The University of Adelaide, Robin Bruce Coles and Dudley Edwin Pinnock v Commonwealth Scientific and Industrial Research Organisation
[1994] APO 75
•19 December 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 623264 in the name of THE UNIVERSITY OF ADELAIDE, ROBIN BRUCE COLES AND DUDLEY EDWIN PINNOCK
Title: Method of controlling pests
Action: Opposition under S.59 of the Patents Act 1952 by COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION
Decision: Issued .
Abstract: (a) The claims as accepted are entitled to claim their earliest priority date from the provisional application of the parent application;
(b)The claims as accepted are not novel in light of the citations Kushida and Ferron. The opponent has not established that the claims as proposed to be amended lack novelty in light of those documents;
(c)On the evidence before the Hearing Officer, the claims as accepted and as proposed to be amended lack an inventive step in light of the common general knowledge;
(d)There may be further evidence to suggest that the specific strains defined in claims 9-12 (as proposed to be amended) are "selections" from the parent application. However, in this case, it is possible that an amendment to incorporate them will not be allowable.
(e)The specification as accepted fails to meet the requirements of section 40. However the problem is apparently overcome by the proposed amendments.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 623264 by THE UNIVERSITY OF ADELAIDE, ROBIN BRUCE COLES and DUDLEY EDWIN PINNOCK and Opposition thereto by COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION
BACKGROUND
Patent Application number 623264 by University of Adelaide, Robin Bruce Coles and Dudley Edwin Pinnock ("University of Adelaide et al") was lodged on 1 June 1990 as a divisional application (under section 51 of the Patents Act 1952) of application number 54766/86. The parent application relied on a provisional application (PG 9748) to establish an earliest possible priority date of 15 March 1985.
The application was advertised accepted on 7 May 1992 and on 6 August 1992, the Commonwealth Scientific and Industrial Research Organisation ("CSIRO") filed a notice of Opposition to the grant of the patent.
The formal stages of evidence were completed on 2 September 1993. On 16 June 1994, the applicant filed amendments under section 104 (Patents Act 1990) and requested a deferral of the hearing to consider the amendments. The opponent objected to any further deferments and the application for deferral was rejected. The applicant also filed further evidence on 17 June 1994. The opponent did not object to this new evidence and in order to expedite proceedings, the hearing was to consider both the further evidence and the proposed amendments.
The opposition was heard in Canberra on 20 June 1994. Mr Paul Jones from Phillips Ormonde and Fitzpatrick, Melbourne (assisted by Ms Catherine Hustwick of R.K. Maddern, Adelaide) represented the applicant and both appeared by phone. Mr Crispen Marsh from F.B. Rice and Co., Sydney represented the opponent.
As the application was lodged prior to, but advertised accepted after, the commencement of the Patents Act 1990, the Opposition is proceeding under Part V of the Patents Act 1952 with the procedures of the Opposition governed by chapter 5 of the Patent Regulations 1991.
During the Hearing, an issue emerged of whether the opposed application was entitled to claim priority date from its parent application. The opponents submitted that the claims of the opposed specification was not entitled to the priority date of the parent application. The applicant objected to these submissions arguing that the issue was not listed in the statement of grounds and particulars of opposition and requested that there was a need to amend that statement.
I ruled at the Hearing that the issue was implicit in the statement of grounds and particulars as one of the citations listed was clearly published after the earliest possible priority date of the claims. I therefore found that there would be no need to amend the statement of grounds and particulars. However, I agreed with the applicant that the issue was not clearly spelt out in the statement of grounds and particulars and allowed the applicant 30 days in which to file further submissions on the issue of priority date. The applicant filed further submissions on 20 July 1994 and the opponent filed a response to these submissions on 18 August 1994.
EVIDENCE
Evidence-in-support consists of statutory declarations from
R.J. Milner, Peter Crispen Lawrence Marsh (with 12 supporting exhibits), Carol Murray, Andrew Charles Rath (with two supporting exhibits), Richard McLean Bull, Penelope Jean Gullan, and Travis Robert Glare and published parts of the correspondence file from the patent application.
Evidence-in-answer consists of a statutory declaration from Dudley Edwin Pinnock and 3 supporting exhibits.
Evidence-in-reply consists of a statutory declaration from
R.J. Milner.
Further evidence (adduced on 17 June 1994) is statutory declarations from Dudley Edwin Pinnock and Sarina Curosa and 1 supporting exhibit.
COMMON GENERAL KNOWLEDGE
The field of the invention relates to a biological method of controlling soil-inhabiting pests using fungal pathogens. A critical part of this decision is to establish the common general knowledge in that field at the priority date of the claims.
The statutory declarations of Richard McLean Bull, Penelope Jean Gullan, Travis Robert Glare, and Andrew Charles Rath (provided by the opponent), all state that the citation:
Ferron (1981) "Pest Control by the fungi Beauveria and Metarhizium" ("Ferron") published as chapter 24 (pages 462-482) of the textbook "Microbial Control of Pests and Plant Diseases" published by the Academic Press.
(hereinafter referred to as "Ferron") was the standard text consulted by entomologists in March 1985 in respect of insect pathology, a fact that the applicant seems to have also acknowledged in submissions.
I therefore accept that the citation Ferron was part of the common general knowledge at the earliest possible priority date of the current application.
The statutory declarations of R.J. Milner, Richard McLean Bull, Penelope Jean Gullan, Travis Robert Glare, and Andrew Charles Rath also state that from their "personnel experience" in the field, the following are matters which would be so well known to insect pathologists that they are part of the store of knowledge which an insect pathologist would automatically draw in addressing the problem of the control of soil inhabiting scarabeid beetle larvae:
(a)strains of entomogenous fungi, including Metarhizium anisopliae, have been tried as a method of controlling scarabeid beetle larvae;
(b)the larvae are soil inhabiting and the fungal strain must be brought into contact with the cuticle of the larvae, therefore the fungus must be incorporated in the soil to be effective; and
(c)in selecting a fungal pathogen, it is necessary to find a fungal strain which is effective against the target species and that this is commonly done by bioassay.
Bull, Rath, Milner and Glare also state that the insect pathologist would realize that for the spores of a soil incorporated fungal pathogen to be effective they must be maintained in the soil in a condition in which they can germinate. For this purpose they should be protected from environmental damage and this is best done by incorporation of the spores in a fungal bait. Such fungal bait would typically contain at least some fungal nutrient either by accident or design and would have the effect of protecting the spores from some environmental effect such as dessication, U.V. light or temperature extremes.
I note that the above declarations from the opponent are somewhat unclear in that they do not specifically state that their "personnel experience" was in relation to their experience in Australia at the earliest priority date. However, I think this is probable since all the declarants state that they were persons familiar with the field in March 1985 and the applicant did not provide any substantial counter-arguments disputing the opponent's assessment of the common general knowledge.
I also note that the matter that Bull, Gullan, Glare, Milner and Rath have stated is part of their common general knowledge can also be found in Ferron which I have previously concluded was part of the common general knowledge at the earliest priority date of the claims.
I therefore accept that the matters referred to above in the statutory declarations of Bull, Rath, Milner, Glare and Gullan were part of the common general knowledge before the earliest priority date of the claims.
SPECIFICATION AND CONSTRUCTION OF CLAIMS
The specification, as accepted, relates to a method of controlling soil-inhabiting pests, especially scarabeid beetle larvae, using fungal pathogens.
The invention, as defined in claim 1 as accepted, is:
"A method of controlling soil-inhabiting scarabeid beetle larvae, by incorporating in the soil an effective amount of a select strain (as determined by bioassay) of fungus of the species (i) Metarhizium anisopliae or (ii) Beauveria bassiana (or a mixture thereof), having high efficacy (as herein defined) for control of the larvae, and (ii) a sustaining, protective nutrient carrier."
In construing the scope of this claim, I note the following:
(a)The specification states that an "effective amount" generally (my emphasis) constitutes about 1014 to 1015 conidiospores of the selected fungal strain per hectare. This definition does not limit the term "effective amount" to a particular number of conidiospores. Thus, to a skilled addressee, an "effective amount" of a strain must be an amount sufficient to control (at least to some extent) soil-inhabiting scarabeid beetle larvae. Although this amount would clearly depend on the environmental conditions and the efficacy of the strain, the skilled addressee would be able to determine by routine trial and error what an "effective amount" would be for a given set of circumstances, so the term (although broad) has some recognized limits and does not fall foul of section 40;
(b)A person skilled in the art would usually consider that any level of efficacy (above "normal" mortality rate for the beetle larvae (whatever this is)) is "high". However the claim states that the term "high efficacy" is to be interpreted as being as "hereinbefore defined". The description "defines" fungal strains having "high efficacy" as attaining, for example (my emphasis), 96-100% mortality of the scarabeid beetle larvae, when testing is performed according to a particular procedure described in the specification. This is a quasi-definition which renders claim 1 (as accepted) unclear. I am unable to construe the claim using that definition and need to adopt the "plain meaning" of the term to make sense of the claim. Thus, I construe the term "high efficacy" as meaning any level of efficacy above "normal" mortality rate for the beetle larvae.
(c)The term "bioassay" is not defined in the specification. Henderson's dictionary of biological terms (ed. E. Lawrence) 10th edition (Longman Group UK Ltd) 1989 defines a bioassay
as:
"any biological assay; use of an organism for assay purposes; a quantitative biological analysis."
Thus, potentially, any assay involving the fungal strain itself would be included within the scope of the term "bioassay". Picking a dead grub from a field infested with scarabeid beetles is a method of selection and is a bioassay (a "natural bioassay" as the opponent suggested).
(d)The term "sustaining protective nutrient carrier" is defined in the specification as comprising:
(a) fungal nutrients to sustain growth of the fungus; and
(b)protective material(s) to protect the fungus from environmental extremes (e.g. vegetable oil to reduce spore dehydration).
It is not clear from this definition how long growth must be "sustained" for nor from what environmental extreme protection is required and at what level. Hence any carrier with some nutrient and some protection against some environmental extreme will fall within the scope of the claim.
In my view, from the analysis in points (a) to (d) above, the essential integers of claim 1 are:
(1)a method of controlling scarabeid larvae by incorporating into the soil a combination of:
(2)an amount of a select strain of a fungus of the species:
(a) Metarhizium anisopliae; or
(b) Beauveria bassiana
having some level of effectiveness above "normal" in controlling scarabeid beetle larvae and
(3)a carrier with some level of nutrient and some level of protection against some form of environmental extreme.
Claims 2-8, and 11 do not add any features which materially affect the working of the invention and therefore do not add any essential features. Claim 9 (and claims 10, 12 dependent thereon), on the other hand, defines a different aspect of the invention defining the preparation of an insecticide rather than the method of biological control:
"A biological insecticidal preparation comprising a fungal culture of a select strain (as determined by bioassay) of the fungus Metarhizium anisopliae or Beauveria bassiana (or a mixture thereof) in combination with a sustaining, protective nutrient carrier, said fungus strain having high efficacy (as herein defined) for controlling soil-inhabiting scarabeid beetle larvae."
Using a similar analysis as above, the essential features of this claim are a biological insecticidal preparation comprising:
(1)an amount of a select strain of a fungus of the species:
(a) Metarhizium anisopliae; or
(b) Beauveria bassiana
having some level of effectiveness above "normal" in controlling scarabeid beetle larvae and
(2)a carrier with some level of nutrient and some level of protection against some form of environmental extreme.
Amended Claims
A statement of proposed amendments was filed on 16 June 1994 (some 4 days before the Hearing). Although these amendments have not been examined, the opponent did not object to them being considered during these proceedings (with due consideration of costs). In considering the proposed amended claims, I will not consider whether they are allowable under section 102. Rather, I will assume that the amended claims are entitled to the priority date of the parent application and restrict my consideration to novelty / inventive step.
Claim 1 (as proposed to be amended) reads:
"A method of controlling soil-inhabiting scarabeid beetle larvae, by incorporating in the soil or applying under the soil surface a fungal bait in the form of pellets or flakes comprising a combination of (i) an effective amount (as herein defined) of a select strain (as determined by bioassay) of fungus of the species Metarhizium anisopliae or Beauveria bassiana (or a mixture thereof), including conidiospores and having high efficacy (as herein defined) for control of the larvae, and (ii) a sustaining, protective nutrient carrier of cereal, vegetable or mineral origin."
The terms "effective amount" and "high efficacy" are both defined in the description (as proposed to be amended). An "effective amount" is between 1014 and 1015 conidiospores per hectare of a selected fungus strain and a strain having "high efficacy" produces 96-100% mortality of the scarabeid beetle larvae, when testing is performed according to a particular procedure described in the specification. Giving effect to these definitions and using a similar analysis as above in the accepted claims, the essential features of claim 1 (as proposed to be amended) are:
1)A method of controlling soil-inhabiting scarabeid beetle larvae, by incorporating in the soil or applying under the soil surface a fungal bait in the form of pellets or flakes comprising a combination of:
2)between 1014 and 1015 conidiospores per hectare of a selected fungus strain (as determined by bioassay) of fungus of the species
a)Metarhizium anisopliae or
b)Beauveria bassiana (or a mixture thereof),
including conidiospores which selected strain produces 96-100% mortality of the scarabeid beetle larvae, when testing is performed according to a particular procedure described in the specification, and
3)a carrier with some level of nutrient and some form of protection against some form of environmental extreme wherein the carrier is of cereal, vegetable or mineral origin.
Claims 2-6, 9, 10, and 13 (as proposed to be amended) all fall within the scope of this claim. Claim 7 (as proposed to be amended) is the remaining independent claim. It reads:
"A biological insecticidal preparation being a fungal bait in the form of pellets or flakes comprising an effective amount (as herein defined) of a fungal culture of a select strain (as determined by bioassay) of the fungus Metarhizium anisopliae or Beauveria bassiana (or a mixture thereof) in combination with a sustaining, protective nutrient carrier of cereal, vegetable or mineral origin, said fungal culture including conidiospores and said fungus strain having high efficacy (as herein defined) for controlling soil inhabiting scarabeid beetle larvae."
This claim can be construed analogously to claim 1 (as proposed to be amended) to provide the following set of essential integers for the insecticidal preparation:
1)A biological insecticidal preparation being a fungal bait in the form of pellets or flakes comprising:
2)between 1014 and 1015 conidiospores per hectare of a selected fungus strain (as determined by bioassay) of fungus of the species:
a)Metarhizium anisopliae or
b)Beauveria bassiana (or a mixture thereof),
including conidiospores which selected strain produces 96-100% mortality of the scarabeid beetle larvae, when testing is performed according to a particular procedure described in the specification, and
3)a carrier with some level of nutrient and some form of protection against some form of environmental extreme wherein the carrier is of cereal, vegetable or mineral origin.
The remaining claims (8, 11, 12, 14) are all dependent on claim 7.
DECISION AND MAJOR SUBMISSIONS
The section 104 amendments filed on 16 June 1994 have not as yet been processed by the Patent Office. In addition, most of the evidence filed discusses the accepted specification.
Thus, in the first instance, I will consider the accepted specification and then comment on whether the deficiencies (if any) would be overcome by the proposed amendments.
Priority date of the claims
The opponent submitted that the claims of the divisional application were not fairly based on the disclosure of the parent application and were therefore not entitled to the priority date of the parent application. The disclosure in the provisional specification of the parent is basically the same as the parent and if the claims of the divisional are fairly based on the parent, they will be entitled to claim priority from the provisional application. I note that the opponent never suggested otherwise in their submissions.
The opponent applied the test in CCOM Pty Ltd & Anor v Jiejing Ptd Ltd Pty Ltd & Ors (1994) AIPC 91-079 to argue that certain features of the claims of the accepted divisional application were not a "real and reasonably clear disclosure". In particular:
(a)The method claimed in the divisional application involved "incorporating (the fungal composition) in the soil or applying (it) under the soil surface". This was only mentioned in a "throw away" line as an alternative form in the parent specification (see page 6, lines 14-16).
(b)There is no detailed disclosure of any bioassay method in the parent specification in contrast to the divisional specification which outlines a specific method. In addition, the specific method in the divisional conflicts with the general methods disclosed in the parent.
(c)The words "sustaining protective nutrient carrier" do not appear in the parent specification. Although there is reference to "another suitable carrier or substrate" (page 4, lines 4-6), this does not suggest special properties are required of the carrier.
With regard to the point (a) above, I accept that the parent specification as a whole appears to teach the application of the fungus "to" (as opposed to "in") the soil. However a specification is read in the light of the common general knowledge and not in isolation. I have previously concluded that it is common general knowledge that the skilled addressee in 1985 would automatically know that the fungal bait should be incorporated into the soil. This feature would therefore be implicitly disclosed in the parent specification.
With regard to point (b), it is well-established law that a specification does not need to describe every detail of an invention (see for example AMP v. Utilux ( 1971) ALJR 123). Again, I have already concluded that bioassays were part of the common general knowledge of the skilled addressee at the priority date. In other words, the skilled addressee would be able to supply the apparently "missing" details of a bioassay.
I find that there was a "real and reasonably clear" disclosure of "a" bioassay in the parent application. The opponent additionally argued that a very specific bioassay was introduced into the divisional which did not exist in the parent and this particular bioassay was not disclosed. This is not relevant as the specific bioassay is not claimed.
With regard to point (c), I accept the opponent's point that the words "sustaining, protective nutrient carrier" do not appear in the parent specification. However, the specification does refer in general terms to carriers (for example page 4, lines 1-6; page 6, lines 9-19 and claims 3-6). In addition, there was some teaching in the specification that the spores could be protected from environmental extremes and the carriers used in the preferred embodiments contain nutrients. I consider that such information constitutes a "real and reasonably clear disclosure" in the parent application of "a sustaining protective nutrient carrier".
It follows that there was a "real and reasonably clear disclosure" in the parent application of each of the features of the claims as accepted. I therefore conclude that the claims as accepted of the divisional specification are fairly based on the parent specification and its provisional application and find that the priority date of those claims is 15 March 1985. As I stated above, I will not be considering in this decision whether the proposed claims are allowable under section 102 and therefore I will assume that the proposed claims have the same priority date as the claims as accepted.
Documents to consider for novelty
The opponent submitted that the claims (as accepted) lack novelty in light of each of the following documents:
Samuels, Pinnock and Bull "Scarabeid Larvae Control in Sugar-cane using Metarhizium anisopliae" Journal of Invertebrate Pathology volume 55, pages 135-137 (1990) (published on or before 31 January 1990)
Milner "New look at old fungus to control cane grubs" Australian Cane Grower (published on or before 16 July 1985) pages 14-16;
Illingworth (1921) "A study of natural methods of control for white grubs" Queensland Bureau of Sugar Experiment Stations, Division of Entomology Bulletin No. 12 (published in Australia on or before 20 April 1985).
Kushida, Shimazu, and Katagiri "Use of entomogenous fungi for the control of the white grubs in the nursery" Proceedings of the 1st Japan / USA symposium on Integrated Pest Management held at Tsukuba (Japan), September 29-30, 1981 (held by Dr Richard Milner in Australia since 27 September 1982)
Ferron (1981) "Pest Control by the fungi Beauveria and Metarhizium". Chapter 24 (pages 462-482). In "Microbial Control of Pests and Plant Diseases 1970-1980" publ by Academic Press, London (published in Australia on or before 19 October 1981)
Of these, only the latter two documents can be used for the purposes of novelty for the claims as accepted and as proposed to be amended because the former three (i.e Samuels, Milner and Illingworth) appear to be published after the priority date of the claims.
Illingworth was published in the Queensland Bureau of Sugar Experiment Stations, Division of Entomology, Bulletin. Although there is a high probability that it was publicly available in the 1920s (i.e. well before the priority date of the claims as accepted), the only evidence of publication I have been provided with is the statutory declaration from P Russell dated 9 September 1988 from the CSIRO Black Mountain library which lists the accession date as 20 April 1985. I have to accept this date as the publication date in Australia and, as it is after the priority date of the accepted claims, I cannot consider the Illingworth document for novelty.
The opponent also argued that a pre-publication draft of the Milner article which was received by Brian Hitchcock on 29 January 1985 could be used to establish an earlier publication date because there was no inhibiting fetter on Brian Hitchcock to discuss the article (as per Bristol Myers' Appln [1969] RPC 146)).
I do not accept this argument. Blanco-White in "Patents for Inventions" (5th edition) says at paragraph 4-117 that:
""Publication", for the present purposes, means "made available to the public", in the sense of: adding to the stock of public knowledge - "the stock of knowledge which the public either has or can acquire by consulting some information open to it. In particular, an invention is published if any member or members of the public not under any obligation of confidence - free, that is, to use the invention as they please for their own purposes - come into possession of it..."
In my opinion, a publisher is the instrument of publication and "not free to use the invention as he pleases for his own purposes" or (from Humpherson v. Syer (1887) 4 RPC 407 at 413) free in law and equity to do what he likes with the information gained. I find no basis to consider the pre-publication draft in an assessment of novelty.
The applicant suggested that the Kushida article cannot be considered for novelty because its extent of publication was "minimal". Thus, in correspondence dated 18 August 1989, the applicant states:
"As stated in the statutory declaration, the information given by Dr Mitsuaki was passed directly from one scientist to another. The information has been in Richard Milner's possession since that time, and there is no evidence of anyone else in Australia having access to that information."
However Bristol-Myers Appln (supra) quite clearly states that the "degree of dissemination" (extent of publication) of the information is irrelevant. If a document has been communicated to a single member of the public without "inhibiting fetter" it is considered to have been made available to the public. The opponent has established that Milner had the Kushida document without inhibitory fetter and therefore the document can be considered for the purposes of novelty.
Novelty
The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) CLR 228 at page 225 where Aiken J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would if the patent were valid, constitute an infringement".
Infringement of a claim has been said to occur where "each and every one of the essential integers of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367).
I construed the claims earlier in this decision (under the heading of "specification and construction of claims") and determined the essential features of claim 1 as accepted and as proposed to be amended. I now propose to look at each of the citations (Kushida and Ferron) to determine whether these contain "each and every one of the essential features" of the claims.
Kushida
Kushida discloses the use of Metarhizium anisopliae and Beauveria bassiana in the control of white grubs (which are a form of scarabeid beetle) in the nursery. These fungi were propagated with a range of materials including matured bark compost, rice, rice bran, soybean meal, and silkworm pupae and applied by mixing with bed or pot soil to the depth of 10 cm, placing in planting holes or putting on surface of soil. The fungi showed some level of effectiveness over controls (i.e. "normal" environments). Kushida concluded that culture materials of more nutrient value were more effective in preventing damage by the white grub and suggested that rice grain was very suitable to use as a medium for mass-propagation of the fungus from the viewpoint of effectiveness in producing and handling the spores. The rice grain culture would provide at least some protection from environmental extremes, since a spore in rice bran has a physical barrier between itself and the environment and would be somewhat protected from dessication and U.V. light.
As a result, Kushida contains each of the essential features of claim 1 (as accepted). Kushida also contains all of the additional features present in the remaining claims (claims 2-12), except with respect to the conidial dimensions of the select strain (see claim 2, as accepted). This feature, however, is not essential. The specification itself states that the size of the conidia is not related to its efficacy in the field (see page 9, lines 10-14). It follows that Kushida deprives each of the claims as accepted of their novelty.
The applicant's arguments against the citation are unconvincing. The main submission in evidence in answer (paragraph 24) was that Kushida did not use a nutritive pellet or bait, but instead attempted to culture the fungus in the actual compost into which the seedlings were planted. As Mr Marsh pointed out in the Hearing, this is clearly incorrect. Kushida uses a range of culture conditions including rice and rice bran (see page 138).
Other counter-arguments become apparent from Mr Jones' submissions at the Hearing and from the applicant's responses to the examiners reports on the parent application. I can summarise these as follows:
a)Kushida relates to forest insects and would be unlikely to be considered by persons interested in the control of cane grubs or pineapple grubs;
b)The only methods of application exemplified are spraying the material on top of the soil, mixing the material with soil to a depth of 10 cm or placing the material in planting holes. These methods are different from the method exemplified in the parent application;
c)Kushida did not instruct that fungal strains of high efficacy had to be selected nor were the strains used in Kushida highly efficacious in killing scarabeid beetle larvae;
d)Kushida had no protective materials in the carriers used in their method.
e)The person skilled in the art would be unable to perform the present invention from the disclosure in Kushida. The paper does not instruct the reader as to how to select suitable strains nor gives sufficient detail regarding the proportions of the fungal strain to the carrier, the method of application or the amount of the insecticidal compositions to be applied to the soil;
In submissions (a) and (b) the applicant is comparing the citation with the examples of the present specification and not the claims. The features which the applicant argues distinguish the claims from Kushida are not present in the claims as accepted. In addition, with regard to submission (b), the opposed specification does not contain any specific method of application which is significantly different from Kushida.
In submission (c), the applicant has construed the claims more narrowly than their plain meaning will allow. The construction I have made earlier clearly includes the Kushida method within its scope.
With regard to submission (d), I agree that the term "protective" does not appear in Kushida. However, there were materials in the carrier which must have some protective properties (for example, a spore inside rice bran would be somewhat protected against dessication and U.V. light). Thus, in carrying out the directions in Kushida, the skilled addressee will inevitably produce a result that will fall within the scope of the claims as accepted depriving these claims of their novelty (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, [1972] RPC 457 at 485-486).
In submission (e), the applicant is suggesting that the disclosure in Kushida would not be sufficient for the skilled addressee to perform the invention. I consider that any omissions from Kushida could easily be supplied by a person skilled in the art and that this document does represent an enabling disclosure.
In my opinion, all the claims as accepted are not novel in light of Kushida. The claims (as proposed to be amended) have several differences over the accepted claims. I consider the most relevant difference is the clarification of the term "high efficacy" in the description and claims (page 3, lines 27-29 in the specification as proposed to be amended):
"Fungal strains having "high efficacy" are defined with respect to bioassay strain testing experiments. Suitable strains attain 96-100% mortality of the scarabeid larvae, when testing is performed according to the procedure described herein."
The opponent has not demonstrated that the strains in Kushida achieved the level of efficacy defined in the claims (as proposed to be amended) and hence has not established their case of novelty with respect to Kushida against the claims (as proposed to be amended).
Ferron
Ferron (1981) is a review paper discussing general approaches to the application of the fungi Beauveria and Metarhizium in pest control (including scarabeid beetle larvae). Ferron discusses strain selection and growth of the fungi on rice grains as nutritive substrate. It also suggests that spores could be applied in the nutritive substrate and comments that further additives would improve the quality of these preparations, by protecting them either from ultra violet radiation of the sun or from biodegradation by soil microorganisms (see page 473). Finally, Ferron discusses mixing the soil with a spore innoculum.
For similar reasons as outlined for Kushida above, this citation contains each of the essential features of the claims as accepted and hence, Ferron also deprives the accepted claims of their novelty.
The applicant argued that Ferron did not deprive the claims of their novelty submitting:
(a)Ferron states that due to the present technical difficulties in the mass-production of these two fungi, only two preparations of conidia can be regarded in practical use: Boverin and Metaquino. Boverin is a conidial powder of B. bassiana applied to plants in combination with the insecticide chlorophos. Metaquino is an aqueous suspension of conidia of Metarhizium anisopliae and applied aerially to plants, as a spray. Neither preparation contains protective and sustaining bait pellets to ensure field persistence and viability;
(b)Ferron does not stress the importance of having mycelium in the fungal bait;
(c) Ferron did not disclose a workable biological control, the citation amounts to mere desiderata;
(d) Ferron discloses a wide field and combining features from Ferron amounts to a judicious selection It does not disclose the particular combination;
(e)Ferron does not provide information on the selection of strains.
I do not find any of these arguments convincing. With regard to submission (a), Ferron uses the formulations metaquino and boverin as examples. However, it gives clear and unmistakable directions that other forms of the fungus would be useful and specifically includes a fungal bait.
With regard to submission (b), I note that while Ferron does not stress the importance of mycelium, neither does the opposed specification. The applicant has suggested in evidence in answer that in the method described in the opposed specification the fungus is invariably present in both the mycelial and conidial forms (paragraph 15) and the nutrient is clearly for the mycelial form. The same arguments can equally be applied to Ferron so that under the culturing conditions used, Ferron would have produced both the mycelial and conidial forms.
With regard to submission (c), the applicant appears to be making
2 points:
(1)the opposed specification has strains of higher efficacy than those in Ferron;
(2)Ferron has not physically produced a workable solution and there is insufficient information in Ferron for a skilled addressee to produce one.
On item 1, as suggested previously, the claims do not adequately define the term "high efficacy" and hence this difference is not reflected in the language of the claims. On item 2, the level of disclosure required for a citation must be "for the purposes of practical utility" the same as that for the later claim (Hill v Evans (1862) 6 LT 90). It follows that there has to be sufficient disclosure in the prior art to enable the skilled addressee to put the invention into practice:
"The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out or gleaned from the prior publication."
(Nicaro Holdings Pty Ltd v Martin EngineeringCo 16 IPR 545 (at 549). It follows that the invention does not need to have been physically produced, as long as there is sufficient directions for a skilled addressee to do so. According to Northrop, Lockhart and Cooper JJ in WR Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha (1993) AIPC 90- 974, a "clear recommendation" from a citation is sufficient to destroy novelty of a claim.
With regard to submission (d), I agree that Ferron discusses a wide range of methods of biological control using Metarhizium and Beauveria. However, although the review covers a broad field, it is by no means vague and speculative. It provides sufficient instructions for the skilled addressee to apply a range of techniques in biological control of scarabeid beetles, one of which is the method claimed in the specification as accepted. Unless the applicant could show that there was some selective advantage in choosing the particular combination claimed (as considered in I.G. Farbenindustrie A.G.'s Patents (1930) 47 RPC 289) or that the skilled addressee would not be able practically to apply the techniques without the necessity of making further experiments (Nicaro Holdings Pty Ltd v Martin Engineering Co, 16 IPR 545 at page 549), there is no novelty in the claims as accepted.
With regard to submission (e), I agree that Ferron does not explicitly say how the strains were selected (although this may be apparent from following up the direct cross references to other journal articles). However Ferron clearly teaches that virulence is important in selecting a strain and attempts to correlate virulence with biochemical markers. The presence of a biochemical marker has to be assessed against the observable effect on a target organism for such a correlation to be made and this would have to be done by bioassay.
This suggests that the "normal" way of assessing virulence is actually with a bioassay. The opponent's declarants all support this contention. They agree that in selecting a fungal pathogen it is necessary to find a fungal strain which is effective against the target species and that this is commonly done by bioassay.
In my opinion, all the claims as accepted are not novel in light of Ferron. However, for the same reasons as outlined above in my discussion of Kushida, the opponent has not established their case of novelty with respect to Ferron against the claims (as proposed to be amended) because they have not demonstrated that the strains in Ferron achieved a particular level of efficacy nor that Ferron recommends a particular level of efficacy be achieved.
In conclusion, the documents Ferron and Kushida deprive the claims (as accepted) of their novelty. However, the opponent has not established a lack of novelty with the claims (as proposed to be amended) with regard to these two documents.
Obviousness
Under the 1952 Act, the determination of obviousness depends on the common general knowledge in the field of the invention in Australia at the priority date (see the judgement of Aiken J. in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 144 CLR 253). The test for obviousness is whether the invention would have been obvious to a non-inventive skilled worker in the art having regard to their common general knowledge. Thus, the first step in determining whether a claim is obvious is to establish the common general knowledge of the non-inventive worker in the art, which I have considered earlier in this decision.
I concluded that Ferron was part of the common general knowledge at the priority date of the claims and therefore I can regard this citation in my determination of obviousness. In my analysis of novelty I found that this citation deprived the claims as accepted of their novelty. It therefore follows that Ferron deprives these claims of their inventive step.
I previously concluded that the "personnel experience" expounded in the statutory declarations of Bull, Gullan, Glare, Milner and Rath also represented part of the common general knowledge of the skilled addressee at the priority date of the claims. Each of the features of claim 1 (as accepted) appears in the declarations. Although the declarants do not directly say that they would chose the most effective strain or a highly efficacious strain, I think this is implicit in the term "effective" and I also believe that it would be intuitively obvious to select the most efficacious strain given a choice.
I conclude that the claims as accepted lack an inventive step in light of these declarations.
I considered most of the applicant's counter-submissions under novelty and I do not propose to repeat them here. The main outstanding counter-submission is that the control of sugar cane grubs was an important commercial problem which scientists have been attempting to solve since Illingworth (in 1921). All previous attempts to use Metarhizium in the control of sugar cane grubs were unsuccessful and the instant specification was the first report of successful control. Thus:
"The invention claimed in the opposed specification meets a long-felt need in the agricultural area, and provides a long-sought-after solution to a serious problem." (Pinnock declaration Evidence in answer paragraph 25).
According to Blanco-White in "Patents for Inventions" (5th edition):
"It is strong evidence that an alleged invention cannot be obvious if it can be shown that it solves an important problem that had been "unsuccessfully attacked by previous inventors": "The truth is that, when once it had been found...that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before and has been widely used, and used in preference to alternative devices, it is, I think, practically impossible to say that there is not present that scintilla of invention to support the patent."
The applicant has not produced any evidence to establish their case that there was a long felt need and that their solution had been widely used. Only one publication since 1985 of these results would seem to suggest that there was not a wide spread acceptance of the invention as the applicant has claimed. Further, even if there were wide spread acceptance, this is only indicative and not proof of an inventive step especially when taken in isolation:
"Although these matters are of importance in the resolution of the problem, they are not conclusive of what the outcome of the case should be. In a case of doubt the existence of a long felt want and immediate imitation might well persuade a court grappling with the problem of whether there was an invention to the inventor's point of view. But in the end one has to come to the question whether or not the claimed invention is obvious."
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1993) AIPC 90-984 at page 39,337.
The claims as accepted are obvious in light of the disclosure in Ferron. This conclusion is supported by declarations from Bull, Rath, Milner, Gullan and Glare that state their summation of what was the common general knowledge. Each of the essential features of the claims as accepted was part of the common general knowledge.
In my opinion, claim 1 (as proposed to be amended) does not add any inventive features over Ferron. Claim 1 (as proposed to be
amended) has several differences from claim 1 (as accepted):
it clarifies what an "effective amount" is;
it clarifies what "high efficacy" is;
it is limited to the use of a fungal bait which is in the form of pellets or flakes;
it is limited to a sustaining protective nutrient carrier of cereal, vegetable or mineral origin.
The features of providing a particular amount of fungus (point 1), a fungal bait and a carrier of cereal origin (point 3) are disclosed in the Ferron document. The particular shape of the fungal bait and a carrier of mineral origin (points 3 and 4) are no more than obvious variations which do not affect the working of the invention. Further, as I suggested above, it would also have been obvious to the skilled addressee in Australia at the priority date, to select a strain with the highest level of efficacy possible (point 2) and hence, produce a method that fell within the scope of the claim.
Claims 2-8, 13, 14 (as proposed to be amended) also lack an inventive step as none of the additional features in these claims add any essential features which are not present in Ferron (see my earlier discussion on novelty of the accepted claims).
Claims 9-12, on the other hand, define specific strains of Metarhizium anisopliae and/or Beauveria bassiana. There is no evidence in front of me to suggest that there is an inventive step in the particular strains. There may be further evidence available which could show that the specific strains represent a "selection" from the broader claims (for example, the strains were particularly suitable for biological control because they have certain level of efficacy, or spore viability, or temperature tolerance or a combination of such properties). A selection would render the particular strains "non-obvious". However, it is possible that an amendment to incorporate claims to include these strains may not be allowable because it results in the claiming of matter not in substance disclosed (see Coopers Animal Health Australia Limited v Western Stock Distributors Pty Ltd (1987) 76 ALR 429).
I conclude from the evidence before me that the claims as accepted and as proposed to be amended are obvious in light of the common general knowledge.
Section 40
The statement of grounds and particulars of the opposition identified a number of potential section 40 issues concerning the scope of the terms "high efficacy", and "effective amount". I have previously found in this decision that both the terms "high efficacy" and "effective amount" have some meaning (albeit broad) to a skilled addressee. However, the phrase "high efficacy as hereinbefore defined" (my emphasis) was unclear in the claims as accepted because the specification did not contain a proper definition of the term "high efficacy". This problem has been solved by the proposed amendments and I believe does not need further discussion in this decision.
The opponent also submitted that claims 11 and 12 (as proposed to be amended) were not fully supported by the description because there were no Budapest Treaty microorganism deposit details for any of the specific strains referred to in the specification. I do not accept this argument. Under the Patents Act (1990), the only circumstances where a deposit under the Budapest Treaty would be compulsory occurs under sub-section 41(2). The opponent has not demonstrated that the conditions of sub-section 41(2) apply and therefore has not established their case of lack of full description. In particular, the opponent has not established (or attempted to establish) that the strains of Metarhizium anisopliae and Beauveria bassiana specifically claimed are not readily available from the University of Adelaide Insect Pathology library (or elsewhere).
The opponent also asserted that the invention was not fully described because it did not specify whether the fungus was present in the form of mycelium (a growing form of the fungus) or conidiospores (a non-growing form of the fungus).
Professor Pinnock in his first declaration lodged as evidence-in-answer suggested that according to the method and biological insecticidal preparation described in the opposed specification, the fungus is invariably present in both the mycelial and conidial forms (see paragraph 15).
Dr Milner in evidence-in-reply suggested that only the conidial form would occur in the insecticidal preparations described in the patent. However, this argument is one of utility and not full description:
"If you cannot achieve the promised result because of deficiencies in the information given in the specification, there is insufficiency. But if, following that information and having achieved mechanically that which the specification promises you will achieve by so following it, the end product will not of itself achieve that promise, then that is inutility."
Tetra Molectric Ltd.'s Application [1977] RPC 290:
Utility is not a ground of opposition and I cannot consider this further in this decision.
I conclude that the opponent has not established its case of lack of sufficiency with regard to the presence of mycelium in the preparation.
The opponent also contended that the invention was not fully described because no method of application of the fungus was supplied. However, methods of application appear to be part of the common general knowledge. Ferron discusses such methods and the opponent's declarants (Bull, Rath, Milner and Glare) acknowledge that fungal baits form part of their common general knowledge. It seems to me from this that a method of application could be devised by the skilled addressee without the exercise of inventive ingenuity (AMP v Utilux [1971] ALJR 123 (at page 128)) and hence the invention is fully described.
The opponent also submitted that the terms "fungal bait", "flakes" and "pellets" are unclear in the claim (as proposed to be amended). I do not accept this contention. I have previously concluded that fungal baits form part of the common general knowledge in the art. The term would therefore be clearly understood by a skilled addressee. In addition, the term is defined in the text of the opposed specification (see page 4, lines 14-20). The terms "pellet" and "flake" have plain Engish meanings and, in my opinion, would be understood by the skilled addressee.
The opponent also identified potential clarity problems with the words "bioassay" and "a sustaining protective nutrient carrier" in their statement of grounds and particulars. I have previously discussed both terms (see the section on construction of claims) and was able to give a clear (albeit broad) meaning to both terms. In my opinion, the terms are clear and a person skilled in the art would be able to understand both the meaning of the terms and their scope.
In my opinion, the phrase "high efficacy as hereinbefore defined" (my emphasis) was unclear in the claims as accepted because the specification did not contain a proper definition of the term "high efficacy". However, this problem is solved by the proposed amendments. The opponent has not established that the specification as accepted or as proposed to be amended, fails to meet the requirements of section 40 on any other grounds.
CONCLUSION
A summary of my findings is as follows:
(a)The claims as accepted are fairly based on the parent specification and are entitled to claim their earliest priority date from the provisional application of the parent application;
(b)The claims as accepted are not novel in light of the citations Kushida and Ferron. However the opponent did not establish that these citations deprived any of the claims as proposed to be amended of their novelty;
(c)From the evidence in front of me, the claims as accepted and as proposed to be amended lack an inventive step in light of the common general knowledge as outlined in Ferron;
(d)There may be further evidence available to show that the specific strains of Metarhizium anisopliae and/or Beauveria bassiana defined in claims 9-12 (as proposed to be amended) are "selections" from the broader claims. In this case, these specific claims will be non-obvious but it is possible an amendment to incorporate them may not be allowable.
(e)The specification as accepted fails to meet the requirements of section 40 on the grounds that the phrase "high efficacy as hereinbefore defined" (my emphasis) was unclear in the claims as accepted because the specification did not contain a proper definition of the term "high efficacy". However the proposed amendments apparently overcome the problem.
I doubt that the deficiencies noted under obviousness can be overcome by amendment. However, I allow the applicant 60 days to propose suitable amendments to try and overcome the problems I have identified above.
COSTS
In line with the convention that costs follow the event, I award costs against the applicant, University of Adelaide et al.
Karen Ayers
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : R.K. Maddern & Associates, Adelaide; Phillips, Ormonde & Fitzpatrick, Melb.
Patent attorneys for the opponent : F.B. Rice & Co, Sydney
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