Tioxide Group Services Limited v Kerr McGee Corporation and Millenium Inorganic Chemicals Inc
[2000] APO 27
•31 March 2000
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 behalf of Kerr McGee were Mr John Kenney (US patent attorney) and Mr B J Montgomery (scientist). Ms Howard was also assisted by Dr Peter Stearne (patent attorney from Davies Collison Cave) for Millenium. Also present on behalf of Millenium were Mr. John Kalow (US patent attorney) and Dr Donald Knapp (scientist). The applicant was represented by Mr Barry Hess of counsel assisted by John McCormack (patent attorney from Griffith Hack) and Ms Sheena Morris (of Griffith Hack).
EVIDENCE
Kerr McGee Opposition
Evidence in support consists of declarations made by:
Billy Joe Montgomery, dated 7 March 1997 and exhibits BJM-1 to 4. He states that he is a qualified chemical engineer and currently holds the position of Vice President Research and Development Kerr-McGee Chemicals.
Thomas Ian Brownbridge, dated 7 March 1997 and exhibits TIB-1 to 3. He states that he is a chemist and currently holds the position of Senior Project Chemist in Kerr McGee Chemical Corporation.
Harry Eugene Flynn, dated 28 February 1997 and exhibits HEF-1 and 2. He states that he is a qualified metallurgist and currently holds the position of Senior Project Engineer in Kerr McGee Corporation.
Donald Keith Philp, dated 10 March 1997 and exhibits DKP-1 to 3. He states that he is a qualified chemist and is a principal in Procass Pty Ltd, which provides consulting services to the minerals processing industry in Australia.
Samuel H Livingston, dated 10 March 1997 and exhibit SHL-1. He states that he is a qualified chemical engineer and currently holds the position of General Manager of Pigment Operations at the Tiwest Joint Venture (located in Western Australia) on secondment from Kerr McGee Corporation.
Thomas W Clapper, dated 5 March 1997. He states that he is a qualified chemist and currently is a consultant to Kerr McGee Corporation.
Wayne Alexander Slater, dated 30 August 1996 and exhibits WAS-1 to 4 and a second declaration dated 12 March 1997 together with exhibits WAS-5, 6. He states that he is currently a patent attorney with Phillips Ormonde & Fitzpatrick.
Rodney Ian Lindsay Cruise, dated 19 July 1996 and exhibit RIC-1. He states that he is currently a patent attorney with Phillips Ormonde & Fitzpatrick.
Virginia Phillips, dated 5 March 1997 and exhibit VP-1. She states that she is currently employed as the Library Supervisor at Kerr McGee Corporation
Evidence in answer consists of a declaration by David Ogden dated 3 February 1998. He states that he currently holds the position of Sole Director of D. OGDEN LIMITED and provides a Technical/Management Consultancy Service. He also states that he is a qualified chemist/chemical engineer and had worked for the Tioxide group from November 1969 to November 1996.
Evidence in reply consists of declarations made by:
Billy Joe Montgomery, dated 6 October 1998 and exhibits BJM-5 to 7.
Donald Keith Philp, dated 9 October 1998.
Millenium Opposition
Evidence in support consists of declarations by:
Iggy Tan, dated 13 March 1997. He states that currently he is the General Manager of Westlime (WA) Limited and has held that position since October 1995. He further states that he is a qualified chemist and has held various positions in SCM Chemicals Limited (now called Millenium) from February 1985 to September 1995.
Raymond Frederick Lee, dated 10 March 1997 and exhibits RFL-1 and 2. He states that he is currently the Works Manager, Chloride Plant, SCM Chemicals-Europe (based in Stallingborough, UK). He further states that he is a qualified chemist and was educated in and worked in Australia until 1993.
Dominic P Manganaro, dated 12 March 1997 and exhibits DPM-1and 2. He states that he is currently the Manager of Manufacturing at Millenium Inorganic Chemicals at Bunbury, Western Australia. He further states that he is a qualified chemist and has considerable experience in the field of titanium dioxide manufacture.
Rodney Leonard, dated 10 March 1997. He states that he is currently the Director of Research and Technology at SCM Chemicals-Americas based in Baltimore, Maryland, USA. He further states that he is a qualified chemical engineer.
Nancy Janette Freeman, dated 10 March 1997 and exhibit NJF-1. She states that she is currently the Library Supervisor at SCM Chemicals, Inc.
Charles K Hsu, dated 6 March 1997 and exhibit CKH-1. He states that he is a qualified chemical engineer and was employed by SCM Chemicals, Inc. based at Baltimore, Maryland, as a Senior Engineer from 1975 to 1981 and from 1985 to 1995.
Michael Robinson, dated 14 March 1997 and exhibits MR-1 to 7. He states that he is currently the Process Development Manager at Millenium Inorganic Chemicals Europe and is a qualified chemical engineer.
Hari Narayan Sinha, dated 11 March 1997 and exhibits HNS-1 to 13. He states that he is currently a Professorial associate in the Department of Chemical Engineering at the University of Melbourne and is a qualified metallurgical engineer.
Maurice Arthur Claridge, dated 14 March 1997 and exhibits MAC-1 to 7. He states that he is currently the Director-Research & Technology of Millenium Inorganic Chemicals Europe (based in Stallingborough, UK) and is a qualified metallurgist.
Leslie Hamor, dated 10 March 1997 and exhibits LH-1 to 3. He states that he is currently the Technical Manager for Millenium Inorganic Chemicals, Inc. Asia/Pacific and that he is a chemist.
Peter Andrew Stearne, dated 11 March 1997 and exhibits PAS-1 to 4 and two exhibits identified as PAS-1 attached respectively to a second declaration (dated 11 march 1997) identified as Stearne #2 and a third declaration (dated 25 March 1997) identified as Stearne #3. He states that he is currently a Registered Patent Attorney and partner in the firm Davies Collison Cave and is a qualified chemist/biochemist.
Evidence in answer consists of a declaration by David Ogden dated 3 February 1998. He states that he currently holds the position of Sole Director of D. OGDEN LIMITED and provides a Technical/Management Consultancy Service. He also states that he is a qualified chemist/chemical engineer and had worked for the Tioxide group from November 1969 to November 1996.
Evidence in reply consists of declarations made by:
Maurice Arthur Claridge, dated 25 September 1998 and exhibit A.
Michael Robinson, dated 25 September 1998.
Hari Narayan Sinha, dated 24 September1998.
THE SPECIFICATION
The specification under consideration is the specification as accepted on 19 October 1995. It commences by stating:
"This invention relates to the oxidation of titanium tetrachloride and in particular to the vapour phase oxidation of titanium tetrachloride to form pigmentary titanium dioxide."
The specification then proceeds to identify some defects of the prior art and indicates that one of the objects of the invention is:
"…to provide a process for the oxidation of titanium tetrachloride in which the necessary temperature of reaction can be readily achieved and controlled without the need for the use of an auxiliary fuel or for heating by an electrical discharge."
The consistory statement specifies that:
"According to the invention a process for the production of titanium dioxide comprises reacting titanium tetrachloride with oxygen at a pressure above atmospheric pressure and at a reaction temperature of at least 700oC in an oxidation reactor, the titanium tetrachloride being introduced into the reactor at a first inlet point and at least one further inlet point, the titanium tetrachloride introduced at the first inlet point being in admixture with aluminium chloride and being heated to a temperature of at least 450oC, the aluminium chloride being formed by reaction of aluminium and chlorine and the heat generated by this reaction being used to heat the titanium tetrachloride introduced at the first inlet point."
The specification then states that:
"Generally, the further inlet points will be positioned such that the titanium tetrachloride is added to the reaction stream at a point where any previously added titanium tetrachloride has been substantially completely oxidised. This enables the titanium tetrachloride which is added at the further inlet points to be at a lower temperature than that added at the first inlet point since the temperature necessary to initiate reaction is provided by the heat of reaction of the previously added titanium tetrachloride.
Oxygen is introduced into the oxidation reactor as an oxidising gas stream which may comprise a gas containing a relatively low proportion of oxygen such as air but may also be substantially pure oxygen or another gas mixture such as oxygen-enriched air."
The specification then provides details of various features of the invention and also two examples illustrating the invention. The specification concludes with 29 claims. I have set out below those claims that were mainly under attack by the opponent:
1. A process for the production of titanium dioxide comprising reacting titanium tetrachloride with oxygen at a pressure above atmospheric pressure and at a reaction temperature of at least 700oC in an oxidation reactor, the titanium tetrachloride being introduced into the reactor at a first inlet point and at least one further inlet point, the titanium tetrachloride introduced at the first inlet point being in admixture with aluminium chloride and being heated to a temperature of at least 450oC, the aluminium chloride being formed by reaction of aluminium and chlorine and the heat generated by this reaction being used to heat the titanium tetrachloride introduced at the first inlet point.
2. A process according to claim 1 in which the oxygen is preheated before introduction into the reactor to a temperature between 600oC and 1200oC.
3. A process according to claim 2 in which the oxygen is preheated to a temperature between 800oC and 1000oC.
6. A process according to any one of the preceding claims in which the titanium tetrachloride is first heated to a temperature between 350oC and 400oC before being passed to an aluminium chloride generator.
7. A process according to claim 6 in which a portion of the titanium tetrachloride heated to a temperature between 350oC and 400oC is passed to an aluminium chloride generator and the remainder is passed to one or more further inlet points.
28. A process as hereinbefore described with reference to the examples.
29. Titanium dioxide when prepared by a process according to any one of the preceding claims.
STATEMENT OF GROUNDS AND PARTICULARS
Kerr McGee filed an amended statement of grounds and particulars dated 13 March 1997 and Millenium filed an amended statement of grounds and particulars dated 14 March 1997. Both the opponents shared the same grounds of opposition. They contended that the invention lacked novelty, was obvious and did not constitute a manner of manufacture. They also submitted that the specification did not comply with the requirements of section 40.
SUBMISSIONS
I shall refer to the submissions from the opponents and applicant wherever necessary in my decision.
DECISION
Ms Katrina Howard of counsel represented both opponents at the hearing and I shall refer to the opponent where common submissions are made. Where submissions are made specifically on behalf of a particular opponent I shall identify that opponent by name.
Initially an issue arose over portions of the evidence that the opponent alleged drew conclusions of law in regard to the grounds of the opposition. The opponent drew my attention to highlighted passages in separate copies of Mr. Ogden's declarations (evidence in answer) in response to both opponents. They submitted:
1. He was talking of legal requirements rather than confining himself to the evidence.
2. Legal conclusions by Mr Ogden are not permissible, ie he is not to determine what is or is not allowable. That is the duty of the hearing officer.
3. Refer to the ruling in Borden Inc. v Elkem A/S [1995] APO 11 on a similar issue.
The applicant responded as follows:
1. Mr. Ogden is the relevant person skilled in the art and the nature of the technology is such that overseas experts are entitled to give expert evidence in this matter.
2. The Hearing Officer and Hearings are not bound by the rules of evidence. The Hearing Officer is entitled to inform himself generally about matters.
3. The objections to admissibility of evidence are wrong. Under the new Evidence Act an expert witness can give evidence and is entitled to express an opinion on the ultimate conclusion.
The applicant requested an immediate ruling in the matter. I ruled that those parts of the declarations which made conclusions on matters of law be struck out.
The applicant immediately requested that I should provide in my decision a list of those passages of Mr. Ogden's declarations that I considered as making conclusions of law. At a further stage of the hearing the applicant drew my attention to certain declarations made by the opponent's witnesses which they alleged also made conclusions about issues of law.
Consequently I modified my earlier ruling to state that I shall disregard those parts of the evidence wherein declarants/witnesses in their declarations have made conclusions on matters of law. Therefore I do not consider it necessary for me to identify those passages in the relevant declarations. I note that declarants/witnesses are free to express their opinions regarding matters of law but insofar as they have drawn any conclusions on matters of law I shall disregard those conclusions.
The opponent began their submissions in chief by stating that the main issue at hand was one of inventive step and that they would be strongly pursuing this ground in their submissions.
Section 40/Fair Basis
I shall first consider the common issues raised by both opponents and then look at issues raised separately by each opponent. With regard to issues of fair basis I shall apply the Mond Nickel Rules (see Mond Nickel Company Ltd.'s Application, (1956) RPC 189 at page 194).
The opponent's first submission with regard to section 40 stated:
"The specification is clearly directed to the production of rutile pigmentary titanium dioxide. However the claims are not so limited, but include the production of any titanium dioxide, i.e. anatase as well as rutile. This leads to a lack of fair basis."
The specification makes various references throughout the specification to:
pigmentary titanium dioxide
titanium dioxide
pigmentary TiO2 in the rutile form
Claims 1-27 refer to titanium dioxide but do not specify "pigmentary titanium dioxide". Claim 28 is linked to the examples (1 & 2), both of which clearly refer to "pigmentary titanium dioxide". Claim 29 refers to both titanium dioxide (via claims 1-27) as well as pigmentary titanium dioxide (via Claim 28).
Looking at the disclosures above I note that the specification has not made a definitive statement that it is only confined to the production of rutile pigmentary titanium dioxide. On reading the specification as a whole I consider that the disclosure shows a process capable of producing a titanium dioxide product which may or may not be rutile pigmentary titanium dioxide. The examples have illustrated the production of rutile pigmentary titanium dioxide but the specification does not confine itself exclusively to the production of rutile pigmentary titanium dioxide. Accordingly I conclude that the claims do not lack fair basis in this respect.
The opponent's second submission stated:
"It is a clear object of the "invention" that the process claimed does not require the use of auxiliary heat. This is of the essence of the invention. Not only is this clear from the Tioxide specification, it is also clear from Tioxide's submissions to the Australian Patent Office and evidence filed on its behalf.
However claim 1 (and the other claims) is not limited to processes that do not require the use of auxiliary heat. In fact, the claim covers processes that would require the use of auxiliary heat (see, for example, Philp #1, 8.2.5-8.2.6 and Sinha #1, 6.7). It is clear that the claims are for a wider monopoly than the invention which is described in the specification.
Therefore the claims "travel beyond" and are not fairly based because not all processes covered by the claim are capable of being performed without the use of auxiliary heat."
I note that the description at page 2, lines 4-7 and at page 7, line23-page 8, line 1 states:
"It is an object of the invention to provide a process for the oxidation of titanium tetrachloride in which the necessary temperature of reaction can be readily achieved and controlled without the need for the use of an auxiliary fuel or for heating by an electrical discharge."
"The invention provides an easily controllable process for the oxidation of titanium tetrachloride with minimum contamination of the product titanium dioxide and without the use of inflammable liquids such as toluene."
From a reading of the specification as a whole the invention overcomes the defects of the prior art by:
a) Splitting the TiCl4 feedstream to the oxidiser so that the temperature to which the TiCl4 needs to be heated at the second and further inlet points is reduced to below 400oC (400oC being the temperature above which TiCl4 becomes highly corrosive). This is because advantage is taken of the TiCl4 oxidation reaction (which is exothermic) to heat the second and subsequent TiCl4 feeds to reaction temperature for oxidation. In effect the advantage is gained when the second and further split streams of TiCl4 are fed at points along the reactor where the heat of oxidation is available to heat the fresh reactant TiCl4.
b) Using the heat of reaction of aluminium and chlorine during formation of AlCl3 to heat the TiCl4 feedstream before it enters the oxidation reactor to a temperature of at least 450oC.
The benefits from these are that the TiCl4, which becomes highly corrosive at high temperatures (i.e. above 400oC) needs only to be above this temperature at the first inlet point. This reduces heating required as well as the length of corrosion proof piping/equipment required to handle hot TiCl4. The heat rise in the reactor due to the oxidation of TiCl4 instead of being concentrated at and confined to a single point is spread along the reactor length as the TiCl4 feed stream is split. Finally the temperature to which oxygen must be heated is reduced as the TiCl4 at the first inlet is heated to higher temperatures than possible in the prior art due to use of the heat of reaction of aluminium and chlorine.
Two issues arise from this. The first one relates to the issue of the claim defining the invention and the other relates to the fair basis of the claim. Looking at the first issue, I note that McTiernan J. states in AMP v Utilux (1971) 45 ALJR 123 at page 128:
"The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect."
I consider that the claims need not define the objects of the invention as long as they define:
the features whereby the objects of the invention are achieved, OR
the result sought to be achieved wherein the ordinary skilled addressee is able to determine the relevant features (without exercising inventiveness) from the defined result (see No-Fume Ltd v Frank Pitchford and Co. Ltd., (1935) 52 RPC 231).
On considering claim 1, I find that the invention described has not been fully defined, as claim 1:
merely refers to a splitting of the TiCl4 stream but does not define those features which achieve the result that is sought, OR
does not define the result sought which can be linked to the benefits arising from a split flow.
In particular, splitting the flow (as currently defined in claim 1) does not indicate (either implicitly or explicitly) whether this results in savings of reduced heating required for TiCl4, as well as whether the streams are fed at points along the reactor which make full use of the heat generated from the oxidation of titanium tetrachloride. As an example of the features in the specification which could help to fully define the invention, I refer to:
a) Page 2, lines 19-22; "Generally, the further inlet points will be positioned such that the titanium tetrachloride is added to the reaction stream at a point where any previously added titanium tetrachloride has been substantially completely oxidised.
b) Page 5, lines 1-5; "The proportion of titanium tetrachloride which is introduced to the reactor at the first inlet point determines to some extent the conditions within the oxidation reactor and can therefore be varied to control these conditions. Usually at least 15% by weight of the total titanium tetrachloride feed will be introduced at the first inlet point…".
Thus claim 1 in its present form does not define the invention described 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 fuel/electrical discharge heating to raise the temperature of the oxygen to the point where reaction occurs.
Further, based on the Mond Nickel Rules (in Mond Nickel Company Ltd.'s Application, (1956) RPC 189 at page 194) and No-Fume Ltd v Frank Pitchford and Co. Ltd., (1935) 52 RPC 231), I conclude that claim 1 also lacks fair basis
The opponent's third submission stated:
"The "inventive step" identified by Tioxide in its written submissions to the Australian Patent Office….is splitting the titanium tetrachloride stream before the aluminium chloride generator so that all of the aluminium chloride is put into the first slot, thus eliminating the need for auxiliary heat. This is clearly reflected in the specification…However, claim 1 is not clearly confined to this configuration. It may also include splitting the titanium tetrachloride stream after the aluminium chloride generator. At the very least, the claim is ambiguous. Also, even if the stream is split before the aluminium chloride generator the claim is not clearly limited to addition of all aluminium chloride in the first slot even though there is no reference to anything but this is (sic) in the specification (see page 4, lines11-13 and page 8 of the specification). Therefore…claim 1 is too wide and is not fairly based because it includes processes that do not involve the admitted "inventive step" and owe nothing to it."
A reading of claim 1 discloses the following:
"…the titanium tetrachloride being introduced into the reactor at a first inlet point and at least one further inlet point, the titanium tetrachloride introduced at the first inlet point being in admixture with aluminium chloride (my emphasis) and being heated to a temperature of at least 450oC, the aluminium chloride being formed by reaction of aluminium and chlorine and the heat generated by this reaction being used to heat the titanium tetrachloride introduced at the first inlet point (my emphasis)."
Thus claim 1 has stated that the titanium tetrachloride introduced at the first inlet point is in admixture with aluminium chloride. There is no indication in claim 1 of aluminium chloride being introduced at the second inlet point, or that the titanium tetrachloride is split after being passed through an aluminium chloride generator.
The description says at page 8, lines 1-3, and at page 4, lines 18-24:
"The introduction of all the aluminium chloride with the titanium tetrachloride added at the first inlet point generally leads to easy rutilisation of the titanium dioxide formed."
"The temperature of the titanium tetrachloride added at the further inlet points will depend to some extent upon the proportion fed to the first or earlier inlet points and the temperature to which that proportion is heated. It is convenient, however, to heat all the titanium tetrachloride to be oxidised to a temperature of, say, between 350oC and 400oC and subsequently pass a proportion to the aluminium chloride generator and the remainder to one or more further inlet points."
The description discloses that all the AlCl3 is added to the TiCl4 going to the first inlet point. I note that the description has not disclosed addition of AlCl3 at second and subsequent inlet points. Also, the description discloses that the TiCl4 feed is split prior to the generator. However the description has not disclosed splitting of the TiCl4 feed after the generator.
I consider that claim 1 indicates that it is clearly limited to the addition of all the aluminium chloride at the first slot/inlet point. I do not agree with the opponent that "claim 1 is too wide and is not fairly based because it includes processes that do not involve the admitted "inventive step" and owe nothing to it". I do not find claim 1 lacking in fair basis on this issue.
I shall now consider Section 40 particulars submitted by Millenium. Their first submission stated:
"Claim 1 is not limited to the suitable reaction temperature of 900oC (statement of grounds 4(b)(iv))
Claim 1 requires that there is a "reaction temperature of at least 700oC". It is not clear what this term means. If it means the mixed temperature of gas reactants of at least 700oC, it is 200oC below what is described as the suitable temperature for the reactants in the specification."
They further noted that the description at page 1A, lines 15 to 18 indicated that a temperature of about 900oC is said to be a "suitable temperature for the reactants" and therefore by plain implication temperatures below or significantly below this temperature must be unsuitable. The opponent referred to Professor Sinha's first declaration paragraph 6.13 where he states:
"…Claim 1, however sets out at line 3 that the reaction temperature is at least 700oC. So, if this means the temperature for reactants, this is 200oC below the "suitable" temperature. As I have noted above, it was known to me before August 1992 that 700oC was at the lower limit of the temperature range at which oxygen and titanium tetrachloride would begin to react to form titanium dioxide."
Professor Sinha has not indicated if the term "reaction temperature" is not clear, or whether it refers to the temperatures of the individual reactants. He has in fact specified the lower limit of the temperature range at which oxygen and titanium tetrachloride would begin to react to form titanium dioxide. Claim 1 states the temperature (at least 700oC) at which titanium tetrachloride reacts with oxygen (that is the reaction temperature) to form titanium dioxide. The description (page 1A, lines 15 to 18) clearly states a suitable temperature of the reactants (oxygen and titanium tetrachloride) and not a minimum temperature at which they (the reactants) begin to react to form titanium dioxide. The consistory statement discloses the reaction temperature defined in claim 1. There is no indication in the description and claims that the reaction temperature must be 900oC. I consider that there is no requirement that Claim 1 be limited as submitted by the opponent.
Millenium's second submission stated:
"Claim 1 is not limited to the ranges described in the specification for the introduction of TiCl4 (statement of grounds 4(b)(viii))
The Tioxide specification at page 5 lines 1 to 4 indicates that the amount of TiCl4 introduced to the reactor at the first point affects the conditions in the reactor, which must impact on pigment production in some way. The proportions of TiCl4 introduced into the reactor as described at page 5, lines 5 to 9 are essential to the performance of the invention as described. Hence claim 1 is not fairly based."
The relevant part of the description at page 5, lines 1 to 8 states:
"The proportion of titanium tetrachloride which is introduced to the reactor at the first inlet point determines to some extent the conditions within the oxidation reactor and can therefore be varied to control these conditions. Usually at least 15% by weight of the total titanium tetrachloride feed will be introduced at the first inlet point and preferably the proportion added at the first inlet point is 20 to 60% by weight of the total titanium tetrachloride feed. Most preferably the proportion is 25 to 50% by weight."
I had previously suggested (under the opponent's second submission) that a definition of the proportion of titanium tetrachloride fed at the first inlet could assist in overcoming the issue of claim 1 failing to define the invention. However I had clearly stated that:
"I consider that the claims need not define the objects of the invention as long as they define:
the features whereby the objects of the invention are achieved, OR
the result sought to be achieved wherein the ordinary skilled addressee is able to determine the relevant features (without exercising inventiveness) from the defined result."
The applicant may choose any one of the above options to overcome the deficiency of claim 1 failing to define the invention. I am in agreement with the opponent that claim 1 lacks fair basis, but I do not wish to limit the issue to one of failing to define "the proportion of titanium tetrachloride which is introduced to the reactor at the first inlet point". As I have indicated the issue is a broader one and the applicant may overcome the deficiency by exercising any one of the options outlined above. Thus I maintain that claim 1 lacks fair basis and does not define the invention described.
Millenium raised the following issues with regard to clarity:
(a) Claim 1 includes within its scope non-axially disposed inlets which would not fulfil the promise of the invention in the specification at pages 1a and 2, as such configurations would not be thermally efficient.
(b) Claim 6 sets out that the TiCl4, that is, all the TiCl4 is passed to an aluminium chloride generator. Whereas claim 7 which is dependent on this claim sets out that only a portion of the TiCl4 is passed to an aluminium chloride generator. These aspects are not mutually compatible.
(c) Aluminium chloride is a critical rutilisation agent as described at page 5, third full paragraph, and page 8 lines 1 to 3. However, the amount or proportions of aluminium chloride added as described at page 5 lines 18 to 31 are not specified in claim 1, and thus the claim is unclear and not fairly based.
Considering clarity item (a) the description (see page 6, line 19-page 7, line 4) discloses the inlets as conventional ones and could include circumferential slots in the reactor wall as well as an arrangement of perforations in the reactor wall which may extend axially along the reactor. The description discloses both axially and non-axially disposed inlets. I do not consider claim 1 lacks clarity in not restricting itself to axially placed inlets. The opponent has not provided evidence that the use of non-axial inlets does not fulfil the promise of the invention. Consequently, I cannot find that claim 1 lacks clarity in respect of item (a).
Looking at clarity item (b), I note that claim 6 is linked to claim 1. Claim 1 states:
"…the titanium tetrachloride being introduced into the reactor at a first inlet point and at least one further inlet point, the titanium tetrachloride introduced at the first inlet point being in admixture with aluminium chloride and being heated to a temperature of at least 450oC, the aluminium chloride being formed by reaction of aluminium and chlorine and the heat generated by this reaction being used to heat the titanium tetrachloride introduced at the first inlet point."
Now looking at claims 6 and 7, which state:
6. A process according to any one of the preceding claims in which the titanium tetrachloride is first heated to a temperature between 350oC and 400oC before being passed to an aluminium chloride generator.
7. A process according to claim 6 in which a portion of the titanium tetrachloride heated to a temperature between 350oC and 400oC is passed to an aluminium chloride generator and the remainder is passed to one or more further inlet points.
Claim 6 does not identify the heated TiCl4 feed as the one going to the first inlet or the second inlet. However it does indicate that any TiCl4 going to the aluminium chloride generator must be heated. The relevant part of the description at page 3, lines 12 to 23 discloses:
"Titanium tetrachloride is introduced into the reactor at two or more inlet points. The temperature of the titanium tetrachloride introduced at the first inlet point is at least 450oC, is preferably between 450oC and 650oC and, most preferably, is between 500oC and 600oC. The temperature is achieved, at least in part, by utilising the heat of reaction of aluminium and chlorine which form aluminium chloride with which the titanium chloride is admixed. Typically, the titanium tetrachloride is first heated to a temperature between 350oC and 400oC by passing it through a hollow coil formed from a metal such as Inconel which is externally heated by a gas flame, and subsequently passed to an aluminium chloride generator where it is mixed with aluminium chloride and heated to the chosen reaction temperature."
Thus claim 6 is clear in that it is consistent with the description which indicates that the titanium tetrachloride going to the generator is heated.
Claim 7 is linked to claim 6 and discloses that only a portion of the heated TiCl4 stream is sent to the generator and the rest is sent to further inlet points. Claim 7 (when read in light of claims 1 and 6) in effect, discloses that the TiCl4 stream is split prior to being sent for heating en route to the generator (see Claims 1 & 6) and the stream sent for heating en route to the generator is further split after being heated but prior to entering the generator (claim 7). This "further split" has no basis in the description, which does not reveal any such arrangement. One arrangement that the description at page 4, lines 21 to 24 shows, is:
"It is convenient, however, to heat all the titanium tetrachloride to be oxidised to a temperature of, say, between 350oC and 450oC and subsequently pass a proportion to the aluminium chloride generator and the remainder to one or more further inlet points."
No disclosure is made of a further split of the heated first inlet stream en route to the generator. Neither claim 6 nor claim 7 disclose that "all the titanium tetrachloride to be oxidised" is heated prior to being split. Thus claim 7 does read clearly when appended to claim 6 (linked to claim 1), but its disclosure has no basis in the description. Thus claim 7 is not fairly based on the description.
Finally considering clarity item (c) I note the specification at page 5 lines 16-21 states:
"The aluminium chloride is present in the titanium tetrachloride to act as a rutilisation agent, that is, to promote the formation of rutile titanium dioxide. Normally, the quantity of aluminium chloride used is sufficient to produce between 0.5 and 2.0% Al2O3 by weight in the product titanium dioxide. Preferably, the amount used produces from 0.8 to 1.5% Al2O3 by weight in the product titanium dioxide."
There is no indication that only specified proportions of AlCl3 must be added and/or that without these specific proportions the invention will not work. There is no indication that the skilled addressee will be unable to determine (without exercising inventiveness) the quantity of AlCl3 to be added to the reaction. I do not consider that claim 1 lacks clarity and fair basis just because it does not specify the amount or proportions of aluminium chloride to be added to the reaction. Similarly I note that the specification has not confined itself, in any way, to a process for the exclusive production of the rutile form of titanium dioxide. Thus I do not find claim 1 lacking clarity and fair basis specifically for the reason that it does not define the amount or proportions of aluminium chloride to be added as specified at page 5, lines 18 to 31. I have found claim 1 as lacking fair basis for other reasons.
I shall now consider the Kerr McGee submissions in respect of Fair Basis.
I have dealt with the first and second particulars under the opponent's third and second submissions respectively.
I have dealt with the third fair basis particular under Millenium's first section 40 submission.
The fourth fair basis particular raised by Kerr McGee states:
"Claim 1 includes inlet points which are not required to be at any particular distance from each other. Therefore the claim includes processes which would not satisfy the objects of the invention."
The relevant part of claim 1 states:
"…the titanium tetrachloride being introduced into the reactor at a first inlet point and at least one further inlet point…"
The relevant part of the description at page 6, lines 1-9 states:
"The distance between the first inlet point and a second inlet point and between any further inlet points is governed by the rate of feed of the oxidising gas stream and the titanium tetrachloride at the previous inlet points."
There is no special definition provided for the term "further" when read with "inlet points". Thus the term further has its plain meaning. I agree with the opponent that "the claim includes processes which would not satisfy the objects of the invention". Accordingly I conclude that claim 1 does not define the invention described and lacks fair basis. I note that I had dealt with this issue in a broader form under the opponent's second submission. I had previously suggested (under the opponent's second submission) that a definition of the placement of the further inlet points of titanium tetrachloride feed could assist in overcoming the issue of claim 1 failing to define the invention. However I had clearly stated that:
"I consider that the claims need not define the objects of the invention as long as they define:
the features whereby the objects of the invention are achieved, OR
the result sought to be achieved wherein the ordinary skilled addressee is able to determine the relevant features (without exercising inventiveness) from the defined result."
Thus the applicant may choose any one of the above options to overcome the deficiency of claim 1 failing to define the invention. I am in agreement with the opponent that claim 1 lacks fair basis, but I do not wish to limit the issue to one of failing to define "the placement of the further inlet points of titanium tetrachloride feed". As I have indicated the issue is a broader one and the applicant may overcome the deficiency by exercising any one of the options outlined above. Thus I maintain that claim 1 lacks fair basis and does not define the invention described.
I have dealt with the fifth fair basis particular under the opponent's first submission.
I have dealt with the sixth fair basis particular under Millenium's second submission under section 40.
Kerr McGee raised the following clarity issues:
1. The term "reaction temperature" is not clear in claim 1.
2. It is not clear whether the temperatures referred to in claims 2 and 3 are the oxygen inlet temperatures.
3. Claim 6 is unclear because it suggests that all the titanium tetrachloride is passed through the aluminium chloride generator whereas claim 7, which is appended to claim 6, states that only a portion of the titanium tetrachloride is passed to an aluminium chloride generator.
Considering clarity item 1 I note that the declarants have shown a clear understanding of "reaction temperature", but have stated that the temperature of the combined reactants would normally be expressed as "mixed temperature of reactants". Thus I do not consider that claim 1 lacks clarity when using the term "reaction temperature.
Clarity item 2 refers to claims 2 and 3. Claim 2 states:
"A process according to claim 1 in which the oxygen is preheated before introduction into the reactor to a temperature between 600oC and 1200oC."
Claim 2 indicates the temperature(s) to which oxygen is heated prior to introduction in the reactor. The opponent submits that the claims need to specify the oxygen inlet temperatures. Claim 2 is linked to claim 1, which specifies the reaction temperature. I have no indication from the opponent's declarants that they would be unable to work out the temperatures for introduction of oxygen to the reactor. Claim 1 has specified a reaction temperature and various other process requirements. I have no firm evidence before me to show that determination of oxygen inlet temperatures would require an exercise of inventiveness. Consequently I conclude that claim 2 is clear.
I have previously dealt with clarity item 3 under clarity item (b) raised by Millenium
Regarding the fair basis/section 40 issues raised by the opponent I have found that:
claim 1 in its present form does not define the invention described as it fails to define the features whereby the objects of the invention are achieved; or the result sought to be achieved,
following on from the above claim 1 also lacks fair basis; and
claim 7 is not fairly based on the description.
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. Claim 28 is an omnibus claim which refers to the examples and does not suffer from the defects of claim 1.
Lack of Novelty
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
I shall begin by assuming that all features of the independent claims are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183). Claim 1 has the following features:
1) A process for the production of titanium dioxide comprising
2) reacting titanium tetrachloride
3) with oxygen
4) at a pressure above atmospheric pressure and at
5) a reaction temperature of at least 700oC
6) in an oxidation reactor,
7) the titanium tetrachloride being introduced into the reactor at a first inlet point and at least one further inlet point,
8) the titanium tetrachloride introduced at the first inlet point being in admixture with aluminium chloride
9) and being heated to a temperature of at least 450oC,
10) the aluminium chloride being formed by reaction of aluminium and chlorine
11) and the heat generated by this reaction being used to heat the titanium tetrachloride introduced at the first inlet point.
Millenium had raised 36 citations and Kerr McGee had raised 20 citations with regard to novelty. At the hearing counsel for both opponents stated that only one citation would be pursued for the ground of novelty. The citation was called the Bayer Patent and is a British patent with publication number GB 1,339,784, published in the UK on 5 December 1973.
GB 1,339,784
Claim 1 of the specification discloses:
"A process for the continuous production of finely divided mixed oxides, in which finely divided, non-fluidized aluminium is reacted with excess chlorine in a metal tetrachloride/chlorine gas mixture heated to at least 140oC, the metal in the metal tetrachloride being silicon, titanium, tin and/or zirconium, and the heat liberated during the aluminium chlorination process and the initial temperature of the metal tetrachloride/chlorine gas mixture being adapted to one another in such a way that the temperature of the resulting gas mixture is not higher than 900oC; and the resulting aluminium trichloride/metal tetrachloride mixture is reacted in the gaseous phase with oxygen or a gas containing oxygen at a temperature of at least 900oC."
On comparison with the opposed invention a number of features appear to be absent. The features in question are features 4 and 7 of opposed claim 1. Looking at feature 4 the opponent has referred to a disclosure at page 2, lines 54-61 of the citation which states:
"In one preferred embodiment of the process, a metal tetrachloride/chlorine mixture which does not contain any zirconium tetrachloride is used at a temperature of at least 140oC, preferably at a temperature in the range of from 250 to 600oC, and under the pressure of the surrounding atmosphere or under elevated pressure."
The applicant expressed doubt as to whether the above feature referred to conditions in the oxidation reactor. I have similar doubts. The passage does not specifically indicate that elevated pressure conditions are maintained in the oxidation reactor. The passage does indicate a temperature and pressure at which a stream of material is used but does not indicate that these conditions are prevalent in the oxidation reactor. I conclude that feature 4 has not been disclosed in the citation.
Looking at feature 7 (which the opponent describes as a dual slot or multiple inlet oxidiser) the opponent refers to the following disclosure at page 4, lines 39-47 of the citation:
"In the mixing and reaction zone, the uniform gas stream (in the case of an annular gap) or the gas streams (in cases where nozzles are used) meet the second gaseous component introduced vertically downwards, the oxygen or the oxygen-containing gas".
I shall refer to the passage immediately preceding this disclosure which states:
"The suitably pre-heated aluminium trichloride/metal tetrachloride mixture is introduced into the distributor, preferably made of metal, in which an annular duct, a slotted gate for uniformly distributing the gas and finally an annular gap or nozzles radiating from the annular gap for introducing the gas into the mixing chamber, are formed."
The description and drawings (Figs. 3&4) of the citation shows the entry of aluminium trichloride/metal tetrachloride mixture through circumferentially placed nozzles, lying in the same cross-sectional plane, into the tubular oxidiser. The cross-sectional plane lies at right angles to the flow direction of the oxygen/oxidising gas. That is, the feed enters the oxidiser through a number of nozzles at a single point lying along the length of the oxidiser. Overall, the citation has disclosed a single inlet point which could have multiple nozzles or an annular gap.
Feature 7 of the opposed invention discloses:
"the titanium tetrachloride being introduced into the reactor at a first inlet point and at least one further inlet point".
The relevant part of the description discloses the injector used at the inlet points as:
"…the injector may comprise a circumferential slot in the wall of the reactor, an arrangement of perforations in the reactor wall which may extend axially along the reactor, a single jet or nozzle or an arrangement of jets or nozzles. Generally the design of injectors used at the further inlet will be similar to those used at the first inlet point."
I consider that the citation has disclosed a single inlet point which has an injector with a number of nozzles. The individual nozzles do not constitute single inlet points as the opponent has submitted. Thus I do not consider that the citation has disclosed a further inlet point.
As features 4 and 7 of the opposed invention are not disclosed in the citation I consider that GB 1,339,784 does not render the opposed invention as lacking in novelty. There were a number of other documents raised by the opponent in this matter in their statements of grounds and particulars but these were not pursued at the hearing. I have considered these documents and have not found any that strongly challenged the novelty of the opposed invention.
I conclude that the opponent has not shown the opposed invention to be lacking in novelty.
Lack of Inventive Step
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
The opponent submitted that there are three ways in which one can show, upon the evidence, that the invention was obvious:
(a) the idea of the invention was known to many in the industry in Australia; and/or
(b) the two main features of the "invention" (as well as the other subsidiary features)were common general knowledge and it was obvious to combine those features;
and/or
(c) one of the main features of the "invention" was common general knowledge and the
other main feature was disclosed in a single document which would have been
understood, ascertained and regarded as relevant and it would have been obvious to
combine those features.
The applicant rejected the above submission claiming that:
(i) The opponent's evidence is totally uncertain in proof of the relevant common general knowledge in Australia as at 10 August 1992.
(ii) Of the multitude of documents put forward in the evidence of the opponent, there is no relevant evidence supporting the selection of those particular documents (particularly the patent specifications) amongst the myriad of documents relevant to the topic of titanium dioxide production by the chloride process with in-situ generation of aluminium chloride production in the manner described and claimed.
(iii) Furthermore, there is no relevant evidence demonstrating that the invention as described and claimed in the opposed application was obvious as at 10 August 1992.
(iv) The evidence of the opponent does not sustain this ground of objection based on obviousness. Telling observations against the opponent on the issue of obviousness are:-
(a) the large number of publications put forward by the opponent, as an attempted mosaic, in support of this ground - without any precise basis for the identification of specific documents - or the manner in which the teaching of those documents(s) constituted any part of common general knowledge in Australia at 10 August 1992 or, more importantly, makes obvious the invention of the opposed application.
(b) Prior to the invention of the opposed application, the total absence of anticipatory material suggesting the discovered advantage derived from the process as claimed.
Aickin J. set out the following tests for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 270:
"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."
and at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Application of these tests would require:
a determination of the non-inventive worker in the field (or the person skilled in the relevant art ) in Australia
a determination of the common general knowledge in Australia at the priority date
The common general knowledge relevant to the question of obviousness was described by Aickin J. in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself 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 in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The first step to applying the tests set out above for determining inventive step would involve the determination of those declarants who were persons skilled in the art of producing titanium dioxide in Australia by the chloride process. There are a number of declarants from Australia and overseas. Some of the overseas declarants have worked in the relevant art in Australia prior to the earliest priority date. Some of the declarants are inventors. Taking all these factors into consideration I consider the following persons skilled in the art in Australia and I shall have regard to their declarations for the purpose of determining the common general knowledge (CGK) in Australia at the priority date in question:
Kerr McGee declarants:
Billy Joe Montgomery, Thomas Ian Brownbridge, Harry Eugene Flynn, Donald Keith Philp and Samuel H Livingston
Millenium declarants:
Iggy Tan, Raymond Frederick Lee, Dominic P Manganaro and Hari Narayan Sinha
The following Millenium and Tioxide declarants are clearly not persons skilled in the relevant art in Australia as they have not practised in the art in Australia. However they can help to establish the general state of the art in the US and UK in the field of Titanium Dioxide production via the chloride process:
Rodney Leonard, Charles K Hsu, Michael Robinson, Maurice Arthur Claridge and David Ogden
I shall now proceed to establish the state of the common general knowledge in Australia at the relevant date. Some of the declarants have indicated that:
the field of titanium dioxide production was restricted to a few companies world-wide.
the disclosures of relevant processes for production and related aspects were mostly disclosed only through patents publications, there being only a single acknowledged textbook on the subject.
information was disseminated very rapidly in the countries where companies had production facilities for titanium dioxide through circulation of patent abstracts and technical papers.
staff dealing with production and related aspects familiarised themselves with the latest disclosures of patent literature in the field.
The opponents submitted that the following five features were considered to be part of the common general knowledge at the relevant date:
1. Reacting with O2 in an oxidation reactor at a temperature greater than 700oC to produce TiO2.
2. Reaction at above atmospheric pressure.
3. Staged addition of TiCl4 (or addition of TiCl4) to a reactor at a first inlet point and at least one further inlet point.
4. Aluminium addition (I assume that the reference is to aluminium chloride) - with TiCl4 at high temperature.
5. Use of heat produced by reaction of Al + Cl to heat TiCl4.
The opponent indicated that these features were disclosed in various patents (a list of the patents has been provided). Before I proceed to assess the various declarations I shall refer to the following teaching of the courts regarding the determination of whether material disclosed in various patents does or does not constitute common general knowledge. In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (supra) at page 294 it was stated:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levenstein Ltd (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtalds Ltd (1933) 50 RPC 259 at page 280."
I have considered the declarations of the persons skilled in the art in Australia to determine if they had acquired knowledge of the features constituting the alleged common general knowledge through various means including study/knowledge of the patents and other technical/scientific texts/papers. My determination is based on the teaching from British Acoustic Films Ld v Nettlefold Productions, (1936) 53 RPC 221 at page 250,
Patent attorneys for opponent 1 : Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for opponent 2 : Davies Collison Cave, Sydney
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