Tioxide Group Services Limited v Kerr McGee Corporation and Millenium Inorganic Chemicals Inc - [2000] APO 27

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 665097 in the name of TIOXIDE GROUP SERVICES LIMITED

Title: Oxidation of Titanium Tetrachloride

Action: Opposition by KERR McGEE CORPORATION and MILLENIUM INORGANIC CHEMICALS INC. under section 59 of the Patents Act 1990

Decision: Issued .
Abstract
The grounds of opposition of Lack of Novelty, Lack of Inventive Step and Manner of
Manufacture found not to have been established.
In the matter of Section 40 claim 1 found not to define the invention described and claims 1
and 7 found to lack fair basis. Specifically:
a) Claim 1 in its present form does not define the invention described, and lacks fair basis as it fails to define the features whereby the objects of the invention are achieved; or the result sought to be achieved.
In its present form claim 1 clearly covers processes that could make use of auxiliary heat to raise the temperature of the oxygen to the point where reaction occurs.
b) Claim 7 (when read in light of claims 1 and 6) in effect, discloses that the titanium tetrachloride stream going to the first oxidiser inlet is sent to a heater and then split into two or more streams. The splitting of the titanium tetrachloride stream after the heater has not been disclosed in the description.
Applicant granted 60 days from the date of this decision to file suitable amendments.
Costs to schedule awarded against the applicant Tioxide Group Services Limited and in
favour of the opponents, Kerr McGee Corporation and Millenium Inorganic Chemicals Inc.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent application No. 665097 by TIOXIDE GROUP SERVICES LIMITED and opposition under section 59 of the Patents act 1990 by KERR McGEE CORPORATION and MILLENIUM INORGANIC CHEMICALS INC.

BACKGROUND

Patent application 665097 was filed in the name of Tioxide Group Services Limited (Tioxide) on 12 July 1993 claiming priority from GB patent application No. 9216933.3 filed on 10 August 1992. It was advertised accepted on 14 December 1995.

Kerr McGee Corporation (Kerr McGee) filed a notice of opposition on 13 March 1996. The statement of grounds and particulars was filed on 13 June 1996 (an amended statement was filed on 13 March 1997). The service of evidence in support, evidence in answer and evidence in reply was completed on 16 October 1998.

Millenium Inorganic Chemicals Inc. (Millenium), (formerly known as SCM Chemicals, Inc) filed a notice of opposition on 14 March 1996. The statement of grounds and particulars was filed on 14 June 1996 (an amended statement was filed on 14 March 1997). The service of evidence in support, evidence in answer and evidence in reply was completed on 20 October 1998.

Both oppositions were heard simultaneously in Canberra on 23 to 26 August 1999. Katrina Howard of Counsel represented both opponents. Ms Howard was assisted by Dr Neil Ireland (patent attorney from Phillips Ormonde & Fitzpatrick) for Kerr McGee. Also present on…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Tioxide Group Services Limited v Kerr McGee Corporation and Millenium Inorganic Chemicals Inc [2000] APO 27
Case: [2000] APO 27
Decision Date: 31 March 2000

CaseChat Overview and Summary

The case involves a patent application by Tioxide Group Services Limited, which was opposed by Kerr McGee Corporation and Millenium Inorganic Chemicals Inc. The application related to a process for the oxidation of titanium tetrachloride to form pigmentary titanium dioxide. The court was tasked with deciding on the validity of the patent application in light of the oppositions raised by the respondents. The issues included whether the invention lacked novelty, lacked inventive step, and did not constitute a manner of manufacture, as well as whether the specification complied with the requirements of section 40 of the Patents Act 1990. The court found that the invention did not lack novelty and that the opposition did not establish that the invention lacked an inventive step. The court also found that claims 1 and 7 lacked fair basis, while claim 28 was not defective. The applicant was granted 60 days to file suitable amendments and costs were awarded against the applicant and in favour of the opponents.

Orders