Sieber Technology Limited v Castleway Holdings Pty Ltd
[2005] APO 5
•15 February 2005
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 715303 in the name of Sieber Technology Limited
Title: Fertilisers Comprising Nutrient and Phosphate Solubilising Fungus
Action: Opposition under section 59 of the Patents Act 1990 by Castleway Holdings Pty Ltd
Decision: Issued 15 February 2005 .
Abstract
The invention relates to a composition comprising a liquid organic fertiliser derived from marine, fish material and meat processing waste and an introduced micro-organism wherein the organic fertiliser provides both a plant nutrient and a nutrient for the micro-organism. The composition is directed at enhancing establishment of the micro-organisms in the soil while providing the composition in a format suitable for application using standard spray technology.
The opposition was successful with respect to all of the claims on the grounds of novelty and inventive step and the application was refused.
Costs were awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 715303 by Sieber Technology Limited and opposition under section 59 of the Patents Act 1990 by Castleway Holdings Limited.
BACKGROUND
Patent application 715303 (76677/94) in the name of Sieber Technology Limited (hereafter referred to as Sieber) was filed as PCT application PCT/NZ94/00099 on 23 September 1994 claiming priority from NZ 248768, which was filed on 24 September 1993. The application was advertised as accepted on 20 January 2000. Castleway Holdings Limited (hereafter referred to as Castleway) filed a notice of opposition on 3 February 2000 and served their statement of grounds and particulars on 2 May 2000. Service of evidence in support was completed on 31 January 2002.
Evidence in answer was completed on 21 March 2003 and evidence in reply was completed on 15 March 2004.
An amendment to the statement of grounds and particulars to include further documents discussed in the Evidence in reply was allowed on 6 July 2004.
The matter was heard in Canberra on Wednesday 8 December 2004. Castleway was represented by Mr Richard Baddeley, Patent Attorney for Watermark Patent and Trademark Attorneys, Perth. Sieber did not attend the hearing, nor did they instruct their representative, Lord and Company Patent and Trademark Attorneys to provide written submissions at the hearing.
THE EVIDENCE
The evidence in support consists of:
· Statutory Declaration of Richard Hiram Baddeley, patent attorney of Watermark Patent & Trademark Attorneys, made 28 July 2000, together with exhibits RHB 1-12.
The evidence in answer consists of:
· Statutory Declaration of Clive Prebble Sinclair, inventor of 715303, made 24 October 2002, together with exhibits CPS 1-10.
· Statutory Declaration of Alan George Langdon, Associate Professor of chemistry at the University of Waikato, made 28 February 2003, together with exhibits AGL 1-12.
· Statutory Declaration of Terence Neville Costello, civil engineer with experience in water and sewage treatment and soils, made 4 March 2003, together with exhibits TNC 1-11.
The evidence in reply consists of:
· Statutory Declaration of Sally Jones, secretary in the School of Agricultural Science at the University of Tasmania library, made 5 March 2004.
· Statutory Declaration of Zdenko Rengel, Chair of the School of Soil Science and Plant Nutrition at the University of Western Australia, made 3 March 2004, together with exhibits ZR 1-7.
· Statutory Declaration of Henricus Theodorus Hofstede (Harrie Hofstede), Managing Director and Principal Waste Management Consultant at Spartel Pty Ltd, made 3 March 2004, together with exhibits HTH 1-7.
· Statutory Declaration of Phillip Murgatroyd, Production Manager of Seasol International Pty Ltd, made 15 March 2004, together with exhibits PM 1-4.
THE SPECIFICATION
The specification is directed to a liquid fertiliser composition comprising an organic plant nutrient and introduced micro-organisms in the form of a bacterium, fungus or reproductive material of either or both, where the plant nutrient is also a nutrient for the micro-organisms. The introduced micro-organisms are those that are beneficial to plant growth and nutrition.
The liquid composition enables direct application of the composition to the soil using standard spray equipment, while delivery of introduced micro-organisms in association with a nutrient source for both plants and micro-organisms assists in establishment of the micro-organisms in the soil.
The invention also envisages providing the composition as a coating on solid fertiliser material such as rock phosphate where the micro-organisms can assist with solubilisation of the phosphate thereby making the phosphate more accessible for plant nutrition.
There are 4 independent claims. Claim 1 recites
A liquid fertilising composition, substantially free of solid matter, comprising:
an organic derived plant nutrient consisting of a composition derived from at least one fish, marine material, and meat processing waste; the nutrient being also a nutrient for at least one of an introduced fungus, micro-organism, and reproductive material therefor, the introduced fungus, micro-organism and reproductive material being also comprised in the liquid fertilising composition.Claim 2 recites the features of claim 1 with the added features of a diluent or carrier, and a binding agent, and the requirement that;
said composition being characterised that when applied to a surface, there is formed a coating having at least one of the properties of being porous, slowly soluble, and degradable through weathering or the action of the introduced fungus, micro-organism and/or reproductive material; therefore; said coating retaining at least a portion of said introduced fungus, micro-organism and/or reproductive material therefore.Claims 36 and 37 are omnibus claims reciting a fertiliser composition as described with reference to examples 1-6 and a method of preparing a fertiliser composition as described with reference to examples 1-6. Examples 1-6 broadly describe the preparation of organic fertilisers from fish, marine and meat processing materials, with the addition of various fungi and bacteria.
The remaining claims can be broadly grouped into 5 groups. The first group contains claim 10, which is dependent on claims 1 and 2. Claim 10 specifies that the plant nutrient is fish based.
The second group contains claims 11-24. These claims are dependent on either of claim 1 or 2 and add the extra feature of a binder or coating.
The third group contains claims 25-35. These claims are dependent on any of the preceding claims and they specify that the composition is provided in combination with a mineral substrate. Claims 26, 27, 30 and 31 further define the mineral substrate as rock phosphate, dolomite or lime.
The fourth group contains claims 3, 4, 5, 8 and 9. These claims recite features relating to the types of micro-organisms. In particular the micro-organisms are fungi, vesicular-arbuscular myccorhiza (VAMs) and a range of phosphate degrading micro-organisms.
The final group contains claims 6 and 7. These claims specify that the fertiliser contains a nitrogenous component.
THE DECISION
Novelty
The basic test for novelty is the “reverse infringement” test as stated by Aiken J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.Although Castleway listed a number of documents in the evidence in support, Mr Baddeley confirmed at the hearing that they only intended pursuing lack of novelty with respect to three documents, AU 59111/94 (RHB 2), US 4486216 (RHB 4) and “Success by Surprise”, Nation’s Business, September 1989, 32-33 (HTH 7), and to the sale and use of SeasolÔ.
AU 59111/94, filed on 28 March 1994, is a lapsed application with a later publication date and an earlier priority date than 715303. Its priority date is based on provisional application PL 8082, filed in Australia on 30 March 1993. PL 8082 introduces the liquid fertiliser compositions and micro-organisms discussed in greater detail in 59111/94, thereby establishing 59111/94 as a legitimate ‘whole of contents’ novelty citation for 715303.
Although Sieber dealt with a number of the other documents cited by Castleway, Sieber’s submissions were completely silent with respect to AU 59111/94.
AU 59111/94 discloses the introduction of beneficial micro-organisms to the soil and describes the preparation and use of liquid fertilisers comprising an organic nutrient and introduced micro-organism. It has the same inventor (Clive Prebble Sinclair) and the same applicant as 715303. It discloses a liquid organic fertiliser derived from fish, marine material and meat processing waste and specifies that the fertiliser should be substantially free of solid matter. It also specifies that the plant nutrient should also be a nutrient for the introduced micro-organism.
Although the primary focus of AU 59111/94 is toward a fertiliser composition containing a particulate mineral substrate, such as the rock phosphate, the disclosure is not limited to this, or to fertiliser compositions that contain solid matter. The general description, examples and latter claims all disclose liquid compositions substantially free of solid matter and in addition much of the text and a number of the examples are identical to those provided in 715303.
As such AU 59111/94 clearly discloses the fertiliser compositions of independent claims 1, 2 and 36 and the method of preparation of independent claim 37.
With respect to the additional features in the dependent claims, AU 59111/94 describes:
· representatives of the micro-organisms listed in dependent claims 3-5, 8 and 9, at pages 12-14 and in examples 23 and 24,
· compositions including nitrogenous and marine and fish-based nutrients as recited in claims 6, 7 and 10, in examples 20-25,
· compositions including viscosity increasing, binding or coating agents as recited in claims 11-24 in examples 1, 10 and 21,
· compositions in combination with mineral substrates as recited in claims 29-32, at pages 4, 7, and 8 and in examples 1 and 10, and
· methods of preparation as recited in claims 33-35, in example 9.
Given this I believe that AU 59111/94 deprives all of the claims of 715303 of novelty.
US 4486216 and “Success by Surprise” both describe the use of bacterially-digested manure as liquid fertiliser. The bacteria may be either naturally occurring in the manure or they may be added. At the hearing Mr Baddeley submitted that as manure could be regarded as meat processing waste both citations were relevant to the novelty of the claims.
However, I am not satisfied that the skilled person would interpret meat processing waste as including manure and I can find nothing in any of the experts’ declarations or the exhibits to support such an interpretation.
Given this, I believe that US 4486216 and “Success by Surprise” are silent with respect to an essential feature of the claims and that they do not deprive the claims of novelty.
Castleway also submitted that at least claims 1, 5, 6, 11 and 12 lack novelty in light of the SeasolÔ as sold prior to the priority date of 715303 and as disclosed in Braid (HTH 7). SeasolÔ is a liquid organic fertiliser derived from marine material. SeasolÔ also contains a range of micro-organisms, including the coryneform and gram positive bacteria that are known to be beneficial to plant growth. However, in contrast to the invention claimed in 715303, there have been no additional micro-organisms added to SeasolÔ and it only contains those micro-organisms normally found in marine-material preparations. As such there has been no manipulation of SeasolÔ to introduce increased numbers or preferred strains and types of beneficial micro-organisms.
At the hearing Mr Baddeley conceded that the feature of introduced micro-organisms was absent from SeasolÔ. However, he also submitted that this feature could be regarded as inessential.
I do not believe that this is the case. As discussed in the earlier paragraph there are distinct advantages associated with introducing micro-organisms. Introducing micro-organisms enables the delivery of greater numbers and preferred strains of beneficial micro-organisms to the soil, thereby increasing the activity and efficacy of the claimed fertiliser preparation. As such the feature has a materially affect on the way in which the invention works, thereby meeting the requirement of an essential feature.
`Given this, I do not believe that SeasolÔ discloses each and every feature of the claimed invention or that it deprives the claims of novelty.
Priority date
Castleway also submitted that 715303 was not entitled to its priority date as a consequence of prior disclosure of the invention in PL 8082, the provisional application from which AU 59111/94 claims priority. PL8082 was filed in Australia more than 12 months prior to the filing date of 715303.
Although I am satisfied that this is the case, I believe that this is more of a technical than a substantive matter. Prima facie 715303 appears to be entitled to the status of a divisional application of 715303. As such, it appears that the problem of priority could be readily rectified if 715303 were successfully converted to a divisional application of AU 59111/94.
Obviously if 715303 were successfully converted to a divisional application this would also resolve the current novelty problems by removing 59111/94 from the prior art base.
Inventive Step
An appropriate test for inventive step is that given by Aicken J in Wellcome Foundation Limited vVR Laboratories (Aust) Pty Ltd (1981) 148 CLR at page 286, and restated by the High Court in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59 (12 December 2002):
“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.”In applying this test with respect to both common general knowledge and a document it is essential to identify the problem. Once this has been done the next step is to then identify the person or persons skilled in the art and the common general knowledge of that person, or persons, at the priority date of the application.
What is the problem to be solved?
The invention relates to fertiliser compositions and improving plant growth and nutrition and more particularly to fertiliser compositions comprising microorganisms that are beneficial to plant growth and nutrition.
The specification explains that although there has long been the practice of introducing beneficial micro-organisms to the soil in dried form, this practice is not desirable for large areas because wind may quickly remove the deposited material and because the rate of establishment of micro-organisms is delayed where the soil is dry or nutrient poor.
The specification then states that an object of the invention is to solve the problem of providing a method by which a fertiliser composition comprising beneficial micro-organisms can be readily introduced to the soil in a manner which enhances the rate of establishment of the micro-organisms in the soil.
Who is the person skilled in the art?
In the context of this problem the skilled person would be a person or team of people with an understanding of biological fertilisers and of soil microbiology and ecology and plant-microbial interactions.
What was the common general knowledge in the art at the priority date of 715303?
I am satisfied that it was well known in the art that plant growth and nutrition could be further enhanced by the introduction of concentrated preparations of beneficial micro-organisms to the soil.
715303 itself states that the introduction of beneficial micro-organisms has long been practiced in the art. Page 1 of 715303, states:
“Fungus and micro organisms have long been available to the domestic gardener, in a dried form, for inclusion in compost pits to accelerate the composting process.”Castleway’s declarants also provide me with a wide range of examples of the introduction of beneficial micro-organisms to soils, including a review article discussed at pages 5 and 6 of 715303, which discloses the benefits of introducing micro-organisms such as vesicular-arbuscular mycorrhiza fungi (VAMs) to improve plant growth.
Castleway’s declarants also discuss commercially available biofertilisers such as “BIOSUPER”, which contain phosphate solubilising micro-organisms such as Penicillium bilaii and thiobacilli and which are applied to the soil in a range of formats including in a liquid sprayable form. These biofertilisers are routinely provided in association, or mixed with plant fertilisers. In particular Zdenko Rengel refers to the routine practice of providing microbial inoculants with rock phosphate and lime.
I am also satisfied that the benefits of introducing micro-organisms with a nutrient source were well appreciated in the art at the priority date of the application. It is widely understood in all areas of biology that provision of an organism with a readily accessible nutrient source is one of the best and most commonly used methods for enhancing establishment of organisms in new environments, particularly in dry and nutrient poor environments such as those found in many soils.
Application of this practice in the field of biofertilisers is confirmed by Zdenko Rengel, who states in his declaration that organic fertilisers are often deliberately mixed with biological fertilisers containing micro-organisms to provide food for micro-organisms. In his declaration he provides a number of examples of commonly used and commercially available preparations containing beneficial micro-organisms and microbial nutrient solutions. These preparations are either sprayed or distributed directly to soils or used to coat seeds prior to sowing.
As such, I believe that not only was introduction of beneficial micro-organisms to the soil in association with a plant fertiliser a routine practice in the fertiliser art, I am also satisfied that the benefits or providing the micro-organisms with an initial nutrient source were also understood.
I am also satisfied that liquid organic fertilisers derived from marine, fish and meat processing waste were widely used and well understood in Australia at the priority date of the application.
This is supported by all three of Castleway’s declarants, Zdenko Rengel, Henricus Hofstede and Phillip Murgatroyd, who discuss the use of fish emulsions and fish processing waste in fertiliser preparations that were commercially available at the priority date of the application. In addition Henricus Hofstede discusses a number of well known compost and fertiliser preparation systems using commercial wastes from fish offal and chicken carcasses.
In particular, all three discuss the seaweed-derived fertiliser SeasolÔ, which has been commercially available and widely used in Australia since at least 1974.
I am also satisfied that it was well understood at the priority date that liquid organic preparations such as SeasolÔ contained viable populations of microorganisms and that these microorganisms played a part in enhancing plant growth and nutrition.
In particular Harrie Hofstede discusses a range of basic gardening and horticulture references which disclose liquid organic fertilisers containing beneficial microbes and Phillip Murgatroyd refers to the standard gardening text “Organic Gardening” (PM-2), which suggests that the beneficial properties of fertilisers derived from liquid seaweed extracts are further enhanced by the presence of beneficial micro-organisms in the extracts
In addition, it was also well known at the priority date that meat extracts in particular form the basis of a number of standard media routinely used in microbiology to culture a wide range of micro-organisms, including those derived from soil and known to be beneficial to plant growth and nutrition.
In reaching my conclusions on the common general knowledge I have relied heavily on the declarations of Castleway’s three experts. However, I am satisfied that this level of reliance is appropriate in the current circumstances. All three of Castleway’s declarants have had considerable experience in the fields of plant nutrition, composting and organic fertilising processes and soil science in Australia. Furthermore, all three have substantiated their statements with references to standard texts, review articles and commercial products, which all reflect similar conclusions with respect to common general knowledge in the art.
In addition, Sieber’s evidence provides nothing that contradicts Castleway’s declarants’ assessments of either the common general knowledge or the understanding of the skilled person.
Is the claimed solution obvious in light of common general knowledge in the art?
Given the state of common general knowledge as discussed above, I am not satisfied that the compositions and methods of the independent claims possess an inventive step.
As detailed above, at the priority date of the application:
· The introduction of beneficial micro-organism in association with plant fertilisers and with a nutrient source for the micro-organisms was routinely practiced in the art,
· Liquid organic fertilisers such as SeasolTM were commercially available and routinely used, and
· It was well understood that liquid organic fertilisers naturally contained and supported the growth of beneficial micro-organisms and that the activities of the fertilisers were enhanced by the presence of micro-organisms.
As such, I believe that it would have been obvious to skilled person to combine liquid organic fertilisers prepared from marine, fish and meat processing waste with preparations of beneficial micro-organisms when seeking to provide a biofertiliser that enhanced the establishment of beneficial micro-organisms in the soil.
With respect to the dependent claims, I will deal with these in the five groups identified earlier in the decision.
Claim 10
Claim 10 also lacks an inventive step in light of common general knowledge in the art. The claim specifies that the fertiliser composition is derived from fish material, a feature that I have discussed above and identified as part of the common general knowledge at the priority date of the application.
Claims 11-24
Claims 11-24, which add the further feature of a binder or a coating, also lack an inventive step. As admitted in the specification at page 4 and explained by Zdenko Rengel at 2.20-2.31 and 2.81, binders were commonly used at the priority date of the application as a growing support for micro-organisms and as a coating to enhance adherence and establishment of micro-organism in an environment. In particular, binders were used to coat micro-organisms on fertiliser materials such as rock phosphate or on seeds, or to retard release of nutrient or micro-organisms from a substrate or granule.
Furthermore, any seaweed based liquid fertiliser such as SeasolÔ will inherently contain a binding and viscosity increasing agent in the form of agar, a polysaccharide component of seaweed extracts.
Also, where the claims specify that the binder or coating is formed as a consequence of evaporation or is degraded by the micro-organism, these processes occur naturally when the composition is sprayed on the field or when the micro-organisms utilising the nutrient source in the composition. As such, these features do not provide an inventive step to the claims.
Claims 25-35
Claims 25-35 add extra features associated with adding the liquid fertiliser in combination with a mineral substrate such as rock phosphate. However, I do not believe that this feature adds an inventive step.
A number of the commonly used prior art fertiliser compositions discussed by the declarants, in particular by Zdenko Rengel, are associated with delivery of mineral substrates such as phosphate, dolomite and lime to the soil. In particular there is a strong focus on the delivery of rock phosphate to the soil in a granular form in association with phosphate degrading micro-organisms.
As such, I believe that the skilled person would be led to direct their efforts toward providing a liquid fertiliser composition directed at introducing a phosphate-degrading micro-organism in combination with a phosphate source such as rock phosphate.
Claims 3, 4, 5, 8 and 9
These claims all recite features relating to the types of micro-organisms introduced into the fertiliser composition. In particular the micro-organisms are fungi, vesicular-arbuscular myccorhiza (VAMs) and a range of phosphate degrading micro-organisms such as Penicillium, Bacillus and gram-positive microbial species.
As discussed previously, the specification admits that the introduction of VAMs to improve plant growth is well known in the art. In addition, all three of Castleway’s declarants describe the use of phosphate solubilising micro-organisms such as Penicillium bilaii and thiobacilli in commercially available biofertilisers such as “BIOSUPER”.
Castleway’s declarants also state that it was commonly understood that liquid organic fertilisers contain microflora, including species of bacteria and fungus beneficial to plant nutrition and growth. These statements are supported by exhibits such as HTH-7, PM-3 and PM-3, which are excerpts from standard gardening texts and general review articles describing the presence of beneficial microbial activity in liquid organic fertilisers.
Given this, I do not believe that limitation of the claims to specific types or strains of micro-organisms confers an inventive step on the claims.
Claims 6 and 7
These claims specify that the fertiliser comprises a nitrogenous component, and that the introduced micro-organism acts upon the nitrogenous material. With respect to the first feature, the presence of a nitrogenous component is inherent in fertilisers such as SeasolÔ, or any fertiliser derived from fish or meat processing waste, while the ability to act on nitrogenous material is inherent in a wide range of micro-organisms, including bacteria such as Rhizobium that have long been used in agriculture to improve nitrogen fixation.
As such, I am satisfied that these features are inherent in much of what has been routinely practiced in the prior art and that they do not confer an inventive step on the claims.
In summary, I believe that all of the claims lack an inventive step in light of common general knowledge alone.
One further issue that I must also consider, particularly with respect to the dependent claims is whether or not there are any unexpected advantages associated with the use of liquid fertilisers derived from meat, marine or fish waste as a medium for the introduction of beneficial micro-organisms, or with the any of the additional features recited in the dependent claims. However, there is nothing in the specification, the prior art or the submissions of any of the declarants to suggest this.
In particular, none of the features provided in the dependent claims appear to provide any unexpected advantages. Features such as those recited in the specific groups of claims are all consistent with the understanding and expectations of the prior art and as such do not provide unexpected advantages that would not have been anticipated by the skilled person. In addition, there is nothing in the specification that suggests any benefits other than those that would be readily appreciated by the skilled person.
As such, I can see no selective advantage to any of the claimed compositions or methods.
US 5026417
Castleway also submitted that the claims lacked an inventive step in light of US 5026417 (‘417), a granted US patent with a publication date of 25 June 1991. At the hearing Mr Baddeley explained that this citation was not considered as a novelty citation because it dealt primarily with biofertiliser compositions comprising phosphate solubilising fungus and did not discuss or teach the feature of liquid organic fertilisers comprising plant nutrients. However, he submitted it was relevant to inventive step because it would have been obvious to combine the teaching in this citation with common general knowledge in the art relating to the use and composition of liquid organic fertilisers to provide an improved biofertiliser composition.
‘417 teaches inoculation of the phosphorus solubilising fungus Penicillium bilaji into the soil in association with rock phosphate. The citation also explicitly discloses preparation of the inoculant in a composition comprising a liquid nutrient for the fungus. Although the citation does not discuss the liquid nutrient in terms of a liquid composition derived from marine, fish or meat processing waste, as discussed previously, I am satisfied that this feature was part of the common general knowledge at the priority date of the application and that the advantages of using this composition as the liquid nutrient source suggested in ‘417 would be readily apparent to the skilled person seeking to enhance the activity and effectiveness of the introduced fungus.
Given this, I believe that claims 1, 2-4 and 6-37 lack an inventive step in light of the teachings in ‘417 when regarded in the light of common general knowledge in the art.
Although it might be expected that Castleway would have also included US 4486216 and “Success by Surprise”, two of the documents discussed above in relation to novelty, in their submissions on inventive step, Mr Baddeley confirmed that these documents would only be relevant to novelty and inventive step if manure could be regarded as meat processing waste. He also agreed that if manure could not be regarded as meat processing waste then there was nothing in either document that would lead the skilled person to consider replacing manure with marine, fish or meat processing waste derived material. I agree with this reasoning and do not believe that either document is relevant to the inventive step of the claims.
It is also worth considering whether conversion of 715303 to a divisional application of 59111/94 would have any substantial impact on invention step, considering that it would shift the earliest priority date to date six months earlier than the current priority date.
However I do not believe that this would alter my finding with respect to inventive step. All of the information on which I have based my findings with respect to common general knowledge in the art was available will before 30 March 1993, the earliest priority date for 59111/94, as was ‘417, which was published on 25 June 1991. As such, I am satisfied that even with an earliest priority date of 30 March 1993, the claims would still lack an inventive step.
It is also worth noting here that Sieber’s declarants confined their discussions to novelty and that they did not discuss any of the citations in relation to inventive step, nor provide any submissions on common general knowledge in the art or on the identity or technical understanding of the skilled person. As such Sieber provided nothing to contradict any of Castleway’s submissions on inventive step.
Section 40
Castleway submitted that the specification provides insufficient information about which micro-organisms are most beneficial and the nature of the “binding agent” or “diluent”. However, as conceded by Mr Baddeley at the hearing, these submissions do not take into account the understanding of the skilled person. As explained by Castleway’s experts in their declarations, the skilled person would readily appreciate which micro-organisms were beneficial in the context of the invention and would be readily able to determine which components of the fertiliser compositions described in the specification constituted the binding agent and the diluent. As such, I do not believe that the specification is insufficient with respect to the micro-organisms, the binding agent or the diluent.
Castleway also submitted that the scope of other terms used in the claims was unclear. However, again Mr Baddeley conceded that these terms did not lack clarity when they were considered in light of the understanding of the skilled person.
Given this, the only outstanding clarity issue is a minor issue associated with claim 20. Claim 20 recites “carrier of diluent”, when the claim should recite “carrier or diluent”. Although I accept that this error affects the clarity of the claim, I believe that it is an obvious error and that the solution is readily available to the reader. As such, although I believe that this clarity matter could be readily resolved by replacing the “of” with an “or”, I do not believe that it is a substantial issue or that it must be corrected in order to satisfy section 40 of the Act.
Conclusion
I have determined that the invention defined by claims 1-37 lacks novelty in light of AU 59111/94.
I have also determined that claims 1-37 lack an inventive step in light of common general knowledge in the art and that claims 1, 2-4 and 6-37 lack an inventive step in light of the teachings of US 5026417 when considered in the light of common general knowledge in the art.
In addition, I also believe that, as a national phase or convention application 715303 may not be entitled to its earliest priority date because 59111/94 represents an earlier disclosure of the same invention made by the same applicant. However, I believe that this problem could be easily rectified by converting 715303 into a divisional application of the 59111/94 and I am surprised that the applicant has not already taken this action.
Conversion of 715303 to a divisional application would also remove the novelty problems arising from the disclosure in 59111/94.
However conversion would not remedy the lack of inventive step for the claims. The common general knowledge at the priority date of 59111/94 was substantially the same as it was at the earliest priority date of 715303, and US 5026417 was published well before the priority date of 59111/94.
Finally, although I recognise that claim 20 contains a typographical error, I am satisfied that this is a minor and obvious error and that it has no substantial effect on the clarity of the claim.
Given my findings on novelty and inventive step I do not believe that there is patentable subject matter in the application and I refuse the application.
Costs
Under normal circumstances, costs follow the event, and I see no reason to deviate from this practice. Given that I have found that Castleway has been fully successful in respect of novelty and inventive step, I award costs against the applicant, Sieber.
Terry Moore
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Lord and Company, Perth
Patent attorneys for the opponent : Watermark Patent and Trademark Attorneys, Perth
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