Technological Resources Pty Limited v RGC Minerals Sands Limited

[2001] APO 45

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 by RGC Minerals Sands Limited, final determination.

Decision:          Issued            .

Abstract

The amendments made to the specification by the applicant overcome the deficiencies identified in the decision of 2 August 1999.  That decision held that there was no disclosure of an acid leach in the absence of an alkaline leach in the first provisional specification.  The amendments have removed the possibility of an acid leach alone from the claims.  The claims have also been amended to define formation of a siliceous liquid phase, in conformity with the decision of 2 August 1999.  There was no finding in the decision of 2 August 1999 that the claims needed to specifically define removing silica impurity in the alkaline leaching step.

The definition of an acid leach subsequent to an alkaline leach in new claim 23 was encompassed by "an acidic and/or alkaline leach" in the claims as accepted.  This had already been considered to be fairly based on the first provisional specification in the original decision and was not open to reconsideration.

As the deficiencies in the decision of 2 August 1999 have been overcome, the claims as amended are now fairly based on provisional application PL4105 filed 14 August 1992.  This is before the priority date of the prior art information contained in Australian patent application 676682, which was found to be 16 December 1992.  Therefore all of the claims as now amended are novel.

Direction that the application be sealed after 30 days from the date of this decision.  If the Commissioner has been served with a notice of appeal before that time, direction that sealing not occur until the appeal has been decided or discontinued.

Costs relating to the final determination awarded against the opponent.

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 under section 59 of the Patents Act 1990 by RGC Mineral Sands Limited; final determination.

BACKGROUND

Technological Resources Pty Limited (Technological Resources) filed patent application 678375 (46915/93) on 12 August 1993.  Patent application 678375 is associated with provisional patent applications PL4105 filed 14 August 1992 and PL7193 filed 10 February 1993.

Patent application 678375 was advertised accepted on 29 May 1997.  RGC Mineral Sands Limited (RGC) filed a notice of opposition to the grant of a patent on the application on 27 August 1997.  I heard the parties in relation to the substantive opposition in Melbourne on 22-23 April 1999.  Following that hearing, in a decision dated 2 August 1999 (Technological Resources Pty Limited v RGC Mineral Sands Limited (1999) APO 29 (2 August 1999)), I found that claims 1 to 17, 19, and 23 to 26 lacked novelty in the light of Australian patent application 45513/93. This followed from a finding that the claims were not fairly based on provisional patent application PL4105. I concluded that there was patentable subject matter in the specification and allowed the applicant 60 days from the date of my decision to file amendments to overcome the grounds upheld in the decision.

On 30 September 1999, Technological Resources requested leave to amend patent application 678375 under section 104 of the Patents Act 1990. On 13 April 2000 Iluka Midwest Limited (Iluka, formerly RGC) served a notice of opposition to the amendment.  Iluka withdrew its opposition to the amendments on 12 February 2001 and requested to be heard in relation to the final determination of the opposition.  I heard the parties in Melbourne on 2 May 2001.  Dr John Emmerson, QC, represented the applicant.  Mr Greg Noonan, patent attorney of Freehills Carter Smith Beadle, represented the opponent.  A number of other representatives from Arthur Robinson & Hedderwicks and Griffith Hack attended on behalf of the applicant and from Freehill Carter Smith and Beadle on behalf of the opponent.

AMENDMENTS

The statement of amendments proposed the substitution of new page 8 of the description and new claim pages 19 to 23.  The amendments to the claims involve replacing “liquid oxide phase” with “siliceous liquid phase” throughout the claims, amendment of the leaching step in claim1, addition of new claim 23, and some consequential deletion and renumbering of claims.  I will set out the main amendments here, showing the additions as underlined and striking out the deletions.

1. A process for upgrading a titaniferous material by removal of impurities which process includes the steps of:

1. heating the titaniferous material to a temperature of less than 1300°C to produce a solid titaniferous phase and a siliceous liquid oxide phase containing impurities;

2. cooling the solid titaniferous phase and the siliceous 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 siliceous liquid oxide phase and is leachable in an acid and/or an alkaline leachant;

3. leaching the solidified material with an acidic and/or leachant and an alkaline leachant or with an alkaline leachant to leach at least a portion of the impurities from the impurity bearing phase.
   
   

1. A process according to claim 1, wherein the liquid oxide phase is a liquid glassy phase as described herein.
   
   

2. A process according to claim 2, wherein the liquid glassy phase is a siliceous liquid phase.

…

22 24   A process according to any one of claims 1 to 17 wherein step (iii) claim 23 wherein comprises leaching the alkaline leached solidified material with an acidic the alkaline leachant and subsequently with the acidic leachant.

1. A process according to any one of claims 1 to 17 wherein step (iii) comprises leaching the solidified material with the acidic leachant and subsequently with the alkaline leachant.

Apart from some consequential renumbering of claims, the only other amendments of note to the claims is the replacement of the phrase “the liquid oxide phase’ with “the siliceous liquid phase” in certain dependent claims, consistent with the amendment to claim 1.  The amendment to page 8 involves changes to clauses in the description corresponding to the claims.

RELEVANT ISSUES

By way of letter dated 12 February 2001, the opponent indicated that they wished to make submissions at the hearing on the following matters:

1. That the amended claims are not fairly based on the provisional application PL4105, in light of the findings in the decision dated 2 August 1999, and that the claims are therefore invalid in the light of Australian application 45513/93;
   
   

2. That the amended claims do not comply with Section 40 of the Patents Act 1990;
   
   

3. That the applicant has not complied with the findings of the hearing officer in the decision dated 2 August 1999 in that the amended claims do not overcome the grounds of invalidity upheld by the hearing officer in that decision;
   
   

4. That, in view of (1) to (3), either:

(a)The application should be refused, or

(b)The applicant should be directed to further amend the application pursuant to Section 107 of the Patents Act 1990.

DECISION

The parties agreed that a determination hearing following a decision in an opposition is restricted to addressing those issues arising out of specific deficiencies found in the earlier decision, and anything arising consequentially upon amendments to correct those deficiencies.  This follows from a decision of the High Court in R v Smith (Commissioner of Patents); Ex Parte Mole Engineering Pty Ltd (1981) 147 CLR 340. The decision in Mole Engineering has been applied by the Commissioner of Patents in matters decided under the Patents Act 1990, for example see Queensland Plumbing Pty Ltd v Trade Waste Diversion Pty Ltd 27 IPR 303.

The opponent takes issue with two points arising from the amendments.  The first relates to the replacement of "acidic and/or alkaline leachant" in step (iii) of claim 1 with the language "with an acidic leachant and an alkaline leachant or with an alkaline leachant".  As I understand it, the opponent's argument is that this amendment does not fully address the findings in my earlier decision, as claim 1 as amended does not specify that silicon impurity is removed in the alkaline leach.  The second point relates to new claim 23.  The opponent argues that there was no equivalent claim in the specification that I considered in my earlier decision.  The opponent has argued that while I have found that the order of leaching is not important in a generic claim, it is not permissible for the applicant to include a claim specifically directed to an acid leach followed by an alkaline leach.

In my decision of 2 August 1999, I said

"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."

(TR prov 1 refers to provisional patent application PL4105.  I will use the same shorthand notation here that I used in my earlier decision.)

The claims have now been amended to define the relevant phase as a siliceous liquid phase.  However, the opponent now contends that the claims also need to specifically define the removal of silicon impurity in the alkaline leaching step.

The relevant point at issue in the substantive opposition was whether or not there was a fair basis in TR prov 1 for leaching with "an acid and/or alkaline leachant".  As addressed in my earlier decision, the provisional specification (TR prov 1) sets out a process whereby impurities that were not effectively removed in the prior art processes involving acidic leaches could be removed with an alkaline or water leach.  In concert with other processing steps, particularly involving hydrochloric acid, almost complete removal of most impurities is said to be possible by the process described in TR prov 1.

In my decision I referred to the expert evidence in relation to the leaching step.  The opponent's expert, Professor Hayes, had stated 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.  In his second declaration, Professor Hayes had said that TR prov 1 only mentions an acid leach as a second leach following a primary leach with alkali metal hydroxide or water.  I will set out here the relevant findings on the matter from the decision dated 2 August 1999.

"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.  …"

In the conclusion to my decision, I said

"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. …"

It is clear from the decision that the issue was approached on the basis that "acidic and/or alkaline leachant" can be notionally rewritten as acidic leachant; or alkaline leachant; or acidic and alkaline leachant.  I held that there was no real and reasonably clear disclosure in the provisional specification of an acid step alone.  It followed that there was no fair basis for a process having an acid leach in the absence of any alkaline leaching step.

While there is reference in my earlier decision to the provisional specification describing a process for removing silicon in the alkaline leaching step, there was no finding that the claims of the complete specification lacked fair basis because they did not specifically define silicon removal in the leaching step.  In fact, there is nothing in the decision to even suggest this point was at issue.  The decision found that claim 1 was not fairly based on TR prov 1 because TR prov 1 only described a process in which a siliceous liquid phase is formed and an alkaline or water leach is employed, with or without an acid leach.  The claims have been amended to define formation of a siliceous liquid phase and the use of an alkaline leach, with or without an acid leach.  Therefore, the amendments address the specific deficiencies found in my earlier decision.

The opponent contended that, on its present wording, claim 1 includes a process in which the impurities, and in particular key impurities such as silica, are all removed by the acid leach and in which the alkaline leach is redundant or plays an ancillary role.  The opponent suggested that this, in effect, is equivalent to claiming the acid leach alone.

I find little merit in this argument.  The process defined by claim 1 requires the step of leaching with an acidic leachant and an alkaline leachant or with an alkaline leachant to leach at least a portion of the impurities.  That is, the claim requires the alkaline leachant to perform some work in removing impurities.  In my view, it would be an absurd result if the alkaline leachant was redundant.  It is a well-established rule for the construction of claims that an absurd construction should be rejected in favour of an alternative construction (see, for example Henriksen v Tallon (1965) RPC 434). As I said in my earlier decision, 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. Importantly, claim 1 is now restricted to a process having an alkaline leach. While there may be efficiencies in carrying out the leaching in a particular order, as Professor Lawson's evidence alluded to in the substantive opposition, in my view the process defined by claim 1 will inherently leach the alkali leachable impurities.

In relation to claim 23, the opponent has argued that there is no disclosure in any of the applicant's specifications of leaching with the acidic leachant and subsequently with the alkaline leachant. The opponent argued that the fact the hearing officer has found that the order of the leaching is not important in a generic claim is not permission for the applicant to include a claim specifically directed to the acid leach followed by the alkaline leach. The result of this would be that claim 23 fails section 40 for lack of fair basis and also is not fairly based on TR prov 1.

The opponent's argument that there is no specific disclosure of the acid leach preceding an alkaline leach may possibly be correct on a purely literal interpretation of TR prov 1.  However, a patent specification is addressed to a person skilled in the art and must be read in this light.  I considered the expert evidence in my decision of 2 August 1999.  It was apparent from that evidence that the order of leaching was not important.  I refer again to the following passage from my earlier decision.

"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."

The order of leaching now defined by claim 23 is clearly within the scope of "an acidic and/or alkaline leach".  As pointed out by the applicant, this phrase includes each of the following possibilities: leaching with an acidic leachant; leaching with an acidic leachant and subsequently with an alkaline leachant; leaching with an alkaline leachant and subsequently with an acidic leachant; and leaching with an alkaline leachant.  In my decision of 2 August 1999, I found that only the first of these possibilities was not fairly based.  Therefore, in my view, this matter has already been decided and, on the basis of Ex Parte Mole Engineering, is not open for reconsideration.

CONCLUSION

I have found that the amendments made to the specification by the applicant overcome the deficiencies identified in my decision of 2 August 1999.  In particular, there was no finding in the decision of 2 August 1999 that the claims needed to specifically define removing silica impurity in the alkaline leaching step.  That decision held that there was no disclosure of an acid leach in the absence of an alkaline leach in the first provisional specification.  The amendments have removed this deficiency from the claims.  The claims have also been amended to define formation of a siliceous liquid phase, in conformity with the decision of 2 August 1999.

The definition of an acid leach subsequent to an alkaline leach in new claim 23 was encompassed by "an acidic and/or alkaline leach" in the claims as accepted.  This had already been considered to be fairly based on the first provisional specification and was not open to reconsideration.

As the deficiencies in the decision of 2 August 1999 have been overcome, the claims as amended are now fairly based on provisional application PL4105 filed 14 August 1992.  This is before the priority date of the prior art information contained in Australian patent application 45513/93, which I found to be 16 December 1992.  Therefore all of the claims as now amended are novel.  Further, no new deficiencies have arisen consequentially of the amendments.

Accordingly I direct the application be sealed after 30 days from the date of this decision. If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

COSTS

The applicant submitted that if I decide that the application should proceed to grant as amended, costs should be awarded against the opponent from the date of advertisement of allowance of amendments (13 January 2000).  This submission was based on the following extract set out in paragraph 14.7.6 of the Patent Office Manual of Practice and Procedure, Volume 3:

"… if after the amendment of the specification there is further substantive action (i.e. proceeding to a main hearing, or a further or "final" hearing) and the application proceeds to grant thereafter, the general practice has been that costs are awarded against the applicant up to, and including, the date of advertisement of allowance of the amendment (which amendment has the effect of removing the ground of objection) and costs are awarded against the opponent thereafter; however, variations to the transition date have occurred."

There has already been an award of costs in relation to the substantive opposition made in the decision dated 2 August 1999.  The opponent initially opposed the amendments proposed by the applicant, but later withdrew that opposition.  As the opposition was withdrawn, it is not appropriate to award costs in relation to that matter.  Therefore, there are no relevant costs to be awarded prior to the amendments being allowed.  The only appropriate costs to be awarded are those in schedule 8 of the Patent Regulations relevant to the final determination hearing.

As the applicant has been successful in that I have determined that the application is in a suitable form to proceed to sealing, I award costs against the opponent.

Brendan Bourke
Delegate of the Commissioner of Patents

Solicitors for the applicant:           Arthur Robinson & Hedderwicks, Melbourne

Patent attorneys for the opponent: Freehills Carter Smith Beadle, Melbourne