South Australian Shark Cartilage Pty Ltd v Rushby Pty Ltd
[1999] APO 65
•13 October 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 680385 in the name of SOUTH AUSTRALIAN SHARK CARTILAGE PTY LTD
Title: Method of Cleaning Cartilage from Marine Animals
Action: Opposition by RUSHBY PTY LTD under section 59 of the Patents Act 1990
Decision: Issued .
Abstract
The grounds of opposition of Lack of Novelty and Lack of Inventive Step found not to have been established. The ground of opposition of Section 40 found to have been established
In the matter of Section 40, Claim 10 found to be invalid on the grounds that it lacks fair basis
And does not define the invention described.
Applicant granted sixty days from the date of this decision to file suitable amendments.
No award of costs made. Each party to bear its own costs in this matter.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 680385 by SOUTH AUSTRALIAN SHARK CARTILAGE PTY LTD and an opposition under section 59 of the Patents act 1990 by RUSHBY PTY LTD.
BACKGROUND
Application No. 45583/96 was filed by South Australian Shark Cartilage Pty Ltd on 19 February 1996 and was associated with Australian Provisional Patent application PN 1208, filed on 20 February 1995. Application No. 45583/96 was advertised accepted on 24 July 1997 under the number 680385.
Rushby Pty Ltd filed a notice of opposition on 24 October 1997. The service of evidence in support, evidence in answer and evidence in reply was completed on 13 January 1999.
The hearing was held in Adelaide on 8 June 1999. Ms Doreen Perrin, patent attorney of Collison & Co, Adelaide represented the applicant. Dr. Paul Wyk, patent attorney of A.P.T. Patent and Trade Mark Attorneys, Adelaide represented the opponent.
EVIDENCE
Evidence in support consists of declarations made by:
Donald Morrison, dated 23 January 1998 and exhibits DM-1 to 10. He states that he currently conducts an abalone farming business and that he has been involved in various marine and aquaculture pursuits for over thirty years.
Kevin Goody, dated 3 June 1998. He states that he is currently involved in an abalone farming business.
King Chang, dated 2 June 1998 and exhibits KC-1 to 5. He states that he is a director of Rushby Pty Ltd, the opponent in this matter.
Vasilios Retsas, dated 23 December 1997. He states that he is currently engaged in the fishing industry and has been engaged in the fishing or fish processing industry for all of his working life.
Mark Retsas, dated 29 December 1997 and exhibit MR-1. He states that he is currently engaged in the fishing industry and has been engaged in it for all of his working life.
George Mastrosavas, dated 23 December 1997. He states that he is currently a commercial fisherman and has been engaged in the fishing or fish processing industry for all of his working life.
Dr. Jim Lowry, dated 30 June 1998 and exhibits JL-1 to 3. He states that currently he is a Principal Research Scientist at the Australian Museum, Sydney. He states that from 1991 till the present he has carried out research on sea lice.
Dr. Niel Bruce, dated 30 June 1998 and exhibits NB-1 to 3. He states that from 1978 to 1997 he carried out research on sea lice in his capacity as a marine research scientist.
Peter Constantinopolous, dated 26 June1998 and exhibits PC-1 & 2. He states that he is a retired fisherman who had been involved in the fishing industry in Port Lincoln and Coffin Bay for 15 years prior to his retirement in 1997.
Evidence in answer consists of declarations made by:
Jeff Dale, dated 13 October 1998 and exhibits JD-1 & 2. He states that he is the Managing Director of South Australian Shark Cartilage Pty Ltd, and has held that position for two years since the inception of the company. He also indicates that during the period 1971 to 1993 he operated a business as a commercial fisherman.
Evidence in reply consists of declarations made by:
Donald Morrison, dated 4 January 1999.
Mark Retsas, dated 4 January 1999.
Stephen Hill, dated 6 January 1999. He states that he is currently employed as a skipper of fishing vessels, and has been employed in the commercial fishing industry for approximately 17 years.
At the hearing the applicant made a request under Regulation 5.10(4) of the Patents Regulations to serve further evidence. The evidence consisted of a statutory declaration by Mr. Jeff Dale dated 8 June1999. The opponent was given two weeks to file submissions in response and the same was filed on 22 June 1999. The opponent did not object to the request to file further evidence.
I shall allow the further evidence as well as the response of the opponent to that evidence.
THE SPECIFICATION
The specification indicates that the described invention relates to a method of cleaning shark cartilage. The description states:
"…the present invention relates to a method of cleaning shark cartilage to produce a cartilage of sufficient cleanliness to be suitable for use in medicinal products used in the treatment of disease in humans and other mammals."
A number of prior art defects have been identified, in particular:
"This process [referring to prior art techniques] is time consuming and typically results in a product in which portions of flesh remain attached to the cartilage. Moreover, the majority of cartilage is found in the head region of the animal, however this region is relatively complex and not normally processed for the cartilage because of the difficulties in cleaning flesh from these areas. Therefore there is considerable waste of material and larger quantities of shark are required to be collected to produce a given quantity of cartilage.
When the cartilage is separated it is subsequently freeze dried and powdered for use. Any flesh remaining attached to the cartilage interferes with this process so the demand for clean product is high."
The specification then states:
"The present invention seeks to address the above mentioned difficulties by a process which enables a shark cartilage to be cleaned to a state substantially free of unwanted flesh material in a natural manner, thereby avoiding wastage of valuable cartilage and also providing a hygienic method of cleaning."
A consistory statement of the invention then follows:
"...there is provided a method of cleaning a shark cartilage comprising the steps of:
· placing portions of shark carcass in a container, the container having a plurality of openings therein, the openings being sized to allow flow of water and sea lice there through;
· placing the container in a marine environment and allowing the contents of the container to be subject to attack by marine organisms, the marine organisms entering the container through the plurality of openings;
· leaving the container in the marine environment for sufficient time for substantially all of the flesh on the carcass to be consumed thereby exposing the cartilage;
· removing the container from the marine environment and removing the cleaned cartilage from the container; and
· subsequently storing the cleaned cartilage on ice and drying the cleaned cartilage to produce a dried shark cartilage product.
Further detail of various aspects of the invention is then provided. At page 4 lines 28-31 it states:
"Once the cartilage has been removed from the containers it can be processed in accordance with existing techniques. It has been found that the technique of the present invention successfully removes substantially all of the flesh from the cartilage therefore producing a finer quality powder cartilage product.
The specification concludes with fourteen claims as set out below:
1. A method of producing a cleaned shark cartilage product comprising the steps of:
· placing portions of shark carcass in a container, the container having a plurality of openings therein, the openings being sized to allow flow of water and sea lice there through;
· placing the container in a marine environment and allowing the contents of the container to be subject to attack by marine organisms, the marine organisms entering the container through the plurality of openings;
· leaving the container in the marine environment for sufficient time for substantially all of the flesh on the carcass to be consumed thereby exposing the cartilage;
· removing the container from the marine environment and removing the cleaned cartilage from the container; and
· subsequently storing the cleaned cartilage on ice and drying the cleaned cartilage to produce a dried shark cartilage product.
2. A method of producing a cleaned shark cartilage product according to Claim 1, wherein the container is a mesh type container.
3. A method of producing a cleaned shark cartilage product according to Claim 1 or Claim 2, wherein the container is a string mesh type container formed of metal or plastics material, the container being sufficiently rugged to withstand interference or attack by undesirable marine organisms such as crabs.
4. A method of producing a cleaned shark cartilage product according to any one of the preceding claims, in which the marine environment is a man made environment having characteristics reproducing the habitat of the sea lice.
5. A method of producing a cleaned shark cartilage product according to any one of the preceding claims, wherein the plurality of openings in the container are sized so as to allow the sea lice through from the marine environment into the container and out again, but not so large as to allow portions of the carcass or the cartilage to escape therethrough.
6. A method of producing a cleaned shark cartilage product according to any one of the preceding claims, wherein the marine environment is chosen so as to be plentiful in sea weed.
7. A method of producing a cleaned shark cartilage product according to Claim 6, in which the marine environment be selected so as to avoid environments with a sandy bottom.
8. A method of producing a cleaned shark cartilage product according to Claim 6 or Claim 7, in which a correct position for the container in a channel is selected by reference to the state of the tide, and therefore the phase of the moon.
9. A method of producing a cleaned shark cartilage product according to any one of the preceding claims, in which the step of leaving the container of shark cartilages in the marine environment is continued for up to 72 hours.
10. A method of producing a cleaned shark cartilage product which is powdered following the drying stage.
11. A method of producing a cleaned shark cartilage product according to any one of the preceding claims in which a plurality of containers are attached on one or more lines which are extended into the marine environment from a floating vessel.
12. A method of producing a cleaned shark cartilage product according to Claim 11 wherein each container is capable of carrying up to 10 kilograms of carcass material.
13. A method of producing a cleaned shark cartilage product according to Claim 11 in which each container is attached to a line holding between 50 and 70 containers per mile of line, the containers being spaced approximately 60 feet apart, and the lines being maintained on the sea bed by appropriate weighting.
14. A method of producing a cleaned shark cartilage product according to any one of the preceding claims including the additional step of ensuring that substantially all sea lice have been washed from the container prior to the step of removing the container from the marine environment.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars, filed 23 January 1998, contains the following grounds of opposition:
1. That the invention so far as claimed in at least claim 1, was published in Australia before the priority date of the relevant claim.
2. That the invention so far as claimed in at least claim 1 was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of the relevant claim.
3. That the invention so far as claimed in at least claim 1, was, before the priority date of the relevant claim, otherwise not novel in Australia.
4. That the invention so far as claimed in at least claim 1 is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies.
5. That the complete specification does not comply with the requirements of Section 40.
6. That the nominated person is not entitled to a grant of a patent for the invention.
The opponent did not pursue grounds 3, 4 and 6 at the hearing hence I shall not make any finding in respect of those grounds.
SUBMISSIONS
I shall refer to submissions from both parties wherever necessary in my decision.
DECISION
Section 40/Fair Basis
The first submission of the opponent under this ground related to fair basis of the claims:
"If it is held that features 9 (subsequently storing the cleaned cartilage on ice) and 10 (drying the cleaned cartilage to produce a dried shark cartilage product) (of claim 1) are not taken as short hand reference to the cleaned cartilage being "processed in accordance with existing techniques" as page 4 lines 28 and 29 would have us understand then there are, we submit irretrievable deficiencies in the specification."
We submit that the whole thrust of the specification is that the difference that makes this invention stand apart is the method by which the cartilage is cleaned.
If it is however found that an essential integer of claim 1 is a step involved in the method of processing, then the processing method is different than the prior art. The processing step is then different to what has gone before, by reason of a storage on ice step, in readiness for drying.
We submit if this is held then claim 1 is not fairly based on the specification.
…The corollary of this direction is then that claim 1 is not fairly based on the specification because, we are told that processing after removal of cartilage from the containers is in accordance with existing techniques. The introduction of the feature of a modified processing step is inconsistent with what we are told in the specification."
The applicant submitted that the "storage on ice" step had to do with "freshness" and commercial acceptability of the product and that the ice prevents the cartilage from degrading.
The issue arising from the above is whether the "storage on ice step" constituted part of the existing processing techniques required to produce a dried shark cartilage product. The specification at page 4,lines 8-9 states:
"When the cleaned cartilage is removed from the marine environment it is preferably then stored on ice."
The specification at page 4, lines 28-29 states:
"Once the cartilage has been removed from the containers it can be processed in accordance with existing techniques."
The opponent submitted that this statement clearly indicates that any steps applied to the cartilage following its removal from the containers, is part of the known processing techniques. However I note that the statement makes it clear that the cartilage can be processed (after removal from the containers) in accordance with existing techniques and not that any further steps carried out on the cartilage (immediately after its removal from the container) must necessarily be a processing step. The consistory statement at page 3 and the corresponding part of claim 1 states:
"-subsequently storing (emphasis added) the cleaned cartilage on ice and drying the cleaned cartilage to produce a dried shark cartilage product."
Given the applicant's submissions in this regard and the clear indication throughout the specification that it is a "storage step", I do not consider that the cartilage is undergoing a processing step when being placed on ice. The specification at page 2, lines 23-24 has disclosed one known process for processing cartilage. It states:
"When the cartilage is separated it is subsequently freeze dried and powdered for use."
Thus one can see that the drying step is part of the known processing steps of cleaned shark cartilage. Placing the cartilage on ice has not been set out as a step constituting processing of the cartilage.
Consequently I do not find that the specification teaches a processing method (subsequent to cleaning of the cartilage) different from the prior art. Thus claim 1 is also fairly based on the specification as neither claim 1 nor the specification (read as a whole) disclose an extra process step (subsequent to the cleaning of the cartilage) falling outside the processing methods of the prior art.
The opponent then raised the issue of sufficiency of the description:
"However, if the storage on ice is considered an essential integer of claim 1 then, the specification is bad for insufficiency. The specification does not have sufficient instruction to inform the skilled addressee how to perform the invention, particularly with regard to the modified processing method after cleaning has been effected."
Here the opponent refers to the modified processing method as including the step of storage of cleaned cartilage on ice. As I have stated above I do not consider that the step of storage on ice constitutes a part of the known methods of processing cleaned shark cartilage. Regarding sufficiency I shall refer to the finding of the court in Universal Oil Products Co v Monsanto Co, (1973) 46 ALJR 658 which states:
"The question of sufficiency is one of fact, and whether a specification is sufficient to disclose the method of carrying out the invention is a matter which can best be determined by receiving evidence from persons skilled in the art."
Also in Samuel Taylor v SA Brush Co, (1950-51) 83 CLR 617, the specification was found to be insufficient as the description of the device did not "provide, expressly or impliedly, to a skilled workman any information as to the method of carrying out the invention."
The opponent's declarants include fishermen as well as those individuals who collected cleaned shark cartilage and processed it for obtaining powdered shark cartilage. None of the fishermen make any reference to storage of cleaned cartilage on ice or any difficulties they may have encountered in either understanding the specification or implementing the step of storing cleaned cartilage on ice. Mr Morrison who declares that he cleaned the shark cartilage using sea lice and further processed it to obtain powdered shark cartilage does not refer to storage of cleaned cartilage on ice. He does not indicate if he has read the opposed specification and if any difficulty was encountered in understanding it and whether he would be unable to put it into practice. The most relevant declaration is that of Mr Constantinopolous. He states:
"We did not store the cleaned cartilage on ice as it was promptly delivered to the MIA factory where it was placed in deep freeze. MIA had set up a factory that was dedicated to the processing of the cleaned shark cartilage that I provided them with. I understand that the cleaned cartilage was kept in deep freeze and as it was needed it was washed, dried and powdered."
Here Mr. Constantinopolous is referring to events that occurred after the earliest priority date of the opposed invention. There is no indication from Mr Constantinopolous' declaration that he had any difficulty with the opposed specification or that he was unable to put into practice the invention as described and claimed in the opposed specification.
Thus I have no evidence before me from the skilled workmen that they were unable to carry out the invention as described in the opposed specification. They have not indicated any deficiencies or defects in the specification that would prevent them from putting the invention into effect. Based on the evidence put before me I cannot conclude that the description of the opposed specification is lacking in sufficiency.
The opponent raised a further issue with regard to the storage on ice step as follows:
"Not only has the inventor not told us what benefit the storage on ice confers he does not even tell us any time frame over which the cleaned shark cartilage should be stored on ice, perhaps having kept the reason for the storage in the dark, the inventor could leave us with instructions that are still workable. Thus for example the beneficial effect may be exhibited if the storage of the cleaned cartilage was, say between 3 and 10 hours. How the storage on ice should be done is also not clear. For example, it is not clear as to whether contact with ice should be "dry" in the sense of whether any water that results of the ice becoming melted should be kept clear of contact with the cleaned cartilage. The skilled addressee is left utterly in the dark with regard to the feature 9 (subsequently storing the cleaned cartilage on ice) of claim 1."
None of the opponent's declarants have indicated that they sought to put the opposed invention into effect and that they had to confront the issues outlined above. I have no evidence before me to show what difficulties were encountered in practising the invention and whether the difficulties were or were not overcome. Furthermore if these difficulties were overcome did they require the exercise of any inventive faculty? In AMP v Utilux, (1971) 45 ALJR 123 at page 128, McTiernan J. pointed out that:
"Specifications very frequently contain mistakes; they also have omissions (my emphasis). But if a man skilled in the art can easily rectify the mistakes and readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If the cannot, the patent will be void for insufficiency."
I have no evidence before me to show that the man skilled in the art could not rectify the mistakes and supply the omissions (as set out by the opponent above) without the exercise of any inventive faculty. I cannot conclude that the description of the opposed application is insufficient.
The opponent then contended that the opposed specification did not provide a best method of performance:
"A further corollary if it is held that feature 9 is essential to claim 1 is that the best method of performing the invention has not been disclosed in relation to how to store the cleaned cartilage on ice.
It appears therefore that the specification describes no method of putting the invention into effect.
If the specification does not describe any method of putting the invention into effect, there is an objection that the specification does not describe the best method of performing the invention which is known to the applicant (Patent Office Examiners Manual 10.7.7.3)."
The opponent has once again raised the issue regarding storage of cleaned cartilage on ice. I have addressed this issue under sufficiency above where I have indicated that:
"I have no evidence before to show that the man skilled in the art could not rectify the mistakes and supply the omissions (as set out by the opponent above) without the exercise of any inventive faculty."
The applicant submitted that the best method of performance had been disclosed in the specification. A certain amount of trial and experiment was called for in certain steps of the process, such as for example:
a) determining the best location for the sea lice and
b) the time for which the shark carcass was immersed in the ocean to obtain a good clean product.
I have no clear indication from the opponent as to which steps of the process are not fully disclosed (or do not provide adequate instruction to carry out the process), as well as no evidence supporting such a contention. Such evidence for instance would show that the skilled addressee is unable to determine the steps necessary to carry out the invention or that work of an inventive nature would be required to carry out the process.
Consequently I cannot conclude that the applicant has not described a best method of performance of the invention.
The opponent also raised a number of other issues in the matter of section 40. They submitted that claim 10 was invalid, which was conceded by the applicant. Claim 10 states:
"A method of producing a cleaned shark cartilage product which is powdered following the drying stage."
Claim 10 is in no way linked to the method of cleaning shark cartilage as set out in the specification. Thus claim 10 lacks fair basis and does not define the invention described. Claim 10 in its present form discloses any method of cleaning shark cartilage including prior art methods. Hence Claim 10 in its present form is clearly invalid.
The opponent then raised an issue regarding the clarity of claim 1 that related to the extent of cleaning required for the shark cartilage. The opponent in this instance was referring to the feature of claim 1, which states:
"leaving the container in the marine environment for sufficient time for substantially all of the flesh on the carcass to be consumed thereby exposing the cartilage"
I have set out below the most relevant submissions made by the opponent on this feature:
"Thus it would seem to us that if very small amounts of "flesh" were still present the method of cleaning would still fall within the claim. The use of the present method resulting in the presence of non-cartilage non-flesh material would also fall within the claim. This is not at odds with the specification because on page 2 line 3 we are told that "Any flesh remaining attached to the cartilage interferes with this process…" when reference is made to the powdering for use. We are not told however that no flesh must remain, presumably the cleaner the better but perhaps a minor degree of contamination with "flesh" is still acceptable.
We are not told with any precision what degree of contamination is acceptable or how we could measure the end product to determine that the cartilage was of "sufficient cleanliness"".
I note that the description has made the following disclosures in this regard:
a) Page 1, lines 2 to 5; "…the present invention relates to a method of cleaning shark cartilage to produce a cartilage of sufficient cleanliness to be suitable for use in medicinal products used in the treatment of disease in humans and other mammals."
b) Page 2, lines 24-25; "Any flesh remaining attached to the cartilage interferes with this process so the demand for clean product is high."
The applicant submitted evidence that their product had a minimal degree of microbiological contamination (that is it was clean and comparable to any food product) and was found acceptable for listing by the Therapeutic Goods Administration.
None of the opponent's declarants have indicated that the specification has not made clear the extent to which the cartilage must be cleaned of flesh. The declarants who are fishermen indicate that they are fully aware of the extent of cleanliness required for them to obtain either shells or shark jaws for display. However this specification is addressed to those persons skilled in the art of producing a shark cartilage product. Mr. Morrison who cleaned shark cartilage for use as a medicinal/health supplement (and can be considered to be the relevant skilled addressee) is clear on the extent of cleaning required and has not expressed any difficulty in understanding what the specification has disclosed in this regard. Claim 1 on its own does not indicate the exact extent of cleaning required. Thus the issue is whether the extent of cleaning relates to cartilage suitable for display (shark jaws) or to cartilage used for health/food supplements. Further the opponent also indicated that there seemed to be a lack of clarity as to whether the shark cartilage product of claim 1 was a display or a product for medicinal use. The Rules of Construction (see rules (1) to (5) of Shepherd J's summary of the rules for construing claims in Décor Corp v Dart Industries, 13 IPR 385) state;
(1) The claims define the invention which is the subject of the patent. These must be construed according to their terms on ordinary principles. Any purely verbal or grammatical question that can be answered according to the ordinary rules for the construction of written documents is to be resolved accordingly.
(2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
(3) Nevertheless, in approaching the task of construction, one must read the specification as a whole.
(4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
Looking at Rules (3), (4) and (5) above and seeking to clarify the meaning of;
(a) "substantially all of the flesh on the carcass to be consumed", and
(b) "a dried shark cartilage product".
I note that the description at page 2 lines 2-5, 9-10 and 23-25 states:
"…the present invention relates to a method of cleaning shark cartilage to produce a cartilage of sufficient cleanliness to be suitable for use in medicinal products used in the treatment of disease in humans and other mammals."
"…Consequently there has arisen a demand for suitable cartilage to be used in formulating compositions for treatment."
"When the cartilage is separated it is subsequently freeze dried and powdered for use. Any flesh remaining attached to the cartilage interferes with this process so the demand for clean product is high."
Thus the description makes clear that the extent of cleaning required is that which is consistent with the standard required for a medicinal product. I am satisfied therefore that claim 1, when read in light of the description, does not lack clarity with regard to indicating the extent of cleanliness required as well as indicating that the product is one that is suitable for medicinal use. The product could quite conceivably be a shark jaw but the specification as whole makes clear that it needs to be a shark cartilage product that is suitable for use in medicinal products. Thus I conclude that claim 1 does not lack clarity.
The opponent also raised a number of other clarity issues regarding the claims. I have looked at those issues and also read the declarations of the opponent in this matter. None of the declarants expressed any indication of difficulty in understanding the terms used in the claims. Consequently I do not find that the claims lack clarity.
Another important issue raised by the opponent related to the essential features of claim 1. As this issue is directly relevant to the grounds of Novelty and Inventive Step I shall address it before dealing with these grounds of opposition.
The opponent submitted:
"It is difficult to put a true meaning on the feature of storing the cleaned cartilage on ice. It is hard to conceive that putting something "on ice" is essential before being treated with presumably hot air to dry the product. There is nothing in the specification that tells us what this might do. Is storing in a deep freezer the same as "on ice", how long is the storage to take place, or is it just to keep the cartilage cool during a more extended storage period?
We believe that this feature is an inessential feature of claim 1."
The opponent then refers to the test applied to determine an inessential feature:
"It has since the Catnic case become conventional to employ a two step test in deciding whether a particular feature is an essential integer or not. An example of the application of this can be found in Instant Foundation (Aust) Pty Ltd v Steel Foundations Limited and Turson Products and Constructions Pty Ltd [1999] APO 13 (24 February 1999)."
The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd, (1982) RPC 183 at page 228, as follows:
"…I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim…"
I shall now apply the test set out above to determine if the feature of storing the cleaned cartilage on ice is an essential feature.
The applicant made the following submissions in this regard.
"Page2, lines 26-29 of the specification refers to:
"…a process which enables a shark cartilage to be cleaned to a state substantially free of unwanted flesh in a natural manner, thereby avoiding wastage of valuable cartilage and also providing a hygienic method of cleaning."
Mr. Dale's declaration provides evidence of the microbiological count of the product. This information was not available at filing of the application. The need for a hygienic product has been identified and no guesswork is required to establish that storage of the product on ice is a method of preserving the quality or characteristics of the product when referring to their lack of microbiological contamination. The invention so far as it is currently practiced takes advantage of this. The marine environment is not a pristine environment and has a number of contaminants which should be minimised with health and food supplements."
Mr. Jeff Dale in his declaration indicated that the product of the invention showed a standard plate count (ie a biological count) per gram of less than 10. He also provided similar data for an imported product that showed a count of 120,000 per gram.
The evidence before me indicates that storage on ice may have some material effect on the final product. In particular the evidence of microbiological contamination figures advanced by Mr Dale from the AGAL shows a marked difference from an imported product. This could arise from both the extent to which flesh has been removed from the cartilage as well as prevention of degradation of the cleaned cartilage by storage on ice. The opponent has not challenged the laboratory analysis provided by the opponent nor has it provided any analysis for a product produced by its declarants. The opponent has not put forward any evidence to show me that storage of the shark cartilage on ice does not contribute to the working of the invention or is inessential to the working of the invention.
The specification at page 2, lines 1 to 5 states:
"…In particular, the present invention relates to a method of cleaning shark cartilage to produce a cartilage of sufficient cleanliness to be suitable for use in medicinal products used in the treatment of disease in humans and other mammals."
The consistory statement at page 3 indicates that storage on ice is part of the method of the invention. At page 4 the following disclosures are made:
1. "When the cleaned cartilage is removed from the marine environment it is preferably then stored on ice."
2. "Once the cartilage has been removed from the containers it can be processed in accordance with existing techniques."
Claim 1 indicates that storage on ice is a part of the method of the invention. There is nothing in the description that explicitly indicates that storage on ice is inessential/essential to the working of the invention. Thus the specification read as a whole does not make clear if storage on ice is or is not an essential feature of the invention, nor does it indicate that storage on ice would materially affect the way the invention works. I note that evidence provided by the applicant (which was not challenged, nor shown to be defective/inaccurate) indicates that storage on ice has some material effect on the working of the invention. Thus based on the evidence and lack of an explicit indication in the opposed specification that storage on ice is inessential to the working of the invention I conclude that storage on ice is essential to the working of the invention.
Lack of Novelty
The opponent states that "All the alleged anticipations in this opposition are by way of "prior user."
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
I shall begin by assuming that all features of the independent claims are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183). As I have indicated under the heading of Section 40/Fair Basis I concluded that the feature of storage on ice is essential to the working of the invention. Claim 1 has the following features:
1) A method of producing a cleaned shark cartilage product comprising the steps of:
2) Placing portions of shark carcass in a container,
3) The container having a plurality of openings therein, the openings being sized to allow flow of water and sea lice there through;
4) Placing the container in a marine environment and
5) Allowing the contents of the container to be subject to attack by marine organisms, the marine organisms entering the container through the plurality of openings;
6) Leaving the container in the marine environment for sufficient time for substantially all of the flesh on the carcass to be consumed thereby exposing the cartilage;
7) Removing the container from the marine environment and
8) Removing the cleaned cartilage from the container; and
9) Subsequently storing the cleaned cartilage on ice and
10) Drying the cleaned cartilage to produce a dried shark cartilage product.
The opponent has provided evidence of alleged prior use as well as documents from marine scientists. I shall first consider the documents placed in evidence.
Herbert M. Hale, The Crustaceans of South Australia (August 30 1929); P M Bird, Fishery Bulletin (April 1981) Vol. 79 No.2, 376-383; J Percy, Nature Canada (Winter 1989) Vol.18 No.1, 8-9.
On consideration of the documents provided by the marine scientists I find that disclosure has been made of the habits of sea lice as scavengers and that it is well known to use sea lice to clean the flesh from marine animal carcases. Details are provided of the procedures used which are very rudimentary and consist of, hanging a carcass (sometimes enclosed in a wire cage) from a boat/jetty in areas where scavengers are known to be present, and recovering the cartilage/skeleton/shell once all the flesh has been consumed. No indication is given, for instance, of storage on ice and further processing to produce a shark cartilage product. Therefore I do not consider that these documents challenge the novelty of the claimed invention.
I shall now consider the evidence of alleged prior use. First I shall consider if the alleged prior use would render the opposed invention lacking in novelty. If this is so I shall then determine if the alleged prior use did actually constitute prior use for the purpose of determining lack of novelty.
Mark Retsas, Vasilios Retsas and George Mastrosavas
The disclosures of these declarants are fairly similar. In brief they indicate that prior to the earliest priority date of the opposed application they were aware of the use of sea lice to strip flesh from carcasses. They indicated that they had individually cleaned shark jaws, shells and similar marine creatures by enclosing the carcass in a mesh bag, tying it to a rope and lowering it to the ocean floor at a suitable location. In some instances the shell creature had been directly tied to a rope and lowered to the ocean floor. They indicate that finding a suitable location was not difficult as it was a matter of trial and error or just making use of local knowledge. With regard to the degree to which the flesh was consumed the declarants have stated:
"This leaves a very clean specimen with essentially all of the flesh removed."
"The sea lice clean the specimens so that very little or no flesh remains."
Thus the disclosure of these declarants only omits the feature of storage on ice. Therefore an essential feature of the invention has not been disclosed and consequently the alleged prior use does not render the opposed invention as lacking in novelty.
Peter Constantinopolous
This declarant indicated that his shark cartilage cleaning activities commenced sometime in 1996. This is after the earliest priority date of 20 February 1995 of the opposed invention. The evidence of the declarant clearly shows disclosure of all the essential features of the opposed invention except the feature of storage on ice. With regard to storage on ice the declarant states:
"We did not store the cleaned cartilage on ice as it was promptly delivered to the MIA factory where it was placed in deep freeze. I understand that the cleaned cartilage was kept in a deep freeze and as it was needed it was washed, dried and powdered."
Thus apart from the storage on ice feature the declarant has disclosed all the other essential features of the opposed invention. As I indicated above this alleged prior use occurred sometime in 1996, which is after the earliest priority date of the opposed application. Consequently the opponent has not established a prior use in this particular case and therefore this disclosure does not render the opposed invention as lacking in novelty.
Donald Morrison
Mr. Morrison states:
"I had explored the possibility of a venture commercialising powdered shark cartilage together with a colleague, Mr. Kevin Goody. These activities commenced in 1992, and concluded in the early part of 1994, when I was temporarily disabled by reason of a heart attack. I have not resumed the commercialisation of shark cartilage since that time."
"Uncleaned shark backbones were obtained…The backbones still had a considerable amount of flesh attached and in that state were totally unsuitable for drying and powdering. I had constructed some cages…These cages were made of plastics mesh material fixed to a fibreglass frame measuring approximately 1 metre square in plan with a height of approximately 0.5 of a metre. The plastics mesh strands of this cage were approximately 10mm apart, which was ample for the sea lice to enter and for water to flow through. I understand the plastics of this mesh was a polyethylene. The construction was also rigid enough so that crabs or large fish could not enter and damage the cartilage or remove the cartilage so as to make the cartilage difficult to retrieve."
"The shark backbones were put into the cages and the lids of the cages were fastened shut. The cages were taken out by dinghy to about 100 metres from the shoreline, dropped over the side, generally to the bottom, or very close to the bottom and marked with a buoy."
"After two days I would return and haul up the cages with the cleaned cartilage…Generally no flesh would remain on the backbones, and these therefore consist of only cartilage."
"The cleaned backbones were then taken to a small processing plant that I had developed…Firstly the cleaned backbones were placed in trays and air was blown over them to dry them…The dried back bones would then progressively be diminished in size. Firstly the cartilage was ground into coarse granules, in a grinder…Secondly the coarse ground cartilage was then further ground to an intermediate size…Thirdly the intermediate sized product was then passed through a food processor to produce a finer powder…Following the final grinding step, the powder was then passed through a 200 micron sieve…"
On comparison with the features of claim 1, I find that all features except the storage on ice have been disclosed. As the storage on ice is an essential feature, I conclude that the alleged prior use by Mr. Morrison does not render the claimed invention as lacking in novelty.
Kevin Goody
I note that the declarant Mr. Kevin Goody states that:
"I have read Mr Donald Morrison's declaration…and I confirm that I was engaged in the cleaning of shark cartilage and preparation of shark cartilage powder between 1992 and 1994 as set out in paragraphs 4 through to 10 of Mr. Morrison's declaration.
Thus my findings in respect of the Morrison declaration stand for this disclosure as there is no disclosure of any new feature in Mr. Goody's declaration.
King Chang
Mr Chang's declaration makes no disclosure of a personal knowledge of cleaning shark cartilage. Mr. Chang states that he purchased some powdered shark cartilage from Mr Morrison and that Mr Morrison showed him some of the cages used to enclose shark carcases for cleaning by sea lice on the ocean floor, as well as the equipment used for drying the shark cartilage. As I have already considered Mr Morrison's disclosure I find that Mr. Chang's declaration has not added anything new to that disclosure.
Stephen Hill
Mr Hill's disclosure shows that he used a method similar to that used by Mr Morrison except that he used "onion bags" instead of cages. Mr. Hill carried out these activities in 1993 and 1994. Mr Hill indicates that "onion bags" are not bags used for handling onions but were made from a mackerel netting. He notes that this netting "had a mesh that gave apertures that I estimate to be about 2cm, and were about 900mm long and about 500 to 600mm wide. All the features of claim 1 except the step of storage on ice are disclosed. Thus prior use of the opposed invention has not been established as the alleged use has failed to disclose an essential integer of the invention.
As none of the alleged prior uses have been shown to be an anticipation of the opposed invention I need not determine if the alleged prior use actually constituted prior use relative to establishing lack of novelty.
Lack of Inventive Step
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
A reading of the specification indicates that the problem to be solved is "to produce a (shark) cartilage of sufficient cleanliness to be suitable for use in medicinal products used in the treatment of disease in humans and other mammals." The specification also states that it seeks to address the problems of the prior art by "a process which enables a shark cartilage to be cleaned to a state substantially free of unwanted flesh in a natural manner, thereby avoiding wastage of valuable cartilage and also providing a hygienic method of cleaning."
Firstly I would need to establish the common general knowledge in the relevant art. In Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd, (1980) 144 CLR 253 at 292 Aickin J said:
"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 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 knowledge."
The state of common general knowledge in the art will generally be determined on the basis of evidence from persons with the appropriate background.
Messrs Retsas, Retsas, Mastrosavas, Constantinopolous, Morrison, Goody, Chang, Lowry, Bruce and Hill provided evidence for the opponent in this matter. Mr. Dale provided evidence for the applicant in this matter. Messrs Lowry and Bruce are marine scientists/zoologists and the other declarants (excepting Mr Chang) are fisherman and/or have had some experience in cleaning shark cartilage and shells/skeletons of marine creatures. Mr. Dale is the inventor of the opposed invention and cannot be considered as a non-inventive skilled addressee but he can give indications as to what would constitute the common general knowledge in the art.
From a reading of the various declarations the following is acknowledged as common knowledge in the art:
· That prior to the earliest priority date of the opposed application fishermen were aware of the use of sea lice to strip flesh from carcasses/shell creatures.
· Cleaning of shark jaws, shells and similar marine creatures by enclosing the carcass in a mesh bag, tying it to a rope and lowering it to the ocean floor at a suitable location was well known. In some instances the shell creature had been directly tied to a rope and lowered to the ocean floor.
· Finding a suitable location (where sea lice were present) was not a difficult task as it was a matter of trial and error or just making use of local knowledge.
· The flesh (from the carcass/shell) was consumed to the extent that it left a very clean specimen with essentially all of the flesh removed.
Regarding the extent of cleaning of the cartilage, some declarants (the fishermen) were indicating the cleanliness required for shark jaw/shell displays, whereas other declarants (shark cartilage cleaners and processors) spoke in the context of a product suitable for use in medicinal products. There is some variation in terms of the container used to hold the shark cartilage but the variations are not presented as being of an inventive nature. The purpose to be served by the container being to allow the sea lice in and at the same time prevent the cartilage from being attacked by larger sea creatures.
On consideration of the above I consider that all the essential features of claim 1 except the features of "Subsequently storing the cleaned cartilage on ice" and "Drying the cleaned cartilage to produce a dried shark cartilage product" have been disclosed. In the matter of the drying feature I note that a number of the fisherman refer to shark jaw displays which they have produced. I consider the drying step would have been carried out as a routine process step in producing these displays. Further the specification itself indicates that once the cleaned cartilage has been obtained it can be processed in accordance with existing techniques. Thus the feature of "storing the cleaned cartilage on ice", which occurs immediately after removal of the cartilage from the container (which has just been removed from the marine environment), has not been disclosed.
A reading of the specification indicates that the problem to be solved is "to produce a (shark) cartilage of sufficient cleanliness to be suitable for use in medicinal products used in the treatment of disease in humans and other mammals." The specification also states that it seeks to address the problems of the prior art by "a process which enables a shark cartilage to be cleaned to a state substantially free of unwanted flesh in a natural manner, thereby avoiding wastage of valuable cartilage and also providing a hygienic method of cleaning."
The question of whether the claimed solution to the problem is obvious in light of the disclosure of a citation amounts to asking whether the skilled reader would "have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not." (Wellcome Foundation Ltd v V R Laboratories (Aust) Pty Ltd, (1981) 148 CLR 262 at 286). Another way of stating the test is to ask whether it would have been obvious to try, with a reasonable expectation of success: "it is enough that the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial" (Johns-Manville Corporation's Patent [1967] RPC 479 at 494).
I shall now consider the evidence of the opponent in this matter. Declarations have been provided from fishermen, shark cartilage processors as well as those involved in cleaning of the shark cartilage prior to processing. I have indicated previously what I considered to be the common general knowledge in the art in Australia. I have to now consider whether the non-inventive skilled addressee would consider storage of the cleaned cartilage on ice as soon as it was removed from the marine environment. None of the declarants indicate that they carried out this step or considered it important in the overall process. There is no indication from the declarants that it was thought to be a step worth trying. Only Mr. Constantinopolous indicates in his declaration that cleaned cartilage was kept in a deep freeze prior to further processing. However the storage in the deep freeze did not occur as soon as the cleaned cartilage was recovered from the marine environment. Another issue with this declaration is that these events occurred after the earliest priority date of the opposed invention. The opponent has not shown that the non-inventive skilled addressee would have found it obvious to try, with a reasonable expectation of success, the step of storage of cleaned cartilage on ice as part of the method of producing a cleaned shark cartilage product.
Consequently I do not find that the claimed invention as lacking in inventive step.
SUMMARY
I have found that the specification does not comply with Section 40 as Claim 10 is invalid in that it lacks fair basis and does not define the invention described.
I have found that the opponent has been unsuccessful on the grounds of, Lack of Novelty and Lack of Inventive Step.
I have found that the specification as accepted has a defect that would affect the validity of the patent if granted. However I believe the defect can be overcome by suitable amendments.
I direct that the applicant file amendments to overcome this defect within sixty days of the date of this decision.
COSTS
The opponent submitted that the award of costs should follow the event. The applicant submitted that if they were successful then costs should follow the event, notwithstanding the requirement of an amendment to overcome defective claim 10.
I have found that the opponent has been unsuccessful on the grounds of Lack of Novelty and Lack of Inventive Step but has succeeded on one Section 40 Issue. I note that the issue of invalid claim 10 was only raised at the hearing and was not listed in the statement of grounds and particulars filed on 23 January 1998. However claim 10 is clearly invalid and a suitable amendment would be required to overcome the invalidity.
The applicant has sought costs if they were successful apart from the invalidity of claim 10. I consider that a patent cannot be granted with a clearly invalid claim. The opponent has been successful in establishing a Section 40 defect in the specification. Clearly this defect is an important consideration and cannot be put aside in deciding upon the award of costs.
Accordingly, in light of the above circumstances, I consider that each party should bear its own costs in this matter.
Hence I make no award of costs in this matter.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Collison & Co., Adelaide
Patent attorneys for the opponent : APT Patent and Trade Mark Attorneys, Adelaide
0
6
0