SNF (Australia) Pty Ltd v BASF Australia Ltd - [2018] APO 26

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

SNF (Australia) Pty Ltd v BASF Australia Ltd [2018] APO 26

Patent Application: 2012216282

Title:Treatment of Aqueous Suspensions

Patent Applicant: BASF Australia Ltd

Opponent: SNF (Australia) Pty Ltd

Delegate: Dr W.E. Guinea

Decision Date: 18 April 2018

Hearing Date: 20 September 2017, in Canberra

Catchwords: PATENTS – section 59 – opposition to the grant of a patent - inventive step – patent of addition – Commissioner’s discretion under s81 – opposition unsuccessful on all grounds

Representation: Counsel for the applicant: David Shavin QC and Peter Creighton-Selvay
Solicitor for the applicant: Gilbert+Tobin
Counsel for the opponent: Bruce Caine QC and Ben Fitzpatrick
Solicitor for the opponent: K&L Gates

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2012216282

Title:Treatment of Aqueous Suspensions

Patent Applicant: BASF Australia Ltd

Date of Decision: 18 April 2018

DECISION

The Opposition is unsuccessful. None of the claims were established to lack an inventive step. As part of the inventive step analysis it was established that the opposed application is validly a patent of addition to 2001269025 (Gallagher).

The Opponent has not made out a case for the Commissioner to exercise her alleged discretion under s81 to not grant a patent of addition should such a discretion exist.

Costs are awarded against the Opponent, SNF (Australia) Pty Ltd, according to Schedule 8 of the Regulations.

REASONS FOR DECISION

Background

Patent application 2012216282 (the “opposed application”) was filed on 21 August 2012, in the name of Ciba Speciality Chemicals Water Treatments Limited (“Ciba”). The opposed application is a divisional application of 2011213769 (the “parent application”) and consequently claims an earliest priority date of 7 May 2003.
Ciba requested examination on 28 August 2012, and the opposed application was advertised as accepted on 4 December 2014.
A notice of opposition was filed by SNF (Australia) Pty Ltd (the “Opponent”) on 4 March 2015. The Opponent filed a statement of grounds and particulars (the “SGP”) on 4 June 2015.
On 15 December 2016 an assignment request was received from Ciba. This request was allowed on 20 December 2016, such that the opposed application proceeded in the name of BASF Australia Ltd. Hereinafter any reference to the “Applicant” is to BASF Australia Ltd.
At this point it is worth noting that the opposed application and the parent application are members of a patent family comprising 13 applications (the “patent family”) as of the date of this decision. The penultimate ancestor of this family of applications is 2004203785, this being filed on 7 January 2004.
The patent family, as a collective, has been the subject of extensive litigation before the Australian Patent Office and the Federal Court of Australia. Of the decisions that have issued in relation to these applications, the following are of particular interest to the opposed application:
·    SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8 (the “785 decision”) – this decided the opposition to the grant of a patent on the 2004203785 application (the “785 opposition”);
·    SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 72 (the “568 decision”) – this decided the opposition to the grant of a patent on the 2013204568 application (the “568 Opposition”), being the divisional child of the opposed application; and
·    SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2011] FCA 452 (the “Federal Court decision”) – this decided an application for invalidity and revocation and a cross claim for infringement with respect to related innovation patents 2006100744, 2006100944, 2007100377, 2007100834 and 2008100396).

Hereinafter I shall collectively refer to the oppositions on the 785 and 568 applications as the “related oppositions”, while I shall call the decisions on these applications the “related decisions”.

The members of and the relationships between members of the patent family, excepting the most recent member, have been conveniently summarised at [14] to [24] of the 785 decision, so I will not repeat these here. The exception is the most recent family member, patent application 2017203194 which was filed subsequent to the 785 decision.
Having noted the above matters I observe that the path to the present matter has been rather tortuous, and I shall now outline some salient facts in this regard.
On 29 March 2016 the Applicant requested amendment of the patent request. In particular the effect of the requested amendment (the “amendment”) was to convert the opposed application from an application for a standard patent to a patent of addition. The patent number of the relevant main invention is 2001269025 (“Gallagher” or the “Gallagher patent”).

10. The amendment was advertised as allowable on 4 August 2016. The Opponent filed a notice of opposition to the amendment (the “amendment opposition”) on 26 September 2016. A SGP was filed on the 26 October 2016. In the SGP the Opponent pursued three grounds under s81 of the Act, namely that: the Commissioner had no power under s81 to convert an existing filed application to a patent of addition; the Application did not satisfy the requirements of s81 in that the Opposed Application was not an improvement or modification of the invention in the Gallagher patent and that the Commissioner should exercise her discretion to refuse the conversion.

11. On 4 November 2016 the Applicant requested dismissal of the amendment opposition. The Applicant asserted that the grounds relied upon by the Opponent were not available to an Opponent with respect to opposing an amendment made under s104 of the Act.

12. On 12 January 2017 a decision in relation to the request for dismissal issued, being SNF (Australia) Pty Ltd v BASF Australia Ltd [2017] APO 2 (the “earlier decision”). In the earlier decision the Delegate dismissed the amendment opposition.

13. Filing of evidence in support (“EIS”) was completed on 4 September 2015. This comprised:

·a first statutory declaration dated 3 September 2015 by Mr Russell Henry Schroeter (“Schroeter1”);
·a first statutory declaration dated 31 August 2015 by Professor David Vernon Boger (“Boger1”); and
·a first statutory declaration dated 4 September 2015 by Mr Anthony Brooke Watson (“Watson1”) with supporting exhibits ABW-1 to ABW-3.

14. Filing of evidence in answer (“EIA”) was completed on 8 December 2015. This comprised:

· a statutory declaration dated 5 December 2015 by Mr John Gerard Bellwood (“Bellwood”); and
· a statutory declaration dated 8 December 2015 by Dr John Benson Farrow (“Farrow”) with supporting exhibits JBF-1 to JBF-5.

15. Filing of evidence in reply (“EIR”) was completed on 7 March 2016. This comprised:

·    a second statutory declaration dated 4 March 2016 by Mr Russell Henry Schroeter (“Schroeter2”) with supporting exhibits RHS-1 to RHS-3;
·     a second statutory declaration dated 4 March 2016 by Professor David Vernon Boger (“Boger2”) with supporting exhibits DVB-1 to DVB-8;
·     a second statutory declaration dated 7 March 2016 by Mr Anthony Brooke Watson (“Watson2”) with supporting exhibits ABW-4 to ABW-12; and
·     a statutory declaration dated 4 February 2016 by Mr Daniel William Bembrick (“Bembrick”).

16. In addition to the above evidence, virtually all evidence in the 785 opposition was also made evidence in the present matter. This circumstance was put into effect via directions made by the Commissioner’s Delegates on 2 September 2015 and 6 January 2016, and the use made by the parties of these directions. The list of evidence on the 785 opposition is quite extensive and so I have not repeated this here. A convenient summary may be found at [4] to [7] of the 785 decision.

17. The only evidence from the 785 opposition not explicitly incorporated by either party is a late filed declaration by Mr John Dominic Lee. This was filed on 16 November 2015 and designated Lee 2 at [8] of the 785 decision. Since neither party has incorporated this declaration I will have no regard to this in deciding the present matter.

18. A final issue with the evidence is that it appears that both parties are operating under the assumption that all the evidence from the 568 opposition also forms evidence for the present matter. This is apparent from the Opponent’s written submissions at [34] and the Applicant’s written submissions at [24], and of an inspection of the summary of evidence as given by both parties. I am unable to ascertain by what means either party arrived at this assumption. For the benefit of doubt I now direct that all evidence from the 568 opposition is evidence for the purposes of the present matter. I note that this is in keeping with the apparent wishes of the parties and is generally congruent with similar directions made on this and on the related oppositions.

19. Where it is necessary to consider the evidence from the related oppositions I will identify these appropriately below.

20. A hearing for this matter was set for 20 September 2017. The Opponent’s written submissions were filed on 6 September 2017, while the Applicant’s written submissions were filed on 13 September 2017. Subsequent to the hearing, further written submissions were filed by the Opponent on 22 September 2017 (the “Opponent’s further written submissions”) and by the Applicant on 25 September 2017 (the “Applicant’s further written submissions”).

The Invention as Described

21. The opposed application deals with processes of treating mined material, particularly waste mineral slurries. The processing of mined material typically results in an ore or other desired product and waste material. Often this waste is in the form of a slurry comprising a mixture of water and particulate material such as sand.

22. It is common to dispose of waste slurries (or tailings) by pumping the slurry to a particular location (called a tailings pit or dam) and allowing the water to separate from the slurry via “…sedimentation, drainage and evaporation” (opposed application at page 1A, line 29). The tailings pit or dam typically has a sloping surface to allow for the collection of water released from the slurry. A flocculant may be added to the waste slurry to concentrate the solids content of the slurry.

23. There are environmental and economic costs associated with the use of land for tailings pits or dams, so it is desirable to minimise the land used for the same. To that end it is known in the art to more efficiently utilise land designated for this purpose by stacking multiple layers of waste onto the same area, thus progressively forming higher stacks of waste material.

24. There are some difficulties in stacking waste slurries in this way, namely: the desirability of keeping the current layer of waste slurry from spreading beyond previously rigidified material and the fact that as the waste is allowed to rigidify to form a stack, the previously stacked waste material is sufficiently consolidated to allow for the stacking of multiple layers of rigidified material without risk of the stack collapsing or slipping (opposed application at page 2, lines 1 to 11).

25. Another problem with the stacking of waste slurries is the fact that some of the finer sediments are carried into the collected run off water at a tailings pit or dam and so contaminating the water with respect to potential re-use.

26. Further it is observed that it is desirable to mix waste streams of fine and coarse particles as this “…improves the mechanical properties of the dewatered solids…” (opposed application at page 3, lines 5 to 7). However it is difficult to achieve this as the coarse material settles much faster than the fine material resulting in inhomogenities in the stacked waste material. It is also noted at page 3, lines 13 to 19 of the opposed application that:

“…when the quantity of coarse material to fine material is relatively high, the rapid sedimentation of the coarse material may produce excessive beach angles which promotes the run off of aqueous waste containing high proportions of fine particles, further contaminating the recovered water. As a result, it is often necessary to treat the coarse and fine waste streams separately, and recombine these material (sic) by mechanically re-working, once the de-watering process is complete.”

27. The opposed application then goes on to discuss some particular issues with the disposal of “red mud”, being an aqueous suspension of sand and ferric oxide particles that results from the Bayer process for recovering alumina from bauxite. It is observed that the red mud can be thickened via a flocculant and that it is desirable, for the purposes of stacking the mud as discussed above, that the solids content be as high as possible, although this conflicts with the pumpability of the red mud.

28. There is then some discussion of the prior art that deals with the above issues, as well as some of the limitations of the prior art. One of these prior art documents is WO-A-0192167 A1, being the PCT publication of the Gallagher patent.

29. Before outlining various aspects of the invention, the opposed application indicates the objectives of the application at page 6, lines 16 to 30:

“However, despite the improvements brought about by WO-A-0192167, particularly in the treatment of red mud, there is still a need to further improve the rigidification of suspensions of materials and further improve upon the clarity of liquor released. In particular, an objective of the present invention is to find a more suitable method for treating coarse and/or fine particulate waste material from mineral sands, alumina or other mineral processing operations in order to provide better release of liquor and a more effective means of disposing of the concentrated solids. Furthermore, there is a need to improve the dewatering of suspensions of waste solids that have been transferred as a fluid to a settling area for disposal and provide improvements in the clarity of run-off water. In particular, it would be desirable to provide a more effective treatment of waste suspensions transferred to disposal areas, for instance tailings dams, ensuring fast, efficient concentration and more environmentally friendly storage of solids and improve clarity of released liquor.”

30. Several aspects of the invention are then outlined in the consistory clauses on pages 7 to 7a. All of these aspects effectively correspond to the independent claims presently under consideration. The claims are repeated later, suffice to say here that the various aspects all relate to the rigidification of an aqueous slurry upon standing via the addition of an aqueous solution of a water soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25°C) whilst still retaining fluidity of the slurry during transfer.

31. It is observed, at page 7, line 29 to page 7a, line 3, that the addition of the aqueous solution of water soluble polymer to the slurry:

“…allows it to retain sufficient fluidity during transfer and then once the material is allowed to stand it will form a solid mass strong enough to support subsequent layers of rigidified material. We have unexpectedly found that the addition of the aqueous solution of polymer material does not cause instant rigidification or substantially any settling of the solids prior to standing.”

32. Several examples and test results illustrating the invention are given at pages 18 to 39 of the opposed application. I will not repeat the details of these here, but will refer to these in this decision where necessary.

The Opposed Claims

33. The opposed application as accepted ends with 25 claims, of which claims 1, 6, 10, 11, 16 and 21 are independent. I have reproduced the independent claims in the table below, as well as the closest comparative claims from the 785 decision. A full listing of the claims is given in Annex A following this decision.

34. I have indicated material differences between the claim sets by using italics for features present in the claim set for the opposed application but not in the 785 application, and by using underlining for features present in the 785 application, but not present in the claim set for the opposed application.

Table 1: Independent claims from the opposed application and closest comparative claims from the 785 application.

Opposed Application (2012216282)	2004203785
1. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material comprises coal tailings.	1. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25°C).
6. A process of rigidifying a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material comprises coal tailings.	1. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25°C).
10. The use of an effective rigidifying amount of an aqueous solution of a water soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25°C) to rigidify a material comprising an aqueous liquid with dispersed particulate solids comprising coal tailings that has been deposited as a fluid and allowed to stand in a deposition area, wherein the water soluble polymer is added to the material during transfer to the deposition area.	29. Use of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25°C), in a process in which material comprising aqueous liquid with dispersed particulate solids is transferred as a fluid to a deposition area, then allowed to rigidify, for the purpose of improving rigidification whilst retaining fluidity of the material during transfer.
11. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material is selected from any of mineral tails or slimes from phosphate or diamond processing, gold slimes, tails from zinc, lead, copper, silver, uranium, nickel or iron ore processing.	1. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25°C).
16. A process in which material comprising an aqueous liquid with dispersed particulate solids is transferred as a fluid to a deposition area, then allowed to stand and rigidify, and in which rigidification is improved whilst retaining the fluidity of the material during transfer, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C) in which the material is derived from the tailings from a mineral sands process and in which the dispersed particulate solids have a bimodal distribution of particle sizes comprising a fine fraction and a coarse fraction and following treatment with an effective amount of aqueous solution of a water soluble polymer, on standing, rigidifies without significant segregation of the coarse and fine fractions of particulate solids.	15. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25°C) in which the dispersed particulate solids has a bimodal distribution of particle sizes comprising a fine fraction and a coarse fraction, in which the fine fraction peak is substantially less than 25 microns and the coarse fraction peak is substantially greater than 75 microns.
21. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C) in which the material comprises red mud.	1. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25°C).

35. The only significant difference between claims 1, 11 and 21 and the comparative claims of the 785 application lies with the nature of the material concerned, i.e. is it specified as being coal tailings in claim 1, mineral tails or slimes from phosphate or diamond processing, gold slimes, tails from zinc, lead, copper, silver, uranium, nickel or iron ore processing in claim 11 and red mud in claim 21.

36. Similarly claim 16 specifies that the material concerned is derived from a mineral sands process, but also that there is no significant segregation of the coarse and fine fractions of particulate solids.

37. The differences with respect to claims 6 and 10 amount to the qualification that the material comprises coal tailings. Also neither of these claims refers to “improving” or “improved” rigidification.

38. I note here that the 568 decision was in effect narrowly concerned with the feature of combining aqueous suspensions of fine and coarse particulates for the purpose of codisposal to form the material. Beyond discussion of this key feature, in other respects the 568 decision largely drew upon conclusions already reached in the 785 decision. Noting this and the fact that the distinguishing feature of the 568 claims does not form part of the claims of the opposed application, I have not included the 568 claims in table 1.

The Opposition

39. A wide variety of grounds were pursued in the SGP. However all grounds save lack of inventive step were abandoned in the Opponent’s written submissions, a fact further confirmed by Mr Caine at the hearing.

40. In particular Mr Caine outlined that the Opponent was alleging lack of inventive step in view of the Gallagher patent according to the findings of the Delegate (Dr Barker) in the 785 and 568 oppositions. In addition the Opponent also alleged lack of inventive step in view of WO 96/05146 (“Pearson”).

41. A further issue agitated by the Opponent, but not forming a ground of opposition per se, is whether the opposed application is properly a patent of addition according to s81 of the Act. Some considerable time and effort was expended by the parties over this issue and I shall consider this in more detail below.

42. Notably both parties accepted, for the purposes of this matter, the findings of fact from the related decisions, except where explicit disagreement was indicated; see the Opponent’s written submissions at [41] and the Applicant’s written submissions at [15]. The primary area of disagreement is that the Opponent contends that the claims lack inventive step in view of Pearson in contrast to the Delegate’s determination in the 785 decision. I will refer to this and other areas of disagreement where relevant in this decision.

43. I also observe that the discussion at [38] should make it clear that in general the findings of fact from the 785 decision will be of most use in determining the present matter. Hence in the following I will generally refer to the 785 decision, but will take into account additional findings from the 568 decision where it is appropriate to do so.

Onus of Proof

44. As examination was requested prior to 15 April 2013, the changes brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“RTB”) do not apply to the opposed application. As such the previous burden of proof applies to this opposition, namely that the Opponent will only succeed if they can convince the Commissioner that it is clear or practically certain that the patent is invalid if granted; see F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17].

Patent of Addition Status

45. This issue was first identified for the purposes of the present opposition in the Opponent’s written submissions. The agitation of this issue raises several questions which I need consider before continuing.

46. The first of these is whether it is open to me to consider the patent of addition status as part of the present matter. Several arguments were put forward by the Applicant that it was not. These arguments were: that it is not open to an opponent to challenge the patent of addition status in a s59 opposition; that no such grounds or particulars have been made in the SGP and finally that the patent of addition request has been determined. I will consider each of these arguments below.

47. In relation to the first argument, the grounds available to an opponent in a s59 opposition are outlined in s59 of the Act, which I have reproduced below:

“The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground:
(a) that the nominated person is either:
(i) not entitled to a grant of a patent for the invention; or
(ii) entitled to a grant of a patent for the invention but only in conjunction with some other person;

(b) that the invention is not a patentable invention;
(c) that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3).”

48. It is apparent from s59 that challenging patent of addition status is not a ground of opposition open to an opponent per se, not least due to the wording “but on no other ground”. Indeed the Applicant’s written submissions make much of this point at [34] to [43], as well as being reiterated in the Applicant’s further written submissions. Mr Shavin reiterated these points at the hearing and argued that if I entertained the Opponent’s position on this point any such decision would be ultra vires.

49. I also note Mr Caine’s submissions towards the end of the hearing that he was seeking to make his submissions on the patent of addition status under s81, rather than s59. Consequently it would seem that the Opponent concedes the Applicant’s point on the matter.

50. Ultimately I consider that the Applicant’s arguments, and the Opponent’s apparent concession in this regard are misconceived, at least with respect to whether the opposed application is validly a patent of addition to Gallagher. While I agree that patent of addition status is not a ground of opposition per se, I take the Opponent’s arguments in this regard to be at least partly made in conjunction with assertions of lack of inventive step in view of Gallagher, based on Mr Caine’s arguments at the hearing and the Opponent’s written submissions at [69]. Indeed the only way that Gallagher becomes prior art for the purposes of s7(3) is if the opposed application is not a patent of addition to the Gallagher patent, since otherwise the Gallagher patent would be effectively disqualified as prior art for inventive step via the operation of s25 of the Act and Reg 2.4. Hence whether the opposed application is validly a patent of addition to Gallagher is legitimately encompassed under s59 for that purpose, despite any assertions or admissions to the contrary.

51. I note that the above approach is entirely consistent with that of Baracuda (Proprietary) Limited v Fernand Louis Oscar Joseph Chauvier [1987] APO 3 (“Baracuda”) and Colgate-Palmolive Company v Westone Products Limited [1998] APO 69. This approach (as well as Baracuda) was also alluded to by the Delegate in the earlier decision at [20].

52. The second argument is given at [44] to [46] of the Applicant’s written submissions, and suggests that it is not open to the Opponent to agitate with respect to the patent of addition status as this does not form part of the SGP, either as a ground or a particular. It is true that the patent of addition issue is completely absent from the SGP, though this is hardly surprising given the amendment request that converted the opposed application to a patent of addition was not filed until after EIR.

53. It is not clear to me that the issue of the patent of addition status need be incorporated as such since it can be seen to necessarily follow from particulars alleging lack of inventive step in view of Gallagher. Despite this it is reasonable to conclude that it would have been desirable for the Opponent to amend the SGP so as to particularise the patent of addition status issue.

54. In any case I note that the Applicant has extensively put their case on the s81 issue, both in their written submissions and at the hearing. I am therefore satisfied that there is no fundamental breach of natural justice, despite the protests made by the Applicant. I therefore see no reason to simply ignore the patent of addition question.

55. The final argument made by the Applicant is given at [47] to [49] of their written submissions. Here the Applicant argues to the effect that the Commissioner is functus officio, since in the earlier decision the “…Patent of Addition Request was considered and found to be valid by a delegate of the Commissioner…” (Applicant’s written submissions at [47]). However, again, the Applicant’s arguments are misconceived. The earlier decision was narrowly confined to determining whether to dismiss an opposition to the s104 amendment of the patent request that converted the opposed application into a patent of addition. None of the considerations made by the Delegate in the earlier decision relate to the fundamental question as to whether the opposed application meets the requirements of s81(b) of the Act. I therefore reject the Applicant’s purported assertion that the Commissioner is functus officio with respect to the question of whether the opposed application is validly a patent of addition to Gallagher.

56. Having determined that I can consider the status of the opposed application as a patent of addition, I will now consider whether the opposed application is in fact a valid patent of addition. In this regard the Opponent posed two main arguments as to why the opposed application is not a valid patent of addition, these being outlined in their written submissions at [68].

57. The first is that the opposed application is not a valid patent of addition to Gallagher as it does not meet the requirements of s81. I have already determined that I can consider patent of addition status under s81 for the purposes of assessing inventive step. I will consider the Opponent’s arguments in this regard first.

58. I will then assess the Opponent’s second argument. This asserts that the Commissioner has a discretion to decline to grant the opposed application as a patent of addition, even if the requirements of s81 are otherwise met, and that in this case the Commissioner should exercise her discretion and prevent the opposed application from proceeding as a patent of addition. Notably if the Commissioner were to exercise her discretion in this manner this would result in s25 not being applicable and thus Gallagher would become available for the purposes of assessing inventive step.

Does the Opposed Application Comply with s81?

59. Section 81(1) of the Act provides for the granting of a patent of addition to a main invention, and reads as follows:

“Where:
(a) a patent for an invention (in this Chapter called the main invention) has been applied for or granted; and
(b) the applicant or patentee (or a person authorised by the applicant or patentee) applies for a further patent for an improvement in, or modification of, the main invention; and
(c) the application for that further patent is made in accordance with the regulations;
the Commissioner may, subject to this Act and the regulations, grant a patent of addition for the improvement or modification.” (bolding in original)

60. Arguably there is some ambiguity in s81(1) as to whether the “main invention” refers to an invention disclosed as opposed to claimed in the parent application. Earlier authorities, such as Georgia Kaolin Co. Ltd’s Application (1956) RPC 121 (“Georgia Kaolin”) and Welwyn Electrical Laboratories Ld’s Application (1957) RPC 143 (“Welwyn”) (both working within s26 of the UK Patents Act 1949) either positively asserted that the “main invention” is the invention disclosed (Georgia Kaolin) or did not make any definitive opinion on this matter one way or the other (Welwyn).

61. Conversely, contemporary understanding (see for example the Patent Manual of Practice & Procedure at 2.19.3) appears to indicate that the “main invention” refers to the invention claimed, rather than the invention disclosed. However I have been unable to ascertain any subsequent jurisprudence on this specific point since Georgia Kaolin.

62. For the avoidance of doubt my understanding is that the “main invention” refers to the invention claimed in the applied for or granted earlier patent. The reasons for this are as follows:

a)   s81(1)(a) refers to the main invention being applied for or granted. In the case of a granted patent the scope of the monopoly granted with respect to the patented invention is defined by the claims, by virtue of the wording in s18. Hence it would be rather incongruous to suggest that the reference in s81(1)(a) to the “main invention” somehow means an invention disclosed in the granted patent, but not necessarily defined either wholly or in part by the claims;
b)   similar arguments apply where the “main invention” has been applied for as opposed to being granted. In this regard I note that s81(3) mandates that the patent of addition cannot be granted prior to grant of the main invention;
c)   if one were to interpret the main invention as merely being an invention disclosed rather than claimed then it is not apparent what purpose is being achieved by s81(3). This is due to the fact that in this circumstance it is possible for the patent of addition to relate to a main invention (for example where there is lack of unity) that has nothing to do with the claims as granted on the patent for the main invention, in which case it is not particularly decisive one way or the other whether the patent for the main invention has been granted; and
d)     to entertain the alternative proposition that the “main invention” could be an invention disclosed in the specification is likely to lead to significant difficulties in determining what is the “main invention”, and is reminiscent of a time before patent monopolies were defined by claims.

63. It was also held in Welwyn at 146 that a valid patent of addition cannot merely claim something disclosed, but not claimed, in the parent application, or merely claim the parent invention from a different aspect, since these would not constitute an improvement or modification to the main invention:

“In my view Sec. 26 only enables an applicant or a patentee to protect some further disclosure over and above that of the main invention, a disclosure which must be in the nature of an improvement in or modification of that invention. The mere claiming in a later application of the main invention from a different aspect, or of subject matter contained in the earlier specification but not claimed therein does not in my opinion fulfil the purpose of the Section.”

64. What comprises an “improvement or modification” to the main invention has previously been considered by Lloyd-Jacob J in Elliot Brothers (London) Limited’s Application (1967) RPC 1 (“Elliot Brothers”) at 4:

“The meaning of the words ‘modification’ and ‘improvement’ is clear enough. A modification is an alteration which does not involve a radical transformation and an improvement is a variation, whether by addition, omission or alteration, to secure a better performance, whilst retaining some characteristic part.”

65. In determining whether the transformation concerned was radical or whether there was retention of a characteristic part, Lloyd-Jacob J considered (at 5) that:

“In my judgement the consideration to be given must take into account the novelty of the manner of manufacture to which the patent applications were directed.”

66. In Elliot Brothers the inventions concerned related to a rate of turn indicating device. The only common features between the putative patent of addition and the main invention was a magnetic pick up bar known from the prior art. The novel feature from the main invention was a type of magnetic pick up, while the putative patent of addition utilised a type of optical pick up instead. Unsurprisingly Lloyd-Jacob J, in finding that the application was not a valid patent of addition, considered that the putative patent of addition completely removed the novel features of the main invention, a circumstance that (at 5) was said to be “…the most complete form of radical alteration possible”.

67. The parties were not in agreement that the principles in Elliot Brothers could be applied in the present matter. The Applicant refers to Elliot Brothers and Baracuda at [52] to [56] of their written submissions, but also makes reference to The Valveless Gas Engine Syndicate v Day (1899) 16 RPC 97 (“Valveless Gas”), before suggesting at [61] that:

“…it is important to note that, whilst the Commissioner can have regard to the decisions of the English Courts, in Valveless Gas in 1899 and Elliot Brothers in 1967, none of those decisions are determinative of the proper construction of section 81 of the Act. In particular, the views expressed by foreign judges in those cases many decades ago cannot constrain the plain meaning of the language used in section 81 of the Act”.

68. The Applicant then delivers several warnings from the High Court, at [62] and [63] of their written submissions, on the task of statutory interpretation, before stating at [64] to [66] that:

“The short point in the context of this opposition is this: it is important that the Commissioner does not apply additional criteria in assessing what constitutes a patent of addition, beyond the criteria found in the terms of section 81 of the Act. In particular, whilst BASF accepts that some of the old English cases considered notions such as whether the transformation, as between the parent patent and the patent of addition, is ‘a radical one’, and whether there had been some retention of ‘a characteristic part’, such notions do not appear anywhere in the text of section 81 of the Act.
The test stipulated by the plain words of section 81 of the Act is straightforward: does the invention claimed in the patent of addition involve ‘an improvement in, or modification of, the main invention’. There is nothing in the text of section 81 of the Act which requires the Commissioner to consider the extent of the improvement or modification. A small, or dramatic, modification of or improvement to the main invention would fall within the plain terms of section 81 of the Act.
Had the legislature desired to limit the scope of patents of addition to inventions featuring marginal or confined improvements or modifications, it could readily have done so. Had the legislature desired to limit the scope of patents of addition to inventions which did not alter or replace the ‘novelty conferring feature’ of the parent patent, it could readily have done so. It did not, and there is no warrant to read such notions, which have ‘no footing in the text of the Act’, into the definition of what constitutes a patent of addition.” (references removed, italics in original)

69. Ultimately I consider that the test outlined in Elliot Brothers is appropriate. Despite the Applicant’s assertions it is apparent that the test in Elliot Brothers was directly based on the words used in the Act, namely “improvement” or “modification”, and was predicated on giving practical meaning to those terms within the bounds of the legislation. Hence I see no reason to abandon the test from Elliot Brothers.

70. There is little previous guidance on the degree to which the subject matter of the patent of addition must be different to the main invention. In this regard the parties drew my attention to the decisions in Fisons Limited’s Application [1983] APO 40 (“Fisons”) and Baracuda.

71. Both cases were decided under the Patents Act 1952, and involved issues peculiar to that Act. Fisons drew a connection between validity and the ground of prior claiming over the parent patent:

“Bearing in mind my review of the three specifications set out earlier in this decision, it follows that the application in suit cannot proceed as a patent of addition to the grandparent specification since it discloses nothing further than what is disclosed in the earlier specification apart from what in my opinion is an inherent property of the pellets. The examiner's objection is therefore well founded, and it is a corollary thereof that some, at least, of the claims of the present application are prior claimed by those of the grandparent patent.” (Fisons at 8)

72. Baracuda also drew this distinction at 14:

“In line with the discussion earlier in this decision regarding the prior claiming issue, I consider that the present invention is not in respect of an improvement in, or modification of, the main invention as defined in the parent patent.”

73. However, the Delegate in Baracuda made the following observation at 14-15:

“It seems to me that the present specification merely relates to a design optimization of the earlier invention particularly with respect to the restricted passage, rather than being concerned with any identifiable improvement in or modification of that invention.”

74. The Delegate did not elaborate on the distinction between a mere “design optimisation” and a “modification or improvement”. However, it seems that “design optimisation” was the consequence of the finding of prior claiming, and was not a new consideration. Prior claiming was one of the grounds of anticipation under section 48(3) of the 1952 Act which were subsequently brought under the umbrella of the ground of novelty in the 1990 Act. I am satisfied that the approach used by the Delegates in Fisons and Baracuda is to ask whether the patent of addition would be invalidated by the application relating to the main invention. Under the 1990 Act, that question is whether the invention is novel in the light of the earlier application.

75. Having determined the relevant legal principles, it is first pertinent to provide a brief comparison of the claims of the opposed application and those of Gallagher before applying the principles concerned. I have included the independent claims from each application in table 2 below, noting that claim 1 is the only independent claim in Gallagher. I have indicated material differences between the claim sets by using italics for features present in the claim set for the opposed application but not in Gallagher, and by using underlining for features present in Gallagher, but not present in the claim set for the opposed application.

Table 2: Independent claims from the opposed application and comparison with the independent claim from Gallagher.

Opposed Application (2012216282)	2001269025 (Gallagher)
1. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material comprises coal tailings.	1. A process in which material comprising an aqueous liquid with dispersed particulate solids is pumped as a fluid then allowed to stand and rigidify and the rigidification is improved whilst retaining the pumpability of the material by combining solid polymeric particles with the material during or prior to pumping the material, wherein the polymeric particles comprise water soluble polymer which has an intrinsic viscosity of at least 3dl/g.
6. A process of rigidifying a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material comprises coal tailings.	1. A process in which material comprising an aqueous liquid with dispersed particulate solids is pumped as a fluid then allowed to stand and rigidify and the rigidification is improved whilst retaining the pumpability of the material by combining solid polymeric particles with the material during or prior to pumping the material, wherein the polymeric particles comprise water soluble polymer which has an intrinsic viscosity of at least 3dl/g.
10. The use of an effective rigidifying amount of an aqueous solution of a water soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25°C) to rigidify a material comprising an aqueous liquid with dispersed particulate solids comprising coal tailings that has been deposited as a fluid and allowed to stand in a deposition area, wherein the water soluble polymer is added to the material during transfer to the deposition area.	1. A process in which material comprising an aqueous liquid with dispersed particulate solids is pumped as a fluid then allowed to stand and rigidify and the rigidification is improved whilst retaining the pumpability of the material by combining solid polymeric particles with the material during or prior to pumping the material, wherein the polymeric particles comprise water soluble polymer which has an intrinsic viscosity of at least 3dl/g.
11. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material is selected from any of mineral tails or slimes from phosphate or diamond processing, gold slimes, tails from zinc, lead, copper, silver, uranium, nickel or iron ore processing.	1. A process in which material comprising an aqueous liquid with dispersed particulate solids is pumped as a fluid then allowed to stand and rigidify and the rigidification is improved whilst retaining the pumpability of the material by combining solid polymeric particles with the material during or prior to pumping the material, wherein the polymeric particles comprise water soluble polymer which has an intrinsic viscosity of at least 3dl/g.
16. A process in which material comprising an aqueous liquid with dispersed particulate solids is transferred as a fluid to a deposition area, then allowed to stand and rigidify, and in which rigidification is improved whilst retaining the fluidity of the material during transfer, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C) in which the material is derived from the tailings from a mineral sands process and in which the dispersed particulate solids have a bimodal distribution of particle sizes comprising a fine fraction and a coarse fraction and following treatment with an effective amount of aqueous solution of a water soluble polymer, on standing, rigidifies without significant segregation of the coarse and fine fractions of particulate solids.	1. A process in which material comprising an aqueous liquid with dispersed particulate solids is pumped as a fluid then allowed to stand and rigidify and the rigidification is improved whilst retaining the pumpability of the material by combining solid polymeric particles with the material during or prior to pumping the material, wherein the polymeric particles comprise water soluble polymer which has an intrinsic viscosity of at least 3dl/g.
21. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C) in which the material comprises red mud.	1. A process in which material comprising an aqueous liquid with dispersed particulate solids is pumped as a fluid then allowed to stand and rigidify and the rigidification is improved whilst retaining the pumpability of the material by combining solid polymeric particles with the material during or prior to pumping the material, wherein the polymeric particles comprise water soluble polymer which has an intrinsic viscosity of at least 3dl/g.

76. It can be seen that the differences between the independent claims of the opposed application and Gallagher can be summarised as follows:

i.the opposed application restricts use to a particular material e.g. coal tailings in claim 1;

ii.the opposed application uses a water soluble polymer in aqueous form, as opposed to a water soluble polymer in solid form in Gallagher; and
iii.the intrinsic viscosity of the water soluble polymer in Gallagher is at least 3dl/g, whereas in the opposed application it is at least 5 dl/g.

77. It can also be seen that the independent claims of the opposed application and claim 1 of Gallagher share following features:

i.rigidification; and

ii.use of a water soluble polymer.

78. I note that in the 785 decision the Delegate’s considerations at [110] to [126] appear to largely deal with “improved rigidification” rather than “rigidification” per se, and it is worth exploring what, if anything, this apparent difference means.

79. In this regard the Delegate adopts the following approach with respect to “improved rigidification” at [125] of the 785 decision:

“It seems that Professor Boger relies on stacking as the main indicator of improved rigidification. While I accept that stacking is a consequence of improved rigidification, I am not sure that the evidence is sufficient to show that stacking can only be brought about by improved rigidification. I consider that it is better to ask whether there is (a) faster solidification, (b) more water recovery, and (c) the tailings occupy a smaller area, rather than to focus solely on whether there is stacking. This is the approach that I will adopt.”

80. Logically the Delegate, in noting that rigidification is distinguished from settling and sedimentation, also observed that you cannot have “improved rigidification” without “rigidification”. This is exemplified at [115]:

“It seems fair to conclude that Kenny J formed the view that improved rigidification can only be achieved if the product is rigidified. In other words, a sedimented product which is more rigid than it otherwise would have been would not be an improved rigidification. Rigidification is a process that involves cross-linking (brought about by the flocculant) that increases the yield stress of the material. I accept that the same conclusion applies to the present application.”

81. Notably at [126] the Delegate made the following statements in relation to “improvement”:

“Finally, in order to observe an improvement it is necessary to carry out a comparison. In this case, it is a comparison between the nature of the discharge WITHOUT the late addition of the flocculant (in which case settling or sedimentation takes place), compared to the discharge WITH the late addition of the flocculant.”

82. It is apparent that the Delegate (see also [118] of the 785 decision) has defined the “improvement” in “improved rigidification” in terms of a comparison to alternative processes not defined by claims of the 785 application i.e. processes that did not achieve rigidification at all, but rather resulted in settling or sedimentation. Compared to these alternative processes it is apparent that the achievement of any rigidification is “improved” rigidification. This suggests that the characteristics of “improved rigidification” as outlined at [125] of the 785 decision are also applicable to “rigidification” per se. This is illustrated by the fact that the Delegate, in considering novelty and inventive step, has used the terms “improved rigidification” and “rigidification” interchangeably in several locations, the most obvious example being at [195]:

“These observations do not match the test for rigidification coming out of the Federal Court decision. That test was (a) faster solidification, (b) more water recovery, and (c) tailings occupy a smaller area. In the absence of evidence that goes to the criteria coming out of the Federal Court decision, the conclusion of that decision has not been displaced. The evidence does not establish lack of novelty in the light of the use at the Beenup Mine.” (italics added)

Similar wording is used at [219]. Further, though less direct examples are apparent at [213] to [215], [296], [299], [304], [307], [313], [349], [355] and [373].

83. I therefore consider it reasonable to conclude that “rigidification” in the opposed application is also defined by the criteria outlined by the Delegate for “improved rigidification” at [125] of the 785 decision. Henceforth wherever I refer to “rigidification” or “improved rigidification” I mean rigidification in the sense defined by the Delegate in the 785 decision.

84. I will now apply the legal principles identified earlier to the opposed application so as to determine whether it is validly a patent of addition to Gallagher. Both Gallagher and the opposed application achieve rigidification of a slurry material via the addition of a water soluble polymer to the slurry. It is clear that the achievement of rigidification is key to the opposed application as it is in Gallagher. On this basis it is apparent that the differences between the opposed application and Gallagher do not amount to “a radical transformation”, and thus can be considered a modification of Gallagher in the relevant sense. Consequently the opposed application can be said to validly be a patent of addition to Gallagher.

85. It is perhaps pertinent to now address the Opponent’s contentions that the opposed application is not a valid patent of addition to Gallagher. At [68(a)] of their written submissions, the Opponent states that:

“The application does not satisfy the requirements of s 81 of the Act. The 282 Patent is not an improvement or modification of the Gallagher Patent as it replaces the novelty conferring feature of the polymer being in the form of a dry particulate with a new novelty conferring feature of the polymer being in aqueous solution – a new feature that the 282 Patent itself asserts was disclosed in the Gallagher Patent to be ineffective…”

86. The basis for this assertion is expounded upon in some detail in the Opponent’s written submissions at [80] to [115]. Despite their length the Opponent’s contentions with respect to the novelty conferring features of Gallagher can be summarised as follows:

·     that Gallagher, in discussing the prior art, and in particular EP-A-388108 (“Moody”), distinguishes itself over the prior based on adding polymer in the form of a dry particulate (Opponent’s written submissions at [80] to [84]);
·     that Gallagher indicates that there are surprising advantages with respect to adding the polymer in a dry particulate and repeatedly teaches the addition of polymer as a dry particulate or powder form (Opponent’s written submissions at [85] to [89]);
·     that both the 785 application and the opposed application discuss the importance in Gallagher of using particles of water soluble polymer (Opponent’s written submissions at [90] to [91]); and
·     that the examination history of Gallagher and the Applicant’s response thereto indicated that it was the addition of water soluble polymers in the form of solid particles that distinguished Gallagher from WO 96/05136 (“Pearson”) (Opponent’s written submissions at [92] to [94])

87. Similarly the Opponent’s contentions with respect to the novelty conferring features of the opposed application can be summarised as follows:

·     that the opposed application discusses Gallagher and distinguishes itself from Gallagher due to the addition of polymer in aqueous form (Opponent’s written submissions at [95] to [96]);
·     that a comparison of claim 1 of the opposed application with Gallagher indicates that the differences between the two applications amounts to the form of the polymer, being aqueous for the opposed application and dry powder for Gallagher (Opponent’s written submissions at [97] to [102]);
·     that the examination history of 785 application and the Applicant’s response thereto indicated that it was the form of the polymer that distinguished the 785 application from Gallagher (Opponent’s written submissions at [103] to [106]);
·     that the findings of novelty by Kenny J in the Federal Court decision found the related innovation patents were novel over both Gallagher and Pearson due to the polymer being in aqueous form (Opponent’s written submissions at [107]); and
·     that the Applicant’s own submissions in the 785/568 applications appeal proceedings assert that Gallagher teaches away from using aqueous polymer (Opponent’s written submissions at [108] to [109]).

88. At [110] of their written submissions, the Opponent provides a high level summary of the Applicant’s actions with respect to Moody, Gallagher and the related innovation patents (noting that the present Applicant is also the Applicant for these applications).

89. The Opponent ties all this together at [111] to [115] of their written submissions, which are repeated below:

“It is therefore apparent from a consideration of the disclosure in the respective patents themselves, and the approach taken by BASF during prosecution and judicial proceedings, that BASF now seeks to effectively replace the novelty conferring feature of the Gallagher Patent with a feature that is distinguished in the Gallagher Patent as less effective prior art and asserted in the 282 Patent to have been described in Gallagher as “ineffective”. Put simply, it is not possible for a feature that the main patent is said to characterise as “ineffective” to be considered an improvement of the main invention. The process claimed in the 282 Patent does not involve a variation, whether by addition, omission or alteration, to secure a better performance, whilst retaining some characteristic part of the main invention.
BASF in effect seeks to entirely contradict the invention disclosed and claimed in the main patent to claim that flocculant in solution is simply a modification or improvement of that invention. That is a radical transformation which fails to retain the key novelty-conferring feature of the Gallagher Patent over the Pearson Patent.
Put another way, the specification of the proposed patent of addition is too different from that of the main invention as the substituent element is ‘a class quite distinct’ to that claimed in the main invention. The 282 claims could not have been properly included in the parent specification without giving rise to an objection of lack of unity.
BASF is not applying for a patent of addition to ‘fill a loophole left in the claims of his original specification’. Rather it is seeking to improperly obtain exclusive rights in the 282 Patent through a characterisation of the Gallagher Patent that is contrary to the representations made by BASF both in that patent (Gallagher) and the 282 Patent. That characterisation is also contrary to the representations made by BASF in continuing to seek enforceable rights in relation to the 785 and 568 patent applications by characterising the switch from the addition of flocculant in dry powder form to aqueous form as both significant and counter intuitive.

SNF is not aware of any jurisprudence to support the proposition that an applicant for a patent of addition can properly seek and enforce statutory rights in relation to an invention on the basis that it is novel, innovative and/or inventive over its prior patent whilst at the same time seeking statutory rights in respect of the same invention on the basis that it is merely a modification or improvement over the prior art.” (references removed, italics in original)

90. It is apparent that the Opponent has based their arguments upon the consideration of the novelty conferring features of the putative patent of addition and the main invention as undertaken in Elliot Brothers. While I have utilised Lloyd-Jacob J’s interpretation of “improvement” and “modification” it should be apparent that I have not gone as far as to consider the novelty conferring features as per Elliot Brothers. In Elliot Brothers the putative patent of addition was filed due to lack of unity of invention in the main invention, noting that it also was a divisional to the main invention. To that extent it would seem that Lloyd-Jacob J had sufficient relevant art before him on which to conduct an analysis of the novelty conferring features of both the putative patent of addition and the main invention.

91. Conversely in the present matter the opposed application is not a divisional to the main invention, and the prior art is directed exclusively towards the opposed application, rather than Gallagher. Consequently it is difficult to make an objective assessment of the novelty conferring features of Gallagher. It follows that I have not undertaken an analysis of the novelty conferring features as per Elliot Brothers, but have considered whether there has been a radical transformation ab initio using the interpretation of “modification” or “improvement” from Elliot Brothers. It also follows that I reject the Opponent’s contentions that the opposed application is not a valid patent of addition to Gallagher in favour of the reasoning I provided earlier in this decision.

92. Consequently I need not consider the Opponent’s approach in detail. Nevertheless there are also two difficulties that further undermine the Opponent’s assertions, which I will briefly discuss now.

93. The first is that the Opponent has simply cherry picked items of prior art to support their contentions. This is highlighted at [107] of their written submissions:

“The fact that other prior art was distinguished on the basis that there was no disclosure of improved rigidification is entirely irrelevant.”

94. Notably the approach taken in Elliot Brothers comprises a consideration of the prior art of record from the point of view of the skilled addressee in order to ascertain the novelty conferring features. In doing so it is difficult to conceive that a skilled addressee would have recourse to a narrow selection of prior art documents while completely ignoring others as has been done by the Opponent (this should also perhaps illustrate why I have eschewed this approach from Elliot Brothers, given the lack of specific prior art with respect to Gallagher). While not quite the state of “notional ignorance” referred to by Lloyd-Jacob J at 4 of Elliot Brothers the approach taken by the Opponent amounts to arbitrarily confining the skilled addressee to a narrowly constrained box of the Opponent’s choosing. This approach is clearly in error.

95. The second difficulty relates to the Opponent’s contentions about the form of the polymer in Gallagher via-a-vis the opposed application. Notably the statements in Gallagher about the apparent importance and surprising benefits of using polymer in powder form were considered extensively by the Delegate in the 785 decision at [315] to [319]. In particular at [318] the Delegate concluded that the apparent advantages of using a particulate form would be understood by the skilled addressee as being peculiar to the nature of the Bayer process outlined in Gallagher:

“A person skilled in the art would recognise that the Gallagher patent is particularly directed to treating waste from the Bayer alumina process and that there is a long residence time before the slurry is discharged… Based on the common general knowledge about the activation time of solid and solution forms of flocculants, a person skilled in the art would have appreciated why dry powder would be superior in the long residence time situation in the Gallagher patent.”

96. In other words once the skilled addressee brought their knowledge to bear on Gallagher they would understand that, while the form of the polymer is important, there is nothing particularly vital about using polymer in a particulate form in an absolute sense for every conceivable situation. Consequently even if one was inclined to make judgements about the novelty conferring feature based on the specification alone (an approach which I consider would be erroneous due to the lack of specific prior art for Gallagher) there is no reason for the skilled addressee to believe that the novelty of the main invention resides in the use of a polymer in particulate form per se.

97. I also note that the Delegate’s statements at [318] are broadly indicative of the opposed application comprising either an “improvement” or “modification” over Gallagher.

The Issue of the Commissioner’s Discretion

98. I now need to consider the issue, raised by the Opponent, of the Commissioner’s alleged discretion to grant a patent of addition. At [116] of their written submissions, the Opponent states that:

“As made clear in Baracuda (Proprietary) Limitedv Fernand Louis OscarJoseph Chauvier [1987] APO 3 at [29] (sic page 15), the Commissioner has discretion as to whether to grant the patent of addition. That discretion is a broad one, limited only by the subject-matter, scope and purpose of the Act.” (references removed)

99. Unsurprisingly each party provided submissions supporting their view on the existence or not of the alleged discretion, along with further case law beyond Baracuda that purportedly supports their position. For reasons that will soon be apparent I see no need to provide a definitive answer on this point, however I am of the opinion that the word “may” in s81(1) is used in the permissive sense, i.e. it specifically provides the Commissioner with the power to grant a patent of addition. In this regard I also observe that the Delegate’s comments in Baracuda appear to be obiter, with minimal exploration as to the basis for the alleged discretion or its nature and extent.

In any case, even assuming that a discretion does exist, I am not satisfied that the Opponent has provided a case that legitimately supports the exercise of that discretion. Extensive arguments were put by the Opponent at [121] to [154] of their written submissions in support of their contentions. These may be summarised as that the Applicant should be denied a patent of addition because in converting the Opposed Application to a patent of addition the Applicant is effectively pursuing a line of reasoning at odds with positions taken and evidence given in earlier proceedings and during the Appeal to the 785 decision. This is perhaps best illustrated at [122] of the Opponent’s written submissions:
“In short, BASF seeks to acquire and enforce exclusive rights to the same invention on the basis of entirely contradictory characterisations of the invention.”
The inevitable conclusion to be drawn from the Opponent’s line of reasoning is that a party may only ever make entirely consistent arguments or lines of reasoning before a relevant authority under the Act, i.e. once a party takes a line of reasoning they are bound to persist with this forever after. Notwithstanding the fact that no such requirement exists in the Act, it is also difficult to reconcile this with the fact that the Act allows for various layers of appeal against decisions, responses and amendments during examination and re-examination, and indeed with fundamental notions of natural fairness. For these reasons alone the Opponent’s arguments are simply insufficient to warrant any exercise of the alleged discretion, should such discretion exist.
It follows from the above that I reject the Opponent’s assertions that the Applicant should be denied a patent of addition via exercise of an alleged discretion on behalf of the Commissioner.

Inventive Step

The statutory basis and legal precedent with respect to inventive step have been outlined by the Delegate in the 785 decision at [226] to [229]. Consequently I will not repeat these here.
The Opponent asserts lack of inventive step in view of both Gallagher ([50] to [66] of the Opponent’s written submissions) and Pearson ([155] to 179] of the Opponent’s written submissions.)
I have already determined that the opposed application is validly an application for a patent of addition to Gallagher. It follows that Gallagher does not form part of the prior art base for assessing inventive step (see [50] of this decision). This point was also conceded by the Opponent at [69] of their written submissions. It follows that I need give no further consideration to Gallagher for the purposes of inventive step.
With respect to Pearson, the Delegate in the 785 decision found that it would not be a matter of routine to try an aqueous solution (at [354]), nor would it be a matter of routine to arrive at rigidification (at [355]). The Opponent submits otherwise at [155] to [179] of their written submissions, suggesting that Pearson discloses improved rigidification (or would achieve this by routine adjustments) and that a skilled addressee would in fact ignore the teaching in Pearson to use an emulsion and overlook the apparent ineffectiveness of aqueous solutions.
Much effort was expended by the parties, and the Opponent in particular, on whether the Delegate erred in concluding that it would not be a matter of routine to try an aqueous solution. However, even assuming that the Delegate erred in this conclusion (which I stress I do not necessarily agree with), the opposed application is still inventive in view of Pearson as it would not be obvious to achieve rigidification in view of Pearson.
At [170] and [171] of their written submissions the Opponent contends that Pearson does in fact disclose a process comprising improved rigidification:
“Pearson discloses that:
(a) the process aims to stabilise tailings by modification of flow characteristics to reduce the slurry's ability to flow under its own weight compared to untreated tailings (Page 3, line 12). This will consequently increase the stacking angle of the stabilised slurry. Example 6 describes treated mud as appearing more viscous with reduced spreading on deposition;
(b) in some examples (eg. Example 27), immobilisation or gelatinization of material was observed such that it slumped but did not flow. This is consistent with formation of a network structure within the tailings after deposition;
(c) the rapid development of structure within treated tailings after deposition will result in rapid development of a sufficient yield stress to promote beach development close to the point of deposition. Example 53 describes development of a steeper beach (greater than 5.6 degrees) for red mud after treatment indicating rapid rigidification;
(d) it is described that treatment of tailings will result in an increase in the angle of repose (ie slump or stacking angle). Page 2, line 5 describes a 5 degree slope as an example of improved stacking. Page 24, line 12 describes an angle of repose in treated material in excess of this slope, namely 5.6 degrees. This is a higher stacking angle than was achieved with the Gallagher process on red mud. Therefore, the process has resulted in the deposited tailings occupying a smaller surface area than untreated tailings;
and
(e) claim 18 describes the dehydration of stacked slurry occurring. The development of a stabilised material which can be stacked in piles will result in more rapid development of a trafficable state due to dewatering and surface drying.
Accordingly, on the basis of the above matters and in light of BASF's and Dr Farrow's acknowledgements (consistent with the evidence of SNF's expert and lay witnesses), SNF submits that the Pearson Patent discloses a process resulting in improved rigidification as disclosed in the 282 Patent.”
The difficulty I have with these statements is that the Opponent has not supported their arguments with specific references from any of the available evidence. All that the Opponent points to is a generic reference to “…BASF’s and Dr Farrow acknowledgements (consistent with the evidence of SNF’s expert and lay witnesses”. It is not apparent to me from this general statement what evidence is being alluded to that would support a conclusion that the passages cited from Pearson in fact disclose rigidification. I see no reason to reach a different conclusion to the Delegate in the 785 decision. It follows that I do not consider that Pearson discloses rigidification.
At [172] to [177] of their written submissions the Opponent asserts that even if Pearson did not disclose rigidification, then it would be obvious to achieve rigidification in view of Pearson and the CGK:
“If however the Delegate finds that the Pearson Patent does not disclose a process resulting in improved rigidification as disclosed in the 282 Patent, in light of BASF's and Dr Farrows acknowledgements (consistent with the evidence of SNF's witnesses), and the submissions above with respect to the Gallagher Patent and the Delegate's findings above, achieving improved rigidification as claimed in the 282 Patent would have been obvious to a PSA in light of the CGK combined the Pearson Patent for the following reasons:
(a) The Pearson Patent discloses a process resulting in improved rigidification in almost the same terms as the 282 Patent; and
(b) The Pearson Patent discloses that a process may be used on a wide range of materials, including those comprising coarse and fine particles.
Her Honour also found that it was routine for PSAs to undertake test work in order to optimise the use of flocculants in treatment processes. Such matters involved adjusting the dose point and adjusting the amount of flocculant used.
Accordingly, SNF submits if Pearson is found to not disclose a process of improving rigidification, a PSA performing Pearson would be directly lead to achieving improved rigidification (if that was their desired result) by adjusting process variables which were routinely adjusted by PSAs in the field before the Priority date. This is consistent with BASF's opening oral submissions before Justice Beach, where BASF's senior counsel noted that ‘once….you know the principles, there’s a lot of routine trial and error that people skilled in the art who are doing this all the time play with, effectively, out of the back of a truck.’
This is because the key for achieving improved rigidification is the formation of a strong, well developed floc structure at the point of deposition. The formation of that structure will necessarily result in faster solidification and the release of more water than untreated tailings. A natural result of the solidification and dewatering is that the tailings will occupy a smaller area and will be capable of being more quickly rehabilitated.
A PSA would know that achieving this flocculated state using the process in Pearson would not involve them taking any additional steps, but rather was merely a question of adjusting one or more of the existing, well known variables (such as dose point or dose) such that the desired, rigidified result was achieved.
Relevantly, in the Canadian Federal Court Proceeding, it was Dr Farrow's evidence that the ‘inventive concept is to add….an effective rigidifying amount’ of flocculant. This is consistent with BASF's opening oral submissions in the proceedings before Justice Beach. Accordingly, SNF submits that a PSA performing Pearson at the Priority Date would know that if rigidification was their desired result, that result could be readily achieved by increasing the dose to an ‘effective rigidifying amount’. SNF submits this would have been an obvious step for the PSA to take.” (references removed)
Again the difficulty I have here is that these arguments are almost entirely unsupported by any evidence or relevant findings of fact. I accept the finding of fact by Kenny J from the Federal Court decision. However all that this indicates, at best, is that test work was routinely undertaken to optimise the use of flocculants in tailings waste treatment. This does not mean that it would be routine to achieve rigidification, in the absence of further supporting evidence to that effect. Similarly the opening submissions merely refer to routine trial and error, but again this does not mean that it would be obvious to arrive at rigidification.
There is also no evidence cited to support the Opponent’s contention that a skilled addressee “…would know that if rigidification was their desired result, that result could be readily achieved by increasing the dose to an ‘effective rigidifying amount’”. To the contrary the Delegate concluded in the 785 decision that it would not be a matter of routine to simply add more flocculant to achieve rigidification (at [270]), and the Opponent has not supplied any further evidence or arguments based on existing evidence that indicates the Delegate was in error on this point. I see no reason to dispute the Delegate’s finding.
I note that there are questions as to the probative value of the oral submissions and evidence from the Canadian proceedings, however in view of the above I see no need to delve into this.
In summary I see no reason to diverge from the conclusions of the Delegate in the 785 decision. I am not satisfied that the opposed application lacks inventive step in view of Pearson.

Conclusion

None of the grounds of opposition were made out. The opposition is unsuccessful.

Costs

Costs normally follow the event. I see no reason to do otherwise here. I award costs against the Opponent, SNF (Australia) Pty Ltd, according to Schedule 8 of the Regulations.

Dr W.E. Guinea

Delegate of the Commissioner of Patents

ANNEX A – Claims

1. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material comprises coal tailings.

2. A process according to claim 1 in which the water-soluble polymer is anionic and in which the polymer is formed from monomer(s) selected from the group consisting of (meth) acrylic acid, allyl sulphonic and 2-acrylamido-2methylpropane sulphonic acid as the free acid or salts thereof, optionally in combination with non-ionic comonomers, selected from the group consisting of (meth)acrylamide, hydroxyl alkyl esters of (meth) acrylic acid and N-vinyl pyrrolidone, and wherein the effective rigidifying amount of the water-soluble polymer is in the order of 10 to 3000 grams per tonne of material solids.

3. A process according to claim 1 or claim 2 in which the material is pumped to an outlet, where it is allowed to flow over the surface of previously rigidified material, wherein the material is allowed to stand and rigidify to form a stack.

4. A process according to any one of claims 1 to 3 in which aqueous suspensions of fine and coarse particulate materials are combined for the purpose of co-disposal, wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogenous slurry.

5. A process according to any one of claims 1 to 4 in which the material is dewatered during rigidification, releasing liquor and in which the clarity of the liquor is improved by the addition of an aqueous solution of water-soluble polymer.

6. A process of rigidifying a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material comprises coal tailings.

7. A process according to claim 6 in which the water-soluble polymer is anionic and in which the polymer is formed from monomer(s) selected from the group consisting of (meth) acrylic acid, allyl sulphonic and 2-acrylamido-2methylpropane sulphonic acid as the free acid or salts thereof, optionally in combination with non-ionic comonomers, selected from the group consisting of (meth)acrylamide, hydroxyl alkyl esters of (meth) acrylic acid and N-vinyl pyrrolidone, and wherein the effective rigidifying amount of the water-soluble is polymer is about 10 to 3000 grams per tonne of material solids.

8. A process according to claim 6 or claim 7 in which the material is pumped to an outlet, where it is allowed to flow over the surface of previously rigidified material, wherein the material is allowed to stand and rigidify to form a stack.

9. A process according to any one of claims 6 to 8 in which aqueous suspensions of fine and coarse particulate materials are combined for the purpose of co-disposal, wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogenous slurry.

10. The use of an effective rigidifying amount of an aqueous solution of a water soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C) to rigidify a material comprising an aqueous liquid with dispersed particulate solids comprising coal tailings that has been deposited as a fluid and allowed to stand in a deposition area, wherein the water soluble polymer is added to the material during transfer to the deposition area.

11. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C), in which the material is selected from any of mineral tails or slimes from phosphate or diamond processing, gold slimes, tails from zinc, lead, copper, silver, uranium, nickel or iron ore processing.

12. A process according to claim 11 in which the water-soluble polymer is anionic and in which the polymer is formed from monomer(s) selected from the group consisting of (meth) acrylic acid, allyl sulphonic and 2-acrylamido-2methylpropane sulphonic acid as the free acid or salts thereof, optionally in combination with non-ionic comonomers, selected from the group consisting of (meth)acrylamide, hydroxyl alkyl esters of (meth) acrylic acid and N-vinyl pyrrolidone, and wherein the effective rigidifying amount of the water-soluble polymer is in the order of 10 to 3000 grams per tonne of material solids.

13. A process according to claim 11 or claim 12 in which the material is pumped to an outlet, where it is allowed to flow over the surface of previously rigidified material, wherein the material is allowed to stand and rigidify to form a stack.

14. A process according to any one of claims 11 to 13 in which aqueous suspensions of fine and coarse particulate materials are combined for the purpose of co-disposal, wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogenous slurry.

15. A process according to any one of claims 11 to 14 in which the material is dewatered during rigidification, releasing liquor and in which the clarity of the liquor is improved by the addition of an aqueous solution of water-soluble polymer.

16. A process in which material comprising an aqueous liquid with dispersed particulate solids is transferred as a fluid to a deposition area, then allowed to stand and rigidify, and in which rigidification is improved whilst retaining the fluidity of the material during transfer, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C) in which the material is derived from the tailings from a mineral sands process and in which the dispersed particulate solids have a bimodal distribution of particle sizes comprising a fine fraction and a coarse fraction and following treatment with an effective amount of aqueous solution of a water soluble polymer, on standing, rigidifies without significant segregation of the coarse and fine fractions of particulate solids.

17. A process according to claim 16 in which the water soluble polymer is anionic and in which the polymer is formed from monomer(s) selected from the group consisting of (meth)acrylic acid, allyl sulphonic acid and 2-acrylamido-2methyl propane sulphonic acid as the free acids or salts thereof, optionally in combination with non-ionic co-monomers, selected from the group consisting of (meth)acrylamide, hydroxy alkyl esters of (meth)acrylic acid and N-vinyl pyrrolidone, and wherein the effective rigidifying amount of the water-soluble polymer is in the order of 10 to 3000 grams per tonne of material solids.

18. A process according to claim 16 or claim 17 in which the material is pumped to an outlet, where it is allowed to flow over the surface of previously rigidified material, wherein the material is allowed to stand and rigidify to form a stack.

19. A process according to any one of claims 16 to 18 in which aqueous suspensions of fine and coarse particulate materials are combined for the purposes of co-disposal, wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogeneous slurry.

20. A process according to any one of claims 16 to 19 in which the material is dewatered during rigidification, releasing liquor and in which the clarity of the liquor is improved by the addition of an aqueous solution of water-soluble polymer.

21. A process of improving rigidification of a material whilst retaining the fluidity of the material during transfer, in which the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area, then allowed to stand and rigidify, by combining with the material during transfer an effective rigidifying amount of an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1 M NaCl at 25 °C) in which the material comprises red mud.

22. A process according to claim 21 in which the water-soluble polymer is anionic and in which the polymer is formed from monomer(s) selected from the group consisting of (meth) acrylic acid, allyl sulphonic and 2-acrylamido-2-methyl propane sulphonic acid as the free acid or salts thereof, optionally in combination with non-ionic comonomers, selected from the group consisting of (meth) acrylamide, hydroxyl alkyl esters of (meth) acrylic acid and N-vinyl pyrrolidone, and wherein the effective rigidifying amount of the water-soluble polymer is in the order of 10 to 3000 grams per tonne of material solids.

23. A process according to claim 21 or claim 22 in which the material is pumped to an outlet, where it is allowed to flow over the surface of previously rigidified material, wherein the material is allowed to stand and rigidify to form a stack.

24. A process according to any one of claims 21 to 23 in which aqueous suspensions of fine and coarse particulate materials are combined for the purpose of co-disposal, wherein the effective rigidifying amount of the water-soluble polymer solution is added during or after the mixing of the different waste streams into a homogenous slurry.

25. A process according to any one of claims 21 to 24 in which the material is dewatered during rigidification, releasing liquor and in which the clarity of the liquor is improved by the addition of an aqueous solution of water-soluble polymer.