Technological Resources Pty Limited v Tettman
[2019] FCA 1889
•15 November 2019
FEDERAL COURT OF AUSTRALIA
Technological Resources Pty Limited v Tettman [2019] FCA 1889
Appeal from: Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2018] APO 22 File number: VID 436 of 2018 Judge: JAGOT J Date of judgment: 15 November 2019 Catchwords: PATENTS – hearing de novo – common general knowledge of skilled addressee – claimed methods and apparatus for identifying and separating mined material on a bulk basis – upgrading low grade iron ore – meaning of “grade” and “direct assessment” in patent application – whether patent application involves a manner of manufacture pursuant to s 18(1)(a) of the Patents Act 1990 (Cth) – whether combination of integers produce a new and useful result – whether claimed invention was a mere scheme and/or mere working directions – whether claimed invention is novel when compared with the prior art base as it existed before the priority date pursuant to s 18(1)(b)(i) of the Patents Act – lack of novelty not proved – whether the claimed invention involved an inventive step when compared with the prior art base before the priority date pursuant to s 18(1)(b)(ii) of the Patents Act – claimed invention not obvious – appeal allowed Legislation: Patents Act 1990 (Cth) ss 7(2), 7(3), 18(1)(a), 18(1)(b)(i), 18(1)(b)(ii), 40(3), 60(4)
Statute of Monopolies 1624 (UK)
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Cases cited: Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411
Apotex Pty Ltd (formerly GenRx Pty Ltd) v Sanofi-Aventis [2008] FCA 1194; (2008) 78 IPR 485
Apotex Pty Ltd v ICOS Corporation (No 3) [2018] FCA 1204; (2018) 135 IPR 13
Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) [2012] FCAFC 102; (2012) 204 FCR 494
AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324
Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420
Bristol‑Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316; (2000) 170 ALR 439
British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171
Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232
Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; (2015) 238 FCR 27
Commissioner of Patents v Sherman [2008] FCAFC 182; (2008) 172 FCR 394
Commonwealth Scientific and Industrial Research Organisation v Technological Resources Pty Limited [2018] APO 23
Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81; (2009) 177 FCR 239
Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22
Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161; (2019) 145 IPR 1
F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; (2000) 99 FCR 56
Garford Pty Ltd v DYWIDAG Systems International Pty Ltd [2015] FCAFC 6; (2015) 110 IPR 30
General Tire & Rubber Co Ltd v Firestone Tyre and Rubber Co Ltd [1972] RPC 457; (1971) 1A IPR 121
Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; (2014) 222 FCR 336
Grant v Commissioner of Patents [2006] FCAFC 120; (2005) 154 FCR 62
H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151
ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577
Ivax Pharmaceuticals UK Ltd v Akzo Nobel BV (No 2) [2007] RPC 3
Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 65 IPR 86
Lektophone Corporation v S G Brown Ltd (1929) 46 RPC 203
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173
Meat & Livestock Australia Ltd v Cargill, Inc [2018] FCA 51; (2018) 354 ALR 95
Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91; (2006) 154 FCR 31
Merial, Inc v Intervet International BV (No 3) [2017] FCA 21; (2017) 122 IPR 128
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253
Morgan & Co v Windover & Co (1890) 7 RPC 131
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252
Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513
Novozymes A/S v Danisco A/S [2013] FCAFC 6; (2013) 99 IPR 417
NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 183 CLR 655
Orion v Actavis [2015] FCA 909
Otsuka Pharmaceutical Co, Ltd v Generic Health Pty Ltd (No 4) [2015] FCA 634; (2015) 113 IPR 191
Ranbaxy Laboratories Ltd v AstraZeneca AB [2013] FCA 368; (2013) 101 IPR 11
Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2018] APO 22
Re Application of Compagnies Réunies des Glaces (1930) 48 RPC 185
Re Cooper’s Application for a Patent (1901) 19 RPC 53
Re L. & G.’s Application (1940) 58 RPC 21
Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; (2014) 227 FCR 378
Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846; (2011) 196 FCR 1
Smith & NephewPty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142; (2009) 82 IPR 467
SNF (Australia) Pty Limited v BASF Australia Ltd [2019] FCA 425; (2019) 140 IPR 276
SNF (Australia) Pty Ltd v BASF Australia Ltd [2019] FCA 425; (2019) 140 IPR 276
Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366; (2014) 110 IPR 82
Sunbeam Corp v Morphy-Richards (1961) 180 CLR 98
Technological Resources Pty Limited v Tettman [2018] FCA 1770
Valensi v British Radio Corporation [1973] RPC 337
Wake Forest v Smith & Nephew (No 2) [2011] FCA 1002; (2011) 92 IPR 496
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262
Date of hearing: 9-13 September 2019 Date of last submissions: Appellant: 20 September 2019 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 293 Counsel for the Appellant: Mr C Dimitriadis SC with Mr JS Cooke Solicitor for the Appellant: Minter Ellison Counsel for the Respondent: Mr T Cordiner QC with Ms C Cunliffe Solicitor for the Respondent: Herbert Smith Freehills ORDERS
VID 436 of 2018 BETWEEN: TECHNOLOGICAL RESOURCES PTY LIMITED ACN 002 183 557
Appellant
AND: RAYMOND LUDWIG JOHN TETTMAN
Respondent
JUDGE:
JAGOT J
DATE OF ORDER:
15 NOVEMBER 2019
THE COURT ORDERS THAT:
1.The appeal be allowed.
2.The decision of the delegate of the Commissioner of Patents given on 27 March 2018 be set aside.
3.Australian Patent Application 2011261171 proceed to grant.
4.The respondent pay the appellant’s costs of this appeal and of the opposition before the Commissioner of Patents.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
JAGOT J:
THE APPEAL
This is an appeal under s 60(4) of the Patents Act 1990 (Cth).
The appellant is the applicant for Australian patent no 2011261171 titled “Separating mined material” (the 171 application). The respondent successfully opposed the 171 application before the Commissioner of Patents: Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2018] APO 22. The Commonwealth Scientific and Industrial Research Organisation (CSIRO) also successfully opposed the 171 application: Commonwealth Scientific and Industrial Research Organisation v Technological Resources Pty Limited [2018] APO 23 (CSIRO). Dr David Miljak from the CSIRO gave evidence in the CSIRO opposition proceedings and was one of the expert witnesses called by the respondent in this proceeding.
After filing its appeal the appellant applied for and obtained leave to amend the claims of the 171 application. The amendment involved narrowing the scope of the independent claims by adding a limitation from then claim 35 (“wherein the grade assessment [in the method] is a direct assessment of the grade”): Technological Resources Pty Limited v Tettman [2018] FCA 1770 at [10].
On 24 May 2019 the respondent filed amended grounds and particulars of opposition to which no reference has been made in this proceeding. During the hearing the appellant made it clear that it was proceeding on the basis that the respondent’s case was confined in accordance with the respondent’s submissions. The respondent did not suggest this was inappropriate. Accordingly, I proceed on the same basis. The respondent identified its grounds of opposition as follows:
(a)all of the claims are not to a manner of manufacture;
(b)claims 1, 3, 4, 6, 7, 8, 9, 10, 12, 13, 14, 15 and 16, 17, 19, 21, 22, 24, 25, 26, 27, 28, 30, 31, 32, 33, 35, 37, 38, 40 and 41 are not novel in light of Nienhaus et al, “Quality of LIF”, Australian Mining Monthly, September 2003 (Nienhaus);
(c)claims 1, 2, 5, 8, 9, 10, 12, 13, 14, 15, 16, 19, 20, 23, 26, 27, 28, 30, 31, 32, 33, 34, 35, 37, 39, 40 are not novel in light of Kurth, “Online Analyser Technologies for Conveyed Materials – Timely, Representative and Reliable Data for Improved Process Control”. Presented at the Australian Mining Technology Conference, October 2007 (Kurth 2007);
(d)none of the claims are inventive in light of the common general knowledge alone, or taken together with Nienhaus or Kurth 2007;
(e)all claims lack clarity because the phrase “direct assessment of grade” is not clear.
It was common ground that given the undisputed priority date of the 171 application of 2 June 2010, the amendments made by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) do not apply.
It was also common ground that while called an appeal, the proceeding is in the Court’s original jurisdiction and involves a hearing de novo in which the respondent bears the onus of proof. In Commissioner of Patents v Sherman [2008] FCAFC 182; (2008) 172 FCR 394 the Full Court explained at [18]-[21] that:
(1)the Court upholds the opposition only if clearly satisfied that the patent, if granted, would be invalid;
(2)the only evidence to be taken into account at the hearing of an appeal under s 60(4) will be the evidence tendered or admitted at the hearing;
(3)“…the outcome of a proceeding such as this ‘must be decided upon the evidence adduced before [the] Court’, even if a different case than that made before the Commissioner”; and
(4)“…whilst the Court will make its own decision on the basis of the evidence before it, in deciding whether the applicant…has made out his case on the balance of probabilities, the Court will take into account the nature of the proceeding and the fact that the proceeding concerns the decision of an expert administrative decision-maker.”
In F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; (2000) 99 FCR 56 Emmett J explained the onus on the respondent in these terms at [67]:
The language employed in the cases to which I have referred suggests that it should appear clear to the Court that no patent granted in respect of the specification would be valid. I consider that, before the Court would uphold an opposition to the grant of a patent, the Court should be clearly satisfied that the patent, if granted, would not be valid.
In Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420 Bennett J said at [12]:
…where there are two opposing expert views that are conclusive on obviousness, both presented bona fide by witnesses of accepted expertise, unless one set of views can be rejected on proper grounds, the legal burden to establish a ground of opposition is not discharged; the Court cannot be practically certain that obviousness or lack of inventive step is established.
In Merial, Inc v Intervet International BV (No 3) [2017] FCA 21; (2017) 122 IPR 128 Moshinsky J explained the cases in these terms:
14.While, for an opposition to be upheld, it must be “clear” that the patent if granted would not be valid, the standard of proof that applies is the standard generally applicable in civil proceedings, namely that prescribed by s 140 of the Evidence Act 1995 (Cth): Commissioner of Patents v Sherman at [16], [21]. Section 140 is in the following terms:
(1)In a civil proceeding, the court must find the case of a party proved if it is satisfied that the case has been proved on the balance of probabilities.
(2)Without limiting the matters that the court may take into account in deciding whether it is so satisfied, it is to take into account:
(a) the nature of the cause of action or defence; and
(b) the nature of the subject-matter of the proceeding; and
(c) the gravity of the matters alleged.
15.In Communications, Electrical, Electronic, Energy, Information, Postal, Plumbing and Allied Services Union of Australia v Australian Competition and Consumer Commission (2007) 162 FCR 466, Weinberg, Bennett and Rares JJ stated at [30]:
The mandatory considerations which s 140(2) specifies reflect a legislative intention that a court must be mindful of the forensic context in forming an opinion as to its satisfaction about matters in evidence. Ordinarily, the more serious the consequences of what is contested in the litigation, the more a court will have regard to the strength and weakness of evidence before it in coming to a conclusion.
16.In the present context, the Court approaches the task of fact finding mindful of the ultimate issue to be determined, which is whether the opponent has clearly satisfied the Court that a patent, if granted, would not be valid.
In Meat & Livestock Australia Ltd v Cargill, Inc [2018] FCA 51; (2018) 354 ALR 95 at [11], Beach J said:
Now there seems to be some difference in the authorities concerning the formulation of the relevant test. Some authorities use the language of “practically certain”, whilst other authorities use the language of “appears clear” or “clearly satisfied” that the patent, if granted, would be invalid. It has been suggested that the varying phraseology is to similar effect (Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061 at [33] per Besanko J) although I am not so convinced; there is something to be said for justifying the historical use of the former phrase in the earlier acceptance phase only, which is ex parte, rather than in the later opposition phase, which is inter partes. In any event, for my part I prefer the phraseology of Emmett J. But I have also adopted the approach of Bennett J in Austal Ships at [12] that where there are conflicting sets of expert opinions on an issue such as a lack of inventive step presented bona fide by witnesses of accepted expertise, then unless one set of views can be rejected on proper grounds, the legal burden on the opponent to establish to the requisite degree the relevant ground of opposition will not be discharged. In such a scenario, I could not be clearly satisfied that the ground of opposition had been made out. But notwithstanding these observations, I accept for present purposes that primary facts (as distinct from secondary conclusions or the ultimate ground of opposition question) that are relevant to and that are said to support any ground of opposition need only be established by the opponent on the balance of probabilities.
In SNF (Australia) Pty Ltd v BASF Australia Ltd [2019] FCA 425; (2019) 140 IPR 276 at [22]-[28] Beach J explained that:
(1)the respondent bears the onus of establishing its grounds of opposition and for the opposition to be upheld it must be clear that the patent, if granted, would not be valid;
(2)as Bennett J said in Austal Ships, this means that if there are competing expert opinions on a question such as lack of inventive step and one set of opinions cannot be rejected on proper grounds, the respondent will have failed to discharge its onus of proof;
(3)the higher standard of satisfaction does not apply to findings of underlying primary facts: Austal Ships at [12];
(4)as Besanko J said in Aspirating IP Ltd v Vision Systems Ltd [2010] FCA 1061; (2010) 88 IPR 52 at [35]:
The primary facts are to be established on the balance of probabilities, but the ultimate facts – the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness – must be proved to the level of practical certainty;
and
(5)the following matters need be proved on the balance of probabilities only:
(a)the materials routinely referred to by a person skilled in the art;
(b)whether various matters formed part of the common general knowledge at the priority date and what about them and their use was common general knowledge at the priority date…;
(c)whether relevant prior art…would have been ascertained, understood and regarded as relevant by a person skilled in the art at the priority date…;
…
THE 171 APPLICATION
Technical information
The appellant provided a summary of the evidence about the technical background of the relevant field of mineral processing of ore which may conveniently be adopted. This part of my reasons is not intended to suggest that all of this information formed part of the common general knowledge of the skilled addressee of the 171 application. I deal separately below with the common general knowledge.
Accordingly, as the appellant put it, mining is the process of extracting rock containing valuable minerals from the earth. Mineral processing is the process of extracting the valuable minerals from the mined rock, utilising a number of interconnected stages. The percentage of a desired element (i.e. an “element of interest”) in the rock (either by weight or volume) is called the grade of that element (although there is an issue of construction about the meaning of grade as used in the 171 application which I do not intend to pre-determine). The grade of the valuable element or elements is an important factor (together with the cost associated with mining and mineral processing) in determining whether an area (or block) of material in the mine is economic to treat (i.e. whether the value of the revenue received from the sale of the minerals outweighs the costs). High grade materials contain more of an element of interest than low grade materials.
Material that is economic to process is called ore and material that is not economic to process is called waste. Waste material can also be inadvertently mixed in with the ore and this is known as dilution. Some areas of waste need to be mined to access areas of ore, but the waste is not processed.
The mined ore, also known as run-of-mine (ROM) ore, is the feed for the mineral processing plant (also called “mill” or “concentrator”, which is typically where the majority of the mineral processing equipment is located). Ore contains both valuable and non-valuable minerals and the non-valuable minerals contained within the ore are often referred to as gangue.
Throughput describes the amount of material that can pass through a machine in a set period of time (tonnes per hour).
The role of a mineral processing engineer includes: (a) characterising ROM ore for the purposes of mineral processing; (b) developing flowsheets for the recovery of valuable minerals; (c) building and/or operating mineral processing plants for the recovery of valuable minerals; and (d) optimising mineral processing circuits. Broadly speaking, mineral processing involves: (a) coarse comminution (crushing and screening); (b) fine comminution (grinding); and (c) recovery stages (e.g. flotation, leaching).
Comminution is the term used to describe the processes which reduce the particle size of rocks by, first, crushing (most often in combination with screening) and, secondly, grinding (in combination with size classification).
Crushing can be required to prepare the ore to a particle size suitable for the next stage in the comminution process or to prepare the ore to a particle size suitable for a recovery stage (e.g. leaching). Crushing can be done in a single stage (e.g. implemented by a “primary crusher”) or multiple stages (e.g. by a “primary crusher”, “secondary crusher” and “tertiary crusher”), before the crushed material moves onto the grinding stage. For example, the ore discharged from a primary crusher consists of a range of particle sizes (i.e. rock sizes) from very small (a few millimetres) up to typically a maximum of around 500mm in diameter and sometimes coarser. Primary crushed size ore is typically fed onto a plant feed conveyor belt where the particles stack on top of each other in a continuous stream. The material becomes progressively finer as it moves through secondary and tertiary crushing.
The product from the crushing circuit is usually fed to the grinding circuit. It may be that the product from the crushing and screening circuit is itself the final product of the mineral processing circuit. In this case the crushing and screening circuit operates as the recovery stage.
Grinding can be undertaken in a single stage or multiple stages and by a variety of types of grinding mills. Grinding aims to further reduce particle size as compared to crushing in order to further improve the liberation of valuable minerals. Grinding is often interspersed, in various combinations and permutations, with the recovery stages.
A recovery stage refers to processes where: (a) valuable minerals are separated from neighbouring gangue minerals; and/or (b) valuable metal is extracted from the minerals; and/or (c) valuable minerals are separated from other neighbouring valuable minerals. Recovery stage techniques are typically used in combination. A recovery stage technique is usually classified as either wet (using water as a significant part of the process) or dry (largely in the absence of water). Some examples of recovery stage techniques are leaching (wet recovery); flotation (wet recovery); gravity concentration, also referred to as gravity separation (wet recovery); magnetic separation (wet or dry recovery); and particle sorting (dry recovery).
Particle sorting is a dry recovery process which uses sensors to measure the grade of individual particles, and separates the individual particles based on that measurement. The sensor assesses each individual particle (i.e. each rock) and measures something that is different in the valuable particles compared to the waste particles (for example, density, colour or reflectiveness). Based on that measurement, an assessment is made whether to accept or reject each particle. The sorting system will then separate individual particles using a particle ejection mechanism which can be physical (e.g. flappers or a paddle) or pneumatic (high pressure air).
Pre-concentration refers to a mineral processing stage, occurring early in a mineral processing operation (ideally, as early in the operation as possible), in which waste is removed from ore in preparation for downstream conventional mineral processing steps.
Bulk sorting is a form of ore sorting in which a sensor is used to make an assessment of material on a bulk basis (rather than on a “particle” basis as occurs in particle sorting) to allow the material to then be separated on the basis of that assessment. A bulk sorting system would typically comprise a sensor, directly coupled to a microprocessor to assess the reading, and a physical diverter directly coupled to the microprocessor in order to effect the separation based on that assessment.
The skilled addressee
It was common ground that the 171 application is to be construed through the eyes of the person skilled in the relevant art and that this notional construct may involve not a single person but a team whose combined skills would normally be used in interpreting and carrying into effect the instructions in the patent: General Tire & Rubber Co Ltd v Firestone Tyre and Rubber Co Ltd [1972] RPC 457; (1971) 1A IPR 121 at 138.
The skilled addressee is a non-inventive worker in the field: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173 (Lockwood [No 2]) at [54]. Depending on the field, the hypothetical non‑inventive worker may be highly qualified with a demonstrated capacity for original research: Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 at [30].
The respondent submitted that the skilled addressee of the 171 application is involved in a team with experience in mineral processing in Australia and has expertise in sensing technologies for the sorting of ores. Further, according to the respondent, the 171 application is directed to technical consultants and mineral processing engineers in the research and development departments of mining companies who had a greater level of knowledge of technical developments than mineral process engineers who were operators on a mine site. The 171 application, said the respondent, is not directed to the “…lowest common denominator of mineral processing engineer”.
The appellant accepted that the skilled addressee of the 171 application would have knowledge of sensor technologies to the extent that they formed part of the common general knowledge before the priority date but disputed the respondent’s proposition that the skilled person would necessarily be engaged in research and development in mineral processing or have the highly detailed knowledge of an expert in sensor technology.
I agree with the appellant’s submissions. The background to the 171 application, as will become apparent, is the processing of low grade stockpiles of ore in a cost efficient manner. The skilled addressee of the 171 application is a mineral processing engineer involved in ore processing but is not to be taken to be confined to a technical consultant or member of a research and development team with knowledge far exceeding that of an engineer directly involved in the processing activities. As the appellant said, such a notional person would have knowledge of sensing technologies to the extent they formed part of the common general knowledge but would not be an expert in sensor technologies.
The respondent adduced expert evidence from Dr Miljak and Dr Robert Morrison. The appellant adduced expert evidence from Dr Andrew Bamber.
Dr Miljak is a Principal Research Scientist and Group Leader at the CSIRO. His specialist expertise is in the on-line measurement of ores in the mineral industry. As such, I consider that his experience of and expertise in relation to sensor technologies exceeds that of the skilled addressee of the 171 application who would not have Dr Miljak’s specialist expertise in sensor technologies. It is also apparent that Dr Miljak is an inventive expert. He has developed a low frequency microwave (LFM) moisture analyser. He has been involved in original research in relation to sensor technologies. He is the inventor named in respect of a patent concerning the on-line magnetic resonance measurement of conveyed material. Accordingly, Dr Miljak’s evidence should not be seen as necessarily representative of the knowledge that would be held by the skilled addressee of the 171 application.
Dr Morrison is a mineral processing engineer who has worked in the mining industry in Australia and overseas and as a technical consultant in the field. His description of his experience indicates that he too should not be seen as representative of the non-inventive expert in the relevant field. He has been involved in the development of software for the simulation and analysis of comminution (that is, grinding mills). He has also been involved in a number of collaborative research programs coordinated by the Australian Minerals Research Association (AMIRA). He routinely reviewed patents to understand whether his research team could obtain patent projection for projects. From this it is apparent, in my view, that Dr Morrison’s knowledge cannot be characterised as representative of the skilled addressee of the 171 application. In common with Dr Miljak, but for different reasons, I consider that Dr Morrison’s knowledge of the field would exceed that of the skilled addressee of the 171 application.
Dr Bamber is a mineral processing engineer whose main experience in the field has been outside of Australia. There is evidence that the field is international and Dr Bamber has been involved in collaborative work with Australian universities and institutions including AMIRA. His PhD thesis area concerned pre-concentration and waste disposal systems for the increased sustainability of hard rock metal mining. He has worked in mines and the consulting industry in Africa, the Americas, Asia, Australia and Europe. He founded MineSense Technologies Ltd in Canada in 2009, a company which develops and markets sensor-based grade control and sorting solutions to large scale base-metal and precious-metal mining operations. He has conducted original research and development into new sensor based sorting technologies and is listed as a co-inventor on various patents related to his research. For these reasons I also consider that Dr Bamber’s knowledge would exceed that of the skilled addressee of the 171 application.
My conclusions about the experts, that they are inventive experts in or connected with the relevant field, does not mean that their evidence is irrelevant. It means that it cannot be assumed that the knowledge of the experts is common general knowledge in the field. While I do not suggest that the skilled addressee of the 171 application is the “lowest common denominator of mineral processing engineer”, I consider it important to recognise that the experts who have given evidence should each be seen as highly qualified and inventive workers in the field with specialised knowledge and experience which should not necessarily be attributed to the skilled addressee of the 171 application who is a mineral processing engineer with an interest in the processing of low grade stockpiles of ore in a cost efficient manner. Such a person would not necessarily be engaged in research and development and would not necessarily have the highly detailed knowledge of any of the expert witnesses or an expert in sensor technology.
The respondent submitted that Dr Bamber was not as well-placed to assist the Court as Dr Miljak and Dr Morrison. The respondent said that Dr Bamber’s direct experience in Australia was after the priority date of the 171 application and he had not undertaken any educational course in Australia or attended any conferences organised by peak mining industry bodies in Australia. According to the respondent, it is not to the point that the field was international as it was apparent that a distinction could fairly be drawn between the person skilled in the art in Australia and elsewhere. According to the respondent:
Although Dr Bamber obtained information in relation to pre-concentration from the Australian Mineral Industries Research Association (AMIRA) (a body which was highly regarded in Australia in relation to mining techniques and mineral processing), and was broadly aware of the work AMIRA was undertaking, Dr Bamber did not otherwise collaborate with them. Although he worked as an international consultant, he did not work in Australia. He worked with a number of Australian individuals, each of whom were aware of pre-concentration, but does not explain how that interaction enabled him to comment on their common general knowledge. He was aware of CSIRO, but he had no contact with them before the priority date. He did not know of Dr Cutmore, who had won the Australia Prize for his work on online analysis systems in 1992. Nor did he have much knowledge about CSIRO’s sensing technologies. He was not aware of Scantech, or Mr Kurth. He was not aware of online analysis technology used for bulk sorting coal in Australia.
…
As well as not being aware of many aspects of sensor-based sorting technology that was being developed and commercialised in Australia, Dr Bamber’s evidence is that he had a greater knowledge and understanding of pre-concentration techniques than most mineral processing engineers.
It was apparent that given his exposure to Australian developments (which was more limited than that of Dr Morrison and Dr Miljak), Dr Bamber was unaware of some matters in Australia of which Dr Miljak and Dr Morrison were aware. As I have said, however, Dr Miljak and Dr Morrison both possessed specialised expertise and knowledge which I would not accept as common general knowledge possessed by the skilled addressee. Given the international nature of the field and Dr Bamber’s highly specialised knowledge and research of the very field with which the 171 application is concerned I do not find the respondent’s submissions about the limited utility of Dr Bamber’s evidence to be persuasive. In particular, if some knowledge had been generally assimilated in the field in Australia then I anticipate that given his highly specialised expertise in that field such knowledge would also have been assimilated by Dr Bamber. I do not accept that in this international field where mineral processing engineers frequently work around the world Australia was a bastion of particular knowledge not shared by other countries involved in the mineral processing industry.
I also consider that all of the experts gave relevant evidence and, in my view, did their best to assist the Court. The appellant’s criticisms of Dr Morrison as not having answered questions clearly and directly should not be given much weight. It seems to me that Dr Morrison’s answering style was a product of his personality rather than any desire to avoid answering the question. It may be accepted that Dr Miljak was in a position of a potential conflict of interest given that he is an inventor of magnetic resonance sensor technology for ore sorting and is on the advisory board of a company established to commercialise this technology. However, I did not apprehend that Dr Miljak was doing anything other than answering all questions to the best of his ability whilst mindful of his obligations to the Court. The appellant also noted that all of Dr Miljak’s evidence was given after he had seen the 171 application which raises the spectre of hindsight bias in respect of his evidence. The risk of unconscious hindsight bias is real and should not be disregarded in the weighing of Dr Miljak’s evidence. I consider that this feature of Dr Miljak’s evidence is particularly relevant to the issue of inventive step and I have taken it into account as indicated in my reasons below.
The common general knowledge – principles
The common general knowledge “…involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade”: Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 292.
Accordingly, as Middleton J said in Ranbaxy Laboratories Ltd v AstraZeneca AB [2013] FCA 368; (2013) 101 IPR 11 at [215]:
Common general knowledge is knowledge actually known or used by skilled addressees generally, or accepted by “the bulk of those who are engaged in the particular art”: see British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 at 250. As the High Court emphasised in Aktiebolaget Hässle (2002) 212 CLR 411 at 426 [31], information cannot be treated as part of the common general knowledge unless there is “evidence of its general acceptance and assimilation” by persons skilled in the art.
Justice Middleton said further at [217] in Ranbaxy:
…information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art.
It has been said that the common general knowledge is “…not limited to material which might be memorised and retained at the front of the skilled worker’s mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course”: ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577 at [112].
The High Court has said that “‘[c]ommon general knowledge’ was well understood as being ‘part of the mental equipment of those concerned in the art under consideration’”: Lockwood [No 2] at [55], citing Lektophone Corporation v S G Brown Ltd (1929) 46 RPC 203 at 225.
In Lockwood [No 2] the High Court also described the common general knowledge as that which was “known or used” in Australia as background knowledge available to all in the relevant field.
The appellant made this submission:
A fact does not form part of the CGK [common general knowledge] merely because it is known or even well known. Something should not be considered part of the CGK unless it has been used. Even then, it must be sufficiently widely used to become generally accepted and assimilated into the minds of people skilled in the relevant art and, therefore, part of the CGK.
(a)Wake Forest v Smith & Nephew (No 2) [[2011] FCA 1002] (2011) 92 IPR 496 at [99].
(b)Orion v Actavis [2015] FCA 909 at [294], [299], [300], [312].
In Wake Forestv Smith & Nephew (No 2) at [99] this was said:
A fact does not form part of the common general knowledge merely because it is known or even well known. Nor does the use of something per se qualify it, as Luxmore J in British Acoustic (cited by the Court of Appeal in General Tire at 135) stated at 250:
It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art.
In Orion v Actavis Rares J was dealing with the specific circumstances relevant to the use of a particular drug and was not expressing any issue of principle.
As a matter of principle, I consider it possible that some fact might be common general knowledge in a field but otherwise accept that a lack of use will be a relevant factor in deciding whether a matter does or does not constitute part of the background knowledge assimilated by the bulk of the practitioners in the relevant field. For example, as was recognised in Lockwood [No 2] at [111]:
Common general knowledge has negative as well as positive aspects. Practical and technical issues can affect the means by which a concept may be implemented in respect of an already known vendible product, and scepticism can inhibit recognition of the utility of applying a concept or idea to a known set of integers.
It follows from this that the touchstone is ultimately knowledge. Use or lack of use may tend to prove or disprove that the fact, matter or thing is available to and has been assimilated by the bulk of those engaged in the field.
The common general knowledge – content
Having regard to the submissions of the parties and the evidence, I make the following findings about the common general knowledge as at the priority date of the 171 application.
The concept of “grade” as meaning the concentration in the dry mass of a mineral or element of interest was common general knowledge.
The concept of “wet processing techniques” as unit operations in mineral processing that require the addition of water or an aqueous environment was common general knowledge.
The concept of “dry processing techniques” as unit operations in mineral processing that do not require the addition of water or an aqueous environment and often require the removal of water was common general knowledge.
It was common general knowledge that wet processing techniques were far more common in mineral processing than dry processing techniques because the conditions under which most minerals can be separated from other minerals are improved by the presence of water.
It was common general knowledge that dry processing techniques involved disadvantages, including low throughput, in minerals processing.
The concept of primary crushed ore as the product of the first crusher in mineral processing was common general knowledge.
The concept of pre-concentration, meaning a mineral processing step occurring as early as possible in which waste is removed from ore in preparation for downstream conventional mineral processing steps, was common general knowledge but the use of pre-concentration techniques in mineral processing outside of niche areas was not common general knowledge. Accordingly, a typical flow sheet strategy for mineral processing would not have included a pre-concentration step.
The experts all agreed that the concept of bulk sorting was known but not well known in the mineral processing industry and was not widely used in that industry. On this basis, I am not satisfied that the concept of bulk sorting in mineral processing formed part of the common general knowledge of the skilled addressee of the 171 application. I do not accept the respondent’s submissions to the contrary for the following reasons.
The common general knowledge of the skilled addressee of the 171 application is the knowledge that had been assimilated before the priority date by the bulk of those in the field which is the processing of ore. The fact that the experts in this case all knew of the concept of bulk sorting before the priority date does not establish that it was part of the common general knowledge in circumstances where the experts also all gave evidence that the concept was not well known in the industry and was not widely used. I do not accept that the experts, in saying that the concept was not well known in the industry, were engaging in nothing more than hearsay and speculation. From their expertise and experience they were in a position to give opinions about the extent to which knowledge of the concept of bulk sorting had been assimilated in the ore processing industry. They were also in a position to know that their knowledge and expertise exceeded that of mineral processing engineers generally due to their particular expertise and experiences. The fact that it was common ground between the experts that the mineral processing industry is conservative, with the result that it may take many years for new ideas to be implemented, does not undermine the effect of the evidence of the experts that the concept of bulk sorting had not been assimilated so as to form part of the stock-in-trade of mineral processing engineers involved in the processing of ore. As such, I do not accept the respondent’s submission that:
…where each of the witnesses (as a skilled addressee) gave evidence that they knew a particular fact, and that that fact was known, and appeared in texts which were widely read (if not by everyone) it should be found on the balance of probabilities that the relevant fact is common general knowledge.
Further, I do not accept that it was part of the common general knowledge that the concept of whole stream diversion (meaning the directing of a pre-determined stream of ore to a different destination) was a form of bulk sorting. I am not satisfied on the evidence that the concept of whole stream diversion itself formed part of the common general knowledge. The fact that all experts were aware of examples of it and it had been mentioned in a number of documents does not mean that the concept had been assimilated into the knowledge of the bulk of mineral processing engineers involved in ore processing.
In particular, the respondent has not proved that the work of the Aachen University research group and the AMIRA P902 report formed part of the common general knowledge. Dr Morrison’s evidence that the work relating to the AMIRA P902 report was supported by a number of mining companies (including major Australian mining companies) and was available for purchase does not mean that the information in the report had been assimilated into the stock of knowledge of the notional mineral processing engineer involved in the processing of ore in Australia. Dr Bamber did not accept that “…a great number of people in the mining industry would have been aware, especially if they were in Australia, about the AMIRA Project…”. The AMIRA P902 report contains a statement to the effect that it was for internal use only and disclosure to others was prohibited. Dr Morrison explained that the report would have been confidential for a limited period only and publicly available about 18 months after it was prepared (and thus before the priority date). However, as Dr Bamber said, to purchase the report a person would have to be aware of its existence which he was not before the priority date. While Dr Morrison described the report as “…very well known” he was heavily involved in its preparation whereas Dr Bamber was not. In my view, Dr Morrison’s experience cannot be attributed to the notional skilled addressee and Dr Bamber’s experience is more representative of the state of knowledge of that notional construct than that of Dr Morrison. It may be accepted that Dr Bamber is not located in Australia, but he is an expert in a narrow field where knowledge is an international commodity, so his evidence cannot be discounted. If the AMIRA P902 report had become part of the common general knowledge of persons in this field then I would have expected Dr Bamber to have become aware of it by one means or another. I infer that Dr Morrison’s knowledge of it was based on his personal involvement with the project, an involvement which I do not consider can be attributed to the skilled addressee. Having regard to the evidence about the AMIRA P902 report as a whole, the respondent has not persuaded me that the report’s existence or the content of it formed part of the common general knowledge of the skilled addressee of the 171 application at the priority date.
Nor do I accept that the respondents have proved that the Scantech PGNAA (prompt gamma neutron activation analysis) technology formed part of the common general knowledge. It may be accepted that Kurth 2007 and Kurth 2008 (which will be referred to in more detail below) were presentations by Henry Kurth on behalf of Scantech at mining industry conferences in Australia for the purpose of promoting the technology and that both Dr Morrison and Dr Miljak were aware of the Scantech technology. This does not mean, however, that the Scantech technology and its potential applications had been assimilated into the common general knowledge of the skilled addressee of the 171 application at the priority date. As the appellant noted, the Kurth documents are basically marketing. It must also be taken into account that, as noted above, it was common ground between the experts that the mining industry is conservative and slow to adopt new technologies. Given this, there is no reason to infer that knowledge of the Scantech technology and its potential applications had been absorbed into the stock-in-trade knowledge of the notional mineral processing engineer as at the priority date.
The fact that there were, as Dr Miljak put it, known technical markers to bulk sorting in the literature does not mean that a technique used in niche areas only had become part of the common general knowledge of the relevant skilled addressee. Nor has the respondent proved that the Cutmore and Eberhardt article, which Dr Miljak referred to as “…a very major marker for my group at CSIRO in understanding what was out there in terms of bulk sorting”, was part of the common general knowledge of the skilled addressee. Dr Bamber, who, as I have said, is (and was) an expert in a narrow field, remained unaware of Cutmore and Eberhardt but agreed with the views expressed therein that “…to date, industry applications have been limited by a lack of suitable sensors to a few niche processing areas such as for diamonds, magnesite, talc and uranium ores” and that there were “…entrenched misconceptions in regard to the economic viability of sorting”. This evidence suggests that even if bulk sorting as a concept did form part of the common general knowledge, the content of that knowledge would have been that the technique was suitable for niche applications but had not been proven to be suitable otherwise. This was for a number of reasons which included a lack of suitable sensors, despite what was described by Cutmore and Eberhardt as a renewal of interest in sorting between 1992 and 2002. This is a view with which Dr Bamber disagreed based on his experience. Dr Bamber’s experience is entitled to weight particularly given that, as he explained, he focused on pre-concentration techniques in his PhD thesis (before the priority date) because of its underutilisation in the industry.
Dr Morrison referred to the sorting of truckloads of uranium by sensing techniques in Western Australia as being described in a paper published in 1980 in what he described as the Mawby volume of Mining and Metallurgical Practices in Australasia. About this three things may be said. One is that this is also a description of a niche application. The next is that if it is the case that, as Dr Morrison said, most people in Australia “…doing mineral processing plant design would have spent a fair bit of time studying that volume because it’s a hugely useful summary of mining and processing operations across Australasia”, it is not apparent that they would have absorbed the particular paper to which Dr Morrison referred. Finally, if the content of the paper had been absorbed, it would have done no more than confirm bulk sorting as a niche technique inapplicable to the general processing of ores. Contrary to the submissions of the respondent, the evidence was not to the effect that bulk sorting was included in “…widely distributed references that would have been studied by students of mineral processing plant design”.
While all of the experts were aware of the development of sensing technologies for use in the bulk sorting of ore, Dr Bamber did not agree that the available sensor technologies were suitable for use in bulk sorting and was also not aware of the existence of heterogeneity at a suitable scale to enable bulk sorting. Dr Miljak and Dr Morrison had a different view based on the Scantech technology and its promotion but, as I have said, I do not accept that this technology and its applications formed part of the common general knowledge of the skilled addressee. When I also take into account that Dr Miljak and Dr Morrison, given their respective roles, were in positions which would have ensured they were aware of the most recent developments in ore sorting sensing technology in Australia, I am reinforced in my conclusion that Dr Bamber’s state of knowledge is more likely to be representative of the skilled addressee of the 171 application than that of Dr Miljak and Dr Morrison. As Dr Bamber said, and I accept, it “…would be unlikely that a mining company R&D manager or other technical appointee would be a specialist in sensor technologies”. While Dr Miljak said the “…the representatives of the research arms of the mining companies had gone to a lot of trouble to try and understand sensor technologies when they were speaking to my group in particular”. Dr Miljak’s group specialised in sensor technologies so it is likely that he was dealing with a more specialised cohort of mineral processing engineers than I consider representative of the skilled addressee. Dr Morrison’s evidence of people being very interested in instrumentation development was too vague to be helpful in this regard. Overall, I do not see the evidence of Dr Miljak and Dr Morrison as more persuasive than that of Dr Bamber about this issue.
I am also not persuaded that Dr Morrison’s evidence about Scantech’s CoalScan technology establishes any part of the relevant common general knowledge. As Dr Bamber said, he was not a coal engineer and did not particularly monitor developments in the coal industry. I consider this likely to be representative of the skilled addressee. As Dr Bamber put it, and as I accept forms the context for the 171 application:
This topic that we’re talking about is about minerals. My experience is in minerals in general, and my knowledge relates to minerals in general and, in particular, with respect to pre-concentration and the sorting of minerals an[d] ores. I cannot comment about coal. I wouldn’t claim to have particular knowledge or expertise in or of coal, so I can only comment with respect to minerals, mined ores of a mineral nature.
The appellant submitted, and I accept that:
Coal is not ore. Coal processing and mineral processing are different disciplines. Mineral processing engineers are not knowledgeable in, and do not typically refer to products and publications associated with, the coal processing field.
The experts all agreed that the concept of particle sorting was well known in mineral processing as a niche application, such as the radiometric sorting of uranium, optical sorting of industrial minerals, and x-ray luminescent sorting of diamonds. On this basis I am not satisfied that the use of particle sorting in the processing of ore formed part of the common general knowledge of the skilled addressee of the 171 application which is not concerned with any of the niche applications in which particle sorting was used. Rather, at best, the skilled addressee would have been aware that the use of particle sorting was confined to niche applications and had not been used in the general processing of ore. I do not accept the respondent’s submissions to the contrary for the following reasons.
The skilled addressee of the 171 application is a mineral processing engineer in relation to the processing of ore. The fact that particle sorting was a niche application meant that knowledge of particle sorting as a concept relevant to the field had not been assimilated so as to form part of the stock-in-trade of the skilled addressee of the 171 application. Further, as the appellant submitted, the weight of the evidence indicated that:
There was resistance to the application of particle sorting of ore in mineral processing because it faced significant challenges including difficulties associated with discrimination techniques provided by sensor technology, feed preparation and material handling.
This resistance is a kind of knowledge which, based on the evidence of the experts, I consider should be attributed to the skilled addressee.
The evidence also indicated that, as the appellant put it:
The resistance to the application of particle sorting of ore in mineral processing was compounded by the limitations of sensor based sorting technology. Apart from optical sorters used in the niche application of industrial minerals, sensor based sorters were not “off the shelf products” but rather were highly specialised for each application and required in-depth examination and integration into existing processes, even altering the processes to the sorters need.
…
There could be no reasonable expectation that any given sensor for sorting of ore would work unless and until it was tested in the actual mineral process. Laboratory testing of sensing based sorting could not provide that information.
The experts all agreed that the combination of bulk sorting of ore followed by particle sorting of ore was not known by them as a concept in mineral processing, was not well known and generally accepted by those working in the field of mineral processing in Australia and was not used in mineral processing in Australia. On this basis I am satisfied that the combination of bulk sorting of ore followed by particle sorting of ore was not part of the common general knowledge of the skilled addressee of the 171 application.
In the context of common general knowledge, the respondent submitted that:
X-ray fluorescence (XRF), natural gamma, PGNAA and derivatives, and laser induced fluorescence (LIF) sensor technologies were well known and generally accepted for use in on-line analysis of ores. They were being used in mineral processing for on-line analysis of ore. To be used in on-line analysis of ore, the sensors needed to be accurate and fast, and sufficiently robust to survive an industrial environment. That evidence is consistent with a 2002 article by Klein, Dunbar and Scobie, “Integrating mining and mineral processing for advanced mining systems” which names LIF and PGNAA as potential underground concentration technologies, and characterises them has having no particle size limitation and no capacity limitation (a characterisation which Dr Bamber accepted was reasonable). The article noted that LIF and PGNAA could be applied to online quality control for bulk solids during transportation on conveyors or in open vehicles. It also suggested their use in systems for allowing steering of flows, which the Respondent says is a reference to bulk sorting.
It is necessary to unpack this submission. The experts agreed that the identified technologies were well known and generally accepted in the relevant field as available technologies for mineral processing. However, the respondent has not proved that the 2002 article by Klein, Dunbar and Scobie, or its content, formed part of the common general knowledge of the skilled addressee. The fact that Dr Bamber was aware of the article does not prove this fact. Further, even if the article had been assimilated by the bulk of those in the field and formed part of the common general knowledge, I am not persuaded that the skilled addressee would have read the reference to the “steering of flows” in the context of an article dealing with online analysis as a form of bulk sorting. Dr Bamber disagreed with this proposition saying it was a reference to whole stream diversion which, despite the respondent’s submissions to the contrary, I consider Dr Bamber never accepted to be a form of bulk sorting. It is also necessary to note that, as the appellant submitted, the evidence supported the conclusion that:
The requirement for sensors for online analysis are very different to the requirements of sensors for sorting ore (bulk or particle sorting). Sensors for online analysis measure in near real time and can occur at various stages in the mineral processing operation. In contrast, sensors used for ore sorting must operate in real time, with fast and precise readings, with a direct connection to a microprocessor and communicate with low latency to physical diverters, in challenging physical environments.
(emphasis in original.)
To the extent the respondent suggested to the contrary based on the potential for a time lag between the sensing and the time for the material to travel through the system, I do not accept that online sensing is the same as the sensing that would be required for use in the bulk sorting of ore. Dr Miljak accepted that “…automatic ore sorting…requires fast and precise readings over a short time period” and that “…sensors used for ore sorting…have to operate in challenging physical environments”, and “…have to communicate with low latency to physical diverters that will affect the sort [sic]”. Dr Bamber agreed that there were these differences between online analysis and the potential use of sensors for bulk sorting, as did Dr Morrison. Dr Bamber said this:
So in the particle sorting world and the real time sorting world, the measurement time available, the phenomenon you’re trying to measure, is of the order of milliseconds. And therefore, the sensor measurement interval for a single measurement is of a similar order, milliseconds. And that measurement, if you think about a shot like a photograph, trying to take a photograph, it’s like taking photographs at a Formula One race where you’re trying to take a photograph of the Formula One car. And so your exposure needs to be sufficient to be able to take a picture of the car and know that it’s not just a red blur, but in actual fact a Ferrari. That’s the level of timeframe and fidelity that you need for a real-time measurement, in order to make a real-time decision, in order to make a real-time sort. And latency of a similar order. So latency being the time it takes for a measurement to be taken, and that measurement to be reported to the microprocessor is also of that similar order of milliseconds.
In the online analysis world, your criteria are not so much the fidelity of the single shot. So you’re not trying to take pictures of the Formula 1 car. You are trying to measure with very high precision and accuracy the metal content of the material that is past the censor in order to be able to report that with high fidelity to, for instance, the – you know, let’s say metal accountants at the mine. But it would correspond very closely over that period of time to the actual content of that material. So we’re now talking – on the one hand, we’re talking milliseconds with millisecond levels of latency. And on the other hand, we’re talking about measurements that themselves may take – I think it’s quoted in one of the articles. I think it’s the Kurth article – a matter of minutes. And many of those measurements that take themselves individually a matter of minutes add up over time to give you the result that you’re looking for. So you’re in orders of magnitude different timeframe world with respect to online analysis than you are with sensor-based sorting.
Further, I accept the appellant’s submissions that the evidence also supports the following conclusions at the priority date, having regard to the difference between bulk sorting of ore and online analysis of ore:
(1)laser-induced breakdown spectroscopy (LIBS) had not been used for either bulk sorting or particle sorting of ore;
(2)laser-induced fluorescence (LIF) had not been used for either bulk sorting or particle sorting of ore;
(3)X-ray fluorescence (XRF) had not been used for either bulk sorting or particle sorting of ore;
(4)PGNAA had not been used for either bulk sorting or particle sorting of ore; and
(5)sensors based on radio frequency technology had not been used for either bulk sorting or particle sorting of ore.
Accordingly, the potential use of these technologies for the bulk or particle sorting of ore did not form part of the common general knowledge of the skilled addressee. To the contrary, as the appellant submitted, it was generally thought that sensor technologies were too slow, inaccurate or of insufficient scale in order to be incorporated into a conceivable bulk sorting application. Dr Miljak confirmed that even as at 2016:
…there are few sensors suitable for bulk ore sorting, as the ore sorting sensor ideally has a large sensing volume and be able to measure ore on conveyors that contain long metallic cores.
Otherwise, I accept the respondent’s submissions that the common general knowledge of the skilled addressee would have included the following:
(1)Capacitance, moisture analysers, particle size analysers (coarse and fine) and weightometers, density gauges, and flowmeters were in use for online analysis; and
(2)off-the-shelf sensor sorting systems for use in mineral processing were not available before the priority date. There was trial and error involved in every installation. Automatic sensor systems needed to be configured by optimising the speed of the conveyor, the type of sensor, the time taken to process the signal and the time to send instructions.
As to the relevance of heterogeneity, Dr Bamber’s PhD thesis was based on the premise that there was heterogeneity that was effectively overlooked in the industry, including in Australia. Dr Miljak agreed with Dr Bamber that you would have to know about heterogeneity for bulk sorting but considered that the relevant point was the scale of heterogeneity, and at the block mining scale the issue was well understood in Australia whereas at the two metre scale there was probably very limited information about heterogeneity. Dr Morrison also considered that the issue was one of scale and was one the industry was “…enormously well aware of” at the priority date. Dr Bamber made the point that it was heterogeneity between the two extremes of scale that was the necessary information for a bulk sorting operation and said “…there are no publications that I’m aware of that either speak to that length scale of heterogeneity or quantify that length scale of heterogeneity before the priority date”. Dr Miljak also gave evidence which I consider supports Dr Bamber that heterogeneity in the 20 to 1000 tonnes range was neither quantified nor well known at the priority date. Dr Morrison also agreed that such heterogeneity was not well known but said it was “becoming known”. He said that it was “[b]ecoming well known, but it wasn’t generally known, I think is fair”. As a result, I do not accept the respondent’s characterisation of Dr Morrison’s evidence that “…heterogeneity from 20 tonnes to 1000 tonnes was harder to detect without PGNAA online analysis, but that the existence of such heterogeneity was known, and techniques existed to measure it”. In my view, Dr Morrison’s evidence was more nuanced than this and, properly understood, did not suggest that knowledge of the relevant scale of heterogeneity was common general knowledge of the skilled addressee.
To the extent it is necessary to say so, I am not persuaded that Australia was necessarily leading the way in relation to sensing technologies for use in sorting before the priority date. Australia had made advances in that field, but as Dr Bamber said, and as I accept, the leading developer was Europe.
In the context of the common general knowledge the respondent made this submission:
Professor Herman Wotruba and his team (which included Nienhaus) at Aachen University were recognised by all of the witnesses for their expertise in sensing and sorting ore. In 2006, Professor Wotruba wrote a paper (the Wotruba article), which each of Dr Bamber and Dr Morrison had read before the priority date. Professor Wotruba described the Australian paper, Salter & Wyatt, as “fundamental”, and the CSIRO paper, Cutmore & Eberhardt, as “essential” and “fundamental”. Dr Bamber accepted the characterisation of Cutmore & Eberhardt as “i” [sic – “essential”].
Cutmore & Eberhardt describe sensing technologies for the automated analysis and sorting of mineral ores, based on a literature review. The Respondent says that Cutmore & Eberhardt was CGK, or alternatively, that the information in Cutmore & Eberhardt was CGK. The different technologies which were summarised in that review included nuclear, optical, x-ray sensor, and radio techniques.
The respondent has not proved that Cutmore and Eberhardt or that any part of its content was part of the common general knowledge of the skilled addressee. The respondent pointed to a passage in Cutmore and Eberhardt as follows:
The equipment and processes used depend on whether individual particles or bulk ore lots are being sorted…There have been a limited number of developments for the sorting of bulk ore lots. Bulk sorting can have a number of advantages in ore handling and throughput, but has the attendant disadvantage of offering less discrimination…CSIRO Minerals is presently involved in the development of new sensing techniques suited to ore sorting and characterisation…techniques that are currently being evaluated by CSIRO for bulk analysis are nuclear quadrupole resonance and neutron generator based elemental analysis.
Far from proving that this information formed part of the common general knowledge, the information itself indicates that the CSIRO’s evaluation and the results of that evaluation would not have been assimilated by the bulk of mineral processing engineers.
Apart from these matters, I accept the appellant’s submissions that it was common general knowledge that:
(1)the feed size of the ROM ore that is fed into primary crusher is up to approximately 1.5m;
(2)primary crushed ore is typically fed onto a conveyer belt where the particles will stack on top of each other and be unevenly distributed on the conveyer belt; there will be substantial variation of mass cross-section of particles of the conveyer; and
(3)the minerals industry was conservative, relied on proven technologies and was slow to develop and implement new technologies.
I consider that the conclusions I have reached about the common general knowledge are supported by the evidence of Dr Bamber which I have accepted and, in particular, his PhD thesis. Dr Bamber completed his PhD thesis before the priority date. He explained that at that time and as at the priority date the concept of pre-concentration was known but not widely or commonly applied in the mining industry including in Australia. Because of his research for his Masters and PhD, he had a greater knowledge than most mineral processing engineers about this area including those in Australia. In his view, there was industry-wide resistance and opposition to new approaches including pre-concentration in the mining industry including in Australia. It was largely for this reason that he chose to centre his PhD on pre-concentration techniques and suggested in his thesis that the general industry-wide resistance to pre-concentration was largely unfounded and that mining companies should be considering pre-concentration including by comminution and size classification, ore sorting, dense media separation and coarse-particle flotation. Dr Bamber did not discuss bulk sorting as a pre-concentration technique in his PhD thesis even though he knew that bulk sorting was a subset of ore sorting which he did discuss. He did not do so because while he understood the concept he was not aware of how it could be applied in practice and believed that particle sorting would be preferable to bulk sorting as a pre-concentration technique. He anticipated that suggesting bulk sorting as a pre-concentration technique as a theoretical application “…would meet even more resistance than particle sorting or other pre-concentration techniques”. He continued to hold these views as at the priority date and before that date had not considered the details as to how bulk sorting could be applied in practice. He first published in relation to bulk sorting after the priority date in 2012.
The specification for the 171 application
The appellant provided a convenient summary of the 171 application which may be adopted.
Accordingly, as the appellant put it, the 171 application describes and claims methods and apparatus for identifying and separating mined material on a bulk basis (i.e. using bulk sorting). The specification explains that low grade ore stockpiles have “…potentially significant economic value notwithstanding the low grade of the ore” (page 3, lines 1 and 2). In addition, it describes how low grade iron ore (either stockpiled or not yet mined) can be upgraded “…using wet concentration and dry sorting plant flowsheets” (page 3, lines 27 and 28). However, it also highlights that the high operating costs associated with such upgrading methods which can often restrict the use of such flowsheet options.
The 171 application describes a method and apparatus for upgrading ore by implementing a system that assesses the grade of segments of ore and then separates the ore based on the assessed grade of segments of ore. This involves a combination of steps, initially separating ore on a bulk basis (i.e. bulk sorting), followed by either wet recovery stages or particle sorting or disposal. The use of bulk sorting followed by particle sorting presents an “…effective method of sorting mined material, particularly when it is necessary to sort large volumes of mined material at a high throughput and cost effectively” (page 5, lines 27 to 30).
Claim 1 is in the following terms:
A method of mining that comprises:
(a)mining ore;
(b)reducing the size of mined ore in a crushing step and producing a crushed ore having a primary crushed ore particle size;
(c)assessing the grade of successive segments of the crushed ore by direct assessment of grade as the crushed ore is transported along a pathway;
(d)separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segment; and
(e)processing separated segments in a downstream processing plant and producing upgraded material.
As the respondent noted, independent claim 19 is for a “method of separating mined ore” that similarly comprises each of steps (b) to (e) of claim 1. Independent claim 37 is to an “…apparatus for separating a mined ore” that comprises each of steps (b) to (e) of claim 1, save that the separated segments which are processed are separated segments which are above the first grade threshold.
Accordingly, as the appellant summarised:
Independent method claims 1 and 19 and apparatus claim 37 each claim the following combination of features:
(a)reducing the mined ore to a “primary crushed ore particle size”;
(b)assessing the grade of successive segments of the crushed ore by “direct assessment of grade” as the crushed ore is transported along a pathway;
(c)bulk sorting, i.e. separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segment;
(d)processing separated segments in a downstream processing plant and producing upgraded material.
Further, as the appellant put it:
Claims 2 to 18 and 20 to 36 to 41 are dependent claims and introduce further limiting features to the claimed combinations. For example:
(a)claims 3 and 21 include downstream processing by processing at least one separated segment by dry sorting particles;
(b)claims 5 and 23 include processing: (i) at least one separated segment that is above the first grade threshold by dry sorting particles; and (ii) at least one separated segment that is below the first grade threshold by processing steps other than dry sorting particles basis, such as by wet concentration steps;
(c)claims 8, 9, 26 and 27 include where the mined ore is iron ore or low grade iron ore;
(d)claims 13 and 31 include assessing the grade by analysing the entire bed depth;
(e)claims 14 and 32 include using prompt gamma neutron analysis (PGNA) to assess grade; and
(f)claims 17, 35 and 41 include using a splitter system and chutes.
THE CONSTRUCTION ISSUES
Principles of construction
In Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 65 IPR 86 at [67] the following summary of the relevant principles was provided:
(i)the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;
(ii)a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24];
(iii)the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corp Pty Ltd at 391;
(iv)while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 at 39;
(v)experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and
(vi)it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485–486.
To adopt the respondent’s submission in this regard:
The principles of construction are well-established and are set out by Sheppard J in Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400. This summary was subsequently approved by French, Lindgren and Crennan JJ in Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 225 ALR 416 at 468 and Sundberg, Jessup and Middleton JJ in PAC Mining Pty Ltd v Esco Corp (2009) 80 IPR 1 at [27]:
(1)The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
(2)It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
(3)Nevertheless, in approaching the task of construction, one must read the specification as a whole.
(4)In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
(5)If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
(6)A patent specification should be given a purposive construction rather than a purely literal one.
(7)In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.
(8)The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.
(9)Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
(10)If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.
The issues in dispute
The respondent identified that the dispute between the parties concerned the meaning of the terms “grade” and “direct assessment” in claim 1 sub para (c) of the 171 application which refers to “assessing the grade of successive segments of the crushed ore by direct assessment of grade as the crushed ore is transported along a pathway”. The appellant identified that the issues in dispute would require consideration of the phrases and words “primary crushed ore particle size”, “grade”, “direct assessment of grade”/“indirect assessment of grade” and “dry sorting particles”.
Grade
The essence of the respondent’s case in relation to the meaning of “grade” in claim 1 involved the following propositions.
The 171 application states that the term “grade” is understood to mean “the concentration of an element of interest in an ore resource”.
There is a difference between an element of interest in an ore resource and the element of interest in an ore resource.
Dr Morrison explained that an “element of interest” may be “…either an element that is of commercial value or an element which could result in a penalty or rejection of the product material”. Accordingly, for iron ore, the key element with commercial value is the iron, while an element which could result in penalties is phosphorous.
Dr Miljak expressed views to the same effect saying that an “element of interest” could refer to a valuable element or an undesirable element. Thus, an element of interest is “…an element that mineral processing aims to control (e.g. sort or blend) from the mined material”. Further, the Kurth 2007 paper supports this position by stating that “[t]he neutrons interact with elemental atoms to generate gamma rays with distinctive energy levels. The spectral analysis identifies the elemental peaks and calculates abundance for each element of interest”.
The appellant also submitted that the combination of features claimed by each of the dependent method claims (2 to 18, 20 to 36) and apparatus claims (38 to 41) were not obvious in the light of the common general knowledge for the same reasons. Further to these reasons, however, on any view, each of the dependent claims which includes bulk sorting followed by particle sorting (claims 3 to 7, 21 to 25, 38) was not obvious in light of the common general knowledge. The appellant said the respondent had adduced no evidence of the obviousness of that combination and the weight of the evidence in relation to the dependent claims in the light of the cited prior art (Nienhaus and Kurth 2007) is that the combination is not obvious. In addition, each of the each of the dependent claims in which the mined ore is iron ore (claims 8, 9, 10, 16, 26, 27, 28 and 34) was not obvious in light of the common general knowledge. This is because it was not obvious to apply the “niche application” of bulk sorting to the specific case of iron ore, to which it had never been applied before the priority date. Finally, each of the each of the dependent claims which include the use of PGNAA for bulk sorting (claims 14 and 32), were not obvious in light of the common general knowledge as it was not obvious to take a particular measurement technique used in different contexts and apply it to the non-obvious application of bulk sorting of ore.
As to Nienhaus, the appellant submitted that the respondent had not discharged the onus of proving that the method or apparatus of any of the claims does not involve an inventive step in the light of the common general knowledge together with the information in Nienhaus for the following reasons.
The appellant submitted that the evidence does not support a finding that Nienhaus could reasonably be expected to have been ascertained and regarded as relevant under s 7(3) as:
(1)Dr Morrison’s evidence was that he would conduct a literature search if undertaking a research project relating to dry processing of ores as at June 2010. However, not one of the many searches proposed by Dr Morrison would in fact have located Nienhaus. Instead, they produced tens of thousands of search results of other publications. The appellant said that this was “a ‘haystack’ with no needle in it”; and
(2)as to the fact that the respondent does not rely on any literature search but instead said that Nienhaus would have been ascertained by the skilled person by means of industry knowledge and/or review of the P902 report, the evidence does not establish that the skilled person could be reasonably expected to have done so:
(a)the literature search evidence cannot be put aside as irrelevant as this is what Dr Morrison said he would have done and is thus a step that can be attributed to the skilled addressee and, on the evidence, none of the searches conducted would have located Nienhaus and the results of the searches would have led the skilled addressee in different directions away from Nienhaus;
(b)Dr Morrison gave evidence that he was aware of and had read Nienhaus before the priority date but his “…idiosyncratic experience cannot be attributed to the notional skilled person”;
(c)Dr Morrison’s suggestion in his affidavit evidence to the effect that he would have reviewed the P902 report and located Nienhaus amongst the references in that document cannot be accepted, because this is an exercise he never in fact undertook despite being engaged in research relating to dry processing of ores and the exercise cannot be attributed to the skilled addressee;
(d)Dr Miljak had not read the Nienhaus paper before the priority date despite his involvement in developing sensor technologies at that time;
(e)question 26 of the joint expert report is of little utility as it was framed by reference to a “…literature search relating to dry processing of ore, and particularly bulk sorting”, and thereby assumes part of the invention and does not reflect a starting point that was common general knowledge; and
(f)the title of Nienhaus (“Quality of LIF”) and its abstract do not suggest relevance to the development of ore processing or sorting techniques, including bulk sorting.
The appellant submitted further that the evidence does not support a finding that the skilled addressee would be directly led as a matter of course to try the method or apparatus of claims 1, 19 or 37 with a reasonable expectation of success in the light of the common general knowledge and Nienhaus:
(1)Nienhaus strongly recommends the use of the LIF analyser to measure the fluorescence of phosphorous, which is not covered by the method or apparatus of claims 1, 19 or 37 and discourages the use of other sensing technologies including PGNAA; and
(2)it cannot be said that it would have been obvious to take Nienhaus but discard the essence of that disclosure and attempt to develop a system that used PGNAA instead of LIF in the application that is described in Nienhaus. The evidence does not establish, to the requisite standard, that the skilled person would directly be led as a matter of course to do so with a reasonable expectation of success.
The appellant also submitted that the evidence does not support a finding that the skilled person would be directly led to try as a matter of course the additional features of the method or apparatus of at least the following dependent claims with a reasonable expectation of success in the light of the common general knowledge and Nienhaus: claims 3, 4, 6, 7, 21, 22, 24, 25, 38 (dry sorting steps/plant); claims 11, 29 (mining steps). Nor does the evidence support a finding that the skilled person would be directly led to try as a matter of course the additional features of the method or apparatus of the following dependent claims with a reasonable expectation of success in the light of the common general knowledge and Nienhaus: claims 13, 31 (entire bed depth); claims 14, 32 (PGNAA).
Dr Miljak’s evidence that the concept of the claimed invention would have been obvious to him but not to the “…lowest common denominator of mineral processing engineer”, which formed part of his explanation as to how he understood question 28 in the joint experts’ report (about supplementing the disclosure in Nienhaus) does not assist the respondent because the evidence was given:
(1)with the benefit of hindsight, having already seen the 171 application;
(2)from the perspective of a research and development physicist only (not a non-inventive mineral processing engineer); and
(3)in addition to other evidence in which he accepted that even from his perspective (not that of the skilled addressee) the implementation of the concepts would not be obvious and, therefore, there would be no expectation of success.
Further, the appellant submitted:
…as the Appellant understands Dr Miljak’s changed position: (i) his answers in the JER [joint experts’ report] that the addition of the dry sorting steps was not obvious would remain correct if answered from the point of view of the “non-inventive” (his words) person skilled in the art; and (ii) while he said that the “concept” (but not its implementation) would have been obvious to him, he expressly confirmed that the concept would not have been obvious to the non-inventive skilled person.
…
Finally, whatever the weight of Dr Miljak’s changed evidence, it cannot assist the Respondent to make out his onus given the opposing views of Dr Bamber and Dr Morrison as reflected in the JER.
As to Kurth 2007, the appellant submitted that the respondent had not discharged the onus of proving that the method or apparatus of any of the claims does not involve an inventive step in the light of the common general knowledge together with the information in Kurth 2007.
According to the appellant, the evidence does not support a finding that Kurth 2007 could reasonably be expected to have been ascertained and regarded as relevant under s 7(3). In common with Nienhaus, Dr Morrison’s evidence was that he would conduct a literature search if undertaking a research project relating to dry processing of ores as at June 2010. However, not one of the many searches proposed by Dr Morrison would in fact have located Kurth 2007 but instead produced tens of thousands of search results of other publications. While one of the searches conducted did locate the Kurth 2008 article, this does not assist the respondent as:
(1)it was one search only that located Kurth 2008 in contrast to the many searches done and the return of tens of thousands of results;
(2)there is no evidence to support the proposition (which forms part of the respondent’s onus) that the skilled person would have zeroed in on this particular search and identified and obtained Kurth 2008;
(3)the search which located Kurth 2008 (amongst many other articles) was for the term “bulk sorting” and thus involved the use of hindsight, assuming as the starting point part of the subject-matter of the claimed invention whereas from the common general knowledge and the use of non-hindsight returns the searches did not locate Kurth 2008;
(4)Dr Morrison’s assertion that he “would have” located Kurth 2007 by reviewing Kurth 2008 cannot be accepted because he in fact had Kurth 2008 from his attendance at the conference where Kurth 2008 was presented and never in fact undertook the exercise he said he would have conducted despite being “engaged in the very task to which his evidence was directed: research in relation to the dry processing of ores”;
(5)there is no other evidence to suggest that the skilled addressee, with Kurth 2008, would have done what Dr Morrison said; and
(6)an objective consideration of Kurth 2008 and the way in which it refers to Kurth 2007 confirm that the skilled addressees “…would not have gone down this particular rabbit hole” as the reference is in the context of process control, not sorting or bulk sorting.
The appellant also noted that none of the experts had in fact read Kurth 2007 before the priority date or, it should be inferred, before giving evidence in relation to the 171 application. Further, the question in the joint experts’ report concerned with the relevance requirement under s 7(3) (question 32) is of little or no utility as it is framed by reference to a literature search relating to dry processing of ore, and particularly bulk sorting, and thus assumes part of the invention and does not reflect a starting point that was part of the common general knowledge. In addition, the title of Kurth 2007, its abstract, and its general disclosure, do not suggest any relevance to the development of ore processing or sorting techniques, including bulk sorting. The paper is concerned with process control, not sorting techniques.
The appellant submitted that the evidence does not support a finding that the skilled person would be directly led to try as a matter of course the method or apparatus of claims 1, 19 or 37 with a reasonable expectation of success in the light of the common general knowledge and Kurth 2007. Kurth 2007 does not disclose bulk sorting and there is no data provided which would enable the skilled person to try bulk sorting, let alone to try bulk sorting with a reasonable expectation of success. It also would not have been obvious to use the PGNAA sensor on primary crushed ore. The only disclosure in Kurth 2007 in relation to primary crushed size ore involved the use of a radiometric sensor for on-line analysis and there is no evidence that it would have been obvious, based on this disclosure, to use such a sensor for bulk sorting.
The appellant submitted that the evidence does not support a finding that the skilled addressee would be directly led to try as a matter of course the additional features of the method or apparatus of at least the following dependent claims with a reasonable expectation of success in the light of the common general knowledge and Kurth 2007: claims 3, 4, 6, 7, 21, 22, 24, 25, 38 (dry sorting steps/plant); claims 11, 29 (mining steps). The appellant referred to the answer in question 34 of the joint experts’ repot that integers of those claims were non-obvious in light of the common general knowledge and Kurth 2007 and the evidence of Dr Bamber to this effect.
The appellant also submitted that the evidence does not support a finding that the skilled addressee would be directly led to try as a matter of course the additional features of the method or apparatus of the following dependent claims with a reasonable expectation of success in the light of the common general knowledge and Kurth 2007: claims 13, 31 (entire bed depth); claims 14, 32 (PGNAA); claims 18, 36 (stockpiling) and 17, 35,41 (chutes), again referring to the experts’ answers to this effect in question 34.
As to Dr Miljak’s evidence that the claimed invention would have been obvious to him, the appellant repeated its submissions that this evidence was made from the position of hindsight (having already seen the claims of the 171 application) and from the perspective of research and development physicist only (not an non-inventive mineral processing engineer), with Dr Miljak confirming that even from his perspective (not that of the skilled addressee) the implementation of the concepts would not be obvious and, therefore, there would be no expectation of success. The appellant also reiterated its submissions as set out above in relation to Dr Miljak’s evidence concerning question 28 of the joint experts’ report.
Discussion
In my view the appellant’s submissions in relation to all aspects of the question of inventive step are compelling.
My general observations about this issue are as follows.
The respondent has not confronted the totality of the expert evidence (including, in certain regards, that of its own experts) which supports the conclusion that the claimed invention would not have been obvious to a person skilled in the relevant art by reason of the common general knowledge alone or the common general knowledge taken together with either Nienhaus or Kurth 2007 (even assuming that those articles would have been ascertained by the skilled person, which I do not accept) before the priority date.
The respondent has not persuaded me that the evidence of Dr Bamber, contrary to the respondent’s case on inventive step, should not be accepted.
The respondent has not persuaded me that the evidence of Dr Morrison and Dr Miljak, where it is contrary to the evidence of Dr Bamber and supports one or more aspects of the respondent’s case in relation to inventive step, should be accepted in preference to the evidence of Dr Bamber.
As discussed above, I consider that none of the expert evidence about the experts’ own state of knowledge should be taken to be representative of the notional skilled addressee. In particular, I consider that each of the experts in this case are inventive. Further, I do not accept that the concept of the skilled addressee should be confined to a mineral processing engineer within the research and development arm of an international mining company. In my view, while the concept of the skilled addressee should not be reduced to what Dr Miljak described as the lowest common denominator of a mineral processing engineer, I see no reason on the evidence and given the terms of the 171 application to confine the concept of the skilled addressee in the manner the respondent has proposed. The concept of the skilled addressee must include mineral processing engineers more generally, albeit ones specifically interested in process control of ROM.
The respondent has not adduced evidence sufficient to persuade me that the relevant starting point for the notional skilled addressee is that there was a problem of variable quality of feed of material entering a processing plant which was perceived as requiring a solution through any form of pre-concentration technique before the priority date. The evidence is to the effect that the notional skilled addressee would have shared a general scepticism about the practicality of sorting processes for ROM and new technologies particularly those relating to dry processing separation and pre-concentration techniques. Accordingly, while it may be taken that the skilled addressee was focusing on improvements to the control of mineral processing, I do not accept that it may be taken that the skilled addressee would have perceived there to be a problem of variable feed quality for either of the reasons identified by the respondent (heterogeneity of feed material or dilution of ROM through waste) which was to be solved through pre-concentration techniques. Knowledge of the heterogeneity of ore in situ at the relevant scale was not itself common general knowledge and the evidence is insufficient to indicate that dilution by waste was a problem requiring a solution of the kind proposed in the claims of the 171 application.
Otherwise, I do not accept that it would have been obvious to the skilled addressee to apply the technique of bulk sorting to primary crushed material for the reasons given by the appellant.
In addition to the point made immediately above, as the appellant said, on the evidence, the technique of bulk sorting was not well known or widely accepted and used in the mineral processing industry. The technique requires prior knowledge of the heterogeneity of the ore in situ at the relevant scale and such knowledge was not itself common general knowledge of the skilled addressee. Further, as the appellant also said, the commercial and practical realities (including the perceived limitations of sensor technologies) which would have informed the state of mind of the skilled addressee do not suggest that the skilled addressee would have had any motivation or reason to apply the concept of bulk sorting to the processing of ore.
Contrary to the respondent’s submissions, in the commercial and practical context which existed at the priority date, I consider that the skilled addressee would not have been directly led as a matter of course to try bulk sorting in the expectation that it might well produce a useful or better alternative than existed before the priority date. The fact that bulk sorting was not well known and had only been used in niche applications involving sensing of ROM in trucks or loaders means that the skilled addressee would not have been directly led as a matter of course to apply those same bulk sorting techniques to primary crushed ore which, as the appellant submitted, was not typically transported using trucks but, rather, was transported via a conveyor.
Contrary to the respondent’s submissions, there were good reasons for the skilled addressee not to consider that merely because bulk sorting had been used in niche applications involving the application of sensing technologies to ROM in trucks, the same could be applied to primary crushed ore on a conveyor belt. The respondent has not proved that Scantech’s marketing was part of the common general knowledge of the skilled addressee or that the skilled addressee would have considered that the implementation of bulk sorting on primary crushed ore would have been commercially feasible or even desirable in light of the limitations of sensing technologies and the practical difficulties of applying such a niche application to primary crushed ore on a conveyor belt.
For these reasons I accept the appellant’s submissions as to non-obviousness of the claimed invention including that the adaptations that would have been required for the application of bulk sorting to primary crushed ore was by no means obvious at the priority date.
I also accept the appellant’s submissions that, on any view, the evidence does not support the conclusion that bulk sorting followed by particle sorting would have been obvious to the skilled addressee before the priority date. The evidence weighs heavily against any conclusion to that effect. For the reasons given, the mere fact that it was desirable to reject waste as early as possible in the process does not mean that the skilled addressee would have been considering pre-concentration techniques of the kind claimed in the 171 application. To the extent that Dr Morrison gave contrary evidence in this regard to Dr Bamber, as I have said, I see no reason to reject the evidence of Dr Bamber. As to Dr Miljak’s evidence, I consider that the appellant is correct. Properly understood, Dr Miljak’s evidence, both written in the joint experts’ report and oral, supports the inference that the claimed invention would not have been obvious to the notional skilled addressee despite Dr Miljak saying it would have been obvious to him.
As to Nienhaus, one difficulty confronting the respondent is that I am not persuaded that Nienhaus would have been ascertained by the notional skilled addressee before the priority date. The evidence of the experts was premised on the condition that if they ascertained Nienhaus they would have considered it relevant to developing a mineral processing operation that included bulk sorting and bulk sorting of primary crushed ore (joint experts’ report question 26). The evidence weighs in favour of the conclusion that the notional skilled addressee would not have ascertained Nienhaus before the priority date even assuming (contrary to my view) that it is legitimate to attribute to the skilled addressee the view that they were solving the problem of variable ore feed by the application of the concept of either bulk sorting per se or bulk sorting of primary crushed ore. The literature searches of Dr Morrison did not lead to the ascertainment of Nienhaus. Dr Morrison is not representative of the skilled addressee and his evidence that he had ascertained and read Nienhaus before the priority date, as the appellant submitted, cannot be attributed to the skilled addressee. Further, and as the appellant also submitted, I am not persuaded by Dr Morrison’s evidence that he would have located the reference to Nienhaus in the P902 report because despite in fact being involved in the very exercise to be attributed to the notional skilled addressee (that is, being focused on improving process control for the mineral processing of ores) Dr Morrison did not ascertain Nienhaus by this method. It is also relevant that Dr Miljak, who had particular expertise in sensor technologies, had not ascertained Nienhaus by the priority date. I also accept the appellant’s submission that a mere cross-reference to the title of Nienhaus in another report would not have led to its ascertainment by the notional skilled addressee even assuming an interest in bulk sorting because its title (“Quality of LIF”) would not have alerted the skilled addressee of its relevance to ore processing techniques and bulk sorting. I do not find the factors on which the respondent relied to establish the contrary proposition sufficient to discharge the respondent’s onus of proving that the skilled addressee would have ascertained Nienhaus and considered it be relevant to improving the control of the processing of ore.
I accept the appellant’s submissions that it cannot be said that the skilled addressee would have been directly led as a matter of course to try the methods or apparatus in claims 1, 19 or 37 of the 171 application with a reasonable expectation of success in light of the common general knowledge and Nienhaus given that the entire purpose of the article is to establish that LIF “…has emerged as an answer to the quality problem” in mineral processing. In my view it is not plausible that the skilled addressee would take from Nienhaus anything other than the use of LIF to measure the fluorescence of phosphorous. As the appellant said, it would not have been obvious for the skilled addressee to use Nienhaus in a manner which ignores the essence of its disclosure as a basis for the development of a system using PGNAA.
I do not accept the respondent’s submissions that the evidence of Dr Bamber about the lack of any expectation of successfully using PGNAA instead of a LIF sensor may be disregarded. Dr Bamber’s evidence of the complexity of implementation, given the agreement between the experts as to the conservatism of the industry about new technologies and its scepticism concerning sensor technologies, supports the conclusion that the skilled addressee would not have been directly led as a matter of course to try to combine the disclosure in Nienhaus with the use of PGNAA with a reasonable expectation of success.
I accept the submissions of the appellant about Dr Miljak’s oral evidence that the concept of the claimed invention would have been obvious to him. That evidence, as I have said, in fact confirms the non-obviousness of the clamed invention when it is considered as a whole.
I accept further the appellant’s submissions that the dependent claims of the 171 application would not have been obvious to the skilled addressee in light of the common general knowledge and Nienhaus. The evidence in the joint report and as given orally by the experts does not support the contrary conclusion advocated by the respondent.
As to Kurth 2007 I accept the appellant’s submissions that the respondent has not proved that the skilled addressee would be reasonably expected to have ascertained Kurth 2007 and regarded it as relevant before the priority date. The literature searches did not disclose Kurth 2007 and only one such search, which used the term “bulk sorting”, disclosed Kurth 2008. Apart from this I do not accept that Dr Bamber’s evidence should be given little weight. Dr Bamber is an expert in an international field in respect of the very issues with which the 171 application is concerned and he was unaware of Kurth 2007. Dr Morrison’s evidence that he would have ascertained Kurth 2007 because of the cross-reference in Kurth 2008 is unpersuasive for the reasons given by the appellant.
I also accept the appellant’s submissions (for the reasons given by the appellant) that the claimed invention, in any event, would not have been obvious in light of the common general knowledge and Kurth 2007 because Kurth 2007 is concerned generally with process control and does not disclose bulk sorting as that term is used in the 171 application.
CONCLUSIONS
The respondent has not discharged its onus of proving that the patent as sought in the 171 application would be invalid if granted. It follows that the appellant’s appeal should be allowed and consequential orders should be made enabling the 171 application to proceed to the grant of a patent.
I certify that the preceding two hundred and ninety-three (293) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot. Associate:
Dated: 15 November 2019
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