Shell Internationale Research Maatschappij B.V. v ExxonMobil Upstream Research Company - [2013] APO 45

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Shell Internationale Research Maatschappij B.V. v ExxonMobil Upstream Research Company [2013] APO 45
Patent Application: 2004209623

Title:Removing Contaminants from Natural Gas

Patent Applicant:                   Shell Internationale Research Maatschappij B.V.
Opponent:  ExxonMobil Upstream Research Company
Delegate:  Dr. S.D. Barker
Decision Date:  5 August 2013
Hearing Date:  Written submissions were completed on 19 June 2013

Catchwords: PATENTS – final determination of an opposition under section 59 – whether amendments overcome the deficiencies in the opposed application

Representation: Patent applicant: Pizzeys
Opponent:Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004209623
Title:Removing Contaminants from Natural Gas

Patent Applicant: Shell Internationale Research Maatschappij B.V.
Date of Decision: 5 August 2013
DECISION
I direct that the patent Application proceed to grant.
Costs are awarded against ExxonMobil Upstream Research Company
REASONS FOR DECISION
Background

Grant of a patent for application 2004209623 in the name of Shell Internationale Research Maatschappij B.V. (Shell) was opposed by ExxonMobil Upstream Research Company (ExxonMobil). Following a hearing on 22-23 May 2012, a delegate of the Commissioner issued a decision (the earlier decision) upholding the opposition on the ground that the claimed invention was not fairly based (see ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2012] APO 92, 98 IPR 114).
In line with opportunity afforded them by the delegate, Shell filed amendments (“the amendments”) to the specification under section 104. These amendments were allowed on 15 March 2013. After the amendments were allowed, the matter was referred to me for final determination. The opponent sought a hearing prior to final determination and agreed that the hearing could proceed by written submissions. Each party provided written submissions and submissions in response to the other party’s written submissions.
The earlier decision is final and determined all the relevant issues that were capable of determination at the time (R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; 147 CLR 340 at 348-349). In the earlier decision the delegate found that the claimed invention lacked fair basis. The only issue to be decided in this final determination is whether Shell’s amendments as set out below overcome this deficiency.
The earlier decision
In the earlier decision the delegate found claim 1 as well as claims 3-24 and 26-31 (when not appended to claim 2) to lack fair basis (see paragraphs 70-72). In arriving at this decision the delegate referred (see paragraph 62 of the earlier decision) to a passage of Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8, 207 CLR 1 which at paragraph 15 states:
“where the issue is one under S40(3) of ‘fair basing’ of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly.”
The delegate thereafter determined that the invention described in the body of the specification is (see paragraph 66):
“a process concerned with the dehydration of a wet sour natural gas feed through formation of solid hydrates by cooling. In an alternative embodiment, the invention is concerned with sequential removal of water and sour contaminants from a natural gas feed using separate vessels to form solid hydrates and solids of the sour species by cooling to the relevant temperatures where the contaminant gases form solids. Therefore, the process associated with dehydration necessarily involves formation of solid hydrates using some means of cooling.”
The delegate then found that claim 1 (and claims 3-24 and 26-31) was not fairly based because the defined dehydration step was not limited to formation of solid hydrates using some means of cooling (see paragraphs 70 and 72).
Regarding claim 2, the delegate found that (see paragraph 71):
“Claim 2 which defines dehydrating the natural gas feed stream to include cooling the natural gas feed stream to a first operating temperature at which hydrates are formed is considered to be fairly based.”
In determining that claim 2 was fairly based the delegate construed the term “hydrates” such that, in the context of the specification and the claim more specifically, it meant (see paragraphs 23 and 56) “stable solids comprising water and natural gas having the outward appearance of ice, with the natural gas stored within the crystal lattice of the hydrate.”
Therefore, in determining that claims 1, 3-24 and 26-31 were not fairly based and that claim 2 was fairly based, the delegate made specific findings on what was disclosed in the body of the specification and what was defined in the claims.
The amendments
The amendments incorporate the words of prior claim 2 into amended claim 1 such that claim 1 now requires “dehydrating the natural gas feed stream includes cooling the natural gas feed stream to a first operating temperature at which hydrates are formed.” Amended claims 2-30 append from claim 1 and define the features of previous claims 3-31 respectively.
Submissions
The opponent submits that amended claim 1 omits a feature “found essential” in paragraph 66 of the earlier decision, in particular the feature of dehydration necessarily involving formation of solid hydrates. Quoting from the opponent’s submissions:
“The Delegate may have construed former claim 2 to necessarily involve formation of solid hydrates as per the preceding detailed analysis of paragraph 66. The problem is that amended claim 1 does not contain the Delegate’s italicized words, or even a satisfactory paraphrase. Therefore, claim 1, as amended to include the subject matter of former claim 2, leaves open non-fairly based constructions which would breach the Delegate’s decision on fair basis provided in paragraph 66 of the interim decision. For example, hydrates need not be solids. This issue is only evident following the interim decision.
This doubt is readily replaced by crystal clarity if Shell amends claim 1 to clearly recite that the process of dehydration necessarily involves formation of solid hydrates. This is a simple but mandatory amendment to ensure the interim decision is properly implemented.”
The opponent asks that I construe the words of former claim 2 such that the defined hydrates are not limited to solid hydrates. However in determining that former claim 2 was fairly based the delegate clearly found that, in the context of the specification and the claim, the defined hydrates must be solid. Paragraphs 23 and 56 of the earlier decision leave no doubt. It follows that the amended claims overcome the grounds of opposition found by the delegate.
Conclusion
Subject to appeal, I direct that the application now proceed to grant.
Costs
Each party requested that costs should follow the event. In the present case I believe this approach is appropriate. Costs are awarded against ExxonMobil.
Dr S.D.Barker
Delegate of the Commissioner of Patents