University of Sydney v Werner & Metz GmbH

[1995] APO 13

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 577874 in the name of UNIVERSITY OF SYDNEY

Title:    Antiallergenic Agent

Action:    Opposition by Werner & Mertz GmbH under Section 59 of the Patents Act 1952

Decision:    Issued            .

Abstract:    All claims are fairly based.  If a mixture is novel and not obvious, there is a separate ground of invalidity concerning whether it is a mere collocation.  Claims include mere collocations with no demonstrated synergism or working interrelationship between the components of the mixture.  Claims also include patentable subject matter.  Applicant given the opportunity to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 577874 by UNIVERSITY OF SYDNEY and Opposition thereto by WERNER & MERTZ GMBH under Section 59 of the Patents Act 1952.

background

Patent application 577874 by University of Sydney was filed on 4 July 1985.  The application claimed priority from provisional application PG 5962 which was filed on 11 July 1984.

Application 577874 was advertised accepted on 6 October 1988. On 6 January 1989 Werner & Mertz GmbH (Werner) filed a Notice of Opposition under the provisions of Section 59 of the Patents Act 1952. The grounds of opposition were those set out in Section 59(c) to (i).

The serving of evidence-in-support was completed on 4 September 1992 and the serving of evidence-in-answer was completed on 4 June 1993.  On 6 September 1993 the opponent advised that it did not intend to serve evidence-in-reply.  I heard the matter in Sydney on 27 October 1994.  University of Sydney was represented at the hearing by Mrs Ann Kurts and Mr John Terry, patent attorneys of Griffith Hack & Co, and Werner was represented by Mr John O'Connor, patent attorney of Spruson & Ferguson, assisted by Ms Christine Elliott and Dr Colin Bodkin.

As acceptance of the application was advertised before commencement of the Patents Act 1990, the provisions of Section 234(3) and Regulation 23.3 of this Act apply.

specification

The specification indicates the invention concerns the use of tannic acid to render allergens non-allergenic.  The discussion of the prior art at page 2 refers to the killing of dust mites and describes how dead mites remain allergenic and release more allergen as they break down.  An agent which could destroy this allergenic material would therefore be valuable.  Preliminary investigations showed common oxidising or reducing agents had no effect on allergenicity.

The applicant found that a composition comprising a mixture of tannic acid and a miticide could be used to render allergens in an environment non-allergenic.  The miticide killed the mites and the tannic acid reduced the allergenicity of the mite debris.  Preferred miticides were alcohols such as ethanol and benzyl alcohol.
The major part of the specification describes experimental work indicating the use of tannic acid as a miticide.  Mr Terry pointed out that the applicant had chosen to restrict its claims and hence the data did not purport to be exemplary of the invention as defined in the accepted claims.

The specification ends with 12 claims, of which claims 1 to 7 are directed to methods of rendering allergens non-allergenic and claims 8 to 12 are directed to antiallergenic compositions.  The independent claims 1 and 8 read as follows:

1. A method of rendering allergens in an environment non-allergenic, which comprises treating the environment with an effective amount of a composition comprising a mixture of tannic acid and a miticide.

1. An antiallergenic composition for rendering allergens in an environment non-allergenic, which comprises a mixture of tannic acid and a miticide.

Claims 2 to 7 are dependent on claim 1 and claims 9 to 12 are dependent on claim 8.

evidence

In support of the opposition Werner filed a number of declarations.  However all but two of these declarations, those by Mr O'Connor and Dr Siemensma, are for the purposes of establishing the publication dates of certain documents.

Mr O'Connor is a patent attorney and a member of the firm of Spruson & Ferguson.  He annexes 24 Exhibits (JDOC-1 to JDOC-24) to his declaration.  At the hearing Mr Terry objected to a number of passages in this declaration insofar as the declarant had stated an opinion drawn from the documents cited.  Mr Terry contended that certain paragraphs purported to give a legal opinion on a point to be decided and were therefore not admissible.  Also, since the declarant had not qualified himself as an expert witness in the field of the invention, Mr Terry considered that the opinions expressed in certain passages should not be elevated to the status of evidence.  Mr O'Connor agreed that the passages to which Mr Terry had referred should be treated as submissions.

Dr Siemensma is a Consultant Allergist who has been practicing in clinical allergy since August 1983.  Mr Terry objected to paragraph 5 of Dr Siemensma's declaration on the ground that it went to the question of inutility and was therefore not relevant to the opposition and should not be admitted and given weight.

The evidence-in-answer comprises two declarations.  The first declaration is by Mr Wesley Green, the inventor of the application in suit.  Mr Green has been employed as a professional officer with the Department of Medicine at the University of Sydney since 1974.  He attaches 14 Exhibits (WG-1 to WG-14) to his declaration.

The second declaration is by Dr Constance Katelaris who has had 15 years experience in the fields of clinical immunology, clinical allergy and allergy research.  Dr Katelaris annexes 4 Exhibits (CHK-1 to CHK-4) to her declaration.

I shall refer specifically to parts of these declarations later in my decision.

Werner did not file any evidence-in-reply.

submissions

Mr Terry conceded initially that the priority date of all the claims was the date of lodgement of the complete specification (4 July 1985) and that the applicant did not seek to claim priority from the provisional application.

Mr O'Connor's submissions for the opponent related to two main issues, namely the lack of fair basis of the claims and the claims relating only to a mere collocation and therefore not being directed to a patentable invention.

On the question of fair basis, Mr O'Connor submitted that not only were the claims not fairly based on the provisional as had been conceded, but in part, due to amendments filed in August 1988 in which the concept of the invention had been broadened, they were not fairly based on the complete specification as filed.  In Mr O'Connor's view the complete specification as filed provided a clear disclosure only of a mixture of tannic acid and a miticidally effective alcohol and methods of removing allergens from an environment using such a mixture.  The amendments introduced the broader concepts of a mixture of tannic acid and any miticide and of using that mixture to render allergens non-allergenic.

Mr O'Connor also submitted that the claims in part were not fairly based on the present disclosure in the specification.  According to Mr O'Connor the complete specification disclosed no more than the combination of tannic acid and benzyl alcohol.  The enlargement to a combination of tannic acid and any miticide was not one that could properly be made.

Concerning the issue of mere collocation, Mr O'Connor submitted that, at the earliest priority date claimed, it was known that tannic acid could render allergens non-allergenic, and it was known that miticides could kill mites.  Therefore it was clear that, in the mixture claimed, each component performed a known function.  No synergism was claimed or demonstrated and there was no evidence of any interaction between the tannic acid and the miticide.  Therefore, applying the law on collocations as expressed in, for example, British Celanese, Ld. v Courtaulds,Ld. 52 RPC 171, the placing side by side of old integers so that each performs its old function does not constitute patentable subject matter. Consequently the combination of an agent known to kill mites and an agent known to reduce allergenicity for the purposes of killing mites and reducing allergenicity is a mere collocation.
So far as the documents put on in evidence were concerned, Mr O'Connor indicated that the opponent relied only on Exhibit JDOC-16, an article by the inventor published in The Lancet, to establish that tannic acid was known to render allergens non-allergenic.  He conceded that none of the other documents disclosed the combination of tannic acid and a miticide.

In response Mr Terry for the applicant submitted the claims were fairly based on the disclosure of the complete specification as lodged.  He stated that the applicant had chosen to restrict down their claims from the original disclosure which, at page 3, described a method of removing allergens from an environment using tannic acid.  He referred to the passage beginning at page 3 line 29 of the complete as filed (Exhibit WG-3) as disclosing the broad concept of using a miticide in conjunction with the tannic acid treatment.  In his submission the specification properly construed included a disclosure of the use of a combination of tannic acid and a miticide in a single composition.

Mr Terry also submitted there was no unreasonable speculation involved in claiming a mixture of tannic acid and any miticide.  Having demonstrated for the first time that a mixture of tannic acid and benzyl alcohol would work, the applicant was entitled to erect a fair "boundary fence" to circumscribe the invention.  Following Graham J in Olin Mathieson v Biorex (1970) RPC 157, the applicant had made a "sound prediction" with respect to the combination of tannic acid and a miticide and the onus was on the opponent to provide evidence to the contrary.

Mrs Kurts addressed the issues of novelty and obviousness.  First she pointed out that miticidally effective alcohols were not known at the date of the specification, and Mr O'Connor had accepted this.  Therefore the combination of a miticidally effective alcohol and tannic acid contained at least one novel integer and hence was a new and inventive combination.

To support her contention that the combination of a miticide and tannic acid was patentable, Mrs Kurts referred me to a number of decisions.  For example, in her view, the decision in Palmer vDunlop Perdriau Rubber Co. Ltd. (1937) 59 CLR 30 showed that the reduction of a whole combination to its component integers to determine obviousness must be applied with great caution. The question to be answered, following the decision in WellcomeFoundation Ltd. v V.R. Laboratories (Aust.) P/L. 1981 ALJR 249, was whether the invention would be obvious in the light of the common general knowledge to the non-inventive worker in the field of the invention.

The opponent had not given any indication in its evidence of what was the common general knowledge in Australia in 1985.  Therefore, in Mrs Kurts' submission, there was no basis on which to understand the level of knowledge the notional skilled addressee would have brought in combining the miticide with the tannic acid.

decision

I will first consider the fair basis issue.  Within this there are two matters on which I must decide.  The first concerns the limitation, if any, on the miticide in the composition.  The second concerns whether there is a basis for a claim to a method of rendering allergens in an environment non-allergenic.

Much of Mr O'Connor's submissions on fair basis at the hearing and in his declaration in effect relate to the determination of priority dates of the claims.  In view of the fact that the opponent has not put on any evidence to establish that a mixture of tannic acid and a miticide is not new, and indeed Mr O'Connor specifically acknowledged this fact at the hearing, I do not think I need to determine the priority date of the claims and hence I do not need to decide whether the opposed claims are fairly based on the complete specification as filed.  All I need to determine is whether those claims are fairly based on the disclosure in the specification as it now stands.

Concerning the question of the limitation to the miticide, I note that the summary of the invention at page 3 refers to a mixture of tannic acid and a miticide.  The description at the foot of that page indicates that alcohols such as ethanol and benzyl alcohol "have been found to be particularly effective" as the miticide.  An example of a preferred composition containing benzyl alcohol is given at the top of page 4.  In the remainder of the description the only references to compositions are to those containing benzyl alcohol as the miticide.

Mr O'Connor submitted that the disclosure in the specification was sufficient only to support a claim to a combination of tannic acid and benzyl alcohol.  On the other hand Mr Terry submitted that the extension of this to a combination of tannic acid and any miticide was a sound prediction that the applicant was entitled to make.  He based his submission on the decision of Graham J in Olin Mathieson v Biorex (supra) where he says, at page 193:

"If it is possible for the patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so.  Of course, in so doing he takes the risk that a defendant may be able to show that his prediction is unsound or that some bodies falling within the words he has used have no utility or are old or obvious or that some promise he has made in his specification is false in a material respect; but if, when attacked, he survives this risk successfully, then his claim does not go beyond the consideration given by his disclosure, his claim is fairly based on such disclosure in these respects, and is valid."

In this case I am inclined to think that the composition of tannic acid and a miticide was a "sound prediction".  I base this conclusion partly on the fact that the opponent has not shown that the compositions of tannic acid and a miticide were known or that such compositions do not fulfil the promise of the invention.  I have also had regard to Mr Green's declaration, especially paragraphs 18 to 22, where he explains how his invention evolved.  It seems that Mr Green did not know originally what effect the addition of a miticide would have on the ability of tannic acid to render allergens non-allergenic.  He conducted experiments in March 1985 which showed that miticides could be added to tannic acid while each compound retained its activity.  Therefore, in conclusion, I believe that claims to a composition of tannic acid and a miticide are fairly based on the disclosure in the specification.

On the question of whether there is a basis for a claim to a method of rendering allergens non-allergenic, Mr O'Connor submitted that the disclosure was limited to a method of removing allergens from an environment.  In his view removal was not the same as rendering allergens non-allergenic.  Mr Terry on the other hand considered the change in wording was merely a refinement of the language used, and he submitted that the overall effect of the compositions on the allergens was not an essential feature of the invention.  I am inclined to agree with Mr Terry that, on a fair reading of the specification as a whole, there is a basis for a claim to a method of rendering allergens non-allergenic, and that this is probably a more accurate description of the process occurring than reference to removal of allergens.

I note that a variety of terms such as "abolishing the allergenicity" at page 7 line 22, and "other allergens present may also be inactivated" at page 8 lines 13-14 have been used in the specification, but it seems to me that the thrust of the method claimed is to eliminate the allergenicity of the allergens, that is to render them non-allergenic.  Therefore I find that claims to a method of rendering allergens non-allergenic are fairly based on the description in the specification.

The second issue I must consider is whether the claims are directed to a patentable combination or whether they are directed to a mere collocation.  Mrs Kurts considered that the real issue concerned whether the mixture of tannic acid and a miticide was novel and not obvious.  Mr O'Connor contended that, aside from questions of novelty and obviousness, there is a separate ground of invalidity concerning whether the invention is a mere collocation.  In his view, for the mixture to be patentable, it must involve either a new integer or a new working interrelationship between the integers.

Clearly if a claim to a collocation lacks novelty or is obvious, then it cannot be directed to patentable subject matter.  However if the collocation is novel and non-obvious the Courts, in certain situations, appear to have considered, as a separate ground of invalidity, the question of whether the invention is a mere collocation.  For example, in British Celanese v Courtaulds (supra), which both Mr O'Connor and Mrs Kurts referred to me as stating the law in these circumstances, it was said:

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."

Therefore it seems that a collocation of known integers may be patentable where there is some working interrelation which produces a new or improved result.  Some further guidance on collocations was given in International Paint Co. Ltd.'s Application (1982) RPC 247 where it was said at page 275:

"It is perhaps fair to say that courts have been over reluctant and improperly hesitant in applying the doctrine.  But it is an extremely sound and wholesome doctrine, supported by the highest authority and ought always to be rigorously applied in cases in which it is applicable.  Such cases are the cases - but only those cases - where the ingredients of a mixture, or the parts of an article each (to use the modern vulgarity) "do their own thing".  That is to say, howsoever juxtaposed to the other ingredients of the mixture or parts of the article, each part performs its own function and would do so even in the absence of the other parts.  The classic cases of collocation are those mentioned in Through the Looking Glass: "Mix sand with the cider, and wool with the wine".  However novel and unobvious in practice such mixtures may be, they are mere collocations and cannot be allowed to be patented for the ingredients do not react with each other and the mixtures are obvious in law."

From these decisions I conclude that there may be a separate ground of invalidity, over and above considerations of novelty and obviousness, in cases where an invention concerns a mixture of known ingredients. Whether or not such a mixture is patentable will depend on the interaction between those ingredients and on the end result achieved. I stress that my conclusion concerns the law as applicable to oppositions determined under Section 59 of the Patents Act 1952. I appreciate that the law relating to manner of manufacture under the 1990 Act may involve different considerations in view of the change of wording in the new Act.

In any consideration I must be aware, as Mrs Kurts reminded me, of the dangers of dissecting a combination into its constituent elements to determine whether it was obvious.  In this respect Mrs Kurts referred me to the passage at page 61 of Palmer v Dunlop (supra) where it was said:

"It is frequently possible to take, as it were, a patent to pieces, and then, beginning with one piece, to show how, in order to obtain one result, step A must be taken; in order to obtain another particular result, step B must be taken - and so on until one has the whole combination for which inventive quality is claimed.  If the analysis is taken into sufficient detail, every single step in the development of an invention, taken separately, can be shown to be obvious."

Turning now to the claims in suit, I have to consider whether, in the light of the above considerations, a mixture of tannic acid and a miticide constitutes patentable subject matter or whether it is a mere collocation.  At the hearing Mr O'Connor conceded that the opponent had not put on any evidence to show that the mixture had been published.  Therefore I conclude that the mixture is novel.  Also, as Mrs Kurts pointed out, the opponent had not put on any evidence as to the common general knowledge in the art in Australia.  Hence I cannot find that the mixture is obvious.

From the decisions I have referred to above, it seems to me that, for a collocation to be patentable, it is not sufficient that the integers merely perform their known functions.  There must be some synergism or working interrelationship between the integers.  I must now apply this principle to the present situation concerning a mixture of tannic acid and a miticide.

At the hearing there seemed to be agreement between the parties that certain alcohols were not known to be miticidally effective at the time of filing the complete specification.  Mr Green's declaration, at paragraphs 36-40, supports this, especially with respect to benzyl alcohol.  Therefore, while the alcohols themselves were known compounds, their use as miticides appears to be new.  The alcohols in the mixture with tannic acid could be said to possess a hitherto unknown and unsuspected property.  They cannot therefore be said to have been performing their known function.  Therefore, insofar as the claims are directed to compositions in which the miticide is a miticidally effective alcohol, or to methods of using such compositions, I agree with Mrs Kurts that they are directed to a patentable collocation since they contain an integer with hitherto unknown properties.

Where the miticides are other than miticidally effective alcohols, the issue is more complex.  Mr O'Connor put to me that claims to tannic acid with any miticide were mere collocations of known compounds and as such were not patentable.  He referred to Exhibit JDOC-16, an article by the inventor in the 21 July 1984 edition of The Lancet to establish that, prior to the earliest conceded priority date of the claims, it was known that tannic acid could be used to render allergens non-allergenic.  The evidence establishes that this edition of The Lancet was available to the public at the University of New South Wales Biomedical Library  on 1 August 1984.  Also at the earliest claimed priority date it was known that miticides could kill mites.  Mr O'Connor pointed out there was no evidence of any interaction between the tannic acid and the miticide and that no synergism had been claimed or demonstrated.  Therefore in his view the claims were all directed to a mixture in which each component performs a known function or to the use of that mixture for a known purpose.

In rebuttal Mrs Kurts contended that the combination of tannic acid and a miticide was not obvious since the art relied on by the opponent was contained in a broad range of documents.  In her view, to establish obviousness, the opponent had to show why the knowledge contained in those documents would have been brought together.  Mrs Kurts pointed out that the prior art documents refer to such processes as vacuuming and dusting to remove mites, and therefore the combination of a miticide and tannic acid was not obvious to the skilled addressee at the relevant date.

The question I must answer is not one of obviousness but is whether the putting together of tannic acid and a miticide, other than a miticidally effective alcohol, is a patentable combination.  I am inclined to agree with Mr O'Connor that, since the tannic acid and the miticide merely perform their known functions, and there is no demonstrated synergism or working interrelationship between them, they do not form a patentable combination as defined in the British Celanese case (supra).

In reaching my conclusion I have followed the decision in International Paint (supra).  While I agree with Mrs Kurts when she referred to this decision that, in the present situation, there is not a frivolous combination of the type described, nevertheless it seems clear to me that, while the mixture of tannic acid and a miticide, other than a miticidally effective alcohol, may be novel and unobvious, it is a mere collocation and hence is not patentable.

conclusion

I have found the opposition succeeds on the grounds that the claims, insofar as they include a mixture of tannic acid and a miticide other than a miticidally effective alcohol, or to the use of such a mixture, are directed to a mere collocation and are therefore not patentable.  However insofar as the miticide is limited to a miticidally effective alcohol, I have found that the claims are directed to a new combination.  Also I have found that all the claims are fairly based on the description in the specification.

As I consider the claims are in part directed to patentable subject matter, I allow the applicant 60 days from the date of this decision to amend the specification to overcome the deficiencies I have found.

costs

At the hearing both parties made submissions as to their entitlement to costs.  I have found that the opposition succeeds but only on part of one ground raised by the opponent.  During the hearing each party made a concession concerning the issues in dispute in the opposition, Mr Terry on the question of priority dates and Mr O'Connor concerning the novelty of the combination of tannic acid and a miticide.  Therefore I am inclined to think that, while Werner has succeeded partly in the opposition, each party should bear its own costs in this case.

Janet Werner
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack & Co, Sydney

Patent attorneys for the opponent   :  Spruson & Ferguson, Sydney