Sumitomo Chemical Company Limited v Rhone-Poulenc Chimie
[1994] APO 51
•7 September 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 579248 in the name of Sumitomo Chemical Company, Limited
Title: Recovery of Gallium
Action: Opposition by RHONE-POULENC CHIMIE under Section 59 of the Patents Act 1952.
Decision: Issued .
Abstract: Locus standi established at the date on which the notice of opposition was lodged. Locus at the date of the hearing not considered. The words of Whitford J. in Kessler were misquoted by Graham J. in Mediline. The actual words used were that the interest "must be extant by the date of the hearing" and not "at the date of the hearing" as quoted by Graham J.
Reverse infringement test applies to all features of "improvement" patent claim.
Opposition fails on all grounds.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 579248 by SUMITOMO CHEMICAL COMPANY LIMITED and opposition thereto by RHONE-POULENC CHIMIE under Section 59 of the Patents Act 1952.
background
Patent application 579248 by Sumitomo Chemical Company, Limited (Sumitomo) was filed on 30 May 1986. The application was advertised accepted on 17 November 1988. On 16 May 1989 Rhone-Poulenc Chimie (Rhone-Poulenc) filed a Notice of Opposition under the provisions of Section 59 of the Patents Act 1952. The grounds of opposition were those set out in Section 59(e) to (i).
The serving of evidence was completed on 20 July 1993. A hearing to determine the matter took place in Canberra on 23 May 1994. Sumitomo was represented by Mr C M Bentley, patent attorney, who was assisted by Dr G Tachas, both of Griffith Hack & Co. Rhone-Poulenc was represented by Mr B Hess of counsel and Mr M Houlihan patent attorney of Callinan Lawrie.
locus standi
In the Notice of Opposition the opponent stated their interest in the matter as follows:
"We are building a plant in Pinjarra, Western Australia, in which we shall be carrying out a process for extracting gallium. We expect the plant will be operational in a few months.
We have a present, real, definite and substantial manufacturing or trading interest in or with Australia in the subject matter of the opposed application, such that grant of a patent thereon would be detrimental to our present and foreseeable interests in Australia."
At the hearing Mr Bentley, for the applicant, stated that he wished to challenge the locus standi of the opponent. He provided a photocopy of a newspaper article allegedly from The Age newspaper of 17 May 1990. In the article it is stated that Rhone-Poulenc would shut down its Pinjarra gallium operation within four months and that it would be mothballed indefinitely due to the weakening international market for gallium metal. There was no supporting declaration confirming this evidence. At the hearing I allowed the opponent further time within which to make submissions concerning their locus standi.
On 21 June 1994 the opponent filed a statutory declaration by Maxwell John Webb together with copies of Rhone-Poulenc Chimie Australia Pty Ltd's (RPCA's) 1990, 1991 and 1992 Annual Returns. I have summarised Mr Webb's declaration:
Since May 1991 until the present Mr Webb has been the Operations Manager of Rhone-Poulenc Speciality Chemicals. He was Operations Manager for RPCA in the period March 1987 to 30 September 1990 and the Secretary of RPCA since 1987.
RPCA is a wholly owned (100%) subsidiary of the opponent, which in turn is a wholly owned (100%) subsidiary of Rhone-Poulenc S.A.. RPCA is the owner of the land, plant and equipment as located in Pinjarra, Western Australia, which is the same plant as referred to in the Notice of Opposition and "The Age" newspaper article. The technology and knowhow employed in the construction of and the operation of the gallium extraction plant was supplied to RPCA by the opponent.
All output from the plant was and still is sold by RPCA to the opponent, who then further processes the gallium before onselling worldwide the processed gallium. From January to August 1990, 36.297 tonnes of gallium was extracted and processed at the plant in Pinjarra. Of this, 18.316 tonnes were sold by RPCA to the opponent and exported. The remaining 17.981 tonnes were stockpiled at the plant. In September 1990, due to a downturn in market conditions, RPCA and the opponent decided to place the plant in care and maintenance for a period determinable when market conditions for gallium improve. The plant is presently in care and maintenance mode, and RPCA have continued to hold the plant in a state ready for immediate start up. Routine inspection and tests are carried out to ensure that the land, plant and equipment are maintained in suitable condition. Environmental licenses for the plant held by RPCA are still active and are maintained in force. As RPCA continues to own the land, plant and equipment, it still annually writes down the value of the cost of these assets by claiming depreciation.
Since September 1990 to the present time RPCA has on a continuing basis sold and exported to the opponent some of the stockpile retained at the plant site since September 1990. Thus both RPCA and the opponent continue to sell and deal in gallium produced at the plant.
In view of RPCA's and therefore the opponent's continuing ownership of the land, plant and equipment, and the export of previously extracted gallium to the opponent, the opponent through its subsidiary RPCA has maintained a continuing and substantial interest in Australia in respect of gallium and methods for its extraction and production. Furthermore the opponent is a main worldwide producer of purified gallium.
The declarant considers that the business interests of the opponent and RPCA would or may be inhibited in respect of its gallium processing and dealings in gallium, in the event that the opposed patent application was allowed to proceed to grant.
Mr Bentley, for the applicant, made the following written submissions concerning the declaration of Mr Webb:
The plant is not operating and was not operating at the date of the Hearing.
The declaration is silent as to the process by which the gallium was produced when the plant was operating.
Exhibit MJW1 indicates that "Production ceased on 13 August 1990". The "Auditors Report to the Members" dated 10 May 1991 includes the following comment: "The carrying value of the assets referred to above assumes that the company will resume its normal operating activities in the foreseeable future. We are unable to assess whether or not the plant will re-open and therefore whether the book values of these assets exceed their recoverable amounts. Should the plant not re-open, in our opinion, substantially all of these assets would need to be written off" (emphasis added). Similar comments appear in the Auditors Report dated 30 April 1992, and the Auditors Report dated 28 May 1993.
Mr Bentley referred to Kaiser Aluminiumand Chemical Corporation v The Reynolds Metal Company, 120 CLR 136, in which the opponent was a shareholder in Australian companies which were successfully trading and the value of the shares were readily ascertainable. The opponent in that case would have suffered a loss in the event that the value of those shares diminished. In the present case the wholly owned subsidiary RPCA has traded at a substantial loss since its inception. Strictly speaking, Rhone Poulenc Chimie is not liable for the debts of RPCA as RPCA is a limited liability company and was no doubt set up as such in order that its parent could remain at "arm's length" in the event of a liquidation. Mr Bentley submitted that the opponent had not shown that its financial interests would necessarily be affected by any adverse economic impact on RPCA.
The possible future start-up of the Pinjarra plant is "something that the opponent [or its subsidiary] proposes to do" (Kaiser Aluminium, supra) and therefore is irrelevant to locus standi at the date of the hearing. The opponent cannot rely upon the existence of the non-operating plant at the relevant date as providing the required "real, definite and substantial" interest, because its value also depends upon the future start-up of the plant which may never eventuate.
Although the quantity of gallium while the plant was operating, and the quantity in the stockpile at August 1990 are both given, the amount of gallium in the stockpile at the relevant date (23 May 1994) is not stated at all. The opponent cannot therefore rely upon the stockpile to establish locus, because it has failed to show that it was "real, definite and substantial" at the relevant date. Furthermore, the opponent has not shown or suggested that dealings in gallium from the stockpile would be affected in any way by grant of a patent pursuant to the application in suit.
In Mediline A.G.'s Patent [1973] RPC 91 Graham J. set out four principle's in relation to locus. They are:
"(1) The circumstances of each case must be considered and it is wrong to lay down any hard and fast rule as to the precise nature and extent of the "interest" which justifies locus.
(2) The onus of establishing locus lies on the opponent or applicant for revocation.
(3) If the opponent or applicant for revocation can show that he has some genuine interest which will be prejudiced and if the opposition or application to revoke is not frivolous, vexatious or blackmailing, then locus should be granted even if the patentee can throw some doubt on the exact extent of the opponent's interest.
(4) It is in the public interest that genuine opposition to a revocation proceeding should be permitted, as normally an opponent or applicant for revocation assists the court or Comptroller in ensuring that the scope of the patent attacked is properly examined and limited during the application and early stages of its life."
Mr Bentley has submitted that the opponent has not demonstrated locus on the date of the hearing. Concerning the date at which locus is to be considered Graham J. said in Mediline, supra when commenting on the remarks of Whitford J. in the Kessler case ([1971] F.S.R. 393):
"He must, of course, have an interest, as Whitford, J. says, which is extant at the date of the hearing, but I think also that he must have such an interest initially at the date on which he gives notice of opposition or makes his application to revoke. Unless he has such an interest initially at that date, I do not see how it can properly be said that he is within the words of this section."
I assume that it is on this passage that Mr Bentley relies when questioning locus at the date of the hearing. I note however that the above quote in Mediline is apparently in error and that the actual words used in the Kessler case were that the interest "must be extant by the date of the hearing" (emphasis added), see [1971] FSR 393 at 398 and [1971] RPC 360 at 364. The comments in both the Kessler case and Mediline case addressed the question of whether it was sufficient if an opponent or applicant for revocation could show an interest which had arisen only after the date of opposition or application to revoke but by the date of the hearing.
I do not believe that these comments provide a basis for the proposition that it is always necessary for an opponent to establish locus at both the date of lodging the notice and at the date of the hearing. If this was so then at every opposition hearing under the 1952 Act an opponent would have to re-establish locus at the actual hearing. I will therefore follow the usual practice of considering the question of locus at the time the opposition process started.
Mr Bentley also questioned the process that the opponent used in the gallium extraction plant, presumably to question whether the opponent's manufacturing or trading interest was in the same field of activity as the patent application. It seems to me that the field of gallium extraction is sufficiently specialised that the grant of a patent for any recovery process would affect the interest of any person operating a plant for its extraction or trading in the gallium produced thereby.
I find that the opponent has established a sufficient interest at the relevant date to establish locus standi.
Shortly before issuing this decision I received further submissions from both parties on this issue. I have considered these submissions but they do not alter my decision on the question of locus.
the patent specification
The Patent Specification is entitled "Recovery of Gallium". The specification indicates that the invention relates to an improvement in a method for recovering gallium from aqueous sodium aluminate solution in the Bayer process. More particularly, in a process for recovering gallium moiety from aqueous sodium aluminate solution in the Bayer process, wherein the aqueous sodium aluminate solution which is cycling for production of alumina is brought, after aluminium hydroxide is separated, into contact with an adsorbent for gallium and gallium is recovered from the adsorbent, an improvement is made so that no precipitation of impurities is seen in the adsorption of gallium on the adsorbent.
The specification states that previously two processes had been known by which gallium could be extracted from aqueous sodium aluminate solution but that neither was satisfactory.
It is then stated that in recent years processes had been proposed wherein the gallium could be recovered by use of an adsorbent for gallium which is resistant against alkali. There follows a list of six Japanese publication numbers which describe such processes. It appears that none of these processes is satisfactory since the volume of solution to be treated per unit operation is small and the recovery yield of gallium is low. Furthermore the adsorption rate of gallium per unit liquid flow decreases before adsorption of gallium reaches the maximum.
The specification then states that after extensive study the present inventors have found that inorganic materials such as
vanadium, phosphorus, arsenic, fluorine, etc. present in the solution lead to this decrease in the adsorption rate. According
to the invention the solution is treated so that the impurities are not precipitated on the adsorbents in the adsorbing step. This treatment is conducted by two alternative methods. The first is cooling and crystallization and the second is dilution.
These two approaches are then described in detail and an Example is given. The specification ends with 7 claims of which claim 1 is the only independent claim:
"1. A method for recovering gallium from an aqueous sodium aluminate solution which is cycling in the Bayer process, which comprises precipitating and separating aluminium hydroxide from the solution and bringing the solution into contact with adsorbents for gallium and then recovering the gallium from the adsorbents, said method being characterised in that the solution after being subjected to precipitation and separation of aluminium hydroxide and before being brought into contact with the adsorbents is subjected to a treatment so that no precipitation of impurities will occur in the following adsorption step, said treatment being carried out either by cooling the solution until impurities are crystallized and separating impurities or by diluting the solution with a diluent."
At the hearing both parties agreed that for convenience the process of claim 1 could be broken down into the following steps which I shall refer to as steps (a) to (e) in this decision:
(a) Starting with an aqueous sodium aluminate solution used in a Bayer process;
(b) precipitating and separating aluminium hydroxide from the solution
(c) treating the remaining solution from (b) so that no precipitation of impurities will occur in the following adsorption step, by either
(c1)cooling the solution until impurities are crystallized and separating the impurities, or
(c2)diluting the solution with a diluent;
(d) contacting the resulting solution from (c) with adsorbents for gallium; and
(e) recovering gallium from the adsorbents.
evidence
The evidence consists of a number of declarations of which I have summarised the most relevant below:
EVIDENCE IN SUPPORT
Jean-Louis Sabot
Dr Sabot is a French citizen. He is a chemical engineer and holds the degree of Doctor of Chemistry of the University of Paris in Analytical Chemistry. He has been employed for the past ten years by Rhone-Poulenc Recherches and has supervised the research and development on the liquid-liquid extraction process of gallium values and more especially on the recovery of gallium values from sodium aluminate solution.
Step (d) was known in Australia before the priority date. Japanese patent specification 5954626 (exhibit JLS 1) was published in Australia on 15 June 1984 and discloses a method of adsorbing gallium on the resins or compounds listed in the opposed specification.
Step (c1) was known in Australia before the priority date. Patent specification US 3988150 (exhibit JLS 3) published in Australia on 10 June 1977 discloses cooling to precipitate impurities prior to recovery of gallium by cementation with a liquid gallium-aluminium alloy. This process was also disclosed in patent specification EP 76163 (exhibit JLS 4) which was published in Australia on 20 May 1983 which relates to a process for recovering gallium by electrolysis of an alkali metal aluminate solution.
All of the essential features of the methods which claim 1 of the opposed specification purports to define are disclosed in US 3988150 and/or EP 76163.
Step (c2) was known in Australia before the priority date. The textbook "Ion Exchange Technology" (exhibit JLS 5) published in Australia on 25 January 1957 discloses at pages 289-290 that poisoning sometimes takes place in the operation in ion exchange and this may be caused by either physical blockage of the pores of the resin due to suspended, precipitated matter or it may be chemical poisoning. Silica precipitated in the pores is a frequent offender. The textbook at page 290 under the sub-heading "Turbidity" discloses the poisoning of a resin due to turbidity of the solution to be treated or by precipitation of certain constituents in the solution being treated. The conclusion is that this textbook discloses that any precipitate must be avoided in an ion exchange process.
It was obvious to the man skilled in the art, before the priority date, that a precipitate is an inconvenience in ion exchange processes and that to avoid precipitation of a compound during the process, the concentration of that compound must be less than the saturation concentration and furthermore that the adsorption of gallium into or onto an adsorbent resin is not a function of the concentration of gallium but rather a function of Ga3+/Al3+ in the solution. Diluting a solution to avoid the problem of precipitation in an ion exchange process was obvious to the man skilled in the art before 10 June 1985 and the method of claims 1 to 7 of the Sumitomo application in that regard is obvious.
Colin J Marsden
Dr Marsden is at present a Senior Lecturer in Inorganic Chemistry at the University of Melbourne where he has been lecturing in Inorganic Chemistry since 1980. Since being awarded a Doctorate of Philosophy from Cambridge University he has been teaching and conducting and supervising research in inorganic chemistry.
He has published many papers and delivered lectures in the field of inorganic chemistry. Exhibit CJM 1 is a copy of his Curriculum Vitae. From this I note in particular that all of the publications are in the field of theoretical inorganic chemistry.
The recovery of gallium from aqueous sodium aluminate solution from the Bayer process is an established process widely used before the priority date of the Sumitomo specification.
Steps (a), (b), (d) and (e) were known to the declarant before the relevant priority date.
Step (c1) is anticipated by US 3988150 and EP 76163.
The declarant agrees with the conclusions in the declaration of Dr Sabot in that the step (c2) was obvious to prevent the precipitation of impurities.
Each of claims 2 to 7 are also anticipated and/or obvious.
Dr Marsden then set out a number of reasons which he believed caused the claims to be not fairly based on the description.
EVIDENCE IN ANSWER
Masaaki Matsuda
Dr Matsuda is at present a Deputy Manager, Fukuoka Sales Office, Sumitomo Chemical Company Limited and is one of the co-inventors of the present invention.
In the invention of the present application the problems in the prior have been overcome by combining together the five steps defined in claim 1. The declaration of Sabot holds that each step is mentioned in the prior art. However, no reference is made at all in these prior arts on how to overcome the problem of a rapid decrease in adsorption rates of gallium encountered when a aqueous sodium aluminate solution cycling in the Bayer process is brought into contact with adsorbents for gallium. Furthermore it is not obvious from the references that decreasing the concentration of impurities would overcome the problem. A combination of the steps defined in claim 1 brings about unexpectedly superior results, particularly in the amount of gallium recovered.
Although JP 59-54626 discloses adsorption of gallium on chelate resin it does not refer to recovery of gallium from an alkali aluminate solution nor does it disclose how impurities contained in alkali aluminate starting solutions limit the adsorption rate and how this is overcome.
US 3988150 discloses cooling of a recycling sodium aluminate liquor in order to precipitate soda, sulfates, etc. However, this step is a pre-treatment in order to extract gallium by cementation with the aid of a liquid gallium-aluminium alloy, which is far removed from adsorption.
EP 76163 discloses cooling a circulating sodium aluminate solution in the Bayer process in order to precipitate and remove impurities such as vanadium and also discloses the removal of organic impurities. These treatments are effected as pre-treatments for electrolysis of an alkali metal aluminate solution containing gallium which differ completely from step (d).
The reference "Ion Exchange Technology" teaches that a solution to be subjected to ion-exchange should be well clarified and that it is not desirable to have suspended matters and to feed turbid solution. The solution in the present invention has substantially no suspended matters after step (b) and is not a turbid solution.
The declarant then responds to Marsden's comments on the fair basis of the claims.
EVIDENCE IN REPLY
Colin J Marsden
The problem of rapid decrease in adsorption rate is not specifically stated, referred to or even implied in any one of the claims of the Sumitomo specification. It was part of the common general knowledge in Australia, when employing adsorbent to recover gallium, that a rapid decrease in adsorption rate would be observed.
As gallium removal by electrolysis or adsorbent is well known, the use of an adsorbent instead of by electrolysis as used in EP 76163 is but a "mere mechanical equivalent or workshop variation".
Standard and well known procedures employed in Australia and elsewhere to overcome the poisoning problem of adsorbents is to cause (1) precipitation to lower the concentration of the impurities and effect their removal or (2) dilution, where the concentration of the impurities is lowered.
Jean-Louis Sabot
The teaching of the reference "Ion Exchange Technology" is not limited to the case in which the solid impurities are pre-existing (for example suspended material) in the solutions to be treated but also discloses the situation where the impurities are formed in situ during the treatment of solutions and therefore block the pores of the adsorbent.
decision
Novelty
It is clear from the evidence and submissions that there is much common ground between the parties as to what each of the citations discloses. Where the parties differ however is in how the law on novelty should be applied to the facts of this case.
At the hearing Mr Hess reviewed the law on novelty. He referred me to Hill v Evans (1862) 31 LJ Ch 457 as an early authority which Mr Hess claimed had been much misunderstood. In this case Lord Westbury described the characteristics of a statement which would be sufficient to deprive a later invention of novelty:
"the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"
Mr Hess submitted that it was sufficient for the prior publication to show the discovery and that it was not the law that all the integers of a claim had to be disclosed. The present invention deals with the alleged discovery that the presence of impurities inhibits gallium adsorption and what is claimed is a process step to remove impurities as an improvement to a known process. He submitted that the issue is not whether all the features of the claim are disclosed but whether the discovery step as claimed is disclosed, namely the process step of removing impurities.
He cited US 3988150 and EP 76163 as disclosing that impurities inhibit gallium recovery.
Mr Hess then referred to the words of Lockhart J in Werner & Co v Bailey Aluminium Products Pty Ltd 13 IPR 513 at 521 as providing support for the distinction between a combination and improvement patent:
"It is plain from the cases that the subject matter of most patents is generally something which it is asserted has not been invented before, but represents an advance made on previous knowledge. The subject matter of the patent may, for example, be a combination patent or an addition to or improvement in a previous manufacture, provided the requisite degree of inventiveness can be established."
Mr Hess also referred to Griffin v Isaacs (1942) 12 AOJP 739 for Dixon J's words on improvements:
"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any, of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty."
The generally accepted test for anticipation is the "reverse infringement" test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd(1977) CLR 228 at 235 where Aiken J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged infringement would, if the patent were valid, constitute an infringement."
Infringement of a claim occurs when each and every one of the essential integers of the claim have been taken.
While accepting that this test had been applied by the courts in such recent cases as Nicaro Holdings v Martins Engineering 16 IPR 545, Mr Hess attempted to distinguish the present case by submitting that it was only for combination patents that all integers of the combination must be disclosed in the prior art and that for improvement patents only the improvement step need be disclosed.
I am not convinced by Mr Hess's arguments concerning a distinction between "improvement" and "combination" patents. It seems to me to be an artificial distinction which results from the manner of drafting the claim.
The claim in this application is drafted in two parts. Although not mandatory in Australia this is the preferred practice in many countries and this manner of claiming is required by Rule 6.3 of the Regulations under the Patent Cooperation Treaty as set out in Schedule 2 of the Patent Regulations 1991. Although this Rule is not applicable to the present application it is of interest because it provides an accurate description of the type of claim used.
"6.3 Manner of Claiming
(a)The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.
(b)Whenever appropriate, claims shall contain:
(i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,
(ii) a characterizing portion - preceded by the words "characterised by," "wherein the improvement comprises," or any other words to the same effect - stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect."
For claim 1 of the present invention the steps (a), (b), (d) and (e) are included as indicating those technical features which are necessary for the definition of the claimed subject matter but which are part of the prior art. Steps (c1) and (c2) state the technical features which in combination with the prior art features it is desired to protect. For this combination to lack novelty all of these steps have to be found in a single prior art document.
Most patent claims could be viewed as defining either a combination or improvement depending largely upon the style of drafting but I can find no support for the proposition that the reverse infringement test is not equally applicable to both types of patent, if indeed there really exists such a distinction.
In the present case I think that it does not matter whether the claim is viewed as a combination or an improvement. I believe that the difference in approach arises because Mr Hess has stated the discovery and improvement too narrowly.
The "discovery" in the present application is that if the solution resulting from the Bayer process after the removal of aluminium hydroxide is treated by either cooling the solution until impurities are crystallized and separating the impurities or diluting with a diluent prior to the removal of gallium with an adsorbent then precipitation of impurities which decrease the adsorption rate will be prevented. This is the discovery which has to be found in the prior art for the claim to lack novelty. The improvement step cannot be viewed as step (c1) or (c2) in isolation as propose by Mr Hess. It would not be sufficient for a document to disclose the steps (c1) or (c2) in different processes for the recovery of gallium without clear and unmistakable directions that these steps would be used in a process comprising steps (a), (b), (d), and (e) as well. There has to be a disclosure of the use of such a step in the overall process defined in claim 1 for this claim to lack novelty.
Thus whether this patent claim is viewed as defining a combination or improvement the test for novelty is the same. A citation would have to disclose steps (a), (b), (d) and (e) and either (c1) or (c2).
It is clear that no single citation satisfies this criterion and I find that claim 1 is novel.
Obviousness
In considering obviousness I have to take into account what has been established as being common general knowledge in Australia the field of the invention at the priority date of the claim (Minnesota Mining and Manufacturing v Beiersdorf (1980) 144 CLR 253.
The opponent has provided two declarations with evidence as to what was known in Australia on or before the priority date of the claim.
Dr Sabot has worked in the field of the recovery of gallium values from sodium aluminate solution. In his declaration he asserts that certain pieces of knowledge were "known in Australia, as it was elsewhere". I do not believe that Dr Sabot's knowledge of the state of the art in France gives him any credibility as to the state of the art in Australia as there is no evidence that he has ever worked in the relevant field in this country. I therefore place no weight whatsoever on his evidence concerning what was known or used in Australia.
Dr Marsden was involved in research in inorganic chemistry on or before the priority date of the claim. Although Dr Marsden declares that the subject of the invention is in a field that is very familiar to him his area of expertise appears to be theoretical inorganic chemistry, in particular spectroscopy and molecular structures. There is no evidence that any of his work involved the extraction of gallium from sodium aluminate solution. Even by stating the field of the invention more broadly as extractive metallurgy, hydrometallurgy or alternatively as the use of adsorbents I can find no indication that Dr Marsden has been active in the relevant field. I therefore place no weight whatsoever on his evidence concerning what was common general knowledge in the field of the invention.
At the hearing Mr Hess sought to rely on admissions of the prior art in the specification as statements of common general knowledge. In Chapman and Cook and Lectro Lind LdvDeltavis Ld (1930) 47 RPC 163 at 173 Clauson J wrote:
"... if a Patentee, though entirely erroneously, does state by way of what I may call recital in his Specification that a particular form of thing is common and then by some oversight or some mistake claims a monopoly in that particular form of thing he will have, so to speak, recited himself out of Court and I venture to doubt whether he could possibly maintain any claim to a monopoly in a thing which he has recognised to be something which existed."
In Sonotone Corporation v Multitone Electric Co Ltd (1955) 72 RPC 133 the effect of admissions in the specification was also discussed. In that case the Court found that regard had to be taken to the language of the document as a whole to determine whether certain statements ought to be taken as expressing the state of relevant common knowledge. It is noteworthy that in fact the Court found it unnecessary to express a final opinion on the matter because the evidence confirmed that the information was in fact well-known by those skilled in the relevant art at or before the date of the specification.
At page 2 of the present specification the following paragraph appears:
"In recent years, various processes are proposed wherein gallium moiety is efficiently adsorbed and recovered from the alkali aluminate solution by use of an adsorbent for gallium which is resistant against alkali (Japanese patent publication Nos. 6245/1983, 7412/1983, 42737/1983, 49620/1983, 52450/1983 and 96831/1983). However none of them is satisfactory yet, since volume of solution to be treated per unit operation is small and recovery yield of gallium is small, too. In the processes, aqueous solution containing gallium moiety which is taken out from the cycling sodium aluminate solution in the Bayer process is flowed through a column in which an adsorbent is packed, until gallium is adsorbed thereon, and then an eluent of acid such as hydrochloric acid is flowed until gallium moiety is eluted and recovered. In these processes, adsorption rate of gallium per unit liquid flow greatly decreases before adsorption of gallium reaches the maximum."
It seems to me that this statement describes what is "known" in the sense of published rather than in the sense of "known and used in Australia" or "common" (Chapman and Cook, supra). I am not convinced that in the context of the document as a whole this statement can be taken as describing common general knowledge. The present situation can be further distinguished from Chapman and Cook in that the "particular form of thing" for which the monopoly is claimed, that is the process defined in claim 1, is not the same "particular form of thing" which is described as known. It differs by step (c1) or (c2) and there is no evidence supporting the notion that the use of either of these steps was known in this admitted prior art.
In the absence of any supporting evidence the opponent has failed to establish that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step.
Manner of Manufacture
Mr Hess submitted that although the claim could be considered to be a manner of manufacture because it defined a process that resulted in a vendible product (National Research Development Corporation's Application, (1961) RPC 134) it was not a manner of manufacture in that it involved no inventive faculty or ingenuity and had no inventive merit. He submitted that the discovery of the existence of the impurities, the deleterious effect that they caused and the method by which these effects might be avoided did not involve the exercise of any inventive faculty.
Mr Hess further submitted that the grant of the patent would be contrary to Section 6 of the Statute of Monopolies in that it would preclude the proponents of the known processes of gallium recovery from using their "tools" in the best manner. That it, it would prevent the practitioners of processes comprising steps (a), (b), (d) and (e) from adding to their processes a purification step (c1) or (c2). Alternatively, it would prevent practitioners of the known cementation or electrolysis processes from substituting an adsorption recovery step in their processes.
Mr Bentley submitted that as the claim defined a chemical process it was clearly a manner of manufacture and the argument of the opponent was essentially that if the claim failed because of novelty or obviousness then it must fail as a manner of manufacture as well.
The question of the distinction between manner of manufacture, novelty and obviousness has been considered recently in the Federal Court. Mr Hess referred me to the majority decision in NV Philips v Mirabella 26 IPR 513. In this case Northrop and Lockhart JJ (Burchett J dissenting) found that the question of the application of known characteristics of a material to a new purpose could be considered under the ground of manner of manufacture. This is analogous to the present case in which a known purification step is to be used in a different method of extracting gallium.
I have to consider this decision in the light of the more recent decision of the Full Bench in CCOM Pty Ltd v Jiejing, Federal Court of Australia, unreported dated 22 June 1994. In this decision the Full Court traced the development of the concept of "manner of new manufacture". They referred to the decision in the NRDC case, supra, in which Dixon C.J. Kitto and Windeyer JJ. said:
"The word "manufacture" finds a place in the present Act [Patents Act 1952], not as a word intended to reduce a question of patentability to a question of verbal interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed."
In CCOM the Full Court continued:
"Accordingly, the phrase "any manner of new manufactures" has been interpreted over time in such a way to contain within it distinct principles or doctrines concerned with patentability ... They include the necessity for a manner of manufacture itself, for novelty, and for inventiveness. Objections such as lack of utility may have been derived from the prohibition upon manufactures which are "generally inconvenient". Others such as false suggestion, derived from the general law attending the writ of scire facias to recall Crown grants and the Chancery jurisdiction in respect of fraudulent grants ... The essential point is that the grounds of revocation were capable of development by common law and did so develop ...
Particular grounds of invalidity, derived from the case law, were added to the modern statutes. Lack of inventiveness, as distinguished from anticipation, obtained a distinct statutory recognition only in this century and, in Australia, in the 1952 Act ... As this development continued, the phrase "manner of new manufactures" came to represent the residuum of the central concept with which NRDC was concerned, namely what the High Court called the relevant concept of invention."
In CCOM it was submitted that all that had been done was to select a desirable characteristic of a computer program, the ability to search, in the manner described, a data base of the type described, and to claim all computers present and future possessing that characteristic. On this submission the Full Court said:
"That submission should not be accepted. It may be that such a claim lacks novelty, is obvious, or lacks utility, or there is a failure to comply with one or other of the limbs of s. 40 because, for example, the invention is not fully described or the claim is not clear and succinct. But if such hurdles all are surmounted, then in our opinion in a case such as the present there does not remain an independent ground of objection to patentability, within the sense of para 18(1)(a) of the 1990 Act."
Because of the differing views expressed in the Federal Court it is not clear to what extent I can consider the question of inventiveness under the ground of manner of manufacture.
Given my findings on novelty and obviousness, however, I need not inquire too finely or minutely into the degree of ingenuity involved to determine whether or not an invention is patentable once satisfied that some independent invention has been applied (NV Philips, supra). It is sufficient that there has been some substantial exercise of the inventive faculty. In the present case I am satisfied that the introduction of step (c) in the known process comprising steps (a), (b), (d) and (e) involved the requisite degree of inventiveness.
I therefore find that the invention defined by the claims is a manner of manufacture.
Section 40
The ground of non-compliance with section 40 has been particularised as one instance of lack of clarity in the description which was first mentioned by Mr Hess at the hearing and six reasons why the claims lack fair basis set out in the evidence of Dr Marsden. I will deal with each separately:
At page 3 of the specification it is written:
"Removal of impurities is conducted by two ways. The first is cooling and crystallization and the second is dilution."
It is clear that the dilution of the solution does not actually result in the removal of the impurities, rather it results in reducing their effect. As this error would be apparent to the skilled addressee and it affects neither the sufficiency of the description nor the ambit of the claims I find that it does not result in a lack of compliance with Section 40.
Dr Marsden asserts that various features described as requirements in the description are not recited in claim 1:
That impurities "are not precipitated on the adsorbents" in the adsorption step.
The corresponding feature in the claim is that "no precipitation will occur in the following adsorption step". Although precipitation in the adsorbents is not specifically defined, the broader feature of "no precipitation" includes this requirement. I note that the broader feature does itself find support in the description.
ii)The criteria upon which the dilution step is to operate, in particular that dilution is made until concentration of impurities is not greater than saturation concentration at the possible minimum temperature under operation and the specific diluent used.
The requirement that no precipitation results in a functional limitation on the minimum level of dilution required, that is that sufficient diluent be added son that the concentrating is lower that of a saturated solution. In the description it is stated that "A diluent used to this effect is aqueous sodium aluminate solution ...". I interpret this as an example of a suitable diluent and the applicant need not be so limited in the claim.
iii) That a diluent be prepared separately.
If a diluent is to be added to a solution then it is clear that this diluent may need to be prepared separately prior to the addition. Although this is a requirement of the method defined in claim 1 it is not a distinguishing feature of the invention itself and need not be recited in the claim.
iv)That removal of the added diluent is additionally needed in order to control the water balance in the Bayer processing.
Again, whilst this might be a requirement for the efficient use of the process it is not an essential feature of the invention.
That the adsorbents be resins or compounds that adsorb gallium.
The term "adsorbents for gallium" includes within its scope resins and compounds. I have no evidence that the skilled addressee would consider material other than these resins or compounds to fall within the scope of the term or that the use of such other adsorbents would be inconsistent with the description.
vi)That the separation of the adsorbed gallium be effected by treating the adsorbents with certain agents as specified in the description.
I consider that the particular agent to be used for stripping is not a characterising feature of the invention.
I find that the specification complies with section 40.
conclusion
I have found that the opponent has established locus at the relevant date but that the opposition fails on all grounds.
costs
The normal practice of the Commissioner is for costs to follow the event. I see no reason to depart from this practice insofar as the costs for the main opposition proceedings are concerned.
The opponent has requested that costs regarding the locus standi issue be considered separately because the issue came to life only at the hearing. On this question Mr Bentley referred me to Kaiser Aluminium, supra, in which Kitto J. said on the question of costs that even without an undertaking by the appellant to pay the respondents costs of the appeal he would have been disposed to order the appellant to pay costs, for if the notice of opposition and the material before the Deputy Commissioner had been prepared as they should have been the appeal would have been unnecessary. In that case the interest of the opponent had not been stated on the original Notice. I do not believe that this reasoning applies here. The applicant questioned the opponent's interest as at the date of the hearing. I do not see how the opponent could have addressed this question in a Notice of Opposition lodged some five years prior to this date.
In the light of the locus matter I do not believe that it is appropriate to award full costs against the opponent. I therefore award four fifths of the costs against the opponent.
Vivienne Thom
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack & Co.
Patent attorneys for the opponent : Callinan Lawrie
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