SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited
[2016] APO 72

Patent Application: 2013204568

Title:Treatment of Aqueous Suspensions

Patent Applicant:  Ciba Specialty Chemicals Water Treatments Limited
Opponent:  SNF (Australia) Pty Ltd
Delegate:  Dr S.D. Barker
Decision Date:  18 October 2016
Hearing Date:  3 August 2016, in Canberra
Catchwords:  PATENTS – opposition to the grant of a patent – opposition restricted to the ground of inventive step – ground is not successful in relation to claim 1 – ground conceded in relation to claims 2 and 3 – opposition succeeds

Representation: Counsel for the applicant: Mr D Shavin QC with Mr P Creighton‑Selvay
Solicitor for the applicant: Gilbert + Tobin Lawyers
Counsel for the opponent: Mr B Caine QC with Mr B Fitzpatrick
Solicitor for the opponent: K&L Gates

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013204568

Title:Treatment of Aqueous Suspensions

Patent Applicant: Ciba Specialty Chemicals Water Treatments Limited
Date of Decision: 18 October 2016
DECISION
The opposition is successful.
Claim 1 has not been shown to lack inventive step. Claims 2 and 3 lack inventive step. The claims appended to claims 2 and 3 also lack inventive step.
I allow the applicant two months from the date of this decision to propose amendments to the specification.
I make no award of costs.
REASONS FOR DECISION

Patent application number 2013204568 (the present application) was filed on 12 April 2013 as a divisional application under section 79B of the Patents Act 1990 (the Act). The applicant is Ciba Specialty Chemicals Water Treatments Limited (Ciba). There are several generations of parents that run back to application 2004203785 (the original application). The priority date of the original application is 7 May 2003.
The present application was examined and accepted by the Commissioner, and subsequently opposed under section 59 of the Act by SNF (Australia) Pty Ltd (SNF). A hearing was held on 3 August 2016 in Canberra to decide the opposition. Ciba was represented by Mr D Shavin QC with Mr P Creighton-Selvay. SNF was represented by Mr B Caine QC with Mr B Fitzpatrick.
The patent family
The original application was also the subject of an opposition by SNF. A decision in that opposition issued on 16 February 2016[1] (the earlier decision). The earlier decision has been appealed to the Federal Court, but the appeal has not yet been decided.[2]
[1] SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8.
[2] SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited VID 211/2016.
The extensive family relating to the present application is set out in full in the earlier decision.[3] The history of litigation involving members of that family is also set out in the earlier decision.[4] The relevant update to that information is that the Full Court of the Federal Court has recently refused SNF leave to appeal in its quest to have the matters before the Federal Court re-opened.[5]
[3] [2016] APO 8 at [14] to [24].
[4] [2016] APO 8 at [25] to [28].
[5] SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd [2016] FCAFC 88.
In the earlier decision I concluded that a decision of the Federal Court does not create an estoppel (either issue estoppel or Anshun estoppel) in proceedings before the Commissioner, but that findings of fact made in an earlier Federal Court decision can be taken into account and weighed along with material that is in evidence.[6] I also recently concluded that an earlier decision by a delegate of the Commissioner should be treated in the same way.[7] The parties have not suggested that I should depart from that approach in the present matter.
[6] [2016] APO 8 at [52].
[7] ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2016] APO 27 at [6].
In the earlier decision I found that the opposition succeeded on the ground of lack of inventive step in relation to certain claims. The present opposition is restricted to that ground, and the particulars that have been argued are restricted to the single citation that was successful in the earlier decision. My decision in relation to the original application relied heavily on an earlier decision in the Federal Court by Kenny J[8] (the Federal Court decision), but the issue of inventive step was considered ab initio since the Federal Court decision related to innovation patents.
[8] SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2011] FCA 452; 92 IPR 46.
In light of these matters, the present opposition will be heavily influenced by the earlier decision and the Federal Court decision. A critical consideration is the extent to which the findings in the earlier decision (which reflected findings in the Federal Court decision) should be reconsidered in the light of new evidence, and the relevance of those findings to the claims of the present application.
The opposition
The statement of grounds and particulars identified multiple grounds of opposition, but ultimately SNF relied only on the ground of lack of inventive step in the light of a single citation. At the hearing Ciba conceded, for the purposes of the opposition, that claims 2 and 3 lacked inventive step (the concession extends to the claims that are appended to these claims). This concession is based on the findings made in the earlier decision. I accept this concession. As a consequence the hearing was directed to whether claim 1 also lacked inventive step.
The parties relied upon a large amount of evidence by multiple declarants. Some of that evidence had been served in other oppositions, and is also included in the opposition by virtue of directions given during the opposition. The totality of the evidence available in the present opposition is laid out in ANNEX A at the end of this decision. Only a small part of this evidence is relevant to the proceedings, and I will refer to the relevant parts where appropriate.
The onus of proof and the standard of proof in the present opposition is the same as that in the earlier decision because the request for examination of the present opposition was filed on 12 April 2013.[9] Consequently the onus of proof in this opposition rests with SNF, who must demonstrate that it is clear that a valid patent cannot be granted.[10]
[9] As a consequence of section 55(4) of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
[10] F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at [67]; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426 [18].
The specification
The specification relates to processing of waste mineral slurries. The specification ends with 20 Figures and 35 claims. Claims 1, 2 and 3 are the independent claims.
The body of the description appears to be identical to that of the original application with the exception that:
· Figures that were embedded in the body of the original application have been removed and placed in a formal set of Figures at the end of the specification; and
· consistory statements consistent with the form of the independent claims have been added to the description.
The examples of the invention are the same as those appearing in the original application.
What is the invention as described
The principles of construction of specifications are set out in the earlier decision,[11] and do not need to be repeated here. The technical background of the invention, the nature of the person skilled in the art, and the invention as described in the specification are as stated in the earlier decision.[12]
[11] [2016] APO 8 at [70].
[12] [2016] APO 8 at [55] – [68], [71] – [96].
The essence of the invention lies in the use of an aqueous solution of a water-soluble polymer such that the material is able to be pumped to a disposal point, but will rigidify after discharge:
"The addition of the aqueous solution of water-soluble polymer to the material 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 to the material does not cause instant rigidification or substantially any settling of the solids prior to standing."[13]
[13] AU 2013204568 at page 7a.
Construction of the claims
The principles of construction of claims are set out in the earlier decision,[14] and do not need to be repeated here. What is important is to understand the differences between the claims of the present application and those of the original application. I have set out claim 1 of each application in the table below, and have underlined the key passages that do not appear in the claim of the original application (I have introduced line spacings that do not appear in the claims for the purpose of making it easier to understand the differences between the claims).
[14] [2016] APO 8 at [97] – [98].

The original application The present application

Claim 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).

Claim 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,

the process comprising:

combining aqueous suspensions of fine and coarse particulates for the purpose of co-disposal to form the material;

mixing of the aqueous suspensions into a homogeneous slurry; and

during or after mixing of the aqueous suspensions, 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).

It is readily apparent that claim 1 of the present application has the additional feature that there is a step of combining aqueous suspensions of fine and coarse particles for co-disposal. Consistent with what I found in the earlier decision (and what Kenny J found in the Federal Court decision), the features of claim 1 of the present application are:
(a) a process of improving rigidification of a material whilst retaining the fluidity of the material during transfer
(b) 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
(c) by combining aqueous suspensions of fine and coarse particulates and forming a homogenous slurry
(d) and combining with the suspension an effective rigidifying amount of
(e) an aqueous solution of a water-soluble polymer having an intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25º C).
I will briefly construe the important terms in the claim.
Improving rigidification
The meaning of the term "improving rigidification" as it appears in the claims was considered in the earlier decision.[15] My conclusion was that rigidification is the product of cross-linking, and not merely the addition of flocculant:
"Rigidification is a process that involves cross-linking (brought about by the flocculant) that increases the yield stress of the material."[16]
"the addition of flocculent would not improve rigidification unless and until the product is actually rigidified."[17]
and that improvement necessarily involves a comparison:
"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."[18]
[15] [2016] APO 8 at [110] – [126].
[16] [2016] APO 8 at [115].
[17] [2016] APO 8 at [118].
[18] [2016] APO 8 at [126].
The same construction applies to the present claims.
Combining and co-disposal
The significant new step included in claim 1 is
combining aqueous suspensions of fine and coarse particulates for the purpose of co-disposal to form the material
which tells the reader that there must be:
1) a combining of a stream of fine particulates and a stream of coarse particulates; and
2) co-disposal of the combined material.
Co-disposal, in the context of this claim, is "to form the material". The material is defined earlier in the claim as "the material comprises an aqueous liquid with dispersed particulate solids that is transferred as a fluid to a deposition area". In other words, the two streams are combined so that the mixture can be disposed as a single "material".
Fine and coarse particles
There is no dictionary of fine and coarse particulates, but there is the following information in the specification:
"The sizes of particles in a typical sample of the fine tailings are substantially all less than 25 microns, for instance about 95% by weight of material is particles less than 20 microns and about 75% is less than 10 microns. The coarse tailings are substantially greater than 100 microns, for instance about 85% is greater than 100 microns but generally less than 10,000 microns."[19]
[19] AU 2013204568 at page 9.
I think it is clear that the specification is attempting to define fine particulates as less than 25 microns, and coarse particulates as greater than 100 microns. The claims should be understood in this way.
Inventive step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. The relevant case law on inventive step that applies in this case was set out in the earlier decision.[20] At the hearing, SNF argued lack of inventive step in the light of the common general knowledge taken together with a single document: WO 01/92167 (Gallagher). In the earlier decision I found that various claims lacked inventive step in the light of the Gallagher patent.[21]
[20] [2016] APO 8 at [226] – [229].
[21] [2016] APO 8 at [379].
The problem
It was known in the art that:
"As water resources became either scarcer or society deemed it was no longer acceptable to waste water or contaminate land and water bodies, miners were forced to contain the tails in impoundments and recover water from the process to reduce the amount of water used in processing minerals. Therefore, from the early 1970s increasing environmental regulations have accelerated the restrictions on places from which mine operators can acquire water and how they can dispose of the tails."[22]
[22] Schroeter 1 at [24].
Consequently, the aim in the art was:
"Achieving 'improved rigidification' was the result which People in the Field at the Priority Date were commonly seeking to achieve when faced with requirement [sic] of minimizing the storage area required for the disposal of tailings and maximizing the water recovery from those tailings."[23]
[23] Schroeter 2 at [157].
I think it is generally accepted between the parties that there was a need in the art to reduce the area devoted to tailings disposal and increase the reuse of water on site. This same issue is apparent in the present application:
"However, despite the improvements brought about by WO-A-0192167 [the Gallagher patent], 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."[24]
[24] AU 2013204568 at page 6.
I do not think the Gallagher patent should be seen as the starting point for the present invention. Rather, I think the reference to the Gallagher patent is intended to show that the issue of mining waste treatment is not yet fully explored. Particularly, the treatment of waste from mining operations outside of the Bayer alumina process needs to be addressed. It is reasonable to conclude that the present application seeks to produce a rigidified mining waste product which allows clear water to be quickly released. I do not believe it is necessary that the process is in some way superior to that in the Gallagher patent.
The common general knowledge
Common general knowledge is the background knowledge and experience available to all those working in the relevant art:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."[25]
[25] Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at 292 [115].
In the earlier decision I concluded that a range of matters were common general knowledge. Those matters are:[26]
[26] [2016] APO 8 at [237] – [255].
·the use of water soluble polymers as flocculants to dewater mining waste slurries;
·the polymer could be added as a powder, emulsion or aqueous solution;
·the activation times of different physical forms of flocculant;
·the use of thickeners;
·the flow properties of a slurry is determined by the mineralogy, water content, applied sheer, and polymer dose;
·mining tailings could be disposed of by pumping to a disposal area where they are allowed to stand;
·addition of polymer prior to, or during, pumping allowed the slurry to thicken and dewater more effectively;
·the higher the flocculant dose the greater the flocculation;
·the above matters were known in the context of enhancing thickener technology or for improving conventional settling or sedimentation techniques; and
·secondary flocculation was part of the common general knowledge, but it was not common general knowledge to use secondary flocculant in solution.
I found that improved rigidification was a result that people were seeking to achieve, but the desire for improved rigidification had not itself part of the common general knowledge.[27] Also, it had not been shown that the Gallagher patent was common general knowledge.[28]
[27] [2016] APO 8 at [253].
[28] [2016] APO 8 at [255].
The disclosure of the Gallagher patent
The content of the Gallagher patent is a method of treating waste material, particularly waste from the Bayer alumina process. The method is summarised on page 3 of the patent:
"A process according to the present invention provides 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 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 3 dl/g."[29]
[29] WO 01/92167 at page 3.

The discharged material is described as rigidified, with "aqueous liquid being released from the material on standing".[30] Also,
"It is surprising that the process according to the invention forms a product which rigidifies far better than alternative treatments, for instance the use of water swellable, water swellable [sic] polymers or pre-formed solutions of water soluble polymers … The process of the invention more effectively minimises the area taken up by a stack of the material of given volume."[31]
[30] WO 01/92167 at page 3.
[31] WO 01/92167 at page 14 – 15.
The major difference between the method in the Gallagher patent and the present invention relates to the use of solid polymer in Gallagher and a solution of polymer in the present application. The key issue is whether it would have been a matter of routine to alter the process in the Gallagher patent to add the polymer in the form of a solution rather than a solid.
In the earlier decision I concluded that this would have been a matter of routine:
"I conclude that a person skilled in the art would not have been dissuaded by the comment in the Gallagher patent, and would have investigated the use of an aqueous solution of flocculant as a matter of routine. It would have been a matter of routine to select a flocculant having an intrinsic viscosity of at least 5 dl/g."[32]
"I accept that there are indicators of commercial success that must be balanced against the matter of routine considerations. However, the Gallagher patent is such a strong citation that it is not offset by the commercial success. I conclude that SNF have established that the invention defined by claim 1 lacks inventive step in the light of the Gallagher patent."[33]
[32] [2016] APO 8 at [319].
[33] [2016] APO 8 at [323].
These are matters that were considered in the earlier decision, and are clearly applicable to the present opposition. For the purposes of the present opposition the parties also considered whether the Gallagher patent discloses disposal of tailings containing a mixture of coarse and fine tails.
The Gallagher patent states:
"The process of the invention is suitable for treating material wherein the dispersed particulate solids have very small particle sizes, for instance, substantially all having sizes less than 100 microns … It is of particular value where at least 90% of the particles have sizes less than 20 microns".[34]
[34] WO 01/92167 at page 4.
This suggests a preference for disposal of tailings that are substantially composed of fine particles. The type of materials that can be disposed are listed as:
"other mineral tailings or slimes, including phosphate, diamond, gold slimes, tails from copper/silver/uranium ore processing, coal or iron ore, the major use of the present process is in the treatment of the final thickener or wash stage of a Bayer process."[35]
[35] WO 01/92167 at page 4.
These materials can include coarse particles, but the emphasis is on the red mud from the Bayer process. The particles in red mud are fine:
"The sizes of particles in a typical red mud sample are substantially all less than 25 microns".[36]
[36] WO 01/92167 at page 5.
Both parties drew my attention to the following sentence in the Gallagher patent:
"We have found better results are obtained when the material is relatively concentrated and homogenous."[37]
[37] WO 01/92167 at page 5.
Ciba argued that "homogenous" meant that the best results are achieved using particles of uniform size, i.e. only fine particles. SNF argued that best results were achieved when particles (regardless of size and the distribution of sizes) are formed into a uniform slurry of any sized particles.
I consider that this sentence is more likely referring to a uniform slurry. This is because the sentence refers the material as both "concentrated and homogenous". The sentence links the two concepts. Concentrated is clearly a reference to the ratio of solid material to liquid. When "homogenous" is considered in the context of the two components of the solid material and liquid, it is natural that the reference is to the distribution of the solid material within the liquid. That is, a uniform distribution of the solid (of whatever particle sizes) within the liquid. I consider that overall the Gallagher patent discloses the treatment of materials that can include a mixture of both fine and coarse particles, but the emphasis is on the red mud from the Bayer process, which is composed of fine particles.
Matters of routine
The important features of claim 1 that are not disclosed in the Gallagher patent are those indicated as (c) and (e) previously. Feature (e) was considered in detail in the earlier decision, and I will briefly comment on it here. Feature (c) is the key new feature, and I will consider it in detail.
Use of an aqueous solution of flocculant :In the earlier decision I said:
"I conclude that there were a number of changes that a person skilled in the art could make to the flocculant as a matter of routine, such as the type of flocculant, the physical form of the flocculant and the dosing point of the flocculant."[38]
[38] [2016] APO 8 at [262].
I have not been presented with any new evidence that would lead me to a different conclusion.
Viscosity of the polymer: In the earlier decision I found that it would have been a matter of routine to select a flocculant having an intrinsic viscosity of at least 5 dl/g:
"I will proceed on the understanding that it would be a matter of routine to select a flocculant having an intrinsic viscosity of at least 5 dl/g."[39]
[39] [2016] APO 8 at [275].
I have not been presented with any new evidence that would lead me to a different conclusion.
Combining fine and coarse particulates, and co-disposal: The issues of combining and co-disposal are closely related, and the evidence in relation to them is intertwined. Consequently I will address both together.
In the earlier decision I considered whether it would have been a matter of routine to undertake co-disposal of fine and coarse particles. After considering all of the evidence available in that opposition I concluded:
"I have not been able to locate anything in the evidence that shows that it would have been a matter of routine to undertake co-disposal (SNF's submissions do not refer to any specific part of the evidence, and my own analysis has not brought anything to light)."[40]
[40] [2016] APO 8 at [335].
I have more evidence available to me in this opposition. It was known that mineral tailings could be a mixture of both fine and coarse particulates.[41] It was also known, for instance, that sand could be added to fine tailings.[42] Further, it was known to combine streams of fine and coarse particles.[43]
[41] Farrow 1 at [42].
[42] US 4,347,140 (referred to as Condolios in the earlier decision) at column 3, Boger 7 at [43(f)].
[43] Schroeter 5 at [24].
Professor Boger says that it was also known that a slurry of both fine and coarse particulates could be flocculated:
"it was well known at the priority date that a slurry containing coarse and fine particles could be flocculated and deposited in a deposition area. This applied irrespective of whether the coarse and fine particles had been initially separated and then combined, or had never been separated."[44]
[44] Boger 6 at [5] in relation to claim 1 of 568.
This is consistent with the evidence of Mr Schroeter that it was known to treat material that was a mixture of fine and coarse materials.[45] The purpose of combining fine and coarse particles (in the context of the Condolios patent) is to produce a material that had "a better structure for water drainage and subsequent rehabilitation",[46] or "a better structure which will facilitate drainage and dewatering".[47] Professor Boger says that the desirability of co-disposal was part of the common general knowledge:
"I say that the ability to and the desirability of the co-disposal of tailings which comprised a mixture of coarse and fine particles (with or without a bimodal distribution of particle sizes), as those terms are defined in the 282 Patent was part of the common general knowledge of a Person in the Field prior to the Priority Date."[48]
[45] Schroeter 5 at [24], Schroeter 7 at [25].
[46] Schroeter 2 at [28].
[47] Boger 7 at [43(d)].
[48] Boger 7 at [44].
Dr Farrow adds a qualification that this was only in limited circumstances:
"I agree that co-immobilisation of coarse and fines was a desired outcome for tailings disposal at the priority date. However, at this time it was only achieved using paste thickener technology, filters or centrifuges which if operated correctly could produce a homogenous material on discharge."[49]
[49] Farrow 3 at [146]
Professor Boger disagrees:
"I believe the many examples of prior art relied on by SNF in this opposition, some of which I have referred to above, make clear that 'co-immobilisation' or homogenous mixing of coarse and fine particles in treated tailings on or shortly after deposition was being achieved by many people in the Field prior to the Priority Date using secondary dosing of flocculants in the output pipe … if as Dr Farrow asserts it was common general knowledge of People in the Field prior to the Priority Date that coarse and fine tailings could be flocculated to produce a homogenous material on discharge using paste thickeners, filters or centrifuges, it would have been obvious for a Person in the Field to 'co-immobilise' or produce an homogenous mixing of coarse and fine particles in treated tailings on or shortly after deposition using secondary dosing of flocculants in the outlet pipe".[50]
[50] Boger 7 at [45].
I am satisfied that the evidence shows that it was known to combine fine and coarse particles. However, the evidence does not show that it would have been a matter of routine to do this in the context of the problem.
I am also satisfied that it was common general knowledge to co-immobilise a slurry containing a mixture of particles when using paste thickeners, filters or centrifuges, and it was known (but not commonly known) to co‑immobilise in other situations. However, the critical question is whether it would have been a matter of routine to co-immobilise by secondary flocculation. The evidence on this point is brief. Professor Boger says it would have been obvious to co-immobilise (see above). This brief comment, in the context of a verbal sparring with Dr Farrow, does not satisfy me that it would have been a matter of routine to co-immobilise.
Conclusion in relation to claim 1
I found that it has not been shown that it would have been a matter of routine to combine fine and coarse particulates and attempt co‑disposal of fine and coarse particulates using secondary flocculation. It follows that it has not been shown that claim 1 lacks inventive step.
Conclusion
It has not been shown that claim 1 lacks inventive step. However, it is conceded that claims 2 and 3 (and the appended claims[51]) lack inventive step. It follows that the opposition succeeds.
[51] Including even the omnibus claim, claim 35, based on what I said in [109] of the earlier decision.
The deficiency can be overcome by amendment. I will allow the applicant an opportunity to propose amendments.
Costs
The parties submitted that costs should follow the event. I have found that the opposition succeeds, so costs should follow that event. However, in the present case SNF were required by regulation 5.20(4) to file a written summary of submissions by 20 July 2016, and failed to comply with this requirement. Pursuant to regulation 5.20(6), this is a matter that I may consider in deciding the award of costs. In the absence of a reasonable justification for their action, I will reduce the award of costs and make no award.
Dr S.D. Barker
Delegate of the Commissioner of Patents
ANNEX A: SUMMARY OF THE EVIDENCE
EVIDENCE FILED IN THE OPPOSITION TO APPLICATION 2004203785 (THE ORIGINAL APPLICATION)
Evidence in support
1. Affidavit of Russell Henry Schroeter affirmed 3 September 2013, including annexures RHS-1 to RHS-8 (Schroeter 1).
2. Affidavit of Russell Henry Schroeter affirmed 12 March 2014, including annexures RHS-9 to RHS-15 (Schroeter 2).
3. Affidavit of David Vernon Boger affirmed 6 September 2013, including annexures DVB-1 and DVB-2 (Boger 1).
4. Affidavit of David Vernon Boger affirmed 12 March 2014, including annexures DVB-3 to DVB-12 (Boger 2).
5. Affidavit of Brian Banister affirmed 23 January 2014, including annexures BB-1 and BB-2 (Banister).
6. Affidavit of Janine Ann Herzig affirmed 28 January 2014, including annexures JAH-1 to JAH-5 (Herzig 1).
7. Affidavit of Jeff Brown affirmed 19 February 2014 (Brown).
8. Affidavit of Ronald John Coleman affirmed 21 February 2014, including annexures RJC-1 to RJC-6 (Coleman 1).
9. Affidavit of Peter James Woolley affirmed 26 February 2014, including annexures PJW-1 to PJW-7 (Woolley 1).
10. Affidavit of Michael Schmidt affirmed 3 March 2014, including annexures MS-1 to MS-3 (Schmidt 1).
11. Affidavit of Jim Cigulev affirmed 5 March 2014, including annexures JC-1 to JC-9 (Cigulev 1).
12. Affidavit of Daniel William Bembrick sworn 13 March 2014, including annexures DWB-1 to DWB-9 (Bembrick 1).
13. Affidavit of Nicholas Clarke affirmed 13 March 2014, including annexures NC-1 and NC-2 (Clarke 1).
14. Affidavit of Anthony Brooke Watson sworn 14 March 2014, including annexures ABW-1 to ABW-7; (Annexures ABW-5, ABW-6 and ABW-7 being confidential) (Watson 1).
Evidence in answer
15. Affidavit of John Gerard Bellwood sworn 22 September 2014, including annexures JGB-1 to JGB-2 (annexure JGB-2 being confidential) (Bellwood 1).
16. Affidavit of Angela Beveridge affirmed 23 September 2014, including confidential annexure AB-1 (Beveridge).
17. Affidavit of Martin Frederick Edgar sworn 23 September 2014, including confidential annexure MFE-1 (Edgar 1).
18. Affidavit of John Benson Farrow sworn 23 September 2014, including annexures JBF-1 to JBF-4 (Farrow 1).
19. Affidavit of John Dominic Lee sworn 23 September 2014, including annexures JDL-1 to JDL-3 (JDL-2 being confidential) (Lee 1).
20. Affidavit of Stephen Ross Scammell sworn 24 September 2014, including annexure SRS-1 (Scammell).
Evidence in reply
21. Affidavit of Jim Cigulev affirmed 13 April 2015 (Cigulev 2).
22. Affidavit of Anthony Brooke Watson sworn 13 April 2015, including annexure ABW-18 (Watson 2).
23. Affidavit of David Vernon Boger affirmed 13 April 2015, including annexures DVB-13 to DVB-16 (Annexure DVB-15 being confidential) (Boger 3).
24. Affidavit of Peter James Woolley affirmed 14 April 2015 (Woolley 2).
25. Affidavit of Michael Schmidt affirmed 15 April 2015 (Schmidt 2).
26. Affidavit of Ronald John Coleman affirmed 16 April 2015 (Coleman 2).
27. Affidavit of Russell Henry Schroeter affirmed 17 April 2015, including annexures RHS-17 to RHS-22 (Annexures RHS-19, RHS-20 and RHS-22 being confidential) (Schroeter 3).
28. Affidavit of Janine Ann Herzig affirmed 20 April 2015, including annexure JAH-6 (Herzig 2).
29. Affidavit of Nicholas Clarke affirmed 20 April 2015, including annexure NC-3 (Clarke 2).
30. Affidavit of Daniel William Bembrick sworn 18 May 2015, including confidential annexure DWB-10 (Bembrick 2).
Further evidence
31. Affidavit of John Gerard Bellwood sworn 14 May 2015, including annexures JGB-3 to JGB-7 (Bellwood 2).
32. Affidavit of John Benson Farrow sworn 19 May 2015 (Farrow 2).
33. Affidavit of Russell Henry Schroeter affirmed 11 June 2015 (Schroeter 4).
34. Affidavit of David Vernon Boger affirmed 26 June 2015, including annexures DVB-17 to DVB-19 (Annexure DVB-18 being confidential) (Boger 4).
35. Affidavit of Daniel William Bembrick sworn 30 June 2015 (Bembrick 3).
36. Affidavit of Martin Frederick Edgar sworn 8 October 2015, including confidential annexure MFE-2 (Edgar 2).
EVIDENCE FILED IN THE OPPOSITION TO APPLICATION 2012216282
Evidence in support
37. Affidavit of David Vernon Boger affirmed on 31 August 2015 (Boger 5).
38. Affidavit of Russell Henry Schroeter affirmed on 3 September 2015 (Schroeter 5).
39. Affidavit of Anthony Brooke Watson sworn on 4 September 2015 (Watson 3).
Evidence in answer
40. Affidavit of John Gerard Bellwood sworn on 5 December 2015 (Bellwood 3).
41. Affidavit of John Benson Farrow sworn on 8 December 2015 (Farrow 3).
Evidence in reply
42. Affidavit of Daniel William Bembrick sworn on 4 February 2016 (Bembrick 4).
43. Affidavit of Russell Henry Schroeter affirmed 4 March 2016 (Schroeter 7).
44. Affidavit of David Vernon Boger affirmed on 4 March 2016 (Boger 7).
45. Affidavit of Anthony Watson affirmed on 7 March 2016 (Watson 4).
EVIDENCE FILED IN THE OPPOSITION TO APPLICATION 2013204568 (THE PRESENT APPLICATION)
Evidence in support
46. Affidavit of David Vernon Boger affirmed on 10 September 2015 (Boger 6).
47. Affidavit of Russell Henry Schroeter affirmed on 15 October 2015 (Schroeter 6).
Evidence in answer
48. Affidavit of John Benson Farrow and annexure JBF-1 sworn on 22 January 2016 (Farrow 4).

[2016] APO 72

17 October 2016