Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited
[1997] APO 40
•4 September 1997
official notice
decision of a delegate of the commissioner of patents
Application : No. 646918 in the name of NIPPON KAYAKU KABUSHIKI KAISHA and SANKYO COMPANY, LIMITED
Title: New hydrazine derivative and pesticidal composition comprising said derivative as an effective ingredient
Action: Opposition under section 59 of the Patents Act 1990 by ROHM AND HAAS COMPANY
Decision: Issued
Abstract
The opposition is successful on the ground of inventive step, but unsuccessful on the grounds of novelty, manner of manufacture, fair basis and sufficiency.
Novelty: The question of novelty involves asking whether a citation discloses all the essential features of the invention claimed. [page 4]
The invention is defined by the structural formula of the compounds. In order to establish that a part of the structure is not essential it is necessary to demonstrate that the activity of the compounds is present when that group is absent (that is, replaced by hydrogen), and when the group is replaced by different groups, for example, groups that are neither isosteric nor isoelectronic. [page 8]
The date of publication appearing on the front of a patent specification is prima facie evidence of the date of publication. While it is possible that a document was actually published on a different date, there must be some cogent evidence brought forward in order to displace the logically sound presumption of the accuracy of the document. [page 9]
The disclosure for novelty purposes of a citation in generic terms is the technical content of the document, rather than the intellectual content. [page 11]
None of the citations discloses in its technical content any compounds within the scope of the claims as presently drafted.
Inventive step: The question of inventive step involves asking whether the compounds presently claimed are routine variations that a person would reasonably expect to have the desired activity (although success is not guaranteed), in the light of the compounds forming the technical content of a citation. [page 14]
Compounds that are within the intellectual content of a citation would be expected to have the same properties as the compounds within the technical content, and there is no invention in merely preparing those compounds and confirming their properties. This is a conclusion that is available from the document itself. [page 14]
Compounds outside the intellectual content of the disclosure can be obvious variations, but this conclusion depends on the evidence of relevantly skilled witnesses. [page 15]
There is no inventive step in the light of one of the citations because the evidence of the witnesses establishes that there were obvious variations to the compounds disclosed in the technical content, although success was not guaranteed.
Manner of manufacture: The application satisfies the threshold test for invention as it provides alternative or further compounds possessing a technically useful property. [page 21]
The application is not an analogous use of a dibenzoylhydrazine moiety to make compounds for which its properties make it suitable as the activity of the dibenzoylhydrazine has not been demonstrated. [page 21]
Fair basis: The claims are fairly based even though they are directed to compounds that are not exemplified and do not have demonstrated activity. [page 22]
Sufficiency: The specification does not specify how to prepare some of the compounds that are used as starting materials for preparing compounds claimed as the invention. A method of preparation of some of these compounds is known in the chemical literature, and it would not have involved the exercise of inventive faculty to locate this information. In relation to other compounds that could not be prepared by analogous processes, there is no evidence whether there were alternative preparative processes known in the chemical literature. [page 23]
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 646918 by NIPPON KAYAKU KABUSHIKI KAISHA and SANKYO COMPANY, LIMITED, and opposition by ROHM AND HAAS COMPANY under section 59 of the Patents Act 1990
background
Patent application 10317/92 was filed on 17 January 1992 by Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited (hereafter referred to as the applicants). The application was advertised accepted on 10 March 1994 and assigned the serial number 646918. On 10 June 1994 a notice of opposition to the grant of a patent was filed by Rohm and Haas Company (hereafter referred to as the opponent).
The service of evidence was completed on 21 May 1996. During the service of evidence, the specification was amended by the applicants.
The matter was heard in Canberra on 20 March 1997. The applicants were represented by Mr Royal, assisted by Mr Bell, patent attorneys of Phillips Ormonde & Fitzpatrick, Melbourne. The opponent was represented by Dr Bennett of counsel, assisted by Mr Bodkin, patent attorney of Spruson & Ferguson, Sydney.
grounds of opposition
The statement of grounds and particulars recites the grounds of opposition as all grounds available under section 59 of the Patents Act 1990.
evidence
The evidence in support of the opposition consists of declarations by John Francis McCann, Glen R. Carlson, Tony Cargnelutti, Gregory John Cox and George Crank.
The evidence in answer consists of a declaration by Ian David Rae.
No evidence in reply was served.
The evidence is quoted where relevant in this decision.
Submissions
Dr Bennett made submissions on the following matters:
. novelty
. obviousness
. manner of manufacture
. section 40
. costs
Mr Royal made submissions on all of these matters.
decision
The relevant law
The present opposition is governed exclusively by the Patents Act 1990 and the associated Regulations.
In patent oppositions the onus of justifying their case lies upon the opponent, who must establish that it is clear that a valid patent cannot be granted (Stamp v W.J.Powell Pty Ltd (1918) 24 CLR 339, Henry Berry & Co. Pty Ltd v Potter (1924) 35 CLR 132).
Matters to be decided
The matters that have to be decided in this opposition are:
i) novelty
ii) obviousness
iii) manner of manufacture
iv) section 40
v) costs
Before considering the substance of the opposition I will briefly discuss the specification.
The specification
The specification relates to a class of hydrazine derivatives represented by the formula
Formula I
The compounds of formula I are stated to be pesticidally active, having the desirable properties of "substantially does not affect to useful insects, environment, etc., has a low toxicity to human and animal and shows an excellent control effect against chemical-resistant harmful pests" [page 2]. The specification ends with seven claims, directed to compounds of formula I (claims 1 to 5), an insecticidal composition containing compounds of formula I (claim 6) and a method of controlling harmful insects by applying compounds of formula I (claim 7).
Claim 1 reads as follows:
1. A hydrazine derivative represented by the following formula (I):
(I)
wherein
A represents -O- or -CH2-;
B represents -O- or -CH2-; with the proviso that when A is -CH2-, B is -O- and when A is -O-, B is -CH2-;
R1, R2, R3 and R4 each independently represent a hydrogen atom or a methyl group;
R5 represents a (C1-C4)alkyl group, a (C1-C4)haloalkyl group or a halogen atom;
R6 represents a hydrogen atom, a (C1-C4)alkyl group or a halogen atom;
R7 represents a hydrogen atom or a halogen atom;
R8, R9 and R10 each independently represent a hydrogen atom, a (C1-C4)alkyl group, a (C1-C4)haloalkyl group, a halogen atom, a nitro group, a (C1-C4)alkoxy group, a (C2-C4)alkenyloxy group, a (C2-C4)alkynyloxy group, a (C2-C4)alkenyl group, a (C1-C4)haloalkoxy group, a phenyl(C1-C4)alkoxy group whose phenyl moiety is optionally substituted with a halogen atom, or a phenoxy(C1-C4)alkoxy group whose phenyl moiety is optionally substituted with a (C1-C2)alkyl group, CF3 or halogen atom;
R11 represents a hydrogen atom, a cyano group, a (C1-C4)haloalkylthio group, a (C1-C4)alkoxycarbonylcarbonyl group or a (C1-C4)alkylcarbonyloxymethyl group;
R12 represents a branched (C4-C8)alkyl group; and
n represents 0.
Novelty
The statement of particulars identifies four documents as relevant to the issue of novelty:
. EP 236618
. EP 245950
. EP 286746
. JP 03-141245
a) The relevant law
The test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement"
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at page 517; 16 IPR 545 at page 549). 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 (see definition of "prior art base" in Schedule 1 of the Act).
It was also suggested by Dr Bennett that I could also approach the novelty issue on the basis that even though the invention is novel according to the reverse infringement test, a lack of novelty could be found if the difference lies in an arbitrary limitation (Application by National Research Development Corporation (1992) 24 IPR 123 at 128). I am not convinced that there is a curially sanctioned test other than the reverse infringement test.
b) Priority date(s) of the claims
The application claims priority from two Japanese documents: JP 23680/91 dated 25 January 1991, and JP 298313/91 dated 17 October 1991. These documents are respectively exhibits GC-2 and GC-3.
Dr Bennett asserted that due to the amendments to the specification, the claims were no longer entitled to the earliest priority date. This submission is best understood by referring to Professor Crank's declaration, at para 9:
"In my opinion, the claims of the opposed application encompass compounds, compositions, processes or methods which were not disclosed in Japanese Patent Application Nos. 023680/91 and 298313/91. For example, many of the substituents of formula (I) defined in claim 1 of the opposed application are not disclosed in either Exhibit GC-2 or Exhibit GC-3. In addition, many of the exemplified compounds in the opposed application were not disclosed specifically in either Exhibit GC-2 or Exhibit GC-3. Further, some of the exemplified compounds in the opposed application (for example those such as 1-35 and 1-36 in which two of R5-R7 are other than hydrogen) were not disclosed even broadly in Exhibit GC-3 and many of the exemplified compounds in the opposed application (for example those in which one of A and B is other than O, S, NR) were not disclosed even broadly in Exhibit GC-2. Accordingly, in my opinion what is claimed in the opposed application was not disclosed either on 25 January 1991 (which I note is stated on Exhibit GC-2 to be the date of application of Japanese Patent Application No. 023680/91) or on 17 October 1991 (which I note is stated on Exhibit GC-3 to be the date of application of Japanese Patent Application No 298313/91). To illustrate some of the differences between Japanese Patent Application Nos. 023680/91 and 298313/91 and the opposed application refer to Exhibit 'GC-4' which includes a Table comparing the disclosures of Japanese Patent Application Nos. 023680/91 and 298313/91 with claim 1 of the opposed application. For example I note that Japanese Patent Application No. 023680/91 did not disclose compounds of formula (I) in which A and B were other than O, S or NR."
JP 23680/91 is dated 25 January 1991. This document relates to hydrazine derivatives having the formula
The definition of A and B is "A and B are the same or different, and represent O, S, or NR" [page 1]. Clearly the compounds of the present invention, where one of A or B is O and the other is CH2, are not encompassed by this Japanese document. Consequently, the present application is not entitled to priority from this document.
JP 298313/91 is dated 17 October 1991. This document relates to hydrazine derivatives having the formula
The definition of the variables overlaps, in part, with the definition of the corresponding variables in the present application. The relevant values of the variables of the present application that are disclosed, at least in general terms, by this Japanese document are as follows:
| Disclosed | Not disclosed | |
| R1 | H, Me | - |
| R2 | H, Me | - |
| R3 | H, Me | - |
| R4 | H, Me | - |
| R5 | alkyl, haloalkyl, halogen | - |
| R6 | H | alkyl, halogen |
| R7 | H | halogen |
| R8 | H, alkyl, haloalkyl, halogen, nitro, alkoxy, alkenyl, haloalkyl | alkenyloxy, alkynyloxy, phenylalkoxy, phenoxyalkoxy |
| R9 | H, alkyl, haloalkyl, halogen, nitro, alkoxy, alkenyl, haloalkyl | alkenyloxy, alkynyloxy, phenylalkoxy, phenoxyalkoxy |
| R10 | H, alkyl, haloalkyl, halogen, nitro, alkoxy, alkenyl, haloalkyl | alkenyloxy, alkynyloxy, phenylalkoxy, phenoxyalkoxy |
| R11 | H*, haloalkylthio*, alkoxycarbonylcarbonyl*, alkylcarbonyloxymethyl | CN |
| R12 | branched alkyl | - |
| A | O, CH2 | - |
| B | CH2, O | - |
| n | 0, 1 | - |
* This value does not seem to be part of the general definition, but is exemplified.
Consequently, the present specification is in part entitled to priority from this document.
The specification as filed on 17 January 1992 relates to compounds of the formula
The values of the variables include all of the values presently claimed (and many more). Consequently all of the matter not disclosed by JP 298313/91 is entitled to priority from the specification as filed. There are thus two priority dates for the claimed subject matter:
17.10.91 - matter disclosed in JP 298313/91
17.01.92 - matter not disclosed in JP 298313/91
c) The essential features
It is well established that patent claims are to be given a purposive construction, and that the initial assumption is that all features of the independent claims are essential (Catnic Components v Hill & Smith Ltd [1982] RPC 183). A feature can be regarded as not essential if it does not appear to make any difference to the inventive concept.
The features of the invention defined by claim 1 are a compound having the structural formula as shown in formula 1, and the variables limited as defined. Both parties made submissions on whether parts of the structural formula should be regarded as inessential. I was referred to the comments that I made on this subject in Application by American Home Products Corporation, Patent Office decision, 28 September 1994, patent application number 16397/92, unreported, at page 8:
"Where a compound is characterised by a structural formula, the next question is whether all structural features are essential to the invention as claimed. One possibility is that there can be structural features that do not materially affect the activity of the compound, and are thus not essential features. Normally the activity of a compound cannot be predicted from its structure, so it is not possible to say whether any part of the structure does not materially affect the desired activity. The alternative is that a structure should be regarded as a combination in the patent sense: 'the combination of a number of known integers which work in relation to one another so as to produce a new or improved result' (Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at page 475). For instance, each of the radicals in the structure is known, but the arrangement of the radicals into the structure results in something more than the sum of the radicals that make it up. In such a case, all structural features would be essential.
As a matter of principle, I believe that it is possible that there can be inessential parts of a structure, but that this would not normally be the case. In the examination of an application it is safer to start with a presumption that all the features of a structure are essential, and displace that presumption only on the basis of a sound argument."
I still believe this to be a correct statement of the relevant principles. Within the context of opposition proceedings the presumption that all parts of a structure are essential should equally apply, and this presumption should only be displaced by sound argument.
I was also referred to United Biomedical Inc v Genetics Systems Corporation (1993) 27 IPR 393. This was a Patent Office decision relating to peptides, in which some of the structure was given as specific amino acids, and other parts were represented by variables that were subsequently defined. In this sense it resembles the generic formula of the present claims. The Delegate of the Commissioner decided that the variable portions of the structure were optional, and not essential features. This is consistent with my view that parts of a structure can be inessential. Dr Bennett also referred to Merck & Co, Inc v Sankyo Co Ltd (1992) 23 IPR 415 as relevant to this point. In that case, Lockhart J considered an amendment to change the identification of a substituent in the spiro-ketal portion of an avermectin. The substituent was originally identified as an n-propyl group, but was later found to be an iso-propyl group. The processes described in the specification would have inevitably led to the iso-propyl compound, rather than the n-propyl compound. It was accepted by the judge that the specification did not claim new matter as a result of correcting the misassignment of the structure. The judgement does not discuss the issue of whether any parts of the structure were inessential.
Dr Bennett submitted that the dibenzoylhydrazine moiety is the active core of the structures, and the rest of the structure is inessential for the activity of the compounds. That is, the essential feature is
This conclusion followed from the suggestion that the compounds of formula I do not possess any advantage over the compounds of the prior art, which also have the dibenzoylhydrazine moiety. The specification contains a large table of compounds, many of which no longer fall within the scope of the claims as presently drafted. These compounds are covered by the general formula I above, except that the variables go beyond those listed in claim 1. For instance, in most cases A and B = O, there are also examples where n = 1, where R1 is a substituted methyl, and there is an example where R1, R2, R3, and R4 are F. The results obtained by testing the compounds do not demonstrate that the compounds presently claimed are superior to the other compounds in the table.
Dr Bennett also pointed out that the claims had changed during examination and following acceptance. The point of this argument is that parts of the structure cannot be essential to the activity if they can be discarded or changed by amendment. Where amendment is made for the purpose of better defining the compounds that actually possess the activity on which the invention is based, then this is a logical argument. Where the amendment is made in response to citations, but the activity alleged is the same, then I am not so sure that the argument is sound. I am not convinced that this line of argument helps me in the present case.
Any submission that parts of a structural formula do not contribute to the activity of the compound is difficult to sustain because of the fact that the structure-activity relationship of organic compounds is not well understood. I agree that the evidence indicates that the technical properties of the compounds are not unique to the compounds presently claimed, and that these properties are found in compounds having structures not presently claimed. However, it cannot be concluded from this that the non-core portions of the structure do not contribute to the activity. For instance, it could equally be the case that it is essential to have a six or seven membered ring fused at the left hand end of the molecule, but the nature of the ring is not essential. If it is argued that a particular group in a structure is not essential to the activity of the compound, it would seem necessary to demonstrate that the activity is present when that group is absent (i.e. replaced by hydrogen), and when the group is replaced by different groups, for example, groups that are neither isosteric nor isoelectronic. In the present case I have been asked to speculate that the non-core groups have no effect, but the evidence to substantiate this is insufficient. I conclude that it has not been established that the non-core portions of the structure are not essential features.
For the purposes of this decision, I will treat the whole of the structure as defined in claim 1 as essential.
d) Publication dates of the citations
The publication dates of the citations were not evidenced by declarations or certificates from a person in possession of this information. Mr Royal argued that as there is no evidence of publication dates, the citations cannot be used for the purposes of novelty. Where there is no evidence as to the publication date of a document, it must follow that the document cannot form the basis of a novelty objection.
In the present case, there is some evidence of the publication dates of the documents in the form of information appearing upon the documents themselves. I note that, as a tribunal, the evidence that I may take into account is not limited to the kinds of evidence admissible in a court.
"but he may take into account any material, which as a matter of reason, has some probative value in the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue."
(R v Deputy Industrial Injuries Commissioner; Ex parte Moore [1965] 1 All ER 81 at 94, per Diplock LJ, quoted with approval by Deane J in Minister for Immigration and Ethnic Affairs v Pochi (1980) 31 ALR 666 at 689)
I conclude that I can have regard to the publication information printed on the face of the documents. It is regrettable that the best evidence of the publication date was not provided. However, the date of publication appearing on the front of a patent document is placed there by the particular Patent Office. Consequently, the date on the document is prima facie evidence of the date of publication. It is possible that the document was actually published on a different date. However, there must be some cogent evidence brought forward in order to displace the logically sound presumption of the accuracy of the document.
In the case of EP 236618, the document itself carries the following statement on the front page:
"Date of publication of patent specification: 27.02.91"
No evidence casting doubt on the date of publication was presented, so I will proceed on the basis that the document was published on 27 February 1991.
In the case of EP 245950, the document itself carries the following statement on the front page:
"Date of publication of patent specification: 17.06.92"
No evidence casting doubt on the date of publication was presented, so I will proceed on the basis that the document was published on 17 June 1992. This date is later than the date of filing of the present application, so this document cannot anticipate the present application.
In the case of EP 286746, the document itself carries the following statement on the front page:
"Date of publication of patent specification: 27.02.91"
No evidence casting doubt on the date of publication was presented, so I will proceed on the basis that the document was published on 27 February 1991.
In the case of JP 03-141245, the English language translation of this document is headed as follows:
"TRANSLATION:
Japanese Patent Office (JP)
PATENT DISCLOSURE BULLETIN (A)PATENT DISCLOSURE NO.: 03-141245
DISCLOSURE DATE: JUNE 17, 1991"
It was put to me by Dr Bennett that the disclosure date on this document is the publication date. Mr Royal stated that there is no evidence that this is so, and that the date that appears on the front of a document may not be the actual date of publication. I have no personal knowledge of whether Japanese documents use the term "disclosure date" for the publication date, and no evidence of Japanese practice was provided. I consider that it is most unfortunate that the patent attorneys for the opponent did not provide better evidence of the publication date of this document.
I have examined the Japanese language original of this document (Exhibit JFM-1 of the McCann declaration). This document differs from the translation in that it also has numbers in circles beside the bibliographic data. This notation is the INID system for identification of data on patent documents (INID is an acronym for "Internationally agreed Numbers for the Identification of Data"). The disclosure date data is preceded by the INID number 43, which is defined as the date of making available to the public by printing or similar process of an unexamined document, on which no grant has taken place on or before the said date. Consequently, the "disclosure date" is the date that the Japanese Patent Office states that it made the document available to the public. I accept this as prima facie evidence of the date of publication of the document. No evidence casting doubt on the date of publication was presented, so I will proceed on the basis that the document was published on 17 June 1991.
Dr Bennett also made submissions that the citations could be taken as published in time because they are referred to as admitted prior art in the present specification. Mr Royal stated that if this was found to be the case, then it would be possible to correct by deleting the admission in the specification. However, as I have found that there is sufficient evidence of publication dates, it is not necessary to deal any further with these submissions.
e) Disclosure of the citations
When dealing with the specific subject of compounds described by generic formulae, the question of what compounds are disclosed by a citation is not easily answered. In Application by American Home Products Corporation, supra, I concluded that the key question is to distinguish between the intellectual content and the technical content of the disclosure:
"A generic structural formula represents all the specific structural formulae encompassed by the generic formula. This can be described as the intellectual content of the structural formula. (In F. Hoffman-La Roche & Co. AG v Commissioner of Patents (1970) 123 CLR 529 Gibbs J seems to have reached this conclusion at pages 541 to 542 of the report) The question of what compounds are clearly and unmistakably disclosed is equivalent to what technical information
would the citation make public to the instructed reader (though not necessarily revealed in every detail)."
[page 12]
I further considered the question of what compounds are disclosed in a technical sense by a patent specification drafted in generic terms in Pharmacia Aktiebolag v Ueno Fine Chemicals Industry Ltd (1995) 34 IPR 445. In that decision I found that compounds that had actually been prepared were disclosed (see pages 465 and 466), and certain compounds that were not prepared but were specifically named and had a credible generic preparation were also disclosed (page 464).
EP 236618
This citation relates to N'-substituted-N,N'-diacylhydrazines which are useful as insecticides. The compounds have the general formula
The values for the variables overlap with those of the present application for the variables X, R1, X' and B. The variable A is defined in very unclear terms, and it is not apparent that it includes the possibility of a chromanyl group. Dr Bennett conceded that this citation does not include an actual example of a compound falling within the scope of claim 1 of the present application. I conclude that this citation does not disclose, even in its intellectual content, the compounds claimed in the present application.
EP 286746
This citation relates to insecticidal hydrazines of the formula
The values for the variables overlap with those of the present application for the variables X, X', R1, R2, R3 and B. R4 is neither hydrogen nor an alkyl group. It does not appear that A can be a chromanyl group. Consequently, this citation does not disclose, even in its intellectual content, the compounds claimed in the present application.
JP 03-141245
The citation relates to hydrazine compounds that are useful in noxious animal exterminators. The compounds of the invention have the general formula
The values of the variables overlap with those of the present application for A, n, m, R, l. However, the citation only discloses compounds where the position corresponding to R5 is hydrogen. Consequently, the citation does not disclose, even in its intellectual content, the compounds claimed in the present application. I was specifically referred to compound no 7 in Table 2, which has the formula
This compound is stated to have a melting point of 212.8 - 214.8°C. Clearly this compound is disclosed in a technical sense.
f) The question of novelty
EP 236618
This document does not disclose, in a technical sense, any compounds falling within the scope of the claims of the present application. Consequently, the claims are novel in the light of this document.
EP 286746
This document does not disclose, in a technical sense, any compounds falling within the scope of the claims of the present application. Consequently, the claims are novel in the light of this document.
JP 03-141245
This document does not disclose any compounds having an R5 group which is other than hydrogen. Consequently, the claims of the present application are novel in the light of this document.
I conclude that it has not been established that any claim lacks novelty in the light of any of the citations.
Inventive step
Dr Bennett submitted that the claims lack inventive step in the light of the documents referred to under the ground of novelty. Since the document EP 245950 was not published at either of the priority dates of the claims it is not relevant for inventive step.
a) The relevant law
In Application by American Home Products Corporation, supra, I considered the approach to inventive step that applies under the 1990 Act. I concluded that an appropriate approach involves a problem-solution analysis, as follows:
. what is the problem confronted by the application;
.can the information in the document be considered for inventive step purposes
- is it part of the prior art base
-is it reasonable to expect it to have been ascertained, understood and regarded as relevant to work in the art;
.what does the citation disclose; and
.is the claimed solution to the problem obvious to the person skilled in the art in the light of the disclosure of the citation.
This is the approach I shall apply in the present case.
b) The problem
Mr Royal stated that the problem may not be based on the closest prior art document (and referred to The Broken Hill Pty Co Ltd and Comalco Ltd v American Can Co (1979) 49 AOJP 4756). It is true that the formulation of the problem should not be based on hindsight. However, it is reasonable to rely on a problem that is specified in the specification, or can be reasonably inferred from the specification (as in Application by Rhone-Poulenc Rorer, Patent Office decision, 25 August 1995, patent application number 12264/92, unreported).
The first two pages of the specification identify the problem addressed by the present compounds as being pesticidal compounds having low side effects. However, there is no evidence in the specification that the compounds possess low side effects, so it is reasonable to infer that the problem that has been addressed is the identification of further pesticidally active compounds.
c) The citations
Mr Royal submitted that there is no evidence that the citations would have been ascertained, understood and regarded as relevant, and that I cannot infer this. It is true that none of the witnesses directly state that they would have ascertained, understood and regarded the citations as relevant. However, I do not agree that it is not open to me to infer this, provided the inference is reasonable and based on facts.
Mr Royal stated that in determining whether a citation would have been ascertained, understood and regarded as relevant, it is important to ask whether the document is part of the common general knowledge. While it is probably true that a document that is part of the common general knowledge of the art would be likely to be ascertained, understood and regarded as relevant, the reverse is not necessarily true. The fact that a document is not well known does not mean that it would not be likely to be ascertained by a person working in the art. A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art. The requirements of understood and regarded as relevant are not likely to be an issue where a document relates to the same art as the problem.
EP 236618
The citation discloses pesticidal compounds, so it is reasonable to expect it to have been ascertained and regarded as relevant to work in the art. There is no reason to consider the document would not have been understood.
EP 286746
The citation also discloses pesticidal compounds, and I consider it would have been ascertained, understood and regarded as relevant.
JP 03-141245
The citation also discloses pesticidal compounds, and I consider it would have been ascertained, understood and regarded as relevant.
d) The question of inventive step
The question of whether the claimed solution to the problem is obvious in the light of the disclosure of a citation amounts to asking whether the reader 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" (Wellcome Foundation Ltd v V.R. Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286). One of the reformulations of this test is to ask whether it would have been obvious to try, with a reasonable expectation of success: "it is enough that the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial" (Johns-Manville Corporation's Patent [1967] RPC 479 at 494).
I conclude that the question I must answer in the present case is: in the light of the compounds forming the technical content of the citation, what compounds are a routine variation that a person would reasonably expect to have the desired activity (although success is not guaranteed). This question needs to be considered in two parts. Firstly, what is the situation with regard to compounds that are within the intellectual content of the disclosure, and secondly, what is the situation with regard to compounds that are not.
The compounds that are within the intellectual content of a citation are clearly put forward by the document as possessing the same properties as the compounds within the technical content. In the absence of selection or the lack of an enabling disclosure, it is immediately obvious that the compounds of the intellectual content would be expected to have the same properties as the compounds within the technical content, and there is no inventive step in merely preparing those compounds in the manner suggested and verifying their properties. This is a conclusion that is available from the document itself. This view has support in the following classic English decisions.
In Sharp & Dohme Inc. v Boots Pure Drug Company Ld (1927) 44 RPC 367 at 390 Astbury J stated:
"If the statement is there ... it is a disclosure of a fact, and even if no chemist would have appreciated that it was right, if it turns out that it is right, you cannot take a patent out for verifying a prior statement."
The obviousness of mere verification was confirmed on appeal to the Court of Appeal, reported as Sharp & Dohme Inc. v Boots Pure Drug Company Ld. (1928) 45 RPC 153 at 173.
In May & Baker Ltd and Ciba Ltd's Patent (1948) 65 RPC 255 at 281 Jenkins J stated that the production of further compounds by known methods from known starting materials had subject matter (i.e. is an invention) if the compounds are not merely homologues and their properties are not predictable from those of the known compounds, or the compounds are a valid selection.
In Beecham Group Limited's (Amoxycillin) Application [1980] RPC 261 at 292 Buckley LJ drew a clear distinction between selection and mere verification:
"the substance must be truly new and the advantage to be gained from its selection must be the inventor's own discovery as opposed to mere verification by him of previous predictions or of what was previously predictable; in other words, it must be unexpected"
[page 292]
In the case of compounds outside the intellectual content of the disclosure, the question of whether any variations not suggested by the document itself are obvious depends on the facts. I was referred to several US cases dealing with this subject.
In the case of In re Payne, Durden and Weiden (1979) 203 USPQ 245 the Court of Customs and Patent Appeals was dealing with, amongst other things, the obviousness of pesticidally active heterocyclic carbamoyloximino compounds. The report states:
"When prior art compounds essentially 'bracketing' the claimed compounds in structural similarity are all known as pesticides, one of ordinary skill in the art would clearly be motivated to make those claimed compounds in searching for new pesticides"
[page 255, column 1]
In the case of In re Dillon (1990) 16 USPQ 2d 1897 the Court of Appeals was dealing with the obviousness of a fuel composition characterised by the inclusion of a generically described tetra-orthoester compound. The report states:
"This court, in reconsidering this case in banc, reaffirms that structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and that the burden (an opportunity) then falls on an applicant to rebut that prima facie case. Such rebuttal or argument can consist of a comparison of test data showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does not have"
[page 1901]
It is clear that the judges in Payne and Dillon considered that where there is structural similarity between compounds of a citation and compounds claimed in a later application, and the compounds have the same use or activity, there is an intuitive feeling of obviousness. I agree that such cases produce an immediate suspicion of obviousness. However, it is still necessary to be satisfied that the structural differences are, in fact, routine variations. This is a matter that is decided on the basis of the evidence of relevantly skilled witnesses.
There is evidence on this point from a number of declarants. The first declarant is Professor Crank, who is an Associate Professor of Organic Chemistry at the University of New South Wales with extensive research experience. It is clear that Professor Crank is not an uninventive person. The second declarant is Professor Rae, who is a Professor at the Victoria University of Technology with extensive research experience. It is clear that Professor Rae is also not an uninventive person. However, this does not mean that Professor Crank and Professor Rae cannot give evidence as to what would be routine variations. Both declarants can give evidence of matters within their knowledge. If there is a conflict in the evidence, then I will deal with that in the way that any contested evidence is considered.
EP 236618
The citation does not disclose in its intellectual content any compounds falling within the scope of claim 1 of the present application. I turn now to what is not disclosed by the document. The first source of evidence is Professor Crank's declaration:
"Typically, where a compound belonging to a new class of insecticidally active compounds is discovered, persons skilled in the relevant field will subsequently synthesise a range of compounds having similar structures with variations to substituents in a number of positions in the molecule ... Typically, analogous molecules obtained in this way exhibit similar insecticidal properties in greater or lesser degree than the compound first synthesised ... Thus, it was well known in Australia at the earliest priority date that classes of insecticidally active compounds exist, and that varying substituents on the structural units which are common to a given class typically gives rise to compounds which also exhibit insecticidal activity to a greater or lesser extent."
[para 12]
Referring specifically to the citation, Professor Crank states that he considers variations on specifically disclosed compounds in the citation are obvious alternatives. The compounds focussed on by Professor Crank do not contain a chromanyl ring system. Instead, they contain either a phenyl, naphthyl or benzodioxolanyl system. Professor Crank does not mention whether he considers it would have been obvious to use a chromanyl group.
I conclude that there is no evidence that chromanyl compounds would have been obvious variations over the citation, so it has not been established that there is no inventive step over the citation.
EP 286746
This document also does not disclose in its intellectual content compounds falling within the scope of claim 1 of the present application. The intellectual content does not include chromanyl compounds, and Professor Crank does not suggest that this variation would have been obvious.
I conclude that there is no evidence that chromanyl compounds would have been obvious variations over the citation, so it has not been established that there is no inventive step over the citation.
JP 03-141245
This document discloses chromanyl compounds within its intellectual content, but the compounds lack the substituent corresponding to R5. Professor Crank declared:
"if I was seeking other insecticidally active analogues of those compounds ... I, and in my opinion other persons skilled in the relevant field in Australia, would have regarded it as obvious at that date to examine the activity of the same compounds in which the tetrahydronaphthyl, dihydrobenzopyranyl or benzodioxanyl group is substituted ... with any of the groups defined for R5-R7 in claim 1 of the opposed application, for example ... (C1-C4)alkyl, (C2-C4)alkenyl, (C1-C4)alkoxy, (C1-C4)alkoxy(C1-C4)alkyl, (C1-C4)alkoxy(C1-C4)alkoxy, hydroxy, amino or halo."
[para 32]
Professor Crank's reason for this view refers to paragraph 18 of his declaration:
"In my opinion, many of the groups defined in claim 1 of the opposed application for R5, R6 and R7 are obvious alternatives for hydrogen, when included at any one or more of positions 1, 3 and 4 in formula (a1), [formula (a1) being an analogous naphthyl compound rather than chromanyl compound] I would not expect to confer any substantially different properties on the molecule as far as insecticidal activity is concerned. Such groups include at least (C1-C4)alkyl, (C2-C4)alkenyl, (C1-C4)alkoxy, (C1-C4)alkoxy(C1-C4)alkyl, and (C1-C4)alkoxy(C1-C4)alkoxy groups, hydroxyl, amino and halogen. Such groups could have a modifying influence on the insecticidal activity of the compounds, but this could be a positive or negative influence. However substitution of the compound of formula (a1) with these groups would have been very obvious to a person skilled in the relevant field in Australia at the earliest claimed priority date, in seeking compounds of superior insecticidal activity to the compounds of formula (a1)."
[para 18]
Professor Crank also discussed the substituent R11:
"I, and in my opinion other persons skilled in the relevant field in Australia, would have regarded it as obvious at the date on which exhibit GC-7 was published, to examine the activity of analogous compounds in which the H bound to N [i.e. R11 of the present claims] was replaced with any of cyano, halo(C1-C4)alkylthio, (C2-C5)acyl, di(C1-C4)alkylcarbamoyl, (C1-C4)alkoxycarbonyl, (C1-C4)alkoxycarbonylcarbonyl, (C2-C4)alkenyl, halo(C1-C4)alkyl, (C1-C4)alkoxy(C1-C4)alkyl, (C1-C6)alkylcarbonyloxy(C1-C4)alkyl or (C1-C4)alkoxycarbonyl(C1-C4)alkyl"
[para 34]
I can summarise the intellectual content of citation, and Professor Crank's view of the routine variations over the technical content of the citation as follows.
| As claimed | Intellectual content | Routine variations according to Professor Crank | |
| R1 to R4 | H, Me | H, one can be alkyl | |
| R5 | (C1-C4)alkyl, (C1-C4)haloalkyl, halogen | H | at least (C1-C4)alkyl, (C2-C4)alkenyl, (C1-C4)alkoxy, (C1-C4)alkoxy(C1-C4)alkyl, and (C1-C4)alkoxy(C1-C4)alkoxy groups, hydroxyl, amino and halogen |
| R6 | H, (C1-C4)alkyl, halogen | H | same as R5 |
| R7 | H, halogen | H | same as R5 |
| R8 to R10 | H, (C1-C4)alkyl, (C1-C4)haloalkyl, halogen, nitro, (C1-C4)alkoxy, (C2-C4)alkenyloxy, (C2-C4)alkynyloxy, (C2-C4)alkenyl, (C1-C4)haloalkoxy, phenyl(C1-C4)alkoxy group whose phenyl moiety is optionally substituted with a halogen atom, or a phenoxy(C1-C4)alkoxy group whose phenyl moiety is optionally substituted with a (C1-C2)alkyl group, CF3 or halogen | H, alkyl, haloalkyl | |
| R11 | H, CN, (C1-C4)haloalkylthio, (C1-C4)alkoxycarbonylcarbonyl, (C1-C4)alkylcarbonyloxy-methyl | H | cyano, halo(C1-C4)alkylthio, (C2-C5)acyl, di(C1-C4)alkylcarbamoyl, (C1-C4)alkoxycarbonyl, (C1-C4)alkoxycarbonylcarbonyl, (C2-C4)alkenyl, halo(C1-C4)alkyl, (C1-C4)alkoxy(C1-C4)alkyl, (C1-C6)alkylcarbonyloxy(C1-C4)alkyl or (C1-C4)alkoxycarbonyl(C1-C4)alkyl |
| R12 | branched (C4-C8)alkyl | t-Bu | |
| A | O, CH2 | O, CH2 | |
| B | O, CH2 | O, CH2 | |
| n | 0 | 0 |
It seems clear that Professor Crank considers it obvious to make a very broad range of variations to the molecule without impairing the insecticidal properties. Clearly there are some (but not many) compounds that are not obvious to Professor Crank. If I accept the view of Professor Crank, then most of the compounds of claim 1 are obvious.
The alternative view was provided by Professor Rae's declaration:
"31.Japanese patent disclosure no. 03-141245 does disclose some dihydrobenzopyranyl, or chromanyl, derivatives, but as Professor Crank acknowledges, does not disclose any of the compounds claimed in the amended specification. One substantial difference between the compounds disclosed in the Japanese document and those claimed in the opposed application (as amended) is that in the claims of the opposed application (as amended), the aromatic ring at the left hand side of the molecule is substituted at position R5 and optionally also substituted at position R6, R7 and R11. There are no chromanyl compounds disclosed in the Japanese patent disclosure in which R5, R6, R7 and R11 are other than H.
32.In paragraph 12 of his declaration Professor Crank states that where a compound belonging to a new class of insecticidally active compounds is discovered the chemist will synthesise compounds having similar structures by variation of substituents in a number of positions in the molecule. I agree with this. However he then states the typically analogous molecules obtained in this way exhibit similar insecticidal properties in greater or lesser degree than the compound first synthesised. In my view this is an inappropriately generalised statement.
33.The changing of substituents on a molecule can and often does have a major effect on the general properties of the compounds and particularly in the case of any biological activity the compound may have. It is true that classes of compounds do exist and that in some cases where a class of compound has the same basic structure but with variations in substituents, some members of the class will exhibit similar activity, be it insecticidal or otherwise. However, where a compound is found to have insecticidal activity, in the vast majority of cases it is extremely difficult or impossible to predict what will be the effect of changing particular substituents. This is particularly so where the mechanism by which the compound effects the insect is not understood. This is even more particularly so for larger molecules.
34.To act as an insecticide, a compound must interact with the particular insect concerned. Large molecules may bind at a number of possible reactive sites and may also undergo a number of changes in structure in the course of exerting biological activity. The larger the molecule, the more difficult it is to determine how or why the particular insecticide works. Until that understanding is reached and even often when it has been reached, it is extremely difficult to forecast even in general terms what will be the effect on biological activity of particular substitutions which alter the basic molecular structure. Invariably where a potentially useful base structure has been identified a great deal of further work is required in synthesising and testing variants to determine whether they will also be chemically active. This commonly involves the chemist in years of further research.
35.One example of how substitution may effect the molecule is through a possible change to its internal orientation. The chromanyl compounds described in the Japanese patent document, having H at the equivalent of each of R5, R6, R7 and R11 positions would be expected to be relatively coplanar. By substituting any of the substituents at the R5 position required by the claims of the opposed application (as amended) it would be expected that this coplanarity may be destroyed. Therefore if the biological activity of the compound depended on the shape of the molecule the effect on its biological activity brought about by this substitution would be dramatic. The patent specification gives no assistance in this regard. The substitution may effect the biological activity of the compound in other ways, for example, its electronic, lipophilic and other kinds of steric effects.
36.In my view it would not have been obvious from reading this publication what substituents would be expected to have resulted in insecticidally active compounds. There is nothing in the Japanese document that suggests a reaction mechanism and there is no information as regard other substitutions at the R5, R6, R7 and R11 positions which may give any indication. In my view there is no rational approach which could be made to improving or understanding the biological activity of these compounds. The effect of a substitution at the R5 position or at the R6, R7 and R11 positions would therefore have been very difficult to predict either by myself or I believe any other skilled chemist. A random approach would need to explore by syntheses and testing many millions of possibilities."
Professor Crank says that there are routine variations to make. Professor Rae does not address this point directly, but says that success is not guaranteed. Given my understanding of the question that I must answer, the evidence of Professor Crank and Professor Rae are not in conflict since a technical subject matter may be obvious even though success is not guaranteed.
The evidence of Professor Crank is surprising, in that he considers it to be routine to make widely different substitutions. For example, at the R11 position, Professor Crank considers that it would be routine to replace a hydrogen atom with groups as different as cyano, haloalkylthio, acyl, dialkylcarbamoyl, alkoxycarbonyl, alkoxycarbonylcarbonyl, alkenyl, haloalkyl, alkoxyalkyl, alkylcarbonyloxyalkyl, alkoxycarbonylalkyl. While I personally find this to be an unexpectedly diverse range of routine variations, I cannot say that Professor Crank's view cannot be correct. Professor Rae did not state whether he thought that Professor Crank's list of routine variations went too far. Consequently, I accept Professor Crank's view of the routine variations. The evidence leads to the conclusion that claim 1 lacks an inventive step. The compounds that lack inventive step are those formed from the combination of substituents within the intellectual content and/or within Professor Crank's routine variations (see the table above).
Turning now to the appended claims 2 to 5, these claims are directed to smaller groups of compounds, but still include compounds within the routine variations. It follows from the above that these claims are also lacking in inventive step. Claim 6 is directed to an insecticidal composition of a compound of claim 1 to 5. It follows from the above that this claim is also lacking in inventive step. Claim 7 is directed to a method of controlling insects by applying a compound of claim 1 to 5. It follows from the above that this claim is also lacking in inventive step.
I conclude that it has been established that all claims are lacking in inventive step in the light of JP 03-141245.
Manner of manufacture
The issue of manner of manufacture was particularised as follows:
"Section 18(1)(a)
Because the alleged invention defined in any one of the claims of the opposed application is not novel for the reasons set out below, and does not involve an inventive step for the reasons set out below, the alleged invention defined in any of the claims of the opposed application is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies."
It follows that the case that the applicant has to answer on the question of manner of manufacture follows from the issues of novelty and inventive step. At the hearing the issue of manner of manufacture was argued with respect to specific judgements, not just on the points of novelty and inventive step. However, as these cases involve novelty and inventive step issues I am prepared to accept that the submissions are consistent with the statement of particulars.
It was submitted that the present application does not satisfy the threshold requirement of an invention (NV Philips Gloeilampenfabriken v Mirabella International Pty Ltd (1995) 32 IPR 449). The threshold test involves asking whether it is apparent on the face of the specification that the necessary quality of inventiveness is absent (see page 452-4). It is correct that the compounds of the present application are not superior to the prior art in terms of their pesticidal activity. In this sense, the activity on which the invention is based is not new. However, there is nothing on the face of the specification that suggests that the compounds claimed are not new. Further, an invention can lie in the provision of alternative or further compounds possessing a technically useful property. The necessary quality of invention is not absent merely from the face of the specification. I am satisfied that the present application satisfies the threshold requirement of an invention.
It was also submitted that the present application fails to pass the test in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232. The present case is not an example of an analogous use of a known substance, as it has not been established that any of the compounds claimed were known in the sense of lacking in novelty. The alternative view, that the compounds claimed represent the use of a dibenzoylhydrazine moiety to make compounds for which its properties make it suitable (i.e pesticidal activity) is not sustainable. As I concluded earlier, the essential activity of the dibenzoylhydrazine has not been demonstrated, so I cannot conclude that the activity of the claimed compounds derives from this moiety rather than the totality of the structure. I conclude that there is insufficient evidence that the present application fails the test in Microcell.
I conclude that it has not been established that the present application is not a manner of manufacture.
Section 40
A number of section 40 issues were raised by Dr Bennett.
a) Fair basis
Dr Bennett submitted that the claims are not fairly based beyond the actual examples of compounds where activity has been demonstrated. When considering the issue of fair basis, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is claimed in the claims (CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 ALR 415; 28 IPR 481).
The specification provides a disclosure in general terms of more than just the compounds that are actually exemplified. There is a disclosure in general terms of the generic formula that appears in claim 1. There is no evidence that the compounds that fall within the scope of the generic formula but are not exemplified are not a reasonable extrapolation from those compounds that are exemplified.
The specification also demonstrates the activity of the exemplified compounds against a limited number of pests. The same comments as above apply. There is no evidence that the pests that are not exemplified are not a reasonable extrapolation from those that are exemplified.
I consider that it has not been established that the claims are not fairly based.
b) Sufficiency
Dr Bennett submitted that the specification does not fully describe the invention, in that the specification does not describe how to make the starting compounds for preparing the compounds of the invention. Mr Royal pointed out that one example is enough (Ethyl Corp. v California Research Corp. (1970) 40 AOJP 562), and that it is not always necessary to provide examples.
The absence of examples is not in itself a problem. What is a problem is if the information in the specification does not enable all of the claimed compounds to be prepared, bearing in mind that some trial and experiment is reasonable. Where a specification contains omissions, the specification will not be insufficient if the man skilled in the art can supply the omissions without the exercise of any inventive faculty (No-Fume Ld v Frank Pitchford & Co., Ld (1935) 52 RPC 231 at 243). This is the approach I will use to assess whether the omission of preparative details renders the specification insufficient.
Dr Carlson noted:
"Synthesis methods for many of the compounds exemplified in Tables 1 to 16 are not disclosed. For example, compounds in which B in formula (I) is -CH2-, such as the compounds of examples 1-8 and 1-12 are not disclosed."
[para 42]
Referring specifically to compounds 1-8 and 1-12 (which are examples of the invention as presently claimed), Professor Rae considers that the absence of information on how to prepare the starting acid of formula
would not present a problem because a preparative method is known in the scientific literature (para 18). This method is
The first two steps are disclosed in Synthesis (1971), and the third step is disclosed in example 7 of the specification.
I consider that it does not require inventive faculty to consult the scientific literature and read how to synthesise a specific known compound. Extrapolation of this to analogous, but unknown, compounds, would not require inventive faculty if the extrapolation is obvious. There is no evidence before me as to whether this extrapolation is obvious, so I am prepared to accept, for the purposes of this decision, that it has not been established that the extrapolation is not obvious.
Dr Bennett pointed out that the method identified by Professor Rae could not be used to prepare the analogous compounds where R1 and R2 are non-hydrogen, as this would require the use of the tertiary halide Cl-(CR1R2)-CH2-CH2-OH in the first step. I refused to allow Dr Bennett to hand up evidence that tertiary halides undergo elimination rather than nucleophilic substitution, as this would be further evidence and the formalities of further evidence had not been satisfied. However, I stated that this is a matter of basic chemistry which is well within my personal knowledge, and I would accept it as a fact without the need to present evidence. I allowed Mr Royal two weeks to comment on my understanding of chemistry on this point.
Mr Royal provided written submissions that tertiary halides undergo SN2 reactions at a reduced rate, and provided an extract from "Organic Chemistry" by Morrison & Boyd in support. This evidence is not in conflict with my understanding, as it is the markedly reduced rate of nucleophilic substitution of tertiary halides that permits the competing elimination reaction to predominate.
It follows that the preparation of such derivatives could not be accomplished by the method presented by Professor Rae. It does not follow that there are no other known ways to prepare such compounds. I do not know what is, or is not, in the chemical literature regarding the synthesis of such compounds. The opponent has suggested the possibility of insufficiency, but has not supported the argument with evidence.
I conclude that the opponent has not established that the specification lacks sufficiency.
Conclusion
I have found that all claims of the present application lack inventive step in the light of JP 03-141245.
Consequently, the opposition is successful. Since I have found that not all of the claimed subject matter is lacking in inventive step it may be possible to frame acceptable claims. I will allow an opportunity for the applicant to propose amendments.
I allow the applicant 60 days from the date of this decision to propose amendments.
Costs
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Co. v W.R. Grace & Co.-Conn (1994) AIPC 91-063; 29 IPR 292).
The opponent is successful on the ground of lack of inventive step, to the extent that almost all of the claimed subject matter lacks inventive step. Consequently, the opponent has been successful in their opposition. In this situation it is appropriate to award costs against the applicant.
I award costs in accordance with Schedule 8 against Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited.
Dr S.D.Barker
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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