Technological Resources Pty Limited v RGC Mineral Sands

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 678375 in the name of Technological Resources Pty Limited

Title: Upgrading Titaniferous Materials

Action: Opposition under section 59 of the Patents Act 1990 by RGC Mineral Sands Limited

Decision: Issued .
Abstract

It is not a requirement of section 18 of the Act for the published specification referred to in subparagraph (b)(ii) of the definition of prior art base in schedule 1 to be in existence before the priority date of the claim under consideration. It is the information contained in the specification that must have existed before the priority date.
It is not correct to say the requirement of definition (b)(ii) of prior art base in schedule 1 of the Act is one wholly of fair basis and not one of novelty. It is clear from the wording of section 7 (1) that the test for novelty is to be applied to the “prior art information”. That is, the information as it existed before the priority date of the claims (in this case the information in the provisional specification) must satisfy the requirement for novelty.
The claims are not fairly based on the first TR provisional specification, PL4105, insofar as they define an acid leach in the absence of any alkaline leaching step and in that they define the formation of a liquid oxide phase as distinct from a siliceous liquid phase. All of the claims are fairly based on the disclosure in the second TR provisional specification, PL7193, and are entitled to a priority date of 10 February 1993.
RGC provisional specification PL3876 does not contain clear and unmistakable directions to form a liquid oxide phase containing impurities. Further, the opponent has not established that the information contained in the RGC complete specification is fairly based on PL3876. The references to adding a flux cannot be said to be a real and reasonably clear disclosure of forming a liquid oxide phase including impurities that is subsequently cooled to form a leachable impurity bearing phase.
All of the claims of the opposed application except claims 18 and 20 to 22 are disclosed in the RGC complete specification. The information contained in the RGC complete application is also disclosed in the RGC provisional specification PL6401. This information therefore has a priority date of 16 December 1992. Claims 1 to 17, 19, and 23 to 26 lack novelty in light of AU 45513/93.
Applicant allowed 60 days from the date of this decision to amend the specification.
Costs award against the applicant, Technological Resources Pty Limited

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 678375 by Technological Resources Pty Limited, and an opposition thereto under section 59 of the Patents Act 1990 by RGC Mineral Sands Limited.

BACKGROUND

Technological Resources Pty Limited filed patent application 678375 (46915/93) on 12 August 1993. The application was filed under the provisions of the Patent Co-operation Treaty. The application was allocated international application number PCT/AU93/00414 and international publication number WO 94/04709. Patent application 678375 is associated with two provisional patent applications, namely PL 4105 filed 14 August 1992 and PL 7193 filed 10 February 1993.

Patent application 678375 (“the opposed application”) was advertised accepted on 29 May 1997. RGC Mineral Sands Limited filed a notice of opposition to the application on 27 August 1997 followed by a statement of grounds and particulars filed on 28 November 1997. Evidence in support was filed and served in February - April 1998. Evidence in answer was filed and served in August 1998. Evidence in reply was filed and served in December 1998.

I heard the parties to the opposition at a hearing in Melbourne on 22 - 23 April 1999.

Dr John Emmerson QC assisted by Mr Barry Hess of Counsel represented the applicant, Technological Resources Pty Limited.

Messrs Richard Hamer, Johnathon Gotschall and Duncan Bucknall of Arthur Robinson & Hedderwicks, solicitors for the applicant, Ms Louise Duncan, barrister reading with Mr Hess, and Mr Greg Munt of Griffith Hack, patent attorneys for the applicant, also attended the hearing.

Mr Greg Noonan, patent attorney of Freehills Patent Attorneys represented the opponent, RGC Mineral Sands Limited. Ms Debra Tulloch, patent attorney of Freehills Patent Attorneys and Mr Cameron Belyea of Clayton Utz, solicitors for the opponent assisted Mr Noonan.

Mr Richard Aldous of Westralian Sands Limited, the parent company of the opponent, also attended the hearing.

Throughout this decision I will refer to Technological Resources Pty Limited as TR and RGC Mineral Sands Limited as RGC for convenience.

THE OPPOSITION AND THE EVIDENCE

The opponent listed the following grounds of opposition in its statement of grounds and particulars filed on 28 November 1998:

Ground 1: The invention, so far as claimed in any claim of the opposed application, is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b) of the Patents Act 1990.
Ground 2: The specification filed in respect of the application does not comply with sub-section 40(2) or (3) of the Patents Act 1990.

These grounds were accompanied by a number of particulars. At the hearing Mr Noonan indicated that the opponent would not be relying on all the particulars set out in their statement of grounds and particulars. The only grounds pursued at the hearing were that the claims lacked novelty in light of Australian application 45513/93 and that the specification did not comply with section 40.

The evidence in support of the opposition comprised:

A statutory declaration dated 27 February 1998 by Gregory Joseph Noonan, together with exhibits GJN-1 to GJN-7.
A statutory declaration dated 6 April 1998 by Rachel Louise Mole, together with exhibit RLM-1.
A statutory declaration dated 3 April 1998 by Peter Charles Hayes, together with exhibits PCH-1 to PCH-9 (“the first Hayes declaration”).

The exhibits accompanying the Noonan and Mole declarations comprise a number of prior art documents cited in the statement of grounds and particulars. The opponent did not pursue these documents at the hearing.

The evidence in answer comprised:
A statutory declaration dated 7 August 1998 by Frank Lawson, together with exhibits FL-1 to FL-8.

The applicant also proposed to rely on the evidence filed by Wimmera Industrial Minerals Pty Ltd in the opposition by that company to patent application 676682 (45513/93) in the name of RGC Mineral Sands Limited. I will refer to this opposition as “the other opposition”. A list of the evidence in support filed and served in relation to that opposition is as follows:

A statutory declaration dated 13 February 1998 by Michael Hollitt.
A statutory declaration dated 18 February 1998 by Frank Lawson.
A statutory declaration dated 19 February 1998 by Ross McClelland.
A statutory declaration dated 19 February 1998 by Matthew Liddy.
A statutory declaration dated 19 February 1998 by Helen Rofe.

Wimmera Industrial Minerals Pty Ltd is a sister company of the applicant in the present opposition in that both are members of the Rio Tinto group of companies.

The evidence in reply comprised:
A statutory declaration dated 10 December 1998 by Peter Charles Hayes, together with exhibits PCH-10 to PCH-12 (“the second Hayes declaration”).

At the hearing Mr Noonan sought leave to serve further evidence on behalf of the opponent. The further evidence comprised a statutory declaration dated 21 April 1999 by Gregory Joseph Noonan, together with exhibit GJN-8. Exhibit GJN-8 is a copy of the specification of Australian patent application 45513/93 on its filing date. A copy of the published specification of application 45513/93 was filed in the evidence in support. The opponent filed the further evidence to remove any doubt that the text may have been amended between filing of the application and its publication, in view of the decision in Laboratoires Prographarm v FH Faulding & Co Ltd [1998] APO 63 (19 September 1998). Certain pages containing tables were replaced with exact copies having the page number in a different location. After viewing the evidence, counsel for the applicant said that the applicant did not object to the further evidence. I allowed the evidence.

THE SPECIFICATION

The invention relates to the removal of impurities from naturally occurring and synthetic titaniferous materials. According to the description, embodiments of the invention have the common feature of roasting of titaniferous materials in the presence of additives and at temperatures which encourage the formation of a liquid oxide phase, followed at some stage by cooling and aqueous leaching as steps in an integrated process.

Titanium dioxide bearing feedstocks are fed with coke to chlorinators in industrial chlorination processes to produce liquid titanium tetrachloride for further processing. This process is well suited to the conversion of pure titanium dioxide feedstocks. However most other inputs (ie impurities in feedstocks) cause difficulties. Preferred inputs to chlorination are high-grade materials, such as the mineral rutile (95-96% TiO₂). Shortages of rutile have led to the development of other feedstocks formed by upgrading naturally occurring ilmenite (40-60% TiO₂).

In the prior art synthetic rutile has been formed from titaniferous materials such as ilmenite by various techniques. According to the most commonly applied technique, variously operated in Western Australia, the titaniferous material is reduced with coal or char in a rotary kiln at temperatures in excess of 1100§C. In this process the iron content is substantially metallised. Sulphur additions are also made to convert manganese impurities partially to sulphides. Following reduction the metallised product is cooled, separated from associated char, and then subjected to aqueous aeration for removal of metallic iron. The titaniferous product of separation is treated with aqueous sulphuric acid. According to the expert evidence in this opposition the Western Australian process is commonly known as the Becher process.

According to the specification, recent disclosures have provided a process which operates reduction at lower temperatures and provides for hydrochloric acid leaching after the aqueous aeration and iron oxide separation steps. The specification also discusses a number of other prior art processes. According to the specification, none of the prior art processes are fully effective at removing impurities, particularly of vanadium, aluminium and silicon. The specification states at page 5 that there is considerable incentive to discover methods for upgrading of titaniferous materials which can economically produce high grade products almost irrespectively of the nature of the impurities in the feed. The specification continues:

“The present invention provides a combination of processing steps which may be incorporated into more general processes for the upgrading of titaniferous materials, rendering such processes applicable to the treatment of a wider range of feeds and producing higher quality products than would otherwise be the achievable.”

The specification ends with 26 claims. I will set out the claims here in their entirety.

1.        A process for upgrading a titaniferous material by removal of impurities which process includes the steps of:
(i)        heating the titaniferous material to a temperature of less than 1300§C to produce a solid titaniferous phase and a liquid oxide phase containing impurities;
(ii)       cooling the solid titaniferous phase and the liquid oxide phase produced in step (i) to form a solidified material comprising the solid titaniferous phase and an impurity bearing phase that is formed from the liquid oxide phase and is leachable in an acid and/or an alkaline leachant; and
(iii)      leaching the solidified material with an acidic and/or alkaline leachant to leach at least a portion of the impurities from the impurity bearing phase.
2.        A process according to claim 1, wherein the liquid oxide phase is a liquid glassy phase as described herein.
3.        A process according to claim 2, where in the liquid glassy phase is a siliceous liquid phase.
4.        A process according to any one of the preceding claims, wherein the impurity bearing phase formed in step (ii) is a glass phase.
5.        A process according to claim 4, wherein to impurity bearing phase formed in step (ii) is a siliceous glass.
6.        A process according to any one of the preceding claims, wherein step (i) comprises heating the titaniferous material in the presence of one or more compounds which encourage the formation of the liquid oxide phase.
7.        A process according to claim 6, wherein the compound or compounds which encourage the formation of the liquid oxide phase are a compound or compounds of sodium, potassium, lithium, aluminium, phosphorus, silicon or boron.
8.        A process according to claim 7, wherein the compound or compounds which encourage the formation of the liquid oxide phase including caustic soda.
9.        A process according to claim 7, wherein the compound or compounds which encourage the formation of the liquid oxide phase include sodium carbonate.
10.      A process according to claim 7, wherein the compound or compounds which encourage the formation of the liquid oxide phase include alkali metal carbonates.
11.      A process according to claim 7, wherein the compound or compounds which encourage the formation of the liquid oxide phase include silica or silicates.
12.      A process according to claim 7, wherein the compound or compounds which encourage the formation of the liquid oxide phase include borax.
13.      A process according to claim 7, wherein the compound or compounds which encourage the formation of the liquid oxide phase include soda ash and borax.
14.      A process according to any one of the preceding claims, wherein step (i) comprises heating the titaniferous material under reducing conditions.
15.      A process according to claim 14, wherein the reducing conditions comprise heating the titaniferous material in the presence of a solid carbonaceous material.
16.      A process according to claim 15, wherein step (i) comprises heating the titaniferous material to a minimum temperature of 1000§C for a period which avoids substantial reduction to metal of metal oxides in the titaniferous material.
17.      A process according to any one of the preceding claims, wherein step (i) comprises heating the titaniferous material to a temperature of at least 1000§C.
18.      A process according to claim 6 comprises adding the compounds which encourage the formation of the liquid oxide phase in an amount that is sufficient to minimise the formation of titanate phases that are not amendable to subsequent leaching.
19.      A process according to claim 1, wherein step (I) comprises heating the titaniferous material to a minimum temperature of 1000§C under conditions which avoid substantial reduction to metal of iron oxides in the titaniferous material.
20.      A process according to any one of the preceding claims, wherein step (iii) consists of forming the leachant by the addition of water.
21.      A process according to any one claims 1 to 19, wherein step (iii) comprises leaching the solidified material with a recycled solution to leach liquor containing sodium silicate and borax to form a leachate and a residue.
22.      A process according to claim 21 further comprises separating the leachate from residue and leaching the residue with hydrochloric acid having an acid strength in a rang from 1 to 20 wt% hydrochloric acid.
23.      A process according to any one of claims 1 to 19, wherein step (iii) comprises leaching the solidified material with the alkaline leachant.
24.      A process according to claim 23 further comprises leaching the alkaline leached solidified material with an acidic leachant.
25.      A process according to any one of the preceding claims comprises leaching the solidified material at atmospheric pressure.
26.      An upgraded titaniferous material produced by the process of any one of the preceding claims.

As can be seen, claim 1 is the only independent claim. Claims 2 to 26 are dependent on claim 1. The claims can be conveniently grouped as follows: claim 1 is an independent claim; claims 2 to 5 further define the phases present; claims 6 to 13 define compounds which encourage the formation of the liquid oxide phase; and claims 14 to 26 are a miscellaneous group of claims that further define the process steps and conditions.

DECISION

Apart from certain section 40 issues that were raised by the opponent, this opposition is based on an alleged lack of novelty of most of the claims in light of Australian patent application 676682 (45513/93) by RGC Mineral Sands Limited. This document was published after the priority date of the opposed application but, prima facie, has an earlier priority date. It therefore falls into the category of so-called “whole of contents” novelty.

Both the Opposed application and the RGC application are associated with two provisional specifications. The order of events in relation to the applications is as follows:

Filing Date	Application	Applicant	Shorthand Notation
31 July 1992	PL3876	RGC	RGC prov 1
14 August 1992	PL4105	TR	TR prov 1
16 December 1992	PL6401	RGC	RGC prov 2
10 February 1993	PL7193	TR	TR prov 2
28 July 1993	45513/93	RGC	RGC complete
12 August 1993	46915/93	TR	TR complete

Amendments were filed to the TR complete on 27 March 1997 and 3 April 1997 in response to official patent office reports. The RGC complete was published on !7 February 1994.

There appeared to be common ground between the parties at the hearing on some points, namely: that the invention defined by claim 1 and at least some of the other claims of the TR complete was disclosed in the RGC complete; that claim 1 and at least some of the other claims of the TR complete are entitled to a priority date based on TR prov 2; and, that the RGC complete is entitled to a priority date based on RGC prov 2.

There were also some significant points of disagreement, namely: that the TR complete was entitled to a priority date based on TR prov 1; and that the RGC complete was entitled to a priority date based on RGC prov 1. In addition, the opponent alleged that claims 16, 17 and 19 were only entitled to a priority date of 27 March 1997, the date on which amendments to the TR complete were first filed.

Two critical points in relation to the law on novelty, particularly “whole of contents” novelty, were raised at the hearing. On the first point, counsel for the applicant argued that the RGC complete specification could not be used as the basis for a “whole of contents” novelty objection. The argument was that the complete specification was not in existence at the priority date of the claims of the opposed application. This argument is based on an interpretation of section 18 of the 1990 Patents Act, which I will consider in detail below.

The second point relates to the level of disclosure required in the provisional specifications that are associated with the RGC complete. That is, must the RGC provisional specifications contain “clear and unmistakable directions” on how to perform the invention defined in the claims of the opposed application, or is their room to “allow natural developments of the invention” from the RGC provisional specifications to the RGC complete.

I need to come to a position on these matters before I consider the actual facts of this case. If the applicant is correct on the first point, they will have no case left to answer other than some section 40 matters.

“… The Prior Art Base As It Existed Before The Priority Date …”

Counsel for the applicant argued that the RGC complete specification could not be considered for novelty as it did not form part of the prior art base. According to the applicant, “whole of contents” novelty is available on a specification that has been filed but not published before the priority date, but is not available on a specification that is not in existence at the time of priority. The applicant is saying that not only was the RGC complete specification not published at the priority date of the claims under consideration, but that it was not even in existence at the priority date.

In the present case the question to be answered is which of two possible constructions of the Act is correct. The first construction, proposed by Dr Emmerson, requires the complete specification to be in existence before the priority date of the claims. The alternative construction allows for the complete specification to be filed after the priority date of the claims, so long as the information in the complete specification existed before the priority date.

The relevant ground of opposition under the Patents Act 1990 is section 59(b):

Opposition to grant of standard patent
59. The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground: …
(b) that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (a) or (b);

Section 18 deals with patentable inventions. The relevant part of section 18 is as follows:

Patentable inventions
18. (1) Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim: …
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; …

[Note: see also sections 7 and 9.]

Counsel for the applicant argued that the starting point is the prior art base as it existed before the priority date of that claim, from s. 18 (1) (b). This must necessarily exclude anything not in existence at the priority date of the claim. The applicant then took me to the definitions of prior art base and prior art information in schedule 1 of the Act. However I believe it is more appropriate to first go to section 7, as suggested by the opponent and as directed by the note accompanying section 18. Paragraph 7 (1) (c) is the relevant provision.

Novelty and inventive step
7. (1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.

[Notes: (1) For the meaning of document see section 25 of the Acts Interpretation Act 1901.
(2) See also the definitions of prior art base and prior art information in Schedule 1: see also paragraph 18(1)(b) and subsection 98(1).]

Section 7 (1) commences with the words “For the purposes of this Act”. Section 18 sets out the requirement for novelty. Section 7 sets out the relevant statutory tests for novelty “For the purposes of this Act”. Thus it is section 7 that provides the explanation for novelty. That is, if there is tension in the Act, one should look to section 7 to determine the relevant test to determine novelty.

The relevant parts of the definitions of prior art base and prior art information in schedule 1 are as follows:

“prior art base” means:
(a) in relation to deciding whether an invention does or does not involve an inventive step:
(i) information in a document, being a document publicly available anywhere in the patent area; and
(ii) information made publicly available through doing an act anywhere in the patent area; and
(iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area; and

(b) in relation to deciding whether an invention is or is not novel:
(i)information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published.

[Note: For the meaning of document see section 25 of the Acts Interpretation Act 1901.]

“prior art information” means:
(a) for the purposes of subsection 7(1)--information that is part of the prior art base in relation to deciding whether an invention is or is not novel; …

Dr Emmerson pointed out that both section 7 and the definitions in Schedule 1 are silent on the date at which the prior art is made available. For example, section 7 (1) (a) refers to prior art information made publicly available in a single document or through doing a single act. The corresponding definitions of prior art base in Schedule 1 include information in a document, being a document publicly available anywhere in the patent area. Neither of these provisions places a limitation on when the information is made publicly available. Dr Emmerson stated that this work is done by section 18, namely that the invention must be novel when compared with the prior art base as it existed before the priority date of the claim. Dr Emmerson said that without this limitation in section 18, the prior art base would be at large as to the date. No other section of the Act deals with when the prior art is publicly available. In the present case the opponent is relying on subparagraph 7 (1) (c) of the Act. This in turn relies on subparagraph (b)(ii) of the definition of prior art base in Schedule 1. The applicant’s argument is that one must also look to section 18 to determine when the published specification was filed in respect of a complete application.

Schedule 1 defines the prior art base in terms of information of various kinds. It is clear from section 18 that the information in each case must have existed before the priority date of the claimed invention.

Part (a) of the definition of prior art base defines information made publicly available, either in a document or through doing an act. These definitions do not say when the information was made publicly available. I agree with Dr Emmerson that one must look to section 18 to find that the information is made publicly available before the priority date of the claimed invention. The large body of case law on novelty supports this construction.

In contrast, the definition of prior art base in paragraph (b)(ii) relevantly includes additional information regarding the information contained in a published specification filed in respect of a complete application. The definition requires that the specification was published after the priority date of the claim under consideration, and that the information was contained in the specification on its filing date and when it was published. The definition of prior art base also specifies that the information has an earlier priority date than the claim under consideration. This is consistent with the requirement that the information existed before the priority date of that claim. It also provides a relevant link between the published specification and an earlier priority document.

The definition in paragraph (b)(ii) does not specify when the published specification was filed. This is logical because it is not relevant when the specification was filed. Section 7 (1) (c) and the definition of prior art base in paragraph (b)(ii) were drafted to deal with the specific case of lack of novelty arising from a specification published after the priority date of a claim, commonly known as “whole of contents” novelty.

It is not a requirement of section 18 of the Act for the published specification referred to in subparagraph (b)(ii) of the definition of prior art base in schedule 1 to be in existence before the priority date of the claim under consideration. It is the information contained in the specification that must have existed before the priority date.

Having come to that, my decision is supported by Alcatel NV v Commissioner of Patents 35 IPR 255 and by the Industrial Property Advisory Committee (IPAC) report of 29 August 1984. In Alcatel, the proposition rejected was that in all cases novelty required that the invention must not have previously been disclosed to the public. That proposition would have given subparagraph 7 (c) no work to do. Although Alcatel did not deal with the facts of the current case, it did deal with the construction of section 7 (c).

I was directed to two passages in particular in the Alcatel decision. The first referred to the existence of the information of the kind specified in the definition of “prior art base”, where Burchett J said at page 257 lines 23 to 30:

“The interconnected language of section 7 and the definitions in Schedule 1 would make no sense unless the word "novel"in section 7 is to be read as referring to the modified concept of novelty that those provisions introduce. Applying paragraph (b) of the definition of "prior art base" to the question to which the definition itself purports to relate (it is a definition "in relation to deciding whether an invention is or is not novel"), the reader is required to take account of information of the kind specified in sub-paragraph (ii). Thus the existence of information of that kind may determine whether the invention is or is not novel.”

I note here that Burchett J refers to “the existence of information of that kind”. The second paragraph I was referred to is found at page 257 lines 36 to 51,

“If, contrary to my opinion, the verbal and logical infelicity with which section 7 is constructed should be regarded as making the section ambiguous, then resort could be had to the 1984 report of the Industrial Property Advisory Committee on Patents, Innovation and Competition in Australia, on which the relevant provisions of the Act were based. That report makes plain the intention to subsume the doctrine of prior claiming, as understood under the 1952 legislation, within an expanded doctrine of novelty. See paragraph 7.3. The committee thought the “prior claiming approach has proved to be unsatisfactory in practice and, in our opinion, it is too narrow.” It thought the law should be that a claim to an invention might be anticipated by “any disclosure contained in an earlier specification”, that is a specification having an earlier priority date, “notwithstanding that at the priority date of the claim in question, the earlier specification was unpublished and its contents were not publicly available.” This was to expand the notion of prior claiming, which was limited to the specific claims made in the earlier specification.”

Recommendation 7.3 of the IPAC referred to by Burchett J in Alcatel is as follows:

7.3 Prior claiming
A further particular aspect of the novelty requirements is that a claim to an invention may be anticipated (i.e. rendered not novel) by a patent specification having an earlier priority date, notwithstanding that at the priority date of the claim in question, the earlier specification was unpublished and its contents were not publicly available. At present, under Australian law, such anticipation does not arise except as regards a claim which is specifically prior claimed by a claim of the earlier specification. This prior claiming approach has proved to be unsatisfactory in practice and, in our opinion, it is too narrow. In other countries there is adopted a relatively simple "whole contents" approach, under which any disclosure contained in an earlier specification (not being a specification relating to an application which has lapsed or been withdrawn) may be relied upon as an anticipation for determining novelty but not obviousness. We are of the opinion that this approach should now be adopted in Australia, in relation to both standard and petty patents.
[14] WE RECOMMEND that prior claiming by earlier unpublished patent specifications be abolished as a ground of objection or invalidity for both standard and petty patents and replaced by a "whole of contents" approach in determining novelty but not obviousness.

The IPAC report states that a claim to an invention may be rendered not novel “by a patent specification having an earlier priority date, notwithstanding that at the priority date of the claim in question, the earlier specification was unpublished and its contents were not publicly available”. The applicant argued that this clearly means that the anticipating patent specification must be in existence at the priority date, not withstanding that it is unpublished at that date.

In my view the applicant’s conclusion does not follow from what is stated in either the Alcatel decision or the IPAC report. The report refers to an earlier priority date and the fact that at the priority date the earlier specification was unpublished and its contents were not publicly available. I take “an earlier specification” to mean a specification having an earlier priority date, as stated by Burchett J in the paragraph at page 257 lines 37 to 51 set out above.

If Dr Emmerson was correct in his interpretation of the Act, the situation could arise where two complete specifications having different priority dates could validly include identical claims. In my opinion, such a situation would be contrary to what is set out in the Act. The IPAC report states that the “prior claiming” provisions in the 1952 Patents Act were too narrow. Similarly, Burchett J states that the report makes plain the intention to subsume the doctrine of prior claiming. It is clear from these comments that the intention of the Act is to include all prior patent applications that were previously available for prior claiming in any consideration of novelty. The IPAC report recommended replacing the restrictive rules of prior claiming with whole of contents novelty. In my view, it is not reasonable to read the provisions in the Act for whole of contents novelty as being more restrictive than the former provisions for prior claiming.

Assuming that patent application 45513/93 by RGC can be shown to have an earlier priority date than the claims in suit, I find that the RGC application forms part of the prior art base for the determination of novelty as defined at paragraph 7 (1) (c) of the 1990 Patents Act.

Information In Existence Before Priority Date

Dr Emmerson stated that the opponent had said that our law is not really a whole of contents approach but more of a priority date approach. On this basis an opponent could construct a specification on the basis of some earlier document, for example a basic document filed in some foreign parts, to anticipate the claims. If all that was required was a fair basis on an earlier document, then provided RGC could establish fair basis, they could file a complete application after the priority date of the claims, allowing for developments of the invention from the basic document, that would still anticipate the claims. The applicant submitted that this would be an unjust result.

I note that some protection is provided to an applicant by part (b) (ii) (C) of the definition of “prior art base”. That is, the information being relied on must be contained in the specification both on its filing date and when it is published. In relation to the applicant’s concern regarding development of the invention from the provisional applications to the complete application, this leads me to the second point I need to consider.

Mr Noonan stated that the requirement of subparagraph (A) of the definition of prior art base (b) (ii), is that the information of the published RGC complete specification which preempts the respective claims of the opposed application must, as a claim or a notional claim of the RGC complete specification, have a priority date earlier than that of the claim under consideration. He emphasised that this test is one for fair basis, not a novelty or reverse infringement test. He directed me to George Stack v Davies Shephard et al 34 IPR 117, which discussed the concept of a “notional priority date for the relevant disclosures”. He argued that the “information” contained in the published RGC specification was merely a refinement or particularisation of what was described in the RGC prov 1. He stated that this is a “development and precise expression of the invention foreshadowed in the provisional” in the words of Lockhart J in Anaesthetic Supplies v Rescare (1994) 28 IPR 383 at 401.

The applicant, on the other hand, argued that the reference to prior art base cannot be interpreted in the manner contended by the opponent. The applicant said that it is not permissible to take the disclosure of the first RGC provisional and “allow natural developments of the invention” and so treat the first RGC provisional as the starting point for the invention (and information) which is later described in broader or different terms in the RGC complete specification. According to Dr Emmerson, the opponent needed to show that RGC prov 1, if published, would have anticipated the claims.

The passage in Anaesthetic Supplies v Rescare at page 401 referred to by the opponent is as follows:

“All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out. It is a mode of protecting an inventor until the time of filing the final specification. It is not intended to be a complete description of the invention, but simply to disclose the invention fairly, though in its rough state. The interval of time between the provisional and the final is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional.”

In Anaesthetic Supplies v Rescare, Lockhart J also stated, at page 404:

“The essence of the invention must be present in each of the forms of the provisional specification. It is a misconstruction of the provisional specification to say that one can look other than to the language of it to glean what the invention consists of. It must be remembered that, although the description of an invention in a complete specification is more sophisticated than the description in a provisional, nevertheless the provisional must describe the invention.” (emphasis added)

It is well established that a provisional specification must provide a real and reasonably clear disclosure of the invention to provide fair basis for a claim in a complete specification. For example, see CCOM Pty Ltd and Another v Jeijing Pty Ltd and Others, 28 IPR 483. In the context of whole of contents novelty, this could be restated as requiring a real and reasonably clear disclosure of the information contained in the complete specification. While there may be some development in terms of the details of the information from the provisional to the complete, it is nevertheless clear that the provisional specification must describe the information anticipating the claimed invention.

In any case, it is not correct to say the matter is one wholly of fair basis and not one of novelty. This is to read subparagraph (A) of the definition of prior art base (b) (ii) in isolation from the requirements of sections 7 and 18 of the Act. Section 18 requires the prior art base to have existed before the priority date of the claims, as I have discussed above. The Act requires that the information existed before the priority date of a claim under consideration and that the information contained in a published specification would have an earlier priority date than that claim. While there may be considerable overlap between these requirements, it is clear that both requirements must be met for the claim to lack novelty.

The law on novelty is well developed. A commonly applied test is the “reverse infringement” test that asks whether an allegedly anticipatory publication would constitute an infringement of the claim in question (Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228). A prior disclosure will infringe a claim if it posses “each and every one of the essential features” of the claim (Rodi and Weinenberger AG v Henry Showell Ltd (1969) RPC 367 at 391). Alternatively, this has been expressed in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 as “the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented”. It is clear from the wording of section 7 (1) that these tests are to be applied to the “prior art information”. That is, the information as it existed before the priority date of the claims must satisfy the requirement for novelty.

Priority Date of Claims of 678375

The opponent questioned the priority date of all claims of the opposed application. Section 43 and regulation 3.12 deal with priority dates generally. The priority date of a claim is the date of filing of the specification, or if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed. For the purposes of determining priority, a provisional application that is associated with the complete specification is a priority document. Section 43 (3) states that where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined. Section 43 (4) states that different claims may have different priority dates. Section 114 and regulation 3.14 deal with the priority date of claims where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification. The relevant date is the date of filing of the statement of opposed amendments.

For a claim to have a priority date based on a provisional specification, regulation 3.12 requires that the claim be fairly based on matter disclosed in the provisional. The law on fair basis has been considered in Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23 and CCOM Pty Ltd v Jeijing Pty Ltd (1994) 28 IPR 481. The Courts have emphasised in these decisions it is not correct to substitute a test for the statutory requirement for fair basis. However various statements have been approved as useful guidelines. These include the Mond Nickel rules (Re Mond Nickel Co Ltd’s Application for a Patent [1956] RPC 189 at 194), and the requirement that there must be “a real and reasonably clear disclosure”.

The opponent alleged that the priority date of all claims of the opposed application, except for claims 23 and 24 when appended to claim 3, is at the earliest 10 February 1993, the date of TR Prov 2. The opponent alleged:

The term “liquid oxide phase” in claim 1 is not fairly based on “siliceous liquid phase” in TR prov 1.
The requirement in claim 1 that the leaching is with “an acid and/or alkaline leachant” is not fairly based on TR prov 1, which envisages only an effective leach agent being either an alkaline metal hydroxide or water. An acid leach may only be a secondary leach following the primary alkaline or water leach.
Claims 6 to 13 require heating in the presence of “one or more compounds which encourage the formation of the liquid oxide phase”. This is disclosed for the first time in TR prov 2.
In relation to the references in claims 7 to 11 to compounds silica, silica or silicates, and in relation to claims 18, 21 and 22, the priority date is the filing date of the complete application. These matters are not disclosed in TR prov 2.
In relation to compounds of aluminium in claim 7, and to claims 16, 17 and 19, the priority date is the date of one or other of the amendments in the national phase, ie 27 March 1994 or 3 April 1994.

TR prov 1 is concerned with the removal of impurities from titaniferous materials. Page 2 lines 9 to 15 states:

“Embodiments of the present invention have the common feature of roasting of titaniferous materials in the presence of additives and at temperatures which encourage the formation of a siliceous liquid phase, followed at some stage by cooling and aqueous leaching as steps in an integrated process. Additional steps may be employed as will be described below.”

The provisional specification then outlines the problems caused by impurities in industrial chlorination processes using titanium dioxide bearing feedstocks. The specification discusses a number of prior art processes where a sulphuric acid or hydrochloric acid leach is used. According to the specification, vanadium, aluminium and silicon removal is not fully effective when these acid leaches are used. The specification states that the present invention provides processing steps that may be incorporated into more general processes, so that such processes can treat a wider range of feeds. Pages 6 and 7 set out the invention in the following terms.

“The processing steps of interest are:
(i)mixing of titaniferous materials with additives which encourage formation of a siliceous liquid phase and titaniferous solid phases upon subsequent heating to temperatures below 1300§C. (This process step will generally be necessary but might not be important for some materials which can spontaneously produce siliceous liquid phases upon heating).

(ii)heating of the mixture resulting from step (I) to temperatures sufficient to produce a siliceous liquid phase and a solid titaniferous phase, followed by cooling at a sufficient rate to ensure susceptibility of the solidified material to the removal of silica in step (iii).

(iii)leaching of the product of step (ii) in a leaching step in which the effective leach reagent is either an alkali metal hydroxide or water, depending on the composition of the liquid phase of step (ii), conducted in such a manner as to remove at least a portion of the contained silicon.”

The above processing steps are said to allow effective removal of silica and phosphorus, partial removal of alumina, and complete removal of vanadium. In concert with other processing steps, particularly involving hydrochloric acid, almost complete removal of most impurities in titaniferous materials is said to be possible.

The provisional specification states that the aqueous leaching step need not follow directly after the thermal processing step. Further, the specification states that the conditions necessary to conduct effective leaching will depend on the nature of the original feed and the additives. For example, addition of soda ash to siliceous leucoxene will result in a product that can be leached in sodium silicate solution formed directly from the thermally treated material; the active leachant in this case is simply water. In other cases, the specification states that caustic soda solution will be an effective leachant. Following leaching the mineral product may pass on to other steps in the process. For example, an acid leach may follow the disclosed leaching step.

Finally, the provisional specification sets out an example. In the example, the separated treated mineral is leached in a solution of sodium silicate. After filtration and washing the leached material is then leached with hydrochloric acid.

In relation to the fair basis of “liquid oxide phase” in claim 1, Professor Hayes states in his first declaration that the term appears in TR prov 2 but not in TR prov 1, where the term in a similar context is “siliceous liquid phase”. Professor Hayes states that an oxide is clearly intended to be any substance containing oxide, whereas “siliceous” means “containing silica”. He states that the term “oxide” refers to a very broad range of known phases and compositions. “Oxides” embraces “siliceous” materials and a wide range of other oxygen-containing phases or substances.

Professor Lawson states in his declaration that he agrees with Professor Hayes to the extent that the term “liquid oxide” as used in the specification embraces liquid siliceous phases and in theory, also embraces other oxygen containing liquids such as oxide glasses and molten oxide minerals. Professor Lawson states that the term “liquid oxide” is therefore a theoretical generalization from the term “siliceous liquid”. However, Professor Lawson states that in practice almost all feed materials contain silica or silicates. Silica tends to preferentially deport to a liquid oxide phase if one is formed and such a phase will almost inevitably be siliceous. Professor Lawson contends that in the practical metallurgical context of mineral sands processing, the term “liquid oxide” and “siliceous liquid” are effectively synonymous. I also note that in his declaration filed in relation to the other opposition, Professor Lawson states that generally only a small number of oxides are able to form glasses.

The applicant’s argument is that, taken in the context of mineral processing, something that answers the description of siliceous liquid also answers the description of a liquid oxide. TR prov 1 makes it clear that other impurities will be found in the siliceous liquid phase. The applicant argued that the siliceous liquid phase would include these other impurities as oxides. Counsel for the applicant argued that given the allowed development from the provisional to the claims, then claim 1 is fairly based.

Professor Hayes rejects the contention that the terms “liquid oxide phase” and “siliceous liquid phase” are effectively synonymous. In his view the two terms are entirely different in ambit. He states that the latter means “a liquid containing silicon dioxide” ie the oxide of just one element, while the term “liquid oxide” means a liquid phase of any of a vast range of compounds of any element with oxygen.

It is clear that TR prov 1 is directed to a process involving the formation of a siliceous liquid phase and the subsequent removal of the contained silicon by leaching. While other impurities may be present in the siliceous liquid phase as oxides, this does not alter the disclosure that a siliceous liquid phase is produced.

The TR complete specification describes producing a liquid oxide phase. The specification states that it is preferred that the liquid oxide phase be a liquid glassy phase. It is also preferred that the liquid glassy phase be a siliceous liquid phase. I agree with Professor Hayes that the terms “liquid oxide phase” and “siliceous liquid phase” as used in the specification are different in ambit. The specification makes it clear that a siliceous phase is the preferred form of the liquid oxide phase. I also note that claim 3 further defines the liquid oxide phase of claim 1 as being a siliceous liquid phase. If I were to read “liquid oxide phase” in claim 1 as being synonymous with “siliceous liquid phase”, then claim 3 would be of no effect. It is clear that the term “liquid oxide phase” is broader than “siliceous liquid phase” and includes liquid oxide phases other than a siliceous liquid phase. Claim 1 goes beyond what is disclosed in the provisional. Therefore claim 1 is not fairly based on the first provisional specification in relation to “liquid oxide phase”.

In relation to the leaching step, the experts are again at odds. Professor Hayes states in his first declaration that TR prov 1 contains no mention of acid leaching of the impurity bearing phase other than as an option additional to alkali or water leaching. Professor Hayes states that he does not consider the order of leaching significant, but the provisional specification does not suggest acid leaching alone. In his second declaration, Professor Hayes changes his position slightly after reviewing the first TR provisional and says it is clear to him that an acid leach is only mentioned as a second leach following a primary leach with alkali metal hydroxide or water. Professor Hayes states in both declarations that given the wide usage of leaching in minerals processing, it is significant that the leach is deliberately confined to alkali or water leaching as distinct from acid leaching.

Professor Lawson states that the first TR provisional discloses a process in which a water or alkaline leaching step is followed by an acid leaching step. Professor Lawson says that it is evident that this will lead to a more efficient leaching process. However, he says there is nothing in the provisional that teaches that acid leaching alone is not an option. Professor Lawson’s understanding is that water or alkaline leaching is preferred but acid leaching alone is not precluded.

At the hearing Dr Emmerson took me to a number of passages that referred generally to aqueous leaching and suggested that this included acid leaching. However in my view it is not helpful to refer to passages of the description in isolation. The document must be read as a whole so that the disclosures therein are read in the proper context. Also, in determining fair basis it is not a matter of deciding if something may or may not be precluded by the provisional. Rather, it is a matter of determining whether or not there is a real and reasonably clear disclosure in the provisional of what has subsequently been claimed.

The provisional specification discusses the problem of prior art processes involving acid leaches not removing certain impurities, particularly silicon. The provisional specification then sets out a process to address this by partitioning impurities into a siliceous liquid phase followed at some stage by leaching the product in an effective leach reagent comprising either an alkaline metal hydroxide or water, to remove at least a portion of the contained silicon. The process can be incorporated into more general processes, particularly in concert with hydrochloric acid.

In my view, Professor Hayes was correct in his first declaration when he said the order of leaching was not important. If some of the impurities are alkali or water leachable and some are acid leachable, the order in which the impurities are separated is not important. What is important is that an alkaline or water leach is carried out at some stage to remove at least a portion of the contained silicon.

TR prov 1 does not contain a real and reasonably clear disclosure of an acid leach alone. The provisional specification describes a process in which an alkali or water leach is necessary to separate a particular group of impurities. Therefore the claims are not fairly based on TR prov 1 insofar as “acidic and/or alkaline leachant” in claim 1 can be notionally rewritten as “acidic leachant”.

Claim 1 is not fairly based on TR prov 1 in that TR prov 1 only describes a process in which a siliceous liquid phase is formed and an alkaline or water leach is employed, with or without an acid leach. Given that the document cited against the claims may also contain information having different priority dates, it is necessary for me to determine the fair basis of the dependent claims apart from the specific issues of “liquid oxide phase” and leaching.

Claim 6 requires heating the titaniferous material in the presence of compounds that encourage the formation of the liquid oxide phase. Specific compounds are defined in claims 7 to 13. TR prov 1 describes mixing the titaniferous materials with additives that encourage the formation of a siliceous liquid phase and titaniferous solid phases upon heating to temperatures below 1300§C. The provisional specification states that this process step might not be important for some materials that spontaneously produce siliceous phases upon heating. TR prov 1 specifically mentions soda ash and sodium carbonate as examples of such additives. TR prov 1 provides a real and reasonably clear disclosure of using additives to promote the formation of an oxide phase and gives some examples. While not all the compounds defined in claims 7 to 13 are specifically mentioned in TR prov 1, TR prov 1 makes it clear that specific additives are not critical to the invention and are dependent on the feed material. The specific additives defined in the claims seem to me to be the type of development allowed by Lockhart J in Anaesthetic Supplies v Rescare (1994) 28 IPR 383 at 401 when he referred to “development and precise expression of the invention foreshadowed in the provisional”.

The opponent alleges that there is no disclosure of claims 18, 21 and 22 in either TR prov 1 or TR prov 2. Claim 18 defines minimising the formation of titanate phases. Professor Lawson’s evidence is that minimisation of titanate formation is implicit in TR prov 1. He states that the unmistakable teaching of the first TR provisional is to avoid the formation of alkali or alkaline earth titanates. As the relevant test for fair basis is whether or not there is a real and reasonably clear disclosure to the skilled addressee, I accept Professor Lawson’s evidence and find that claim 18 is fairly based on TR prov 1.

Claims 21 and 22 define specific aspects of the leaching step. The opponent’s objections to these claims appears to be based on TR prov 1 not explicitly mentioning borax (claim 21) or the acid strength of 1 to 20 wt% (claim 22). Borax is explicitly mentioned in TR prov 2. TR prov 1 states that the conditions necessary to conduct effective leaching will depend on the nature of the original feed and the additives. The provisional then gives some examples of effective leaches in given circumstances. The provisional specification must be construed in the eyes of a skilled addressee. As discussed by Professor Lawson, the particular conditions defined in claims 21 and 22 are well known to the skilled addressee. Professor Hayes also states that the acid or alkaline leach is a fundamental tool of metallurgists. The features of claims 21 and 22 are merely details of the invention plainly foreshadowed in the specification.

Claims 16, 17 and 19 each define heating the titaniferous material to at least 1000§C. As these claims are appended to claim 1, they effectively define a range of from 1000§C to less than 1300§C. TR prov 1 describes heating to temperatures below 1300§C and gives an example were the material is heated to a maximum temperature of 1000§C. Professor Lawson states that the term “maximum temperature” in the example describes the highest temperature reached by the charge in that example. The range of 1000§C to less than 1300§C is clearly fairly based on TR prov 1. The range is also fairly based on the TR complete specification as filed, which similarly describes heating to less than 1300§C and gives examples at 1000§C.

Claim 1 defines more than one form of the invention in that “liquid oxide phase” includes “siliceous liquid phase” but also includes other oxide phases and in that the claim defines various alternatives for leaching. A siliceous liquid phase is defined in claim 3, but claim 3 is appended to claim 1 which defines an “acid and/or alkaline leachant”. Similarly claims 21 to 24 define an alkaline leach as an essential part of the process, but are appended to claim 1 which defines a liquid oxide phase. Claim 1 and the dependent claims are fairly based on TR prov 1 only to the extent that they define a form of the invention in which the liquid oxide phase is a siliceous liquid phase and in which the solidified material is leached in an alkaline leach. I have found that the claims are not fairly based on TR prov 1 insofar as they define an acid leach in the absence of any alkaline leaching step and in that they define the formation of a liquid oxide phase other than a siliceous liquid phase.

TR prov 2 describes heating a titaniferous material to produce a solid titaniferous phase and a liquid oxide or glassy phase at a temperature below 1300§C, cooling the product, and leaching the solidified material in an acidic or alkaline leachant depending on the composition of the impurity bearing phase. All of the claims are fairly based on the disclosure in TR prov 2. Therefore the claims are entitled to a priority date of 10 February 1993.

Information Contained in RGC Complete Specification 45513/93

The RGC complete specification describes a process for facilitating the removal of impurities from titaniferous materials. The process is particularly concerned with the removal of radionuclides such as aluminium and thorium from ilmenite, but also describes removal of other impurities. The RGC complete describes four aspects of the invention. The first aspect involves heat treatment to enhance removal of radionuclides. The second, third and fourth aspects describe heat treatment of titaniferous materials with the addition of reagents selected to form a phase that disperses onto the surfaces of the titaniferous material and incorporates the impurities. The reagents are preferably glass forming reagents such as borides, fluorides, phosphates and silicates. A suitable temperature effective to achieve incorporation of impurities is 900 to 1200§C. The cooled reduced ilmenite may be subjected to further steps, namely leaching with an acid or treatment with a basic solution followed by an acid leach.

According to Professor Hayes, all of the claims of the opposed application except claims 18 and 20 to 22 are disclosed in the RGC complete. Professor Hayes sets out a table in his evidence giving references to where in each of the RGC applications the features defined in the claims are disclosed. The applicant has not contested Professor Hayes’ evidence in relation to the published RGC complete specification or the second RGC provisional specification. In fact, Professor Lawson states that there are many similarities between the TR complete and the RGC complete. Both complete specifications describe a process in which there is a heating step that produces a solid titaniferous phase and a liquid oxide phase containing impurities. The cooled liquid oxide phase is subsequently leached from the titaniferous product.

I have reviewed the RGC complete including the references given by Professor Hayes and I agree that all claims apart from claims 18 and 20 to 22 are disclosed therein. Similarly, I have reviewed RGC prov 2 taking Professor Hayes comments into account and agree that the information in the RGC complete disclosing all claims apart from claims 18 and 20 to 22 is also disclosed in RGC prov 2.

Priority Date of Information Contained in 45513/93

The information contained in the RGC complete application is also disclosed in RGC prov 2. This information therefore has a priority date of at least 16 December 1992. As this date is before the priority date I have determined for the claims, claims 1 to 17, 19, and 23 to 26 lack novelty in light of AU 45513/93.

It is possible for the applicant to amend the claims so that they define subject matter having a priority date based on TR prov 1. Therefore I must determine the earliest priority date of the information contained in the RGC complete.

RGC prov 1 describes a process for the removal of radionuclides such as uranium and thorium and their radionuclide daughters from titaniferous materials. According to a first aspect of the provisional specification, a heating pre-treatment is applied to the titaniferous material to an extent effective to enhance the accessibility of at least one of the radionuclide daughters to subsequent removal. After heat-treatment of the titaniferous material to 1200§C or higher, thorium rich phases of up to several microns in size could be identified at and below the surface of the titaniferous grains. According to a second aspect, titaniferous material is subjected to a pretreatment effective to cause aggregation or concentration of the radionuclides and one or more of the radionuclide daughters into identifiable deposits, to enhance subsequent separation of the radionuclides from the material. Page 4 lines 23 to 25 of RGC prov 1 states:

“The heating pretreatment may be on an ilmenite directly or an ilmenite to which a reagent, for example a flux has been added to enhance the solubility of thorium and its radionuclide daughters during the leaching step.”

The specification states that between 500 and 1000§C, there is enhanced removal of radionuclide daughters but diminished parent removal. At 1000 to 1300§C, removal of the parent and daughter radionuclides improves and occurs to a similar extent. At higher temperatures, eg 1400§C, the total removal is high and similar removal of parent and daughter radionuclides is sustained. The specification then states:

“It is believed that these temperature ranges can be substantially lowered by adding a reagent, eg a flux, to enhance solubility of the radionuclides during the subsequent leaching step”.

The process preferably further includes leaching the material with an acid containing fluoride, or treatment with a basic solution followed by an acid leach.

The provisional specification then gives five examples. Example 5 shows the effect of the addition of a fluxing reagent to the ilmenite before the heat treatment. In example 5, a sample of ilmenite was heated at 100§C in water containing sodium dihydrogen phosphate. The suspension was cooled and the excess solution containing the phosphate was decanted. After washing with water, the solid was heated at 1000§C. The sample was subsequently leached with hydrochloric acid containing sodium fluoride. According to the example, the results show that thorium removal is much greater from the material treated with phosphate.

There is agreement between the experts that the primary disclosure of RGC prov 1, including examples 1 to 4, concerns thorium-containing deposits that are most likely solid. Example 2 shows a number of photomicrographs. Although the quality of the photomicrographs is poor, Professor Lawson’s evidence is that they show inclusions that were not liquid at elevated temperature. Professor Hayes agrees with this analysis. However the opponent argues that examples 1 to 4 refer to heating ilmenite without any additions to the charge. According to the opponent, the provisional contains two levels of disclosure. At the first level, there is disclosed a titaniferous phase and a thorium rich phase. However, the opponent submitted that the provisional also contains proposals for a modification or enhancement of, or an alternative to, the basic described concept. That is, adding a flux that will inevitably result in formation of a liquid phase.

There is significant disagreement between Professors Hayes and Professor Lawson over whether or not the three references to adding a “fluxing reagent” in the provisional is a disclosure of forming a liquid oxide phase containing impurities.

Professor Hayes refers to the addition of “flux” or “fluxing reagents” and states that he clearly understands this to mean that a “liquid phase” will result. In his view, a liquid phase in which thorium impurities are aggregated and concentrated would clearly have formed during processing due to the use of sodium dihydrogen phosphate as a “fluxing reagent”. Professor Hayes states that when the system is cooled, the liquid oxide phase clearly forms an “impurity bearing phase” since, according to the RGC provisional, there is “aggregation and concentration of the thorium” into discrete phases.

Professor Lawson states that a “flux” is a compound added to a chemical system because of its tendency to form or affect the properties of a liquid phase in the system. There are also materials that are well known as fluxes and are called fluxes in day to day language in the laboratory even when there is no true fluxing involved at all. Professor Lawson states that fluxes have a very wide range of uses, and sets out these uses in some detail. Professor Hayes gives a number of dictionary definitions of the term “flux” in his second declaration. These dictionary definitions are not inconsistent with Professor Lawson’s analysis.

Professor Hayes states that in all of the examples provided by Professor Lawson a liquid phase is present and this liquid phase is a liquid oxide phase. In his view, the references to flux in the provisional specification are a clear and unmistakable direction to form a liquid phase which must inherently be a liquid oxide phase in the system involved. However, the claims of the opposed application do not merely define the formation of a liquid phase in any amount for any reason. The claims require producing a liquid oxide phase containing impurities, which on cooling forms a leachable impurity bearing phase. Professor Lawson states that of the examples he has given, only in the case of slagging systems is flux added for the purpose of forming a liquid phase or modifying the properties of a liquid phase to partition impurities with the subsequent aim of separation. In the slagging systems known to him in and before 1993, the contact was between two liquid phases, usually a liquid slag and a liquid metal or a liquid slag and a liquid matte. In the opposed claims, a solid titaniferous phase and a liquid oxide phase are formed.

I agree with the statement by Professor Lawson that it cannot be concluded from a general reference to “flux” that flux addition is used to form a liquid phase into which impurities deport. To determine what is understood by the reference to flux addition, it is necessary to look at the references to flux in their context.

The only references to adding a flux are the two passages I have quoted above and example 5. The term “flux” is not used in the RGC complete. Example 5 of RGC prov 1 is not included in the RGC complete, although example 5 of the complete describes the effect of the addition of a phosphate compound before heat treatment.

Professor Lawson says that the stated purpose for adding the reagent in the first passage is to enhance the solubility of radionuclides during subsequent leaching. He states that this is not a general property of fluxes. The passages are not clear whether the flux acts directly to enhance radionuclide solubility, or whether it acts to enhance the process of thermal treatment that results in enhanced radionuclide solubility.

In relation to the second passage, Professor Lawson states that the provisional specification as a whole, particularly the passage preceding the reference to flux, directs the reader to the formation of solid thorium-rich inclusions. This context indicates that the flux has the effect of lowering the temperature at which these solid inclusions can form. Professor Lawson says that this is logical because enhancing solid state reactions is a well-known purpose for flux addition.

Professor Hayes, on the other hand, states that it is a natural reading of the references to “flux” and “enhancing the solubility of the radionuclides” to understand these passages as suggesting the use of a flux to involve a liquid phase in which the radionuclide impurities are incorporated. Professor Hayes states that although there is no definite evidence of a liquid phase present in the micrographs, the instructions to add a flux are a significant modification to make the thorium-rich phase a liquid phase.

Example 5 of RGC prov 1 describes heating ilmenite at 100§C in water containing sodium dihydrogen phosphate, decanting excess solution and washing with water before heating the ilmenite at 1000§C. Professor Lawson states that the decanting and washing steps will remove most of the phosphate. The small amount remaining may react with other materials or dissolve into the solid phases of the material. Professor Lawson states that assuming a liquid phase is formed, and there is no evidence of that, the amount would be insufficient to incorporate a range of impurities in the manner claimed in the TR complete or described in the RGC complete. Professor Hayes responds that it is possible that small quantities of flux may lead to initial reduction in impurities, but larger quantities are required to access impurities in different forms or locations within the samples. He states that while example 5 is limited, the observed results are not inconsistent with possible mechanisms.

I note that while the experts are divided over the role of the flux in the process, they agree that prior to the filing of the RGC and TR applications, the standard practice in the prior art processes for upgrading titaniferous material was that the phase for concentrating the impurities remained solid.

In my view, RGC prov 1 does not clearly disclose forming a liquid oxide phase containing impurities. The evidence supports the contention that RGC prov 1 describes a process whereby the impurities are formed into solid inclusions. To the extent that adding a flux modifies this process, there is no clear direction that this will form a liquid oxide phase containing impurities. The only example appears to teach removing most of the reagent prior to heating. While the observed results may not be “inconsistent with possible mechanisms”, as Professor Hayes put it, this falls well short of disclosing the process defined by the claims.

At the hearing Mr Noonan argued that the significance of adding a flux to form a liquid oxide phase incorporating the impurities was later realised and developed in RGC prov 2 and the RGC complete. This was therefore a refinement or particularisation of the flux addition proposal of RGC prov 1. As such, Mr Noonan argued that RGC prov 1 provided a fair basis for the information in the RGC complete. I have stated elsewhere in this decision that the prior art information that forms the basis of any lack of novelty must be described in the provisional specification. In any case, the opponent has not established that the reference to adding a flux does form a fair basis for producing a liquid phase incorporating impurities. The experts cannot agree on the purpose of the flux. The only example is inconclusive, though appears to teach removing most of the flux prior to heating. In such a situation, the benefit of any doubt must be given to the applicant (Montecatini Edison s.p.a. v Eastman Kodak (1971) 45 ALJR 593 at 595). The references to adding a flux cannot be said to be a real and reasonably clear disclosure of forming a liquid oxide phase including impurities that is subsequently cooled to form a leachable impurity bearing phase. Even if the opponent is correct in its submissions that it is a question of fair basis rather than a novelty or reverse infringement test, the opponent has not established that the information is fairly based on RGC prov 1.

Section 40

At the hearing the opponent relied on the following particulars in relation to section 40.

Claim 1 and its dependent claims do not define the invention and are not fairly based on the matter described in the specification for the following reasons:

The temperature range in the heating step being “less than 1300§C”.
The temperature in claims 16, 17 and 19 being above 1000§C.
The reference in step (iii) of claim 1 to leaching with an acidic leachant other than after an alkaline leach.

The specification does not describe the invention fully because there is no disclosure or no adequate disclosure of operating the heating step of claim 1 at other than 1000§C.

The specification contains a consistory statement at pages 7 and 8 in similar terms to claim 1. That is, the statement describes heating to less than 1300§C and also leaching with an acidic and/or alkaline leachant. Page 11 refers to the leaching conditions. The description states that the material can be leached in sodium silicate solution formed directly from the thermally treated material. In this case the active leachant is simply water. In other cases caustic soda solution or acid will be effective leachant. The examples of the description all describe heating to 1000§C and using an alkaline leach, in some cases followed by an acid leach.

Mr Noonan argued that the consistory statement was merely a word-for-word copy of the claims created by a word processor and does not provide a fair basis for the claims. He submitted that the consistory statement contradicts and is in disconformity with the matter described in the specification. However I can see nothing in the consistory statement that contradicts anything elsewhere in the specification. All of the examples describe heating to temperatures that are less than 1300§C. Professor Lawson gives evidence that 1300§C is a practical limit in such a process for mineral sands. Section 40 only requires that the complete specification describe the invention fully, including the best method known to the applicant of performing the invention. There is no requirement to describe all methods of performing the invention. The specification has set out a range of temperatures and given an example within that range, namely 1000§C. Similarly, the description is consistent in relation to an “acid and/or alkaline leach”. In relation to the range of temperatures in claims 16, 17 and 19, I have dealt with this previously.

The complete specification complies with section 40.

CONCLUSION

It is not a requirement of section 18 of the Act for the published specification referred to in subparagraph (b)(ii) of the definition of prior art base in schedule 1 to be in existence before the priority date of the claim under consideration. It is the information contained in the specification that must have existed before the priority date.

It is not correct to say the requirement of definition (b)(ii) of prior art base in schedule 1 of the Act is one wholly of fair basis and not one of novelty. It is clear from the wording of section 7 (1) that the well-known tests for novelty are to be applied to the “prior art information”. That is, the information as it existed before the priority date of the claims (in this case the information in the provisional specification) must satisfy the requirement for novelty.

The claims are not fairly based on the first TR provisional specification, PL4105, insofar as they define an acid leach in the absence of any alkaline leaching step and in that they define the formation of a liquid oxide phase as distinct from a siliceous liquid phase. Apart from claims 21 to 24 when appended to claim 3, none of the claims are fairly based on PL4105. All of the claims are fairly based on the disclosure in the second TR provisional specification, PL7193, and are entitled to a priority date of 10 February 1993.

RGC provisional specification PL3876 does not contain clear and unmistakable directions to form a liquid oxide phase containing impurities. Further, the opponent has not established that the information contained in the RGC complete specification is fairly based on PL3876. The references to adding a flux cannot be said to be a real and reasonably clear disclosure of forming a liquid oxide phase including impurities that is subsequently cooled to form a leachable impurity bearing phase.

All of the claims of the opposed application except claims 18 and 20 to 22 are disclosed in the RGC complete specification. The information contained in the RGC complete application is also disclosed in the RGC provisional specification PL6401. This information therefore has a priority date of 16 December 1992. As this date is before the priority date I have determined for the claims, claims 1 to 17, 19, and 23 to 26 lack novelty in light of AU 45513/93.

I have found that there is patentable subject matter contained in the specification. I therefore allow the applicant 60 days from the date of this decision to file amendments overcoming my objections.

COSTS

In matters before the Commissioner costs usually follow the event. I have found that the opponent has been succesful on the ground of novelty. I award costs against the applicant, Technological Resources Pty Limited

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Griffith Hack & Co, Melbourne
Patent attorneys for the opponent : Freehills Patent Attorneys, Melbourne

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Citations

Technological Resources Pty Limited v RGC Mineral Sands [1999] APO 49

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[1999] APO 49

2 August 1999