by claim 1 of the patent specification.”
52. Røyset mentions the homogenisation at paragraph 15:
“The homogenisation process involves heating the cast alloy to a high temperature, and for 6060 and 6063 alloys traditionally in the range of 560 ºC to 585 ºC. This is well below the melting point of the alloy. However, the temperature is sufficiently high for the particles of Mg and Si to dissolve and for the Mg and Si atoms to diffuse through the aluminium matrix to provide a more homogenous mixture.”
53. It is clear from page 1 line 36 that the “AlMnFeSi dispersoid particles are formed during homogenisation.” The opposed patent application is wholly silent on the temperature of the homogenisation step and the person skilled in the art would therefore be left with the currently known homogenisation conditions as outlined above by Røyset.
54. Therefore all that needs to be present for the dispersoids to form is the requisite amounts of the elements, namely Mg, Si, Fe and Mn in the aluminium alloy. As these elements are present then the usual homogenisation process, no different to any disclosed in the opposed application, would inevitably result in the formation of dispersoids which act as nucleation sites for Mg2Si particles.
55. I am therefore satisfied that the billets sold in 2001 would have contained dispersoids as they are an inevitable consequence of the homogenisation step.
56. Thus, the alloys sold in 2001, such as Y75242, contain all the features of claim 1 and claim 4 (as the iron content is within the ranges of claim 4).
Would the billets therefore be considered publicly available and would the person skilled in the art be able to replicate the billets sold in October 2001?
57. As outlined above, alloys within the scope of claims 1 and 4 were produced and sold in Australia before the priority date. A person skilled in the art could have bought these alloys and obtained an elemental analysis and been aware of the presence of Mn. The receipts also clearly indicate that the alloys were homogenised. The person skilled in the art would have readily been able to replicate the sold product using standard equipment and without the need for any experimentation and would have infringed claims 1 and claim 4.
58. I therefore find that claims 1 and 4 lack novelty because the invention defined in these claims was made publicly available by the production and sale of billets within the scope of these claims.
Lack of novelty based on a citation
59. The only citation relied on in the hearing was the following document which was filed in evidence in support as exhibit MJC-6 to the Couper declaration:
S. Zajac et al. “Microstructure control and extrudability of Al-Mg-Si alloys microalloyed with manganese” Materials Science and Technology (1994) 10: 323-333 (Zajac).
60. Zajac was published in 1994 and consequently it is part of the prior art base for novelty against claim 1.
61. Zajac discloses Al-Mg-Si alloys with Mn added. The benefits of adding Mn to the Al-Mg-Si alloy is taught by Zajac can be summarised in the following passage:
“The transformation of the β-AlFeSi phase to the α-AlFeSi phase is markedly accelerated by the addition of a small amount of Mn.” (see page 332)
62. And:
“It has been pointed out that the addition of Mn, which enhances the β-α transformation, also improves the uniformity of the Mg2Si phase distribution.” (see page 323)
63. There are two alloys in Zajac which are relevant to the opposed patent application. These are referred to in Zajac as 1Mn and 3Mn. Under the experimental section on page 323, the alloys are discussed then in Table 1 on page 324 the chemical composition of alloys provided in wt%. It outlines the following:
1Mn 3Mn Claim 1 Mg 0.49 Mg 0.49 Mg 0.3-0.5 Si 0.41 Si 0.41 Si 0.35-0.6 Mn 0.049 Mn 0.049 Mn 0.035-0.06 Cr 0.01 Cr 0.01 Cr up to 0.05 Zn not given Zn not given Zn up to 0.15 Cu 0.01 Cu <0.01 Cu less than 0.1 Fe 0.15 Fe 0.15 Fe 0.08-0.28 64. There is no dispute that the elemental composition of the alloys falls within the scope of claim 1.
65. The alloys 5Mn and 6Mn have levels of Mg and Si greater than those of the claims but do have Fe at 0.19 and 0.20.
66. The difference between the 1Mn and 3Mn billets was their size with the diameter of the 1Mn being 155 mm and the 3Mn being 317 mm. This is said to affect cooling rates with the smaller billets cooling more rapidly. The results also stated that the grain size was 50% larger in the large billets than in the smaller billets.
67. The homogenisation temperature was between 545 and 600 ºC for times in the range of 1-20 h and after homogenisation the specimens were cooled at 50 K min -1 (see page 324). When the billets were retained for full scale extrusion cooling was at ~7.5 K min-1 (450 K hour-1) after homogenisation through the interval temperature of 450-200 ºC then preheating to the extrusion temperature was carried out (see page 324).
68. I agree with Røyset that the main focus of the Zajac paper is the transformation of the β-α phase transformation.
69. Referring to the 0.03 % Mn used in the known 6063 alloy, Røyset believes Zajac teaches away from the opposed patent application (paragraph 80).
70. Røyset states that (at paragraph 79):
“There is nothing in the Zajac paper which suggests that it would be beneficial or appropriate to use more than that amount.”
71. He then focuses on the breakout pressure. However, it is clear to me that Zajac teaches a homogenised aluminium alloy with the same elemental profile as claim 1 as shown above for the examples 1Mn and 3Mn.
72. The issue is if the person skilled in the art were to follow Zajac and make either the 1Mn or 3Mn alloy, would AlMnFeSi dispersoids form which could act as nucleation sites?
73. Figure 2b of Zajac shows the micro structure of the 1Mn alloy and while this figure demonstrates that spheroid α-Al-Fe-Si is present, there is no indication that AlMnFeSi dispersoids have formed. However, this was not the focus of Zajac and the diagrams are not clear enough to determine if they are present. I thus arrive at the following question.
Would dispersoids be an inevitable consequence of the Zajac paper?
74. As outlined above for prior use, the dispersoids are formed during the homogenisation of the alloy (see page 1 last line of the opposed patent application). Given that no homogenisation conditions are given in the opposed application, and those of Zajac appear to be standard (between 545 and 600 ºC, see page 324), the formation of the dispersoids is inevitable and consequently claim 1 is not novel over Zajac.
Inventive step
75. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (subsection 7(3)).
76. The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286 Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
77. The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411 approved this approach.
78. A lack of inventive step was alleged against claims 1 to 6 in the light of the Zajac document.
79. Norsk stated in their submissions that there is no evidence that any document would have been ascertained, understood and regarded as relevant (see paragraphs 99-102 of their submissions).
80. Rio Tinto stated that a person skilled in the art would conduct literature searches (see paragraph 65 of their submissions). This is supported by the fact that each of the expert witnesses has extensive lists of academic publications and patents on their CVs (see paragraph 64 of their submissions). I therefore find that the journal article would have been ascertained by the person skilled in the art.
81. The title of Zajac would have been regarded as relevant and the disclosure would have been understood by the person skilled in the art.
82. Claim 1 was found to be not novel as outlined above, it follows that claim 1 is also not inventive.
83. The cooling conditions used in Zajac, ~7.5 K min-1, are equivalent to 450 K hour-1 and outside of the scope of claim 2. Zajac uses a fast cooling rate, however, it is noted that 240 ºC and 400 ºC are similar to widely used cooling rates (Parson paragraph 28 and 39). However, the opposed specification states that the cooling rate would depend on the equipment used and the diameter of the billets and would require great investments to change (page 6, lines 28-33). Given that these are widely used cooling rates, a person skilled in the art could carry out the invention on different equipment and thereby arrive at the cooling rate of claim 2 and therefore this claim is not considered to involve an inventive step.
84. The amount of Mn used in 1Mn and 3Mn of Zajac is 0.049 wt%, this is below the range of claim 3 (0.053 and 0.06 wt %) and thus claim 3 is novel over Zajac. The evidence does not establish it would be a matter of routine Mn used in Zajac to arrive at the current claim 3. I do not see why the person skilled in the art would add more Mn. Therefore I find that claim 3 involves an inventive step.
85. The examples 1Mn and 3Mn in Zajac use 0.15 wt% of Fe, this is below the range required to fall within the scope of claim 4 (0.18 and 0.25 wt %). While Fe occurs as an unavoidable impurity, it is part of the dispersoids as they are AlMnFeSi, so I do not accept that it is “not material to the properties of the alloy” as suggested in the Couper declaration at paragraphs 10 and 21. Furthermore, I do not see any motivation and no routine steps have been set out to me that would have led the person skilled in the art to claim 4. Therefore I find claim 4 involves an inventive step over Zajac.
86. Zajac does not disclose the extrusion temperatures. However, both Røyset and Couper state that the temperatures of claim 5, between 430 and 510 ºC, are conventional for these kinds of alloys. Therefore it would be a matter of routine for a person skilled in the art to use conventional temperatures and arrive at this claim. Therefore claim 5 does not involve an inventive step over Zajac.
87. Claim 6 is an omnibus claim and the examples differ from those of Zajac. Again, I have not been provided with evidence on routine steps that a person skilled in the art would take in order to arrive at this claim. I therefore find that this claim is inventive.
Full description
88. It is a requirement of subsection 40(2) of the Act that the specification must describe the invention fully. The High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25], 207 CLR 1 at 17 explained this requirement as:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"
89. The opponents allege a lack of sufficiency by highlighting that Dr Røyset mentioned that the homogenisation and cooling conditions are critical for the AlFeMnSi dispersoids to form. However, I have no evidence that when provided with the specification, a person skilled in the art could not make the claimed alloy by using standard known techniques in the art (i.e. standard homogenisation conditions). Therefore I find that this ground of opposition fails.
Fair basis
90. It is a requirement of subsection 40(3) of the Act that the claims must be fairly based on the matter described in the specification. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69], 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
"the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification"
91. Rio Tinto’s argument focused on saying there is a lack of explanation in the specification that Mn between 0.035 and 0.06 wt% gives any benefit nor is there for the narrower range in claim 3. They also allege that there is no real and reasonably clear disclosure of an Al-Mg-Si alloy with the elemental breakdown given in claim 1 in terms of these being essential to the invention. It is clear from the specification that the elemental breakdown given in claim 1, particularly with respect to the amount of Mn, is required for the dispersoids to form. There are examples and consistory clauses and the invention described specifically relates to the Mn in the alloy, so I see no reason why this ground should succeed.
92. Rio Tinto also allege no support for the cooling temperatures between 240 and 400 ºC of claim 2 or the extrusion temperature in claim 5. They argue that these cannot be considered essential features. However, as pointed out by Røyset, these temperatures are important for the formation of the dispersoids and smaller Mg2Si particles and therefore serve a purpose and the examples do use them so there is a real and reasonably clear disclosure of them. I therefore find this ground of opposition fails.
Conclusion
93. Claims 1 and 4 are not novel because the alloys produced and sold in 2001 fall within the scope of these claims and this is considered to be an act that makes this information publicly available. Claim 1 is also not novel and does not involve an inventive step over the prior art document (Zajac). Claims 2 and 5 do not involve an inventive step in the light of Zajac. The opposition is therefore partially successful. Some claims were not considered clearly invalid and therefore, subject to appeal, the applicant has 2 months from the date of this decision to propose suitable amendments or the application will be refused.
Costs
94. The parties submitted that costs should follow the event. I see no reason to depart from that result. The opposition has been successful so costs should be awarded against Norsk.
Keith Wagg
Delegate of the Commissioner of Patents
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