RYW Holdings Pty Ltd - [2023] APO 62

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
RYW Holdings Pty Ltd [2023] APO 62

Patent Application: 2019284145

Title:Waste management and processing system

Patent Applicant:                   RYW Holdings Pty Ltd
Delegate:  Dr V. Z. Kolev
Decision Date:  8 December 2023
Hearing Date:  Written submissions filed on 24 November 2022

Catchwords: PATENTS – sections 45 and 49 – examiner’s objection – inventive step – waste management – compostable and non-compostable waste streams – waste sorting and decontamination before compaction – collecting data during waste decontamination – tracking waste source – generation of biological compost from compostable waste – curing in stackable aeration crates – the claimed invention does not involve an inventive step – application refused
Representation: Patent attorney for the applicant: Wallington-Dummer

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application:                 2019284145
Title:  Waste management and processing system
Patent Applicant:  RYW Holdings Pty Ltd
Date of Decision:  8 December 2023
DECISION
The application does not involve an inventive step in light of the common general knowledge considered together with prior art document US 2013/0297518 A1 (WMS METAL INDUSTRIES LLC) published on 7 November 2013.
I refuse the application.
REASONS FOR DECISION

Throughout this decision, unless explicitly stated otherwise, any reference to the Act, or to a specific section or subsection, refers to the Patents Act 1990, and any reference to the Regulations, or to a specific regulation or subregulation, refers to the Patents Regulations 1991. In addition, any reference to the Commissioner refers to the Commissioner of Patents as per the Act, and any reference to a Delegate refers to a Delegate of the Commissioner.
Background
The matter relates to patent application 2019284145 (the Application) in the name of RYW Holdings Pty Ltd (the Applicant). The Application was filed on 30 December 2019 and claims priority from provisional application 2019903072. The earliest claimed priority date is 22 August 2019.
A request for expedited examination was filed together with the Application on 30 December 2019. Four examination reports raising various objections were issued in the period from 30 March 2020 to 20 April 2021. In response to each examination report, the Applicant filed arguments and proposed amendments to the specification of the Application (the Specification).
Examination report No. 5 was issued on 29 June 2021, and contained objections that the proposed amendments were not allowable, and that the clamed invention was not a manner of manufacture and did not involve an inventive step. On the same date, the Applicant requested to be heard.
The hearing was conducted by way of written submissions, which were filed by the Applicant on 18 October 2021, together with a new set of proposed amendments. Following an invitation by a Delegate, the Applicant filed, on 23 December 2021 and 12 January 2022, additional submissions in relation to manner of manufacture in light of a recently delivered relevant Court decision.
A hearing decision issued on 25 March 2022, namely RYW Holdings Pty Ltd [2022] APO 20 (the Previous Decision or PD), in which the Delegate decided that:
“The invention of the amended claims is for a manner of manufacture and the examiner’s objection under this ground cannot be maintained.
The invention of the amended claims does not lack an inventive step in light of the CGK and combined disclosure of prior art documents D1 and D2 and this objection also cannot be maintained in its current state.
I refer the application back to the examination section to further investigate whether the feature of curing in stackable aeration crates is disclosed in any other prior art document and if so whether a revised inventive step objection is appropriate. If not, the application should proceed to acceptance.” (PD, underlining added)
As a result of the Previous Decision, the final date for acceptance of the Application was extended until 27 June 2022 (25 June 2022 being a Saturday) through the operation of reg 13.4(1)(g).
As directed in the Previous Decision, an Examiner considered the feature of curing in stackable aeration crates and, on 14 June 2022, issued Examination report No. 6. This report included the sole objection that the claimed invention did not involve an inventive step in light of a previously raised prior art document, namely US 2013/0297518 A1 (WMS METAL INDUSTRIES LLC) published on 7 November 2013 (document D1). A response to that report was received on 21 June 2022. Amendments were not proposed.
Following a telephone consultation with the Examiner, indicating that the Application would not be accepted before the final date for acceptance, the Applicant requested, on 27 June 2022, to be heard. Examination report No. 7 (the Last Report) followed on 21 July 2022. In the Last Report, the Examiner maintained the inventive step objection in light of document D1.
On 24 November 2022, the Applicant filed written submissions for the hearing (the Applicant’s Submissions or AS). The Applicant also filed a copy of the claims as last proposed to be amended on 18 October 2021.
Applicable law and approach
On 15 April 2013, important provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced, which resulted in significant amendments to the Act and Regulations. The Application was filed on 30 December 2019; hence the amended provisions of the Act and Regulations apply to the examination of the Application and to the instant hearing decision. This means that, in accordance with s 49(1), I must accept the Application if I am satisfied, on the balance of probabilities, that the application complies with the Act. If I am not so satisfied, under s 49(2), I may refuse the Application. In such a situation, the extended period for gaining acceptance provided under reg 13.4(1)(g) will make no difference if the Application is refused.
It is perhaps worth noting that the present hearing is not a final determination with respect to the Previous Decision, hence the scope of the present hearing is not strictly limited to considerations of whether the deficiencies found in the Previous Decision are now overcome. Nonetheless, I consider that the Previous Decision is a convenient starting point for my analysis, even more so in view of the fact that the Specification, as it presently stands before me, is identical to that considered in the Previous Decision.
The Specification
In paragraphs [17]-[32] of the Previous Decision, the Delegate provided a comprehensive discussion of the Specification. I agree with the Delegate’s observations, and I do not find it necessary to repeat them in this decision, or to provide a comprehensive discussion of my own. Nonetheless, I will refer to certain parts of the Specification to the extent necessary for my considerations. With respect to the body of the Specification, these parts are mostly related to the problem(s) that the invention attempts to solve.
The invention as described
The section “Technical field” is reproduced below:
“[0001] The present invention relates to a waste management and processing system and, more particularly although not exclusively include aspects of a waste data collection, management, education and reporting system which allows complete separation of organic (compostable) and non organic (non compostable) waste streams. Even more particularly it relates to a compostable waste processing system, although not exclusively, adapted to provide targeted compost in controlled small batches (to provide a valuable solution to the waste problem). The overriding goal of the system is to produce a valuable product from all organic and non organic waste streams.” (underlining added)
In the section “Background”, it is explained that:
“[0002] Currently the majority of domestic and commercial waste streams are disposed of by lifting bins directly into a compactor collection truck.
[0003] A majority of this waste is contaminated by the mixing of compostable waste, such as food waste, with other waste stream types such as packaging waste (plastics, glass, metals, cardboard etc). This holds true even when separate bins are provided (organics, recycling, and/or general rubbish) because the majority of commercial businesses and households do not separate waste correctly. While waste in general contains valuable resources if separated, it is generally of too low a value to be viably transported in an uncompacted state. Therefore, compactor trucks are used almost universally in waste collection services. However, once contaminated (mixed food and packaging) waste enters a compactor truck it becomes near-impossible to decontaminate the waste (food and packaging) streams at a later date. This means that enormous volumes of both organic and other recyclable materials such as packaging waste are taken to landfill, or a waste to energy facility.
[0004] The mixing and compacting of waste in compactor trucks also means that accurate data cannot be collected from individual commercial business or households (‘at source’). Loss of data at source eliminates any chance of building an accurate data acquisition and reporting system into the waste collection system. Ad hoc attempts are occasionally made to inspect the contents of bins, or fine those who place the wrong items in the wrong bin, but these approaches have proven ineffective, and the problem of cross-contamination continues unabated.” (underlining added)
The Specification then emphasises the negative impact of the “typical waste collection methods” on the environment due to the “considerable carbon emissions during the transportation phase and significant greenhouse gas emission in the form of methane from the landfill site” (at [0006]) as well as the “significant economic loss associated with the permanent burial of undifferentiated waste in landfill, and the need to transport large volumes of waste over large distances” (at [0008]). In addition, “bad odour and leachate leaking from raw compostable waste into the local environment, and attraction of vermin and birds to raw compostable waste is a common problem within commercial centres and waste dumps” (at [00010]).
The subsection “Aim/goal” of section “Background” states that:
“[0009] The aim of the present invention is to separate compostable waste streams from non-compostable waste streams prior to compaction so that all waste material can be processed and recycled into useful products.
[00010] … A further purpose of the present invention is to provide a controlled environment in which waste can be processed safely, hygienically and largely without odour or leachate at all stages of the process. This allows facilities to be located close to the source, and hence resolves the issues related to compacting contaminated waste in order to viably transport it.
[00011] The invention then uses the collected compostable waste to generate aerobic compost (including compost tailored to particular types of plants by inoculation of biological matter), and other useable materials in an industrial environment.
[00012] The further aim of the system is to collect data on cross-contamination of compostable and on compostable [sic] waste streams on a ‘per Customer’ basis and provide ongoing feedback via accurate data to the customer and other parties to improve waste separation in an ongoing fashion[.]” (underlining added)
In the subsection “Composting system” of section “Known in the art”, it is explained that while “[c]omposting systems are widely used for agriculture and horticulture” (at [00018]), this may involve:
·      “compositing ‘en mass’ in open air windrows, or in large piles turned by heavy diesel operated machinery”, hence “[t]he resulting compost is generally of low quality because of the consistent exposure to the elements of rain, sun and plastics contamination” (at [00020], underlining added);
·      “bulk enclosed composting systems, such as ‘tunnel composting’ which use large amounts of electricity, resulting in high CO2 [sic] emissions and a large carbon ‘footprint’”, and, furthermore, “[p]lastics contamination generally remains an issue in this composting method because of contamination at source” (at [00021], underlining added); or
·      “a composting system which includes a stationary composting chamber with an inlet and outlet end of the chamber”, wherein “[t]he inside of the chamber contains a series of discrete arms which can be used to mix and agitate composting material placed in the inlet and transport the compost material to the outlet at the other end of the chamber while the material composts and biodegrades in the chamber” and the “[m]aterial that is expelled from outlet of the chamber is then typically placed in a large pile or windrows for further decomposition and storage” (at [00023], underlining added).
The subsection concludes by stating that:
“[00024] An issue with both outdoor and ‘in vessel’ composting is the inability to produce a high quality product throughout the entirety of the mass of compost produced. This is related directly to the typical storage method of piles, or windrows being exposed to the elements such as sun and rain, which lowers the quality and consistency of the final compost product.
[00025] It is an object of the present invention to address or at least ameliorate some of the above disadvantages of processing compostable waste such as food waste, or at least provide a useful alternative.” (underlining added)
In the section “Description of embodiments”, it is explained that the waste management and processing system of the instant invention could have two main configuration options: (i) “all the processes and equipment of the invention are housed within a Central Processing Facility (CPF). This configuration is suitable, for example, in a small regional town” (at [000182]); and (ii) “a configuration in which small ‘RecycloPod’ facilities are installed in proximity to customers or clusters of customers. The Recylopod [sic] conducts the sorting, decontamination, data collection and feedback, and some or all of the crushing/compacting and bundling operations, then sends the various waste streams, now decontaminated and in a more compact form, for sale or further processing at the CPF. This configuration is suitable, for example, in a large city”, however “[t]his configuration would also suit a remote community or facility” (at [000183], underlining added). Notably however:
“[000184] Other configurations are possible depending on the amount and type of waste, and the cost and distance involved in transporting the various waste streams to either disposal or processing/recycling. A significant feature of this system is that facilities can have all the operations and associated equipment in one location, or parts of the system and associated equipment in different locations. The system includes an algorithm which optimises the value derived from each waste stream while limiting transport and other costs. The algorithm is based on the value of waste streams by volume pre and post sorting, compaction and transport.
…
[000188] The advantage of a Recyclapod [sic] is that uncompacted waste produced by Customers waste streams can be transported to the RecycloPod within individual bins individually tagged to the customer without the use of heavy equipment such as trucks. Instead, compostable and non compostable waste streams in their uncompacted state reach the RecycloPod by walking, elevators, trolleys, buggies, vans, utilities or other light commercial vehicles etc. The RecycloPod decontaminates and separates the waste into various streams, which can then be effectively compacted.
…
[000190] The advantage of the system is that waste is separated into useful commodities and compacted BEFORE it is transported by heavy vehicle. A further advantage of this system is that waste to be transported from the RecycloPod is able to be handled with a forklift and a normal truck, rather than a compactor truck. Overall, the system allows compacted waste to be transported without destroying its usefulness, and allows collection of materials directly from the RecycloPod by a third party, or for transport to the composting facility without specialist equipment.” (underlining added)
Near the end of the description, it is re-iterated that:
“[000219] It is a feature of this invention that the above processes do not necessarily take place in one location. One of the significant challenges of waste management is that waste is a high-volume, low value product, and it is therefore uneconomic to transport. Overwhelmingly, the current solution to this is to compact waste in a compactor truck for transport. As mentioned above, once compacted, the opportunity for gathering data on the waste, and for separating the waste streams into useful products, is lost. This invention takes a different approach to the challenge of transporting waste, which allows it to separate and process waste into useful products in small facilities which can be co-located with the source of the waste.” (underlining added)
The claimed invention
The Specification ends with 17 claims. Claims 1 and 17 are independent and reproduced below. To assist readability and discussion of the individual features, I have formatted the text and included, in square brackets, labels to the features of the claims using the same labels as in the Previous Decision.
Claim 1
“A biological compost generation system of waste management and biological compost generation comprising:
[(a)] an at source waste collection and waste separation system
wherein waste is collected from at least one source in a separated
compostable waste stream and
non-compostable waste stream;
the waste streams collected at source in respective separate
trackable compostable waste bins, and
trackable non-compostable waste bins;
each stream placed in the separate trackable bins at the source; and
wherein the trackable bins contain source separated compostable and non-compostable waste streams from the at least one source;
[(b)] a near source sorting and decontamination facility
which receives and processes the contaminated compostable and non-compostable waste from the separate trackable compostable and non-compostable bins; and
[(c)] a decontamination stage at the near source sorting and decontamination facility
for further processing the waste from the trackable bins into
a sorted and decontaminated compostable stream and
a sorted and decontaminated non-compostable stream;
whereby compostable waste received in the trackable compostable waste bins is removed from each bin and is decontaminated at the near source sorting and decontamination facility;
the decontamination including
identifying non-compostable waste in the compostable waste from the trackable compostable waste bin and
transferring the thus identified non-compostable waste to the non-compostable waste stream thereby to form a decontaminated compostable stream;
[(d)] a waste water collection system in the near source sorting and decontamination facility
which processes collected water from the decontamination of the compostable or non-compostable streams into fractions,
one fraction being used as a media fraction for the growth of biological inoculant;
[(e)] a communication and data entry system
for collecting data from the decontamination stage and
reporting the data to the at least one source from which the waste is collected;
the data generated including a report on volume and/or weight of waste collected and details of any contamination;
that is, presence of compostable waste in a non-compostable waste bin or of non-compostable waste in a compostable waste bin;
[(f)] a bulk transportation step from near source to a central processing facility located remotely from the at least one source;
wherein the decontaminated and consolidated non-compostable stream is further processed into useable products; and
[(g)] wherein the decontaminated compostable waste stream is transported to a biological composting system which processes the compostable stream into biological compost, the processing of biological compost including:
[(h)] a pasteurisation stage whereby the compostable material is pasteurised in an industrial composting unit
where the temperature is adjusted to an optimal temperature to achieve pasteurisation, commonly in the range of 55-65 degrees thereby to produce pasteurised compostable material;
[(i)] an inoculation stage whereby the pasteurised compostable material is inoculated
by the addition of beneficial microbiology including a biological inoculant, thereby to produce an inoculated compostable material;
[(j)] a curing stage wherein the inoculated compostable material is cured in small batches in stackable aeration crates
wherein temperature level, moisture content and microbiology content of the inoculated compostable material is monitored until a desired level is achieved thereby to produce the biological compost.”
Claim 17
“A method of generation of biological compost; the method comprising the following steps:
[(a)] an at source collection and separation step
wherein waste is collected from at least one source in a separated
compostable waste stream and
non-compostable waste stream;
the waste streams collected at source in respective separate
trackable compostable waste bins and
trackable non-compostable waste bins;
each stream placed in the separate trackable bins at the source; and
wherein the trackable bins contain source separated compostable and non-compostable waste streams from the at least one source;
[(b)] a near source sorting and decontamination step
which receives and processes the contaminated compostable and non-compostable waste from the separate trackable compostable and non-compostable bins; and
[(c)] a decontamination stage at the near source sorting and decontamination facility
for further processing the waste from the trackable bins into
a sorted decontaminated compostable stream and
a separated non-compostable stream;
whereby compostable waste received in the trackable compostable waste bins is removed from each bin and is decontaminated at the near source sorting and decontamination facility;
the decontamination including
identifying non-compostable waste in the compostable waste from the trackable compostable waste bin, and
transferring the thus identified non-compostable waste to the non-compostable waste stream thereby to form a decontaminated compostable stream;
[(d)] a waste water collection step in the near source sorting and decontamination facility
which processes collected water from the decontamination of the compostable or non-compostable streams into fractions,
one fraction being used as a media fraction for the growth of a biological inoculant;
[(e)] a communication and data entry step
for collecting data from the decontamination stage and
reporting the data to the at least one source from which the waste is collected;
the data generated including a report on volume and/or weight of waste collected and details of any contamination;
that is, presence of compostable waste in a non-compostable waste bin, or of non-compostable waste in a compostable waste bin;
[(f)] a bulk transportation step from near source to a central processing facility located remotely from the at least one source;
wherein the decontaminated and consolidated non-compostable stream is further processed into useable products; and
[(g)] wherein the decontaminated compostable waste stream is transported to a biological composting system located remotely from the at least one source which processes the compostable stream into biological compost, the processing of biological compost including the following steps:
[(h)] a pasteurisation stage whereby the compostable material is pasteurised in an industrial composting unit
where the temperature is adjusted to an optimal temperature to achieve pasteurisation, commonly in the range of 55-65 degrees thereby to produce pasteurised compostable material;
[(i)] an inoculation stage whereby the pasteurised compostable material is inoculated
by the addition of beneficial microbiology including a biological inoculant thereby to produce an inoculated compostable material;
[(j)] a curing stage wherein the inoculated compostable material is cured in small batches in stackable aeration crates
wherein temperature level, moisture content and microbiology content of the inoculated compostable material is monitored until a desired level is achieved thereby to produce the biological compost.”
Claim interpretation

I do not consider that the construction of the above claims presents any significant challenges. While “the near source sorting and decontamination facility” in feature (c) of claim 17 appears to be lacking an explicit antecedent basis, I consider that such a facility would be implied in the text of feature (b) of the same claim. In addition, some of the expressions used in the claims were considered in the Previous Decision and the Delegate decided that:
·“an at source waste collection and waste separation system” means that “the waste collection and separation happens at the business, household or other source where waste is generated” (PD at [36]);
·“a near source sorting and decontamination facility” means that “the sorting and decontamination facility is located at or in close proximity to the source of waste generation such that the trackable bins can be transported to the facility without the need for heavy commercial vehicles” (PD at [38]); and
·“commonly in the range of 55-65 degrees” is an expression which “does not place any further limitation on the scope of the claim” (PD at [39]).
I agree with the Delegate’s interpretation.
Inventive step
The statutory basis of the requirement for inventive step is set out at s 7(2) and s 7(3) of the Act. These are reproduced below:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”
A useful test for obviousness was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262:
“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.” (at [45], underlining added)
In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated:
“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF₃ substitution in the “2” position in place of the -Cl atom in chlorpromazine or in any other body which, apart from the
-CF₃ substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)
That approach should be accepted.” (at [53], original emphasis, reference(s) omitted)
In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, it was stated:
“In Alphapharm, this Court reiterated that ‘obvious’ means ‘very plain’, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge …
Further, as recognised in Beecham Group Ltd’s (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (at [51]-[52], underlining added, reference(s) omitted)
It is important to emphasise that obviousness is a question of fact that is to be established by evidence. However, during examination, an examiner seldom has access to expert evidence. Instead, in raising inventive step objections, an examiner, as a delegate of the Commissioner, is entitled to make use of their technical expertise. This was clarified in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 at [24], where the Full Court stated that “[t]he Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory (see e.g. s 101(2)), he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations”.
The Delegate’s considerations and findings with respect to inventive step
In the Previous Decision, the Delegate decided on the Examiner’s inventive step objection that was based on the common general knowledge considered together with document D1 and another prior art document, namely AU 2003208132 A1 (WORLEY PTY LTD) published on 22 January 2004 (document D2) (PD at [80]). In what follows, I will discuss the relevant parts of that decision.
The Delegate’s formulation of the problems solved by the claimed invention
The Delegate observed that:
“71. … the specification notes a number of problems with known waste management and processing systems including the following:
a) Difficulty in properly decontaminating waste streams due to compaction of the waste on collection
b) Difficulty in collecting reliable data on cross-contamination of waste streams because of compaction of the waste on collection
c) Odour from leachate and
d) Consistency of quality of compost where the compost is stored in piles/windrows for decomposition and curing.
72. I am satisfied that these are the problems that the claimed invention seeks to address.” (PD, underlining added)
On the basis of my earlier discussion of the described and claimed invention, I agree with the Delegate.
The Delegate’s findings with respect to the disclosure in document D1
Having quoted parts of document D1, the Delegate concluded:
“82. It is clear from these passages that D1 provides a solution to problems (a) and (b) as the waste is processed without compaction in the first processing centre 28 which is located at or near the source, allowing for better sorting and removal of contaminants in the waste streams and the collection of more accurate data on cross-contamination of the waste streams. While D1 does not specifically mention that it is seeking to address the problem of compaction, the person skilled in the art would readily realise that the processing of the waste at source is before compaction and therefore provides a solution to this problem as well.
83. D1 clearly discloses features (a), (b), (c) and (e) of the claimed invention.
84. While not explicitly disclosed it would be readily apparent that the different work streams including the compostable work stream would then be bulk transported to a central waste processing centre for further processing such as recycling of recyclable materials, compost generation from compostable wastes and any non-recyclable waste going to landfill. The applicant has also acknowledged in their response of 15 June 2021 (‘We understand that D1 teaches that the bins are then bulk transported elsewhere for further processing of their contents’). Features (f) and (g) of the claimed invention are also therefore disclosed in D1.” (PD, underlining added)
Hence, in the Delegate’s findings, document D1 discloses all features of the independent claims 1 and 17, except features (d), (h), (i), and (j). I agree.
The Delegate’s conclusion on inventive step
With respect to the Examiner’s objection, the Delegate was satisfied that the person skilled in the art would be motivated to combine the teachings of documents D1 and D2 (PD at [91]). In addition, the Delegate provided the following reasoning:
“75. The examiner has stated that this feature [i.e., the use of waste water collected from waste stream for growth of biological inoculant] is ‘a generic way of treating waste water’. The applicant has not disputed this. A quick search of the internet reveals that the generation of compost tea from compostable waste streams is indeed a very well-known practice. I am satisfied that the using the waste water collected from the waste as a medium for growth of biological inoculant [i.e., at least a very significant part of feature (d)] was CGK in the art at the priority date.
…
78. Although the examiner has stated that this feature [i.e., the curing of compost in stackable aeration crates] is disclosed in prior art D2, he has not asserted that this feature was CGK in the art. Whilst the most common method for curing of compost in an industrial scale is to place the compost in piles or windrows with occasional turning of the compost, curing in bins also appears to be well known, both in backyard composting and in smaller commercial composting. For example, a cursory search identified the following documents that disclose curing in bins.
…
79. However, neither of these documents disclose curing in stackable aeration crates. Based on my cursory search, I cannot be clearly satisfied that curing of the compost in small batches in stackable aeration crates was CGK in the art of composting at the priority date.
…
88. I am not convinced that above passages [of document D2] provide a disclosure of curing the compost in stackable aeration crates. The reference to ‘box’ is in relation to enclosed composting systems comprising a bioreactor/digestor where the initial composting takes place before the compost is passed to the second stage for curing. There is no disclosure that the curing also happens in a box or crate. In fact, these passages teach the typical method of curing on a maturation floor. The feature of curing in small batches in stackable aeration crates is therefore not disclosed in D2.
…
92. … Hence, I am not satisfied that either of the independent claims lacks an inventive step in light of the combined disclosures of D1 and D2 and this objection should also be withdrawn.
…
93. Having formed the view, albeit erroneously, that the feature of curing in stackable aeration crates was disclosed in D2, it would appear that the examiner may not have searched for other documents that disclose this feature. If it can be established that this feature has been taught in any other s7(3) prior art document and given that it is a distinct aspect of the presently claimed invention, as reasoned earlier there may well be a motivation to combine such a prior art document as well with D1 and D2 and to arrive at the claimed invention leading to a finding of lack of an inventive step. I would also note that as all of the features that relate to the process of biological compost generation apart from the use of aeration crates are matters of CGK, D2 may well not be required to support any findings of lack of inventive step.” (PD, underlining added)
From the above reasoning, with which I agree, it is clear that the feature of curing in stackable aeration crates was the pivotal feature in the Delegate’s decision with respect to inventive step.
The Examiner’s objection that is at issue in the instant hearing
The Last Report includes the following objection:
“30 The invention defined in claims 1 and 17 does not involve an inventive step when compared with the disclosure of D1, for reasons presented in item 29 of Examination report No. 6 issued 14 June 2022.
In the response filed 21 June 2022 the applicant argues that:
‘Although D7 does disclose the composting of batches of material in stackable containers, there is no disclosure that the particular parameters of temperature, moisture and microbiology content of the compostable material is monitored within each of the containers.’
‘The disclosure of D8 does include the monitoring of at least temperature and moisture, but this does not incur in the individual stacked “receptacles” but in the “container” in which a number of the compost containing receptacles are stacked.’
I acknowledge that the prior art cited in the previous examination report, namely D7 and D8, teaches monitoring parameters such as the temperature and moisture content of air external to the stackable aeration crates (e.g. D7 at col. 5 lines 54-65 and D8 at page 8 line 13-16). However, the difference between monitoring these parameters inside each aeration crate, instead of external to the aeration crates, is considered no more than a mere technical equivalence to achieve the same outcome of having these parameters within an optimal range.
The placement of various sensors within the interior of a composting device for the purpose of monitoring the conditions therein is ubiquitous in the art, for example see D12 at claim 1, D13 at paragraphs [0035]-[0044] and D14 at page 2. D13 specifically teaches (paragraph [0036]) that the placement of temperature sensors can be either external or internal to the composting device. Both arrangements are well known in the art, and it would be clearly obvious to a person skilled in the art that one could be directly substituted for the other without changing the way the invention works.
I further note that the feature j of the claims 1 and 17 as discussed in the previous examination report merely requires monitoring the parameters of temperature, moisture and microbiology content of the compostable material until a desired level is achieved. However, there is no further limitation of controlling/adjusting these parameters to achieve the desired levels. In any case, even if the claims had the limitation of controlling/adjusting these parameters, it would lack an inventive step as this feature would be obvious to a person skilled in the art, as evidenced by the prior art documents D7-D8 and D12-D14.” (underlining and bold added)
Since the above objection refers to the objection item 29 from Examination report No. 6, I will reproduce that objection as well:
“29 The invention defined in claims 1 and 17 does not involve an inventive step when compared with the disclosure of D1.
The disclosure of D1 is discussed in paragraphs 81 to 84 of RYW Holdings Pty Ltd [2022] APO 20 [i.e., the Previous Decision].
The features of claims 1 and 17 that are not disclosed in D1 are as follows (added reference characters as per paragraph 32 of RYW Holdings Pty Ltd [2022] APO 20):
(d) a waste water collection system in the near source soiling [sic] and decontamination facility which processes collected water from the decontamination of the compostable or noncompostable streams into fractions, one fraction being used as a media fraction for the growth of biological inoculant;
the processing of biological compost including:
(h) a pasteurisation stage whereby the compostable material is pasteurised in an industrial composting unit where the temperature is adjusted to an optimal temperature to achieve pasteurisation, commonly in the range of 55-65 degrees thereby to produce pasteurised compostable material;
(i) an inoculation stage whereby the pasteurised compostable material is inoculated by the addition of beneficial microbiology including a biological inoculant, thereby to produce an inoculated compostable material; and
(j) a curing stage wherein the inoculated compostable material is cured in small batches in stackable aeration crates wherein temperature level, moisture content and microbiology content of the inoculated compostable material is monitored until a desired level is achieved thereby to produce the biological compost.
However, as noted in paragraphs 75 and 77 of RYW Holdings Pty Ltd [2022] APO 20, steps (d), (h) and (i) are considered common general knowledge in the art.
The following documents establish that the feature of utilising stackable aeration crates to cure compostable material in small batches was commonly known in the art before the priority date of the present application.
D7 discloses (fig. 6-7, 9) a composting system (58) comprising a plurality of stackable containers (60); each container comprises an aeration base (62), apertures on all side walls and an open top and is therefore considered a stackable aeration crate.
D8 discloses (fig. 2) an apparatus for processing waste material comprising a plurality of receptacles (5) stacked on top of each other within a container (7); each receptacle allows for aerobic decomposition (page 8 lines 8-12) is therefore considered a stackable aeration crate.
D9 discloses (fig. 2) a composter comprising a plurality of stackable containers (1); each container comprises ventilation openings (4) and is therefore considered a stackable aeration crate.
D10 discloses (fig. 1) a composter comprising a plurality of stackable baskets (1); each basket is perforated (3) and is therefore considered a stackable aeration crate.
D11 discloses (fig. 2) a composter (1) comprising a plurality of stackable containers (3); each container comprises apertures in the base (page 7 lines 16-18) and is therefore considered a stackable aeration crate.
Regarding the feature of monitoring temperature level, moisture content and microbiology content of the inoculated compostable material, said feature is considered ubiquitous in the art and does not provide an inventive step.
Therefore, the person skilled in the art would directly and without difficulty, by routine steps, arrive at a solution which is the same as the claimed solution, and therefore the claimed invention lacks an inventive step.
Furthermore, appended claims 2-16 add only features that are either disclosed in D1 or are common general knowledge in the art and which therefore cannot contribute to providing an inventive step. Note that:
·features relating to appended claims 12 and 16 are disclosed in D1 at paragraph [0063]; and
·features relating to appended claims 2-11 and 13-15 are common general knowledge in the art.
For example, collating and reporting the data collected (as per appended claims 4 and 6) for the purposes of charging differential fees (as per appended claim 5) would be obvious to a person skilled in the art.” (underlining and bold added)
The additional documents (other than D1) mentioned in the above objections items 29 and 30 are identified in the Last Report as follows (bold added):
“D7: US 5441552 A (DELILLO) 15 August 1995”
“D8: GB 2431923 A (ECOSSYSTEMS LTD) 9 May 2007”
“D9: DE 29609734 U1 (CCN S A CENTRE COORDINATION NA) 22 August 1996, machine translation obtained from Espacenet”
“D10: DE 29706411 U1 (SIMM, ANTHONY) 28 May 1997, machine translation obtained from Espacenet”
“D11: WO 2008056146 A2 (STRICKLAND, STEVE) 15 May 2008”
“D12: US 20100186468 A1 (KALLASSY et al.) 29 July 2010”
“D13: US 20150040626 A1 (PROCTER & GAMBLE) 12 February 2015”
“D14: WO 2009095713 A1 (SOIL AND LAND CONSULTANTS LTD) 6 August 2009”
The Applicant’s submissions

Following a summary of the prosecution history of the Application, the Applicant provides a brief overview of the Specification and states that:
“10. A problem to be solved by the invention is how to generate biological compost starting with material loosely sorted into compostable waste bins and non-compostable waste bins, the material in the compostable waste bins perhaps including non-compostable material.
11. A further problem to be solved by the invention is how to improve the sorting reliability over time.
12. A further problem to be solved by the invention is that it becomes commercially difficult to produce biological compost from a large volume of compostable waste if the large volume of compostable waste includes non-compostable waste within it.” (AS)
I must note that, in my opinion, the Delegate’s formulation of the problem (see PD at [71]-[72] quoted earlier in this decision) is somewhat more detailed and comprehensive.
Then, the Applicant provides a summary of the Previous Decision, noting that “[t]he Delegate in [that decision] made a number of findings and observations regarding the Application and the common general knowledge which form the starting-point for the present analysis of the Application and patentability of the claimed invention” (AS at [15], underlining added). In addition, the Applicant accepts (AS at [16]) the Delegate’s construction of the expressions used in the claims (PD at [36], [38], and [39], which I briefly discussed earlier). This is followed by a summary of the two recent inventive step objections, items 29 and 30, quoted in full earlier.
A substantial part of the Applicant’s Submissions is devoted to the legal principles governing the consideration of inventive step. While I agree with most of the Applicant’s submissions on that matter, it would appear that the Applicant has not fully appreciated the changes brought about by the Raising the Bar Act that I discussed earlier in this decision. For example, the Applicant submits:
“25. Of course, there can be an invention in a combination of known integers. In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 (the 3M Case), Aickin J said (at 293-295, emphasis added):
…
There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what is contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd (1912) 29 RPC 245 at 279–80 and British Celanese Ltd v Courtaulds Ltd (1933) 50 RPC 259 at 280. Indeed in the present case it appears that the first appellant in its establishment in the United States at one time had employees who did just this in the field of adhesives. But this is not so in all fields or in all countries. There was no evidence in the present case that those working in Australia in the field of adhesives or of surgical tapes followed such a practice or that any of the specifications relied upon was part of the common general knowledge of those working in these fields in Australia.” (AS, original bold and italic, underlining added)
I completely agree that there may be an invention in the combination of known integers and that patent specifications may not necessarily form part of the common general knowledge; however, the Applicant does not appear to acknowledge that s 7(2) as quoted earlier specifically refers to “the common general knowledge as it existed (whether in or out of the patent area)”, hence any possible differences between Australia and other countries are no longer relevant.
Even more importantly, the Applicant insists on applying an incorrect standard of proof (or satisfaction): “it cannot be concluded that it is ‘practically certain’ that the Applicant’s invention does not involve an inventive step” (AS at [40], original italic). Apparently, the Applicant bases their views on case law dealing with an older version of the Act:
“29. Finally, with respect to the standard of satisfaction to be applied when examining a patent application, the High Court in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 said (at 245-246):
The words ‘any other lawful ground of objection’ are very wide, but it is well settled that the commissioner ought not to refuse acceptance of an application and specification unless it appears practically certain that letters patent granted on the specification would be held invalid. As Menzies J has pointed out, he will not normally have before him the material necessary for the formation of a concluded opinion. Moreover, whereas refusal of acceptance is final, acceptance is not: the application may be opposed after acceptance on any of the grounds mentioned in s 56, and, if a patent is granted, its validity is open to attack in proceedings for infringement or for revocation. So, in McDonald v Commissioner of Patents (1913) 15 CLR 713 (a case in which the validity of a patent granted on the specification may be thought to have been very doubtful) this court allowed an appeal from the commissioner, Griffith CJ (at 717) saying:
I think that it is only in a clear case, where it is obvious that a patent cannot be granted, that the commissioner should reject an application altogether.” (AS, original bold and italic)
As I already noted, s 49(1) explicitly sets “the balance of probabilities” as the standard to which the Commissioner is to be satisfied. Therefore, in deciding the present matter, I must apply this standard.
With respect to the application of the legal principles to the circumstances of the present case, the Applicant’s main line of argument appears to involve mostly emphasising the “unfortunate tendency by the Examiners to focus on each feature of the claimed invention individually, rather than considering the inventiveness of the combination of integers” (AS at [30], original italic), further noting that “the Delegate also demonstrated a similar tendency at times in the [Previous] Decision” (AS at [30]). In that respect, the Applicant submits that “the ‘claimed solution’ is the entire combination of integers and, unfortunately, the Examiner does not appear to have given any consideration to whether (and if so, how) the person skilled in the art would ‘arrive’ that solution” (AS at [34], original italic). They also argue that “[w]hether each of features (a) to (j) can be identified in D1, D2, the common general knowledge, or any combination of those three, does not mean that invention lacks an inventive step” (AS at [35]).
While I do not necessarily disagree with the latter statement above, whether particular features are disclosed in a relevant prior art document or form part of the common general knowledge is, nonetheless, a relevant consideration when deciding on inventive step under the provisions of s 7(2) and s 7(3).
The Applicant further submits that:
“37. While the Examiner in the Sixth and Seventh Reports has relied upon features (d), (h) and (i) being common general knowledge (unlike the Delegate, who relied upon D2 for those features, and then a finding that the person skilled in the art would be motivated to combine D1 and D2), and has relied upon feature (j) being common general knowledge on the basis of stackable crates being referred to in D7 to D11 (rather than combining one of D7 to D11 with D1 and D2), the following observation by Aickin J in the 3M Case is nevertheless apposite:
It may be observed that in the cases where obviousness is in issue very often the larger the number of prior publications which are relied upon as together establishing absence of an inventive step, the more likely it is that the alleged invention was not obvious for the wider one has to look to find all the integers the less likely it is that it would have been obvious to put them together in the particular manner in which the inventor did.
38. Certainly, there is no basis to suggest that it would have been obvious to the person skilled in the art to combine three quite different pieces of prior art information. On the contrary, Aickin J’s statement above indicates that it may indeed be inventive to put such things together.” (AS, original italic, underlining added)
I am not sure about the basis for the Applicant’s interpretation of the Previous Decision as underlined above. Firstly, the Applicant already noted the Delegate’s finding that “[t]he use of the waste water collected from the waste as a medium for growth of biological inoculant [which is, at least, a very significant part of feature (d)] was CGK in the art at the priority date” (AS, paragraph [17(c)(ii)]). Secondly, the Applicant quoted PD at [93] as stating: “… I would also note that as all of the features that related to the process of biological compost generation apart from the use of aeration crates are matters of CGK, D2 may well not be required to support any findings of lack of inventive step” (AS, paragraph [17(f)], original italic, underlining added). It is clear to me that the Delegate considered that the above features in question were part of the common general knowledge. While the Delegate indeed discussed the combination of documents D1 and D2, this was done because that combination of documents was used in the Examiner’s objection he needed to consider.
Further, it is unclear to me why the Applicant considers the above quotation from the 3M Case to be “nevertheless apposite”. The Examiner’s objection in the Last Report clearly states that “[t]he invention defined in claims 1 and 17 does not involve an inventive step when compared with the disclosure of D1”, meaning that the objection is raised in light of the common general knowledge considered together with document D1, i.e., only one publication. The other documents are cited by the Examiner to support his view that some relevant matters form part of the common general knowledge and, in this context, it could be argued that the larger the number of documents, the stronger the support. In other words, the objection is not relying on a combination of these documents in the meaning of s 7(3)(b). Hence, I do not consider that the objection involves a large “number of prior publications which are relied upon as together establishing absence of an inventive step” (underlining added) or that the Examiner had to look any further than document D1 and the common general knowledge “to find all the integers”.
The Applicant concludes their arguments by stating that:
“39. In the present case, it is relevant to note that no single piece of prior art comes close to disclosing something similar to the claimed invention:
(a) D1 describes a recycling system with barcodes. The ‘waste generating entities’ are required to put the waste into bags. The sorting of waste occurs at a central facility, not at site or near to site [I note that the Delegate reached a different conclusion (see PD at [82] as quoted earlier)]. Waste is transported in an uncompacted state, rather than in a compacted state. D1 does not contain any of features (d), (h), (i) and (j).
(b) D2 describes a centralised waste processing facility. No part of the invention relates to collection or transportation of waste. Sorting of waste occurs at the centralised processing facility, not at site or near to site. D2 does not contain any of features (a) to (c) and (e) to (g).
(c) D7 to D11 are disparate documents that simply describe something that could be described as stackable aerate crates.
40. With respect to the inventiveness of the combination of integers in the Applicant’s invention (which the Examiner did not consider), the Applicant submits that there is no basis to suggest that the combination is obvious. Of course, the fact that each integer may be able to be identified in a prior art document or in the common general knowledge does not provide a sufficient basis for such a conclusion. The Applicant considers that the fact that neither the inventor of D1, nor anyone else since the publication of D1, has arrived at the Applicant’s invention is a significant indicator of non-obviousness. Certainly, in these circumstances, it cannot be concluded that it is ‘practically certain’ that the Applicant’s invention does not involve an inventive step.” (AS, original italic, underlining added, reference(s) omitted)
While I may or may not agree with the underlined statement in the last quoted sentence above, for the reasons I have already explained, this is irrelevant to my decision.
Is the invention claimed in claims 1 and 17 obvious?
The disclosure in document D1 and the common general knowledge
As I quoted earlier, the Delegate found that:
·document D1 provides a solution to problems (a) and (b) (PD at [82]); and
·document D1 discloses features (a), (b), (c), (e), (f), and (g) (PD at [83]-[84]).
Given this, with which I agree, I consider that it would be unreasonable to conclude that the person skilled in the art would not consider document D1 as relevant to the problems related to the practice of compacting waste that is cross contaminated and mixed from multiple sources.
I also quoted the Delegate’s statement, with which I agree, that he was “satisfied that the using the waste water collected from the waste as a medium for growth of biological inoculant was CGK in the art at the priority date” (PD at [75]). I note that feature (d) defines that “one fraction [of the collected waste water is] used as a media fraction for the growth of biological inoculant”, whereas the Delegate’s statement simply refers to “using the waste water collected from the waste” (i.e., with no mention of using a fraction) for that purpose. However, I do not consider that using only a fraction of the waste water, instead of the entire amount of waste water, would be something beyond the abilities of the person skilled in the art. Hence, it follows that feature (d) defines matters that are part of the common general knowledge in the art. In addition, the Delegate (correctly) noted that “all of the features that relate to the process of biological compost generation apart from the use of aeration crates [i.e., apart from feature (j)] are matters of CGK” (PD at [93] as quoted earlier in full, underlining added).
From the above, it can be concluded that all features of the independent claims 1 and 17, except possibly feature (j), are either disclosed in document D1 or form part of the common general knowledge. As I already discussed, feature (j) was the pivotal feature in the Previous Decision, and the Delegate noted that although “curing in bins also appears to be well known, both in backyard composting and in smaller commercial composting” (PD at [78]), ultimately, based on his “cursory search”, he could not be “clearly satisfied that curing of the compost in small batches in stackable aeration crates was CGK in the art of composting at the priority date” (PD at [79]).
Does feature (j) define a process that was part of the common general knowledge?
For convenience, I will reproduce this feature below:
“[(j)] a curing stage wherein the inoculated compostable material is cured in small batches in stackable aeration crates
wherein temperature level, moisture content and microbiology content of the inoculated compostable material is monitored until a desired level is achieved thereby to produce the biological compost.”
From objection item 29 (quoted in full earlier), it is clear that the Examiner considered that curing compostable material in small batches in stackable aeration crates was part of the common general knowledge at the priority date, and used documents D7 to D11 to support his view. Importantly, the Applicant does not appear to provide any arguments against this. The closest they get to a rebuttal is the quoted earlier statement that “D7 to D11 are disparate documents that simply describe something that could be described as stackable aerate crates” (AS at [39(c)]). Having considered the contents of documents D7 to D11, I do not think that the Applicant’s characterisation is fair. All of these documents appear to be concerned with the production of biological compost from compostable waste. In addition, in all of the documents, composting/curing is done not in piles or windrows, but in vessels that indeed could be described as stackable aeration containers or crates. I am satisfied that the use of stackable aeration crates for composting/curing of compostable waste was part of the common general knowledge.
With respect to the monitoring of the temperature, moisture content, and microbiology content, the Examiner considered that this was “ubiquitous in the art” (objection item 29), and cited several documents (in objection item 30) in support of his conclusion. I am unable to identify any submission by the Applicant that disputes this. In addition, I consider that, in any technological process, it is routine to monitor the technological parameters that are known to affect the outcome of the process. The Specification does not appear to suggest that it was not known in the art that the parameters listed in feature (j) affect the outcome of the composting/curing process and, thus, the quality of the compost. Indeed, as the domestic and industrial production of compost from compostable waste material was widespread at the priority date, it would appear that the scientific and technological principles involved in this process were well-understood at that time. The fact that, in some instances, less than ideal conditions were provided (e.g., piles and windrows exposed to the elements) is due to commercial considerations and not to the lack of knowledge or understanding of the technological requirements.
In view of the above, on the balance of probabilities, I am satisfied that feature (j) defines matters that were part of the common general knowledge at the priority date. Therefore, as a result of the continued examination following the Previous Decision, I am satisfied that all the features of the independent claims 1 and 17 are either disclosed in document D1 or form part of the common general knowledge.
Conclusion on obviousness for the invention claimed in claims 1 and 17
For convenience, I will re-list the problems found by the Delegate (see PD at [71]-[72]):
(a)Difficulty in properly decontaminating waste streams due to compaction of the waste on collection;
(b)Difficulty in collecting reliable data on cross-contamination of waste streams because of compaction of the waste on collection;
(c)Odour from leachate; and
(d)Consistency of quality of compost where the compost is stored in piles/windrows for decomposition and curing.
As described in the body of the Specification (and emphasised in italic in the list above), it is important to note that known in the art were not only the problems with decontamination, data collection, odour, and compost quality, but also the practices that, when employed, caused these problems. Therefore, the person skilled in the art, facing these problems, would also be aware of what causes the problems. This undoubtedly makes the task of the person skilled in the art somewhat more straightforward, as providing a solution to a particular problem could potentially be as simple as avoiding the practice(s) causing the problem and adopting instead a practice that does not cause the problem, assuming that such an alternative practice would also be known to the person skilled in the art.
Regarding what would be known to the person skilled in the art, on the basis of the above problems, I consider that the following observation by the Delegate is worth special attention:
“91. … the presently claimed invention seeks to address a number of distinct problems that have very little interrelationship to each other such as compaction of the waste before decontamination, difficulties in collecting data on cross-contamination in compacted waste streams and quality of the biological compost produced from compostable waste stream.” (PD, underlining added)

I agree. I am unable to identify any direct relationship between the problems related to the practice of compacting waste for more efficient transportation, the waste being cross contaminated and mixed from multiple sources, and the problems associated with the practice of curing and storing biological compost in large piles or windrows, and leaving it exposed to the elements. Cross contamination present in supposedly separated waste streams is not a problem that is unique to the production of compost from compostable waste. It affects waste recycling in general. Similarly, reduced quality of the compost when using large piles or windrows exposed to the elements is not a problem that is unique to the processing of compostable material that was sorted and decontaminated in an uncompacted state.
The broad ranging problems addressed by the instant invention mean that the hypothetical person skilled in the art must possess a wide range of knowledge, including knowledge related to waste management in general (i.e., waste sorting, collection, transportation, storage, decontamination, recycling, landfill disposal, data collection and reporting, etc.) as well as knowledge related to the whole technological process for the production of biological compost from compostable waste.
Having found the solutions to problems (a) and (b) in document D1 (see PD at [82] quoted earlier in this decision), the solutions being the same as those in the claimed invention (see PD at [83]-[84] also quoted earlier), the person skilled in the art would be left with the unrelated additional problems (c) and (d). For the reasons explained below, I consider that the person skilled in the art, facing problems (c) and (d), and being well aware of the practices causing these problems, would readily provide a solution by routinely replacing these practices with well-known and understood alternatives that do not create such problems.
With respect to problem (c), the description explains that:
“[00022] Composting systems are known that are designed to process compostable waste, such as food waste produced by commercial business and households, in an enclosed environment to reduce the amount of leachate and odour that can potentially be an issue to the local environment.” (underlining added)
Hence, in addition to the problems with “bad odour and leachate leaking from raw compostable waste into the local environment, and attraction of vermin and birds to raw compostable waste” (description at [00010]) being well known and understood, it appears that ways to overcome these problems were also known. I am not presented with any arguments as to why the person skilled in the art, in light of the common general knowledge, would not be able to routinely provide a solution to this problem that is the same as the solution provided by the claimed invention. While it is not perfectly clear to me how exactly, and to what extent, the claimed invention overcomes this problem (e.g., the near source sorting and decontamination facility is not explicitly defined as being enclosed), this is somewhat irrelevant as I am unable to identify in the Specification any solution to this problem that involves “some difficulty [to be] overcome, some barrier [to be] crossed”.
Similarly, with respect to problem (d), I am not presented with any arguments as to why the person skilled in the art attempting to improve the quality of the compost, in light of the common general knowledge, would not be motivated to replace piles/windrows with aeration crates as defined in the independent claims. Certainly, the person skilled in the art would be well aware that it is this practice of using piles/windrows that leads to the unsatisfactory and inconsistent quality of the compost. In addition, the person skilled in the art would also be well aware of the alternative practice which allows good and consistent quality of the compost to be achieved by using stackable aeration crates for composting/curing of compostable waste in small batches and monitoring the important parameters of the process. I have already found that this alternative practice was part of the common general knowledge, and, to my mind, the selection of one known alternative practice over another known alternative practice is governed by routine business considerations, including achievable price for particular compost quality, expected production and logistical costs, etc.
As I already noted, the Applicant’s main argument is, in essence, that I cannot be satisfied that the claimed invention is obvious. The only submissions attempting to positively assert that the invention is not obvious are (as I quoted earlier) that “no single piece of prior art comes close to disclosing something similar to the claimed invention” (AS at [39]), and that “[t]he Applicant considers that the fact that neither the inventor of D1, nor anyone else since the publication of D1, has arrived at the Applicant’s invention is a significant indicator of non-obviousness” (AS at [40]). I find the latter submission interesting, as it would appear to suggest that the mere fact that something is novel is a strong indicator that it is also non-obvious. I cannot accept such a submission.
Regarding the disclosure in any single prior art document being not similar to the claimed invention, I will again emphasise the Delegate’s finding that “the presently claimed invention seeks to address a number of distinct problems that have very little interrelationship to each other … Hence the person skilled in the art would realise that the solutions to each of these distinct problems would most likely be found in different documents rather than a single document” (PD at [91]). From my earlier discussions, it is clear that I consider the disclosure in document D1 to be sufficiently similar to one distinct part of the claimed invention, and that the rest of the documents, cited by the examiner, support the view that the other distinct part of the claimed invention represents a routine selection of well-known in the art techniques, motivated by the knowledge of the reasons for the existence of the problem(s) being faced.
Finally, I note that for a combination of known integers to be non-obvious, combining these integers must involve at least a “scintilla of invention” or, in other words, “there must be ‘some difficulty overcome, some barrier crossed’”. I am unable to identify any such scintilla, difficulty, or barrier, and none appears to be argued by the Applicant. The above analysis suggests that the person skilled in the art, facing the problems that I stated earlier, would be directly led to reach a solution that is the same as the claimed invention as a whole. In view of the disclosure of document D1, I consider that the claimed invention, in essence, constitutes a sequence of logically ordered known process steps that the person skilled in the art, facing the same problems, would be able to devise as a matter of routine in light of the common general knowledge. I am not presented with any convincing explanation as to why this would not be the case.
In conclusion, while I acknowledge the fact that the independent claims are relatively long and include a lot of features, it is important to note that the large number of claimed features, in itself, does not necessarily lead to non-obviousness. If the problems addressed by each feature (or a small group of connected features) are unrelated to each other, then the existence of working interrelationships between the features (or groups) that would create a true combination will be unlikely. In such a case, if each feature (or group) represents a well-known routine solution to a particular problem, then addressing many unrelated problems in a claim by adding corresponding features (or groups) of this kind will not make the claim non-obvious. This is so, regardless of the fact that a single document dealing with, and providing solutions to, all the problems may be difficult to find. I consider that the present invention is a good example of this.
On the balance of probabilities, I am satisfied that the invention claimed in claims 1 and 17 is obvious in light of the common general knowledge considered together with document D1.
Is the invention claimed in the dependent claims obvious?
Objection item 29 was reproduced in full earlier in this decision. For convenience, I will reproduce again the part of this objection that relates to the dependent claims:
“Furthermore, appended claims 2-16 add only features that are either disclosed in D1 or are common general knowledge in the art and which therefore cannot contribute to providing an inventive step. Note that:
·features relating to appended claims 12 and 16 are disclosed in D1 at paragraph [0063]; and
·features relating to appended claims 2-11 and 13-15 are common general knowledge in the art.
For example, collating and reporting the data collected (as per appended claims 4 and 6) for the purposes of charging differential fees (as per appended claim 5) would be obvious to a person skilled in the art.”
The Applicant has not provided any submissions disputing the correctness of the Examiner’s opinion. Having considered the dependent claims, I have no reasons to disagree with the Examiner. Indeed, I am unable to identify any additional features that, when added to the features already defined in claim 1, would result in claiming an invention that would not be immediately apparent to the person skilled in the art in light of the common general knowledge considered together with document D1, when the person skilled in the art is facing the problems solved by that claimed invention. On the balance of probabilities, I conclude that the invention defined in each one of the dependent claims is obvious.
I note that claim 9 is appended to itself, however this issue is inconsequential in view of the outcome of my decision.
Additional observations regarding inventive step
Even if I am wrong in my finding that the process defined by feature (j) was part of the common general knowledge at the priority date, I consider that the disclosure in document D7 is highly relevant to the consideration of inventive step. The abstract and the section “Field of the invention” of document D7 are reproduced below in their entirety:
“A method and apparatus for composting solid waste and sludge into a usable state. The method consists of thoroughly mixing a predetermined amount of compostable solid waste and sludge for placement within a stackable modular container system. Each container having a predetermined controlled mixture depth of approximately 12 inches for composting in a fourteen day period. Upon removal of the composted material from the containers, the material is screened and packaged for distribution, or shredded then screened and packaged, the remainder of which is returned for repeat of the cycle.” (abstract, underlining added)
“This invention relates generally to the field of solid waste and sludge treatment, and, more particularly, to a method of composting solid waste with dewatered sludge in approximately 14 days by use of a modular composting container apparatus.” (“Field of the invention”, column 1, lines 9-13)
The problems that the invention of document D7 seeks to address are explained as follows:
“Composting of waste is also a viable alternative to conventional dumping with variations using some forms of incineration, recycling, and composting being the subject of numerous patents.
Composting systems use aerobic mixing to control composting parameters such as pH, moisture content, temperature, and oxygen levels of a compost mixture. Typically, composting is carried out in economical windrow piles. However, the windrow is a static pile of non-uniform depth, does not provide uniform composting, and requires undesirably large sections of land.
The temperature distribution at the surface of the pile is significantly less than the temperatures at the center of the pile. The windrow is spread across a length of land and if the pile is high in leachables, such as nitrates, the pile may lead to ground water contamination.
Composting by windrow requires mixing for aeration. A ‘SCARAB’ machine is commonly used to straddle the pile to fluff and aerate the compost. If the mixing is performed infrequently, the pile can produce a severe odor problem from anaerobic pockets. Frequent mixing destroys digestion and further increases the spore levels around the pile. Conventional practice requires a windrow to undergo a 30 to 45 day aeration/non-aeration curing period when mixing is employed.
What is needed in the art is a method and apparatus which effectively accomplishes composting over a short period of time without utilization of expensive real estate, equipment, or require a high operational expense.” (column 1, line 47 – column 2, line 8; underlining added)
While not expressed using the same words, it is clear from the above that the problems addressed by the invention of document D7 are very similar to the problems associated with the practice of composting, curing, and storing biological compost in piles or windrows leaving it exposed to the elements, that is, in essence, problems (c) and (d). I am satisfied that in seeking a solution to these problems, the person skilled in the art would consider the disclosure of document D7 as relevant.
The most pertinent parts of document D7, including Figures 1, 6, and 7 that illustrate the use of stackable aeration containers for the “composting cure cycle”, are reproduced below (with yellow highlighting added to Figure 1):
“A conveyor 14 carries the waste to a conventional bag cutter 16 for exposing the contents of garbage bags before sorting section 18, where manual labor and automated equipment, such as magnetic sorters, may be employed to sort the waste by removal of non-composting material 20. Typically, a majority of the non-composting material is composed of recyclable materials such as plastics, glass, batteries, aluminum, ferrous metals, and so forth.” (column 3, line 63 – column 4, line 3; original bold, underlining added)
“The hopper/mixer 32 includes a means to thoroughly mix the predetermined amount of waste and sludge constituents before transfer by conveyor 56 to modular composting container system 58.
… the modular composting container system 58 is comprised of a plurality of self-contained stackable containers 60 having a uniformity of design for holding a predetermined amount of mixed waste material. Each container is constructed of … rectilinear aeration base 62 having first and second end walls 64, 66 respectively, and first and second side walls 68, 70, respectively. It should be noted that container size can be of any commercially acceptable size without departing from the scope of this invention. Preferred construction material of said walls is aluminum, but any material resistant to corrosion, such as plastic or stainless steel may be used. The end and side walls can be permanently attached, releasably connected, or eliminated.” (column 4, lines 39-57; original bold, underlining added)
“Additional containers can be stacked on top of the base container and coupled thereto by insertion of lower portion 82 of comer support structure 74 into the upper end portion 80 of the base corner support structure 74 for interlocking thereof. Positioning is made possible by use of cranes or, preferably, fork lifts whereby inverted channels 86 are permanently attached to the base 62 allowing fork lift access. …
The distance D1 between the aeration base 62 of a first container and the aeration base 62 of a second or stacked container is designed to provide a composting area of approximately 16 inches. The wall height H is approximately 12 inches allowing a preferred composting depth of 12 inches which has been determined as the optimum depth for composting in a 14 day composting cure cycle 98. Distance D2 between a top edge of a wall and a stacked aeration base of approximately 4 inches has been found to allow adequate air circulation to aeration base 62.
Placement of the modular containers in an indoor composting area 96 is preferred in arid, cold, and/or heavily populated areas. The ventilation in such a processing building is performed by pulling air from the outside and conditioning the air with moisture. For instance, in arid areas moisture added to the air prevents the mixture from drying too quickly. Moisture serves as fuel in the bio-oxidation of organic matter allowing heat buildup to destroy pathogenic microorganisms at temperatures above 55 degrees C. Despite the heat production, in cold areas the air should be treated with warm moisture to prevent the mixture from freezing.” (column 5, lines 31-65; original bold, underlining added)
Given the disclosure in document D7, I consider that the person skilled in the art, facing the distinct problems that the claimed invention addresses, would be clearly motivated to combine the teachings of documents D1 and D7 (see also PD at [93] quoted in full earlier) and, in light of the common general knowledge, reach a solution that is the same as the claimed invention.
Conclusion
I have found that all claims 1 to 17, as proposed to be amended, lack an inventive step in light of the common general knowledge considered together with document D1. I also note that it is not immediately apparent to me what matter from the body of the Specification could be claimed such that the resulting claimed invention would be non-obvious. To my mind, in view of the disclosure of document D1, the Specification as a whole does not appear to disclose a non-routine solution to any problem.
I note that this is a second decision with respect to examiner’s objection for the Application. The Applicant chose not to propose further amendments during the continued examination following the Previous Decision. In addition, similar matter is described and claimed at present in a divisional application, namely 2021201990, of the Application. In view of the public interest in certainty as to the status of the Application, and in the absence of a clear way to overcome my finding, I consider that providing the Applicant with a further opportunity to amend and continuing the examination of the Application would serve no useful purpose. Given all this, I consider that it is appropriate for me to refuse the Application.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents