Shinagawa Refractories Co Ltd v Sakai/CiC (Aust) Pty Ltd

[1998] APO 64

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 643549 in the name of Shinagawa Refractories Co Ltd

Title:          Exothermic Mold Powder for Continuous Casting

Action  :          Opposition under S59 by Sakai/CiC (Aust.) Pty Ltd

Decision:          Issued            .

Abstract

The invention relates to an exothermic type mould additive for continuous casting in particular, a mould additive for continuous casting of steel in which the additive reduces carburisation and surface defects in the cast product.

All parties agreed that the components of the mould additive were well known at the priority date of the claims.  The parties are also in agreement about the selection of the components and the need to fine tune the mould additive.

I accept the evidence of the applicant in relation to the reaction mechanism.  Based upon this evidence, the compositions recited by the claims will inevitably give rise to a mould composition that will drive the exothermic reaction into the direction identified by equation (1) recited in the description.

The specification, on its face, discloses a composition of a mould additive that will provide, in use, a range of benefits.  The components are chosen such that a preferred chemical process implicitly identified by chemical equation (1) takes place.  The claimed limits are not ‘mere desiderata’ and thus the application is directed to a manner of manufacture.

The opponent has been successful on the grounds of novelty and inventive step in respect of claim 1 as the citation discloses a mould additive containing the claimed composition.  It was irrelevant that the citation did not teach the reaction mechanism because this would inevitably take place as a direct consequence of the components being present in their claimed ranges.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 643549 by Shinagawa Refractories Co Ltd

background

Standard Patent application 643549 was filed on 19 July 1991 as a national phase case 82169/91 derived from PCT/JP91/00967 that claimed priority from basic document JP 2-330463 filed 30 November 1990.  Acceptance was advertised on 6 August 1992 and a notice of opposition was filed 18 February 1992.  A series of S104 amendments were filed on 13 December 1994, 27 April 1995, 7 March 1996, and 15 March 1996.  Leave to amend was granted and the amendments were incorporated into the file on 16 April 1997.  The opponent filed no comments in respect of the amendments.

Evidence in support was completed on 9 August 1994 and evidence in answer on 7 February 1995.
The opponent filed a request on 7 June 1995 to amend the statement of grounds and particulars that included a reference to further evidence (herein after referred to as exhibit FS-8).  This was allowed on 15 January 1996.  Evidence in reply that consisted of a further declaration and the exhibit FS-8 was completed on 7 June 1995.  In response to the further exhibit, the applicant was allowed to adduce further evidence that was filed on 27 March 1996 and that was subsequently allowed on 19 September 1996.

A hearing on the substantive opposition was set down in Canberra for 31 July 1998.  Annebelle Bennett, Senior Counsel with John O'Connor and Shahnaz Irani from the firm Spruson & Ferguson appeared on behalf of the opponent.  Robert Wulff of the firm Griffith Hack & Co represented the applicant.

The claims as amended refer to the term “silicious” instead of “siliceous”.  As both parties were aware of this obvious error, there is no need for me to comment any further on this issue.  In addition, the terms “mold” and “mould” are used interchangeably throughout the evidence and in my decision I will be using whatever term is appropriate.

The invention

The invention relates to an exothermic type mould additive for continuous casting in particular, a mould additive for continuous casting of steel in which the additive reduces carburisation and surface defects in the cast product.

Exothermic mould additives are added to the surface of the molten steel during casting to provide lubrication between the mould and the solidified shell, to melt and absorb impurities that are removed as slag and to provide insulation of the molten shell during casting.  The specification admits that exothermic mould additives are known but holds that there have been none that achieve these objectives.  A number of examples of prior art mould additives are discussed.  None of these examples appear to be directed to low carbon steels.

From a reading of the specification, the invention finds particular use in the casting of low carbon steels.  In particular, for extremely low carbon steels, the supply of sufficient heat to the meniscus in the mould and the insulation of the mould additive becomes essential if inclusions are not to be present in the final product.  Moreover, for low carbon steels, control of carburisation is also necessary. 

The solution, according to the specification is to balance the various components of the mould powder within certain limits. 

The claims

The specification ends with four claims.  Claims 1 to 3 are independent with claim 4 being appended to any one of claims 1 to 3.  The claims as amended after acceptance are as follows:

1. An exothermic type mold powder additive for continuous casting characterised in that it comprises;
20-90 wt% base raw materials,
0-10 wt% siliceous raw materials containing more than 50% wt% SiO₂ content,
0-20 wt% flux raw materials,
2-30 wt% of more than one kind of component selected from a group comprising carbonates, bicarbonates and nitrates of alkali metals as exothermic materials,
and 3-30 wt% of one or more than one kind of components selected from a group comprising carbon, silicon and silicon alloys as reducing materials.

2. An exothermic type mold powder additive for continuous casting characterised in that it comprises;
20-90 wt% base raw materials,
0-10 wt% siliceous raw materials containing more than 50% wt% SiO₂ content,
0-20 wt% flux raw materials,
2-30 wt% of one or more than one kind of component selected from a group comprising carbonates, bicarbonates and nitrates of alkali metals as exothermic materials,
and, 3-30 wt% of silicon as reducing materials, wherein inevitable free carbon is less than 0.5 wt%.

3. An exothermic type mold powder additive for continuous casting characterised in that it comprises;
30-90 wt% base raw materials,
0-10 wt% siliceous raw materials containing more than 50% wt% SiO₂ content,
0-20 wt% flux raw materials,
2-30 wt% of one or more than one kind of component selected from a group comprising carbonates, bicarbonates and nitrates of alkali metals as exothermic materials,
and, 0.5-5 wt% carbonaceous raw materials and 1-20 wt% silicon as reducing materials.

Claim 4 is directed to a the mold additive according to any one of the preceding claims containing a known flame controlling material comprising iron oxide.  Both parties were in agreement that the subject matter of claim 4 is known.

Examples of base raw material include: portland cement, dicalcium silicate, wollastonite, yellow phosphorus slag, blast furnace slag, synthetic calcium silicate, limestone, dolomite, magnesia, alumina, titania, and synthetic calcium silicate.

Examples of silica raw materials include: perlite, flyash, silica sand, felspar, silica powder, diatomite, sodium silicate, potassium silicate, glass powder, and silica flour.  These materials control the bulk density of the mould additive and the weight ratio of the CaO/SiO₂.

Examples of flux raw materials include sodium fluoride, cryolite, fluorite, barium carbonate, boric acid, borax, colemanite, magnesium fluoride, lithium fluoride, aluminium fluoride, and manganese oxide.  These materials control the fusion characteristics of the mould additive.

Examples of exothermic material include sodium carbonate, sodium bicarbonate, sodium nitrate, potassium carbonate, potassium bicarbonate, potassium nitrite, and lithium carbonate.

Examples of reducing materials include silicon, Si/Ca alloy, Si/Fe alloy, graphite, coke, and carbon black.

Examples illustrated are directed to extremely low carbon steels, low carbon steels, high carbon, and middle carbon steels.

Essential features of the claimed invention

Claim 1

Concerning claim 1, the opponent asserts that only the base raw materials, the exothermic materials, and the reducing materials are essential.  They assert that the siliceous raw material and flux raw materials are inessential, as they do not have to be present in the mould additive.  Further, they assert that the restriction of exothermic materials to more that one type of exothermic material is an inessential feature as these materials are interchangeable and are in fact ‘mechanical equivalents’ to each other.  In other words, the opponent asserts that there is nothing essential in the choice between the various alternatives recited for the reducing materials.  Thus, the opponent alleges that the various alternatives detailed in the specification are merely ‘chemical equivalents’.

In relation to the components of siliceous materials and flux raw materials, I agree with the opponent only to the extent that these components need not be present.  However, as there is an upper range for the wt% of these components, I am unable to agree that the features of the claim that incorporate these components are thereby inessential.  What the claim recites is a composition that contains upper limits to a number of components which if present must not be exceeded.  Therefore, in my judgment, a composition that contained more than 10 wt% of siliceous raw material or contained more than 20 wt% flux raw material would not deprive the claim of novelty.

The opponent’s argument about the chemical equivalence of the components is attractive.  However, this is fundamentally an argument about novelty, not about essential features.  At this stage, I conclude that the claim includes as an essential feature more than one kind of exothermic material because the claim is explicit in that it must contain more than one kind of exothermic component.  The term ‘kind”, I take to mean a different compound selected from the range of equivalents.  I note that there is no suggestion that by the use of a different kind of component, a particular synergistic effect occurs.  This aspect will be further considered under the ground of novelty.

Claim 2

In addition to the arguments in relation to claim 1, the opponent holds that as the inevitable free carbon content is less than 0.5 wt%, this component need not be present and is thus inessential.  Again, I refer to my previous comments regarding the issue of upper limits.

Claim 3

Similar arguments were put against this claim.

In relation to the claims as a whole, the opponent states:

“What is missing from the claims is any reference to the nature of the exothermic reaction relied upon”.

This is a crucial point.  I take this to be an allegation of lack of definition of the invention or lack of fair basis. I will now turn to the evidence to resolve this issue.

Nature of the exothermic reaction

Evidence of Akihiro Morita
Akihiro Morita is one of the inventors of the application.  In Morita’s first declaration provided during evidence in answer he states:

“…when the mold additive is charged onto a molten steel in a mold, the exothermic raw material (alkali metal carbonate, etc) reacts rapidly with a reducing material (carbon, silicon or its alloy) to generate reaction heat, while the gaseous alkali metal is generated during the reduction reaction which further reacts with atmospheric oxygen to rapidly generate a large amount of combustion heat.

The mechanism of the exothermic reaction is further illustrated by chemical equation (1) exemplified by Na₂CO₃ for exothermic material and Si for reducing material:

Na₂CO₃    +  Si        ®       2Na  +  SiO₂   + CO
4Na     + O₂             ®       2Na₂O  (1)

Na₂CO₃ in the exothermic raw material reacts rapidly with Si to generate heat and gaseous Na metal. The gaseous Na metal further reacts with oxygen in the atmosphere to generate rapidly a large amount of combustion heat. It is the main feature of the present invention that the heat generated by the equation (1) insulates the molten steel to be cast.

In this reaction system, if excess amounts of SiO₂ are present Na₂CO₃ tends to be decomposed by SiO₂ failing to carry out the reaction of equation (1)...

The reaction is illustrated by equation (2) below:

Na₂CO₃  +  x SiO₂    ®       yNa₂O.zSiO₂  +  CO₂         (2)

Reaction (2) is endothermic and adversely affects the insulating effects of the molten steel.  Moreover, if the Si content is above the maximum value, reaction (2) predominates over reaction (1).

Therefore, the main feature of the present invention is that, by decreasing the SiO₂ content in the mold additive, the reaction (2) is suppressed, while the reaction (1) is promoted.

In the present invention, the mold additive should contain 0-10 weight % of siliceous material containing more than 50 wt% of SiO₂.  If the siliceous material exceeds 10 wt%, the reaction according to equation (2) tends to proceed.”

In summary, it is the low value of SiO₂ present in the composition that drives the chemical equation in the desired direction towards reaction (1).  Although the presence of SiO₂ is optional, if present it must be less than 10% wt.

Morita continues in his declaration with his analysis of the contribution to the invention by the lower than expected values of SiO₂ and concludes:

“In the present invention, as is shown in equation (1), reaction heat between Na₂CO₃ and Si, as well as combustion heat of gaseous Na can be employed for insulating molten steel, thus the insulating effects are tremendously increased.  Moreover, Na metal is reacted in a gaseous state, so no inclusion of metal oxide into the molten steel or slag occurs.

Siliceous material is well known as a fine, light and good insulating material.  Therefore, in the conventional art, it is common knowledge to formulate siliceous material into a mold additive, and in fact, the trend is to use a large amount of siliceous material.  On the contrary, it should be noted that the present invention boldly seeks to control the amount of siliceous material.”

Evidence of Dr Roy T Southin
Dr Southin is an independent metallurgical consultant and a declarant for the applicant.  He appears to be a person skilled in the art.  He states:

“I agree that all materials were known before the priority date, but not that the relative proportions of the materials as claimed in the opposed application were known in mould powders before the priority date.”

Dr Southin also agrees that “ modifying the components of mould powders to fine tune formulations was well known before the priority date.”

Dr Southin attributes the benefit to limitation on the silica content.  It is the limitation on the silica content that in combination with the other components of the mould powder that drives the chemical equation in the desired way.  If higher percentage weights are used than a different reaction occurs.  He states:

“Furthermore, the opposed application indicates that if excess amounts of SiO₂ are present at commencement of a casting process that employs such a mould additive, then the Na₂CO₃ is decomposed by SiO₂ and the required exothermic reaction is diminished, and hence the performance of the mould powder.”

“...the invention of the opposed application resides not in the loose grouping of known components but rather in the surprising identification of a proportion of components that, inter alia, maximise exothermic powder combustion and minimise endothermic side reactions (eg. the endothermic consumption of Na₂CO₃ by SiO₂).”

Evidence of first Shimokawa declaration
Fumitaka Shimokawa is a consultant engineer for the opponent.  In 1980, he became the technical section manager of the Steel Making Division of Sakai Chemical Ind. Co. Ltd and in 1993, he became consultant engineer of mould flux to the opponent.  It is not readily apparent whether at the priority date of the claim that Mr Shimokawa is a person skilled in the art of mould powders in Australia.

He attests that at the priority date of the opposed application, it was well known that a mould additive was required to fulfil a number of basic functions.

“(a) To protect the liquid steel surface in the mould from oxidation by air
(b) Thermal insulation of a liquid steel surface
(c) Absorption of oxide inclusions which float to the surface
(d) To encourage uniform heat transfer between the mould and the steel shell and,
(e) To form a lubrication film between the mould and steel shell.”

Mr Shimokawa states that it is well known to fine tune powders to achieve optimum performance.  Mould powders usually comprise a base materials, siliceous material, flux material and carbon.  The base materials are based on SiO₂ and/or CaO and include materials such as cement, phosphate slag, and wollastonite.  Siliceous material (a material that has SiO₂ as a main component) include diatomaceous earth, silica stone, fly ash and glass powder.  A flux material includes Na₂CO₃, NaF, CaF₂, MgO, B₂O₃, and Li₂CO₃.  Carbon was also added.

Mr Shimokawa considers that exothermic powders were well known before the priority date.

Mr Shimokawa identified a number of inconsistencies with the specification as accepted.  In particular he identified examples 13 and 14 that the applicant states are examples of the invention.  Yet Mr Shimokawa holds that these examples were inconsistent with the invention described.  From this observation, Mr Shimokawa, draws the following conclusion:

“I can only conclude from these Examples that those materials having more than 10 wt% siliceous materials do not necessarily perform any better than those powders having less than 10 wt% siliceous materials.”

Mr Shimokawa considers that the applicant’s experimental results (examples 13 and 14 that were later deleted by amendment) do not support the applicant’s reaction mechanism.  Mr Shimokawa goes further and suggests that the applicant’s reaction mechanism is flawed.

“Firstly, SiO2 is actually produced by the combustion reaction between Si in the metal alloy and the carbonate materials according to the following reaction:

Na₂CO₃  +  Si and/or Si alloy (Si-Ca)
®       Na (g)  +  SiO₂ and/or SiO₂-Ca0  +  gas
®       Na₂O  +  SiO₂ and/or SiO₂-Ca0  +  gas

The SiO₂ and/or SiO₂-Ca0 which is generated by the above combustion reactions would result in more than 50% SiO₂.”

The second inconsistency identified by Mr Shimokawa is in regard to the formation of xNa₂O.ySiO₂.  In Mr Shimokawa’s view the formation of xNa₂O.y SiO₂ will be reduced because of reduced SiO₂ due to the need to balance the ratio of CaO/SiO₂.

Evidence of Tim Jacques
Mr Jacques is an employee of BHP and declarant for the opponent.  I consider him a person skilled in the art of mould powders in Australia.  Mr Jacques states:

“... it was standard practice in Australia on or before 30 November 1990 in the art of mould powders to “fine-tune” the powder for differences in casting conditions and types of steel.  Thus, I consider that all that has been done in the Opposed Application is to modify the amounts of standard components according to such standard practice”.

In relation to claim 1 [before amendment] Mr Jacques states:

“I cannot see how there can be anything new in selecting the above broad ranges of known components.”

In the main, Mr Jacques agrees with the statements made in the first Shimokawa declaration.  However, I note that Mr Jacques makes no reference to those paragraphs of the Shimokawa declaration that relate to the proposed reaction mechanism of the application.  This is a significant omission.  Thus, the evidence of Mr Jacques only supports the chemical equivalence of the powders and the need to “fine-tune”; his evidence does not support Mr Shimokawa’s discussion on the reaction mechanism.

Evidence of second Shimokawa declaration
Shimokawa refers to the former examples 13 and 14 that were deleted during the S104 amendment after acceptance.  These examples disclose mould additives with greater than 10 wt% siliceous raw materials containing more than 50% SiO₂.  He points out that the applicant admits that compositions outside the claimed range work just as well as those compositions within the range.

Mr Shimokawa makes the point that the use of compositions with less than 10 wt% siliceous raw materials containing more than 50 wt% SiO₂ content in exothermic mould additives was a very common practice in industry.  So common, in fact, that he attests that:

“This was such a common practice, in fact, that it has generally not been considered necessary to describe or refer to it in the relevant technical literature.”

Furthermore, Mr Shimokawa attests to the fact that in many cases the addition of siliceous raw materials is not necessary.  As the only evidence on these points is exhibit FS-8, a Japanese document, I am unable to agree with Mr Shimokawa that the subject matter of the claims is well known at the priority date.

Conclusion
I note that both parties agree with the statement that the components of the mould additive are well known at the priority date of the claimed invention.  I also accept that the parties are in agreement about the selection of the components for the mould additive and the need to fine tune the mould additive.

I accept the evidence of the applicant in relation to the reaction mechanism as this evidence has the most probative value.  Based upon this evidence, I conclude that the compositions recited by the claims will inevitably give rise to a mould composition that will drive the exothermic reaction into the direction identified by equation (1).  That is, I consider that the implicit effect of the mould compositions according to claims 1 to 3 is to provide the exothermic reaction represented by equation (1).

Deletion of examples 13 and 14

As a result of the amendments to the specification that were carried out after acceptance, examples 13 and 14 were deleted.  Much is made of this.  The opponent asserts that this establishes that there is no invention disclosed in the specification.  I will deal with the ground of lack of manner of manufacture later in my decision.

The opponent asserts that examples 13 and 14 illustrate embodiments of the invention that contain more than 10 wt% siliceous material.  This demonstrates that mould compositions outside of the claimed compositions work just as well as compositions that fall within the scope of the claimed invention.  Therefore, the opponent argues, the feature of the limitation of siliceous materials to 10 wt% is inessential to the invention.

However, this submission is wrong.  The specification has been amended.  There is no inconsistency between the description and claims.  There is nothing on the face of the document that leads to a conclusion that the upper limit to the siliceous material is inessential.

Nevertheless, the applicant cannot resile from their statements made in the specification before amendment.  However, the applicant may lead evidence to explain the deletion of these examples.  See by analogy the case of Gerber Garment Technology v Lectra Systems [1995] FSR 493.

The applicant’s declarant Dr Roy T Southin states:

“In my opinion it is irrelevant that some mould powders work outside this range, because the invention has been deliberately delimited to this range for reasons of making a sound prediction as to mould additive performance.”

Mr Wulff for the applicant referred me to the cases of Sunbeam v Morphy-Richards (1961) ALJR 212 and Olin Mathieson v Biorex [1970] RPC 157. He asserts that “a patent is to be granted for a novel combination serving a useful purpose” and that “it is open to the applicant to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound.”

Clearly, the applicant can delimit their invention in any way they see fit.  If they intend that mould compositions that fall within the range of mould compositions invented by the applicant are not to be covered by their monopoly claims, then they are entitled to do so.  See the discussion by Wilcox J. in Rhone-Poulenc Agrochimie S.A. & May and Baker Australia Pty Ltd v UIM Chemical Services Pty Ltd and Clyde Todhunter Waugh (1985) 6 IPR 394.

Therefore, on the authorities before me, I conclude that the upper limit of 10 wt% for siliceous material is an essential feature of the invention as claimed.  The mere fact that compositions outside the claimed range work just as well as compositions within the claimed range does not negate the essentially of the feature.  Nor is such a discussion relevant to the issue of what features are essential to the claimed invention.

History of the claims

As previously stated there were a number of amendment actions.  It is my understanding of the opponent’s case that the applicant ‘slipped in’ amendments without indicating their true nature to the Patent Office.  As the amendments have been allowed, the time has passed for the opponent to make these allegations.  It would have been more appropriate for the opponent to raise these allegations in opposition proceedings against the s104 amendments rather than during the substantive opposition.

On review of the history of the amendments, I am not satisfied that the amendments were made in bad faith. 

Novelty

The opponent alleges that the claims are not novel.  The main citation to be considered was exhibit FS-8.  No one of the other citations disclose a composition in which the silica content is 10 wt% or less in combination with other essential features of the claims.

Exhibit FS-8 (OPI 14 January 1974)
Exhibit FS-8 is a true copy of Japanese Patent Application No. 49-3823 together with a certified English translation.  This document discloses a mould additive that uses Wollastonite (silica limestone) as a base material with added low melting point materials (fluxes), light refractory materials and carbon.

The specification states that it is common to use a mould additive to cast metal, especially steel.  The mould additive is added to the surface of the molten steel and helps to prevent oxidation, rapid cooling and to improve the steel surface by good lubrication by the slag flowing between molten steel and the mould.

The specification discloses that the use of silica limestone instead of flyash in the mould additive results in a cast product having a good surface finish with reduced defects.  Inclusion removal is also stated as improved because silica limestone contains very low alumina, compared to other mould additives that contain about 20% alumina from the flyash base.

The flux is an inorganic material with a melting point of 700-1300^o C.  The material is selected from one of the following: sodium carbonate, potassium carbonate, sodium fluoride, aluminium fluoride, potassium fluoride, lithium fluoride, barium fluoride, sodium aluminium fluoride or calcium fluoride.  The flux reduces the melting point of the mould additive and increases the flowability of the molten slag.

The light refractory material is a low-density material composed of silica alumina base, e.g. vermiculite, perlite, or pumice.  These materials are expanded by heat and help reduce the bulk density of the mould additive while improving the flowability of the molten slag.

Carbon material is used to adjust the melting speed of the mould additive and the material may be charcoal, coke, low volatile coal, or graphite.

The range of materials used in the mould additive is as follows:
Silica limestone  50-90%
Flux  5-45%
Light refractory material        0-15%
Carbon  0-30%

Two examples are given.

Example 1: continuous casting of plain carbon steel
Silica limestone   70%
Sodium aluminium fluoride   10%
Sodium carbonate                  10%
Perlite  5%
Coke  5%

Example 2: continuous casting of low carbon steel
Silica limestone   74%
Sodium aluminium fluoride   10%
Sodium carbonate                  10%
Perlite  6%

At the hearing, Mr Wulff argued that exhibit FS-8 was distinguishable from the application because it was not concerned with an exothermic mould additive for continuous casting.  He also argued that the essence of the invention was the replacement of flyash with silica limestone.  However, during rebuttal from the opponent, Mr Wulff conceded that the specification related to continuous casting.  I agree.

Mr Wulff argued that claim 1 was restricted to define more than one kind of component selected for the group comprising carbonates, bicarbonates and nitrates of alkali metals as exothermic materials.

The citation discloses sodium carbonate and potassium carbonate for use as a flux material but not for use as an exothermic material.  However, it seems to me immaterial what function the material is intended to perform.  Nature does not know why the material was added.  If, in carrying out the instructions in the citation, a mould composition falling within the range of compositions defined by claim 1 would inevitably be produced, then the claim would not be novel.

I note that in the opposed application, the applicant envisages that “exothermic materials can carry out the duties as a flux after conclusion of the reaction. ” This statement gives greater weight to the argument that exhibit FS-8 is a citation for claim 1.

The applicant contends that the claim has been restricted to defining 'more than one kind of component' and since the citation does not disclose this feature, the claim must be novel.  In response, the opponent contends that components of the group are chemical equivalents and that choosing one or two of the possible components are no different than choosing one.  I agree with the opponent to the extent that there is nothing in the specification that would indicate that choosing 'more than one kind of component' is any better than choosing 'one kind of component'.  Indeed the teaching of the specification before amendment was that 'one kind of component' was an essential feature of the claim.  Nevertheless, the citation does not teach the use of bicarbonate or a nitrate of an alkali metal.  Furthermore, there is no evidence to suggest that at the date of publication of the citation (14 January 1974) that bicarbonates and nitrates of an alkali metal are chemically equivalent to either sodium carbonate or potassium carbonate.

However, if it can be shown that having 'more than one kind of component' is not essential to the working of the claimed invention then the claimed invention would not novel; Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367. I have already noted that there does not appear to be any substance to the suggestion that selecting 'more than one kind of component' is any different from selecting only 'one kind of component'. I cannot find any suggestion that the invention resides in making a selection.

It seems to me that by re-defining the invention of claim 1 to disclaim only 'one kind of component', the applicant is attempting to avoid an adverse finding on the ground of lack of novelty.  It is implicit in what I have said that the choice of 'more than one kind of component' rather than 'one kind of component' does not materially affect the way the invention works.  Therefore, the invention as defined by claim 1 is not novel.

In relation to claims 2 and 3, the citation does not respectively disclose either of the features 3-30 wt% silicon as a reducing material with inevitable free carbon is less than 0.5 wt% or the features of 0.5 wt% carbonaceous raw materials and 1-20 wt% silicon as reducing materials.  Hence these claims are novel over the reference.

Opponent’s further arguments on novelty
The opponent submits that at the priority date of the claims a skilled addressee would:

“…recognise without being told, that a mould additive for continuous casting would have to exhibit the properties expected of such a mould additive and know the properties of each component and that ‘fine tuning’ would be required for individual cases.”

This argument refers to the knowledge of the skilled addressee at the priority date.  However for novelty, it is the knowledge of the skilled addressee at the publication date of the document that is relevant.  There is no submission concerning what information the skilled addressee would possess at the relevant date of 14 January 1974.

Inventive step

Notwithstanding my finding on novelty, it is readily apparent that claim 1 lacks an inventive step over exhibit FS-8.  In my judgement, there is no fundamental difference between the citation that discloses only one kind of component and the claim that defines more than one kind of component when all components are equivalent to each other.  There is no suggestion of any surprising effect that would accrue to particular choices between equivalent components.  Given the agreed position of both parties about the chemical equivalence amongst the chemical compositions at the priority date of the claims, the subject matter of claim 1 is disclosed.  Hence, claim 1 lacks an inventive step.

In relation to claims 2 and 3 there is no evidence that suggests these claims lack an inventive step.  No argument, independent of the submissions against claim 1, was advanced that these claims fail for lack of novelty and inventive step.

Manner of Manufacture

The opponent alleges that the claims do not disclose an invention.  They base this conclusion upon the chemical equivalence of the components and on the deletion of examples 13 and 14.

In support of their ground, the opponent raised the case of Commissioner of Patents v Microcell Ltd (1959) CLR 232, a case dealing with the use of known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. And following the cases of Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243 and NV Philips Gloeilampenfabrieken v Mirabella Pty Ltd (1995) 183 CLR 655, the opponent alleges that no invention is disclosed by the specification. The opponent states:

“What is claimed is a combination of known components from known categories for the use of which their known properties made them useful.  Each of the components has long been used for the specific purpose as outlined in the specification and the evidence.  Each class of compounds had long been used in combination with other classes to achieve the properties of the mould additive.

The combination has not achieved any new working of a mould additive, for example steel generally or for low carbon steels in particular.

The limits are not only arbitrary, they are meaningless, especially as the range begins at 0 in some cases and are broad.  Tables 1 and 2 of the specification make it clear that the limits do not affect any working of the process.  The asserted limits are mere desiderata that add nothing to [the] combination.  It can be said that the alleged combination is nothing more than a mere collocation: a mere placing together of known elements which do not cooperate to produce a new result…”

I disagree with this analysis.  The specification, on its face, discloses a composition of a mould additive that will provide, in use, a range of benefits.  The components are chosen such that a preferred chemical process implicitly identified by chemical equation (1) will take place.  The claimed limits are not ‘mere desiderata’.  In Raychem Corp’s Patent [1998] 2 RPC 31, Mr Justice Laddie held:

“If a patent claim consisted of no more than a product or process selected by reference to a set of obviously desirable parameters, then the technical contribution was the selection of those parameters.  Since that selection was obvious, so was the claim.  It was permissible to look at the teaching in the specification to see what the patentee had put forward as his technical contribution.  Where the teaching indicated that nothing novel by way of materials or processing had been used, this reinforced the conclusion that the patentee had done no more than select the obviously useful products out of the range of those which could be made with existing technology.”

However, the evidence in this case points in another direction.  Mr Justice Laddie held:

“Where the invention involved the use of new materials or a new process, such as a new way of using known materials, to achieve a known or obvious goal, the inventive concept or technical contribution was the materials or process.  If the materials or process were not obvious, a claim of permissible width directed to or dependant on the materials or process was not obvious either.  Although the claims would give protection to products or processes which met obvious desiderata, it was the materials or methods for getting there which supported that protection.  The teaching in the specification would be directed at the new materials or processes and would reinforce the conclusion that the claims were directed to a protectable technical contribution.”

I agree with this analysis.

The opponent also raised the case of Bristol-Myers Squibb Co v FH Faulding & Co Ltd Federal court decision No VG 109 of 1995 unreported 22 July 1998, in which Heerey J. held that inventions that were the product of routine testing lack the quality of inventiveness.  However, I can find no evidence to suggest that the invention, in this case, arose out of mere routine testing.  The specification points in the direction towards inventiveness.  The specification states:

“The present inventors, as a result of a number of investigations to resolve the problems described above, found that all of the drawbacks of conventional exothermic additives described above can be overcome.”

Mr Wulff in his written submissions states:

“As will be appreciated, there are an infinite number of different formulations that could be achieved with known exothermic mold powder compositions.  However, it is open to an applicant to select and observe advantageous characteristics with particular combinations, and validly patent such combinations.”

Therefore, I conclude that the invention is directed towards a manner of manufacture.

Conclusion

The opponent has been successful on the grounds of novelty and inventive step in respect of claim 1.  However, there is clearly patentable subject matter.  Subject to any appeal, I allow the applicant 60 days to propose amendments to overcome this deficiency.

Costs

As a rule, costs normally follow the event.  I can see no reason to depart from the general rule.  Therefore, costs are awarded against the applicant.

G.M.Cox
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:  Griffith Hack & Co

Patent attorneys for the opponent: Spruson & Ferguson