University of Wyoming Research Corporation v Ciris Energy, Inc
[2016] APO 3
•20 January 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
University of Wyoming Research Corporation v Ciris Energy, Inc. [2016] APO 3
Patent Application: 2010332294
Title:Biogasification of coal to methane and other useful products
Patent Applicant: Ciris Energy, Inc.
Opponent: University of Wyoming Research Corporation
Delegate: Rhys Munzel
Decision Date: 20 January 2016
Hearing Date: 28 October 2015, in Melbourne
Catchwords: PATENTS – novelty – invention lacks novelty in view of several documents – inventive step – invention was known as part of the common general knowledge and lacks an inventive step in view of the common general knowledge taken alone – invention was disclosed in several s 7(3) prior art documents and it would be a matter of routine to follow the instructions found in those documents – manner of manufacture – mere collocation alleged however an interrelationship between defined features was identified – invention disclosed in prior art incorporated by reference into the specification, resulting in the invention lacking the requisite level of inventiveness on the face of the specification – fair basis – claims found to be fairly based – clarity – claims found to be clear – opposition successful – costs awarded against applicant – opportunity to amend provided
Representation: Patent applicant: Allens Patent and Trade Mark Attorneys
Opponent:Brett Connor and Rory Anderson of Freehills Patent Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010332294
Title:Biogasification of coal to methane and other useful products
Patent Applicant: Ciris Energy, Inc.
Date of Decision: 20 January 2016DECISION
University of Wyoming Research Corporation have established that claims 1-4 are not novel, do not involve an inventive step and define matter which is not a manner of manufacture. I award costs according to Schedule 8 against Ciris Energy, Inc.
I give Ciris Energy, Inc two months to propose amendments overcoming the successful grounds.
REASONS FOR DECISION
Background
Patent application 2010332294 (“the application”) in the name of Ciris Energy, Inc. (“Ciris”) was examined and accepted by the Commissioner, and its grant was subsequently opposed by University of Wyoming Research Corporation (“Wyoming”). As Ciris requested examination before 15 April 2013 substantive amendments to the Patents Act[1] brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act[2] do not apply to this opposition.
[1] 1990 (Cth) (“the Act”).
[2] 2012 (Cth) (“the Raising the Bar Act”).
Wyoming provided evidence in support in the form of declarations by:
· Professor Dongke Zhang dated 3 November 2014, with exhibits DZ-1 to DZ-5; and
· Brett Connor dated 6 November 2014, with exhibits BGC-1 to BGC-9.
On 29 January 2015 Ciris filed a request to amend the specification that was subsequently advertised as allowed. The amendments reduced the number of claims to four but did not alter claim 1, which remains the broadest claim.
Wyoming provided further evidence on 25 September 2015. Ciris provided further evidence in response on 16 October 2015. The further evidence relates to whether Ciris is entitled to apply for a patent for the application. Wyoming did not press this ground at the hearing.
The hearing occurred on 28 October 2015. Brett Connor and Rory Anderson of Freehills Patent Attorneys appeared on behalf of Wyoming. Ciris was not represented at the hearing and, aside from the entitlement issue I referred to above, did not provide submissions or evidence.
Onus
As I noted above substantive amendments brought about by the Raising the Bar Act do not apply. The onus therefore rests with Wyoming to clearly establish its case. For any ground of opposition to succeed, the Commissioner should be “clearly satisfied that the patent, if granted, would not be valid.”[3]
[3] F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, [67].
Grounds of opposition
Wyoming submits claims 1-4 lack clarity, fair basis, novelty, an inventive step, and do not involve a manner of manufacture.
Nature of the invention as described
Before construing the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd[4]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
[4] [2013] FCA 214, 100 IPR 451 at [139].
The background art and identified problem
Anaerobic digestion is described as a well-known process to obtain methane gas and other useful products from manure, waste sludge, and other predominantly organic materials.[5] It is a fermentation or biodegradation process that utilises consortia of microorganisms to degrade and then convert the carbonaceous material to produce gases under certain environmental conditions.[6]
[5] The specification, page 1.
[6] Ibid, page 1.
The specification acknowledges that coal has been converted to methane and other useful products commercially for many years using thermal and/or chemical processes.[7] However these processes operate under high pressures and temperatures, involve high capital and operating costs, low efficiency, and high waste gas emissions.[8] The present invention is said to solve these problems by a process of bio-converting coal.[9]
[7] Ibid, page 2.
[8] Ibid, page 2.
[9] Ibid, page 2.
Invention as summarised
The invention is summarised in aspects, conventionally understood as consistory statements. The first aspect corresponds to claim 1. I reproduce it below:
“a process for converting coal ex situ, comprising:
(a) treating coal with a liquid that solubilizes at least a portion of the coal, to form a product that is a substrate for a hydrolytic microbial population,
(b) treating at least a portion of the product of step (a) with a hydrolytic microbial population to produce a product containing fatty acids,
(c) treating at least a liquid portion of the product from step (b) with an anaerobic microbial population that generates methane to produce a product containing methane.”[10]
The summary of the invention is followed by list of dictionary definitions for certain words. I will discuss any relevant definitions when construing the claims.
[10] Ibid, page 2.
An embodiment of the disclosed process is illustrated by Fig 1 which I reproduce below together with my summary of the discussion provided on pages 4, 26 and 27 of the specification.
Feed coal is delivered to a grinder 1 to reduce the coal particle size to a desired range. The coal particles are then fed to a gravity separation device 2, such as a float tank or a hydro-cyclone, to remove non-coal particles. The purified coal particles are then fed into one or more chemical pre-treatment vessels 3, where the coal is pre-treated with chemicals and water while the solution is stirred, agitated or otherwise mixed for a given period of time. Chemical pre-treatment of the coal may involve several vessels and recirculation of solid coal particles between vessels to complete solubilization. Solubilized coal products are fed into one or more hydrolysis reactors 4. After a period of incubation in the hydrolysis reactor, a substrate for the methanogenic digestion is produced comprising volatile fatty acids and esters. The substrate is then transferred to a buffer tank 5 to equilibrate before being transferred to a biogasification reactor 6. After a period of incubation in the biogasification reactor methane, hydrogen and/or carbon dioxide gases are produced. Liquid remaining in the biogasification reactor may be recirculated back into the chemical pre-treatment vessel via another conduit.A liquid that solubilizes at least a portion of the coal
Suitable solvents are discussed in several parts of the description. They include: aromatic hydrocarbons (including nitrogenous ring aromatics), creosote, and/or heavy oils,[11] phosphite esters,[12] aromatic and/or cyclic alcohols, hydroxides, peroxides,[13] acetic acid and/or salts and esters of acetic acid, aryl alcohols, benzoic acid, Lewis bases, metal ions, and combinations of the above.[14] Such solvents are useful when heated.[15] In a preferred embodiment the solubilization chemicals are combined with water and the feedstock coal and stirred for a period of at least 48 hours at a temperature of about 40°C, in several sequential steps with specific chemicals added to the solution at each step.[16]
A hydrolytic microbial population
[11] Ibid, page 10.
[12] Ibid, page 11.
[13] Ibid, page 12.
[14] Ibid, page 18.
[15] Ibid, page 10.
[16] Ibid, page 18.
Any active hydrolytic or methane producing mesophilic or thermophillic anaerobic digestion system can be used in the present invention.[17] Hydrogen producing anaerobic systems utilise microorganisms from the Clostridium, Lactobacillus, and/or the Eubacteria species.[18] Preferred hydrolytic organisms include Clostridium, Bacteroides, Ruminococcus, Acetivibrio, Lactobacillus and other Firmicutes and Proteobacteria.[19]
An anaerobic microbial population that generates methane
[17] Ibid, page 20.
[18] Ibid, page 20.
[19] Ibid, page 20.
Methane producing organisms, as are well known to produce methane from sewerage sludge or from brewery waste, can be used according to the invention.[20] Suitable anaerobic microbes include Aerobacter, Aeromonas, Alcaligenes, Bacillus, Bacteroides, Clostridium, Escherichia, Klebsiella, Leptospira, Micrococcus, Neiseria, Paracolobacterium, Proteus, Pseudomonas, Rhodopseudomonas, Rhodobacter sphaeroides, Rubrobacter species, Erythrobacter litoralis, Jannaschia sp., Rhodopirellula baltica, Sarcina, Serratia, Streptococcus and Streptomyces, and various methanobacteria.
Fatty Acids
The phrase “volatile fatty acids” is frequently applied in the specification and appears to be used interchangeably with fatty acid. I understand “volatile fatty acids” as a reference to short-chain fatty acids, i.e. those with an aliphatic tail of less than six carbon atoms – for example acetic acid.
[20] Ibid, page 20.
Construing the claims
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[21]:
"Words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
Claim 1 is as I have set out in the consistory statement above.
[21] [2009] FCAFC,70, 81; (2009) IPR 228, [118]-[120].
Ex situ
The specification notes:
“The methods of the invention are conveniently carried out ex situ (where carbonaceous material, such as coal, is first removed from a formation and then treated according to the methods of the invention)”.[22]
I am satisfied this would be the applicable definition of ex situ as used in the claims. Professor Zhang recognised that it conforms to his understanding.[23] Professor Zhang provided several examples of ex situ treatment that I agree with including: laboratory experimentation, above ground reactors, and extracting coal from its original location and transplanting it in a different underground environment.[24]
[22] The specification, page 11.
[23] Zhang, [5.4.2]-[5.4.4].
[24] Ibid, [5.4.5]-[5.4.8].
Solubilizes
The construction of claim 1 is complicated by a dictionary definition I alluded to previously:
“As used herein, the term ‘solubilizing’ or ‘solubilized’ when used with reference to coal means that after treatment with the salt or ester of acetic acid, the solid content of the coal has been reduced. Without limiting the foregoing and/or limiting the invention, it is believed that such reduction in solid content is achieved by (i) the breaking of bonds in the coal matrix resulting in chemical breakdown of portions of the coal and/or (ii) cleaving of bonds holding carbon layers together. Thus, the solubilization of the coal may involve one or more of a chemical break-down of the coal and/or cleaving of bonds.”[25]
[25] The specification, pages 5 and 6.
The specific reference to the salt or ester of acetic acid is unusual and on its face could be construed as limiting the defined process to a particular group of solvents. On the other hand I believe it could also be construed as definition by exemplification, the salt or ester of acetic acid being an example of the means or mechanism to achieve a particular result, i.e. solubilization requires reduced solid content after treatment with a liquid such as the salt or ester of acetic acid. It is this second construction which is otherwise consistent with the specification as a whole, which clearly sets out many other solvents suitable for solubilizing coal. This is also consistent with Professor Zhang’s construction of the claim, as he states:
“The liquid discussed in step (a) would need to be a solvent of some type to dissolve the organic matter. The solvent could take a variety of forms such as an organic solvent, and alkaline solution, or an acidic solution. In each case, this would lead to dissolution of some of the organic content of the coal to provide a substrate for the hydrolytic microbial population.”[26]
[26] Zhang, [5.4.10.4] – see also [5.4.10.2].
It is worth noting that claim 1 requires the liquid of step (a) to itself provide solubilization, and not merely objects found in the liquid. This to my mind excludes microbial methods of solubilization. In those cases it would be the microbes in the liquid and not the liquid itself which performs the solubilization.
Fatty acids
Professor Zhang also considered the phrase “fatty acids” as used in the claims to encompass volatile fatty acids.[27] This construction is consistent with the specification as I discussed above. I also consider “fatty acids” as used in the claims to encompass volatile fatty acids.
[27] Ibid, [5.4.10.7].
Appended claims
Claim 1 is followed by three appended claims reproduced below. I consider them to be self-explanatory.
“2. The process of claim 1, wherein the coal used in step (a) is pulverized coal.
3. The process of claim 1, wherein the coal used in step (a) is coal that has been treated to remove at least a portion of non-coal impurities.
4. The process of claim 1, wherein the coal is lignite, sub-bituminous coal, bituminous coal, semi-anthracite coal, anthracite coal or a combination thereof.”
The common general knowledge
Professor Zhang provided the only evidence as to the common general knowledge.
The general anaerobic digestion process
Anaerobic digestion is a process using a microbial population to break down organic matter through a number of steps into methane.[28] This process has been applied to organic matter such as: agricultural waste; organic municipal waste; and wastewaters and sludge from wastewaters.[29] Anaerobic digestion occurs according to three broad reaction steps:
- hydrolysis of high molecular weight organic compounds or polymers into smaller monomer units such as monosaccharides, amino acids, and fatty acids;
- acidogenic breakdown of these monomers into hydrogen, carbon dioxide and volatile fatty acids; and
·methanogenic conversion of these products to methane.[30]
[28] Ibid, [3.5.1].
[29] Ibid, [3.5.3].
[30] Ibid, [3.5.4].
The methanogenic conversion of hydrogen, carbon dioxide, and the volatile fatty acids to methane occurs through two coinciding mechanisms:
- Hydrogenotrophic methanogenesis uses hydrogen to form methane; and
- Aceticlastic methanogenesis uses the volatile fatty acids to form methane.[31]
[31] Ibid, [3.5.5].
The microbial population will contain a variety of hydrolysis microorganisms, acidogenic anaerobic microorganisms and methanogenic microorganisms. These microorganisms are generally present in the environment and favourable conditions – such as temperature, pH and suitable substrates – are all that is required to promote their growth.[32]
[32] Ibid, [3.5.6], [3.5.11].
Common approaches to enhance anaerobic digestion include:
- Providing the right substrates for the microorganisms to metabolise;
- Providing the right operating conditions such as pH, temperature, organic loading rate, and retention time;
- Providing adequate nutrition by controlling macronutrients (such as nitrogen and phosphorous) and micronutrients.
·Removing inhibitory / toxic substances.[33]
Anaerobic digestion of coal
[33] Ibid, [3.5.14].
Anaerobic digestion of coal has been studied as a means to produce methane particularly in the last 30-40 years.[34] Biogenic methane has been identified as naturally occurring in many coal-bearing basins, and it is an important part of coal-bed methane formation.[35] Methanogenesis microorganisms were known to be present in coal formation water.[36]
[34] Ibid, [3.6.1].
[35] Ibid, [3.6.3].
[36] Ibid, [3.6.3].
The anaerobic digestion process can be enhanced through human intervention either in a coal formation or in a reaction vessel using a coal feedstock.[37]
[37] Ibid, [3.6.4].
Anaerobic digestion may be used for any coal provided there is sufficient organic matter present in the coal for the microorganisms to digest. As such, anaerobic digestion is viewed as a relatively more suitable option for low rank coal.[38] The rank of a coal is a major factor in determining its capability for methane production, as its methanogenesis capacity is directly proportional to the amount of organic carbon in the coal.[39]
[38] Ibid, [3.6.5].
[39] Ibid, [3.6.6].
The general steps for anaerobic digestion of coal are similar to that for other feedstocks.[40] The initial step involves depolymerisation of the large, complex organic matter in the coal to produce small organic molecules – this step is also known as the coal degradation step.[41] The depolymerisation step is important as it assists the microorganisms to produce methane.[42] Depolymerisation can be achieved by chemical or biological means.[43] This step is followed by hydrolysis in which oxidation and fermentation of the small organic molecules to methanogenic substrates, such as fatty acids and alcohols occurs. The final step is the digestion of methanogenic substrates by the methanogenic microorganisms.[44]
[40] Ibid, [3.6.7].
[41] Ibid, [3.6.7].
[42] Ibid, [3.6.8].
[43] Ibid, [3.6.8].
[44] Ibid, [3.6.7].
In contrast with the polymers in waste biomass – which is generally composed of primary metabolites such as lipids, proteins and hydrocarbons – the polymeric compounds in coal are predominantly aliphatic and aromatic.[45] As a result the initial hydrolysis steps require a different population of hydrolytic microorganisms having a different catabolic pathway. [46] The acidogenic breakdown of monomers into hydrogen, carbon dioxide, and volatile fatty acids; as well as the methanogenic conversion to methane would be essentially the same as with other anaerobic digestion systems.[47]
[45] Ibid, [3.6.9].
[46] Ibid, [3.6.9].
[47] Ibid, [3.6.11].
A typical environment for anaerobic digestion of coal is in a coal bearing basin. The challenges for an in situ process include identification, activation, and enrichment of the anaerobic microbial population of the coal, as well as controlling the chemical nutrients at suitable levels.[48] Because in situ processes are expensive, it is standard to conduct laboratory scale experiments ex situ to assess the suitability of the in situ environment to produce methane.[49] Coal is also anaerobically digested in ex situ reactors.[50] For ex situ treatment the coal would be expected to have been pretreated through grinding and removal of inert portions, as is standard for coals purchased in Australia.[51]
[48] Ibid, [3.6.14]-[3.6.15].
[49] Ibid, [3.6.16].
[50] Ibid, [3.6.20].
[51] Ibid, [3.6.22].
I find Professor Zhang’s evidence on “depolymerisation” or “degradation” of coal particularly interesting. As I referred to above, he describes this step as “depolymerisation of the large, complex organic matter in the coal to produce small organic molecules (such as phenol, benzoic acid, etc.).”[52] He further notes:
“The depolymerisation step is important as it assists the microorganisms to access the organic substrates in the coal. Depolymerisation of the coal can be achieved by chemical or biological means. A range of known depolymerisation mechanisms exist and a number of suitable substrates to encourage depolymerisation of coal are discussed in the ‘ArcTech Report’.”[53]
[52] Ibid, [3.6.7].
[53] Ibid, [3.6.8].
Although Professor Zhang does not explicitly describe the depolymerisation step as involving solubilization, he nevertheless appears to later relate the two (in discussing step (a) of claim 1):
Among the various solvents for pretreating the coal in step (a), only a strong alkali (e.g. NaOH and KOH) or a strong acid (e.g. concentrated H2SO4, HNO3 , HCl, etc.) will be able to depolymerise the coal to a useful extent. This depolymerisation converts the organic matter in the coal into smaller organic compounds including carboxylic acids but it is the volatile fatty acids that are needed for anaerobic digestion bacteria to feed on (and to produce methane).
Use of a weak alkali, a carboxylic acid, a salt of a carboxylic acid, an ester of a carboxylic acid, phosphorous acid, an ester of phosphorous acid, or a peroxide will, strictly speaking, solubilize some coal matter but the extent of this solubilization will be very minor.[54]
[54] Ibid, [5.4.32.1], [5.4.32.2].
He then states (in relation to use of NaOH and KOH to solubilize coal):
“I have discussed the use of NaOH and KOH in Section 5.4.30.1 above. Both of these are strong alkalis which I would expect to solubilize and depolymerise a portion of the organic matter in the coal. This is known as evidenced by the ‘ArcTech Report’. There is nothing new or unique about using NaOH or KOH to solubilize organic matter in coal.”
I have also considered the “ArcTech report” (cited during the opposition as “D34”) he refers to in determining what is understood about depolymerisation and degradation:
“Non-biological degradation of a number of coals was also evaluated. In some cases, a combination of chemical/thermal treatments was used to obtain maximum coal degradation. The chemicals used included different concentrations of nitric acid, hydrogen peroxide, sodium and potassium hydroxides, sodium and potassium carbonates, sodium bicarbonate and potassium phosphate. Several lignite subbituminous and bituminous samples were subjected to chemical/thermal degradation. Optical density (OD) measurements of liquid products at 450 nm using a spectrophotometer were used as a relative measurement of coal degradation.”[56]
[56] D34, viii.
I note in particular degradation was measured according to the optical density of liquid products. I take from this that the expected result of degradation is the formation of liquid products. This conclusion is reinforced by other passages of the ArcTech report, such as:
Chemical depolymerization of both lignite and subbituminous was demonstrated when the coals were pretreated with 20% H2C2, followed by alkali (1N NaOH)/thermal treatments. Among the coals tested, a Beulah lignite was found to yield the highest concentration of water soluble products using this treatment. Treatments with potassium hydroxide, sodium bicarbonate, sodium and potassium arbonates and potassium phosphate yielded significantly less chemical degradation products.[57]
[57] Ibid, ix.
I conclude that depolymerisation / degradation of coals such as lignite is understood to involve solubilization, and that it is known to anaerobically digest coal applying the steps of: chemical depolymerisation, hydrolysis, and methogenesis. I further conclude that it was known to perform these steps to ground coal ex situ and that pulverisation and purification of the coal would be nearly implicit (in the sense of being expected) but otherwise well known to ex situ processes.
Clarity
A claim is lacking in clarity if a third party could not ascertain whether an act would fall within the scope of the claim.[58] A lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use.[59]
[58] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59, 60.
[59] Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9, [46]; (1980) 144 CLR 253, 274.
Wyoming has submitted that claims 1-4 lack clarity as the term “solubilizes” within the context of the claims is unclear. Wyoming submit that the dictionary definition I referred to above appears to require that the solubilization occur through the use of a salt or ester of an acetic acid, and that since the claims are not explicitly so limited, they lack clarity.
I firstly note that if I did construe the dictionary definition of “solubilize” as requiring use of those chemicals, such a limitation would be necessarily imported into the claims since the term appears in the claims. That is simply how the dictionary principle applies.[60] However I have not construed the relevant dictionary definition as Wyoming submit.
[60] Minerals Separation North America Corporation v Noranda Mines Ltd. (1952) 69 RPC 81, 93.
Wyoming has not established that any claim lacks clarity.
Fair basis
In considering fair basis, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[61] approved the words of Gummow J in Rehm Pty Ltd v Websters Security System (International) Pty Ltd: [62]
“the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
[61] [2004] HCA 58, [69]; 217 CLR 274, 300 (“Lockwood v Doric”).
[62] (1988) 81 ALR 79, 95.
Lockwood v Doric[63] clarifies that the comparison required involves:
“construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the ‘real’ disclosure, are in truth only loose or stray remarks.”
[63] [2004] HCA 58, [69]; 217 CLR 274.
Solubilize
Wyoming submitted, as claims 1-4 do not expressly require the defined solubilization step to involve a salt or ester of an acetic acid, those claims lack fair basis since they omit necessary requirements according to the body of the specification. Wyoming’s submission relies on an application of the dictionary principle and a construction of “solubilizes” that I have not applied. It therefore fails.
Volatile fatty acids and esters of acids
Wyoming refers to the specification at pages 13 lines 24-26 and at page 16 lines 5-7. Both passages provide essentially the same disclosure and page 13 lines 24-26 states:
“The solubilized coal is then transferred into the hydrolysis reactor, where it is bioconverted into volatile fatty acids and esters of acids.”
Wyoming submits these statements disclose that the conversion of solubilized coal to volatile fatty acids and esters of acids is an essential feature of the invention. I disagree. These passages are found within explanatory disclosures of how the invention may work. In that context it is apparent they do not represent clear statements of what the invention is or is necessarily limited to.
A C/N ratio of 25-35
Wyoming refers to the specification at page 22 lines 27-31, which states:
“Because a C/N ratio of about 25-35 is needed for good anaerobic digestion, nitrogen is supplemented, and can be added in inorganic forms, such as ammonia, or in organic forms such as nitrogen contained in food wastes, animal manure or urea.”
Wyoming submits that this passage demonstrates a C/N ratio of about 25-35 is a necessary part of the invention. I disagree. This statement provides a recommendation of how best to work the invention (i.e. to provide “good” anaerobic digestion in the context of that example), it is not a clear statement of what the invention necessarily is or is limited to.
Conclusion
Wyoming has not established that any claim lacks fair basis.
Novelty
The general test for lack of novelty is the reverse infringement test. The classic formulation of this test was given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:[64]
"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".
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.[65] Australian courts have often cited, with approval, the words of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited:[66]
“If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.”
[64] [1977] HCA 19 at [20], 137 CLR 228 at 235.
[65] Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513, 517.
[66] [1972] RPC 457, 485-486 (“General Tire”).
Wyoming rely on nine documents to establish that claims 1-4 lack novelty:
D5 US 2007/0248531 A1 (DEBRYUN et al.) 25 October 2007
D7 US 3640846 A (JOHNSON) 8 February 1972
D8 US 3826308 A (COMPERE-WHITNEY) 30 July 1974
D11 US 4826769 A (MENGER et al.) 2 May 1989
D12 US 4845034 A (MENGER et al.)4 July 1989
D18 US 5670345 A (SRIVASTAVA) September 1997
D22 US 6543535 B2 (CONVERSE et al.) 8 April 2003D29WO 2007/022122 A2 (UNIVERSITY OF WYOMING RESEARCH CORPORATION D/B/A WESTERN RESEARCH INSTITUTE) 22February 2007
D34 Arctech, Inc., Biological Gasification of Coals: Final Report, report provided under contract to the U.S. Department of Energy (1990).
D5
D5 relates to methods of producing hydrogen from coal. Wyoming refers me to Examples 1 and 2. In Example 1 coal core samples from the Dietz coal seam (elsewhere described as sub-bituminous coal[67]) were pulverised and mixed with anoxic formation water collected from a coal seam. Sodium sulphide is added to 0.5mM concentration to ensure strict anoxic conditions in the coal slurries. Bottles containing the coal slurries were sealed and radioactively labelled 14C bicarbonate was added to trace methanogenic activity. Example 2 was run similar to Example 1 however nutritional supplements for stimulating coal biodegradation are added. Results for each example were estimated as the sum of hydrogen that was consumed using methanogenesis to make methane, used by acetogenic microorganisms to make acetate, and the hydrogen that accumulated in the headspace of the incubations.
[67] D5, paragraph [0017].
Paragraph [0024] of D5 explains the mechanism for anaerobic decomposition. Generally speaking, initial decomposition includes microbial depolymerisation reactions to provide organic acids, alcohols, hydrogen and carbon dioxide. The organic acids and alcohols are further metabolised by other microorganisms to acetic acid, hydrogen and carbon dioxide. The produced hydrogen and acetic acid are the primary substrates for the terminal members of the “anaerobic food chain” which include methogenic archaea.
I consider D5 to disclose a process in which coal is separated from impurities found at the top and bottom of core samples, pulverised, and mixed with water and sodium sulphide. At this stage the coal is biologically depolymerised to form soluble materials, which are then further metabolised to form acetic acid and hydrogen. The acetic acid serves as a substrate for methogenic archaea which provide methane as an end product.
While D5 discloses that sodium sulphide is added to ensure strict anoxic conditions, Professor Zhang declared that 0.5mM of sodium sulphide would be sufficient to chemically solubilize some of the organic matter in the coal. I have no reason to doubt Professor Zhang’s statement on this point. As such I consider D5 to implicitly disclose a chemical solubilization (in addition to biological solubilization) according to step (a) of claim 1. Further, I consider the step of metabolising organic acids and alcohols to acetic acid to involve hydrolytic bacteria and that step (b) of claim 1 is disclosed. Step (c) is also clearly disclosed as I described above.
I conclude that claims 1-4 lack novelty in view of D5.
D7
D7 discloses the production of methane by bacterial action. In the disclosed process sewage sludge containing methane producing anaerobic bacteria is admixed with particulate coal in a vessel from which air is excluded. A coal particle size of about -60 mesh is suitable although finer particulate coal is preferred since more coal surface is exposed.
Professor Zhang declares that some level of chemical solubilization occurs through the mixing of coal with process sewage sludge. He declares that sewage sludge contains organic acids and carboxylic acids and that such chemicals which would affect solubilization in the same way as they would according to the specification. I however am not convinced. I am not satisfied a liquid which contains traces of a compound would affect solubilization in the same way as a more pure liquid of that compound, when for example heated and mixed for an extended period. Most specifically I am concerned that high levels of dilution of a liquid would affect its ability to solubilize materials. Professor Zhang has not convinced me that process sewage sludge could chemically solubilize coal. I am not satisfied claims 1-4 lack novelty in view of D7.
D8
D8 also relates to a process for making gaseous hydrocarbons from fossil fuel deposits such as coal.[68] Like D7 it discloses contacting coal with sewage sludge. Like D7 Wyoming submits that contacting coal with sewage sludge will provide some level of chemical solubilization. Like D7 I am not convinced this is true. I am not satisfied claims 1-4 lack novelty in view of D8.
[68] D8, column 1 lines 6-10.
D11
D11 discloses a process for biochemically reacting coal in subterranean cavities. In the disclosed process coals such as lignite, sub-bituminous coal, bituminous coal, and anthracite are converted to methane and carbon dioxide.[69] To render the coal suitable for use, it is contacted in a finely divided state with hot aqueous alkali solution in a hydrolysis reactor to provide alkali hydrolysed coal solution.[70] The coal solution is inoculated with acid formers and methanogens and thereafter fed into a cavity formed in an underground salt formation.[71] Acid formers are described as organisms which convert complex organic molecules into organic acids and alcohols and eventually into acetate.[72] Methanogens are described as converting acetate into methane.[73] The microorganisms are allowed to grow in the cavity to convert a significant quantity of organics into methane.[74]
[69] D11, column 7 lines 42-47.
[70] Ibid, column 7 line 65 to column 8 line 45.
[71] Ibid, column 8 lines 53-66.
[72] Ibid, column 1 lines 42-50.
[73] Ibid, column 1 lines 51-59.
[74] Ibid, column 9 lines 3-36
I have discussed previously how the reaction of coal in an underground cavity different to that from which it was obtained would be ex situ. Claims 1, 2, and 4 are clearly anticipated by D11.
D12
D12 lists the same assignee as that listed by D11 and for the present purposes provides an equivalent disclosure.[75] Claims 1, 2 and 4 are also clearly anticipated by D12.
[75] D12, columns 8-10.
D18
D18 most generally discloses a method of aerobically or anaerobically treating coal to produce humic acid, volatile fatty acids, lower alcohols and/or methane using a consortium of bacteria.[76] An embodiment of this process is illustrated by Fig. 4 as reproduced below:
[76] D18, abstract.
Fig. 4 provides a two stage process in which coal is first treated by acetogenic bacteria in the ABR reactor to produce acetic acid, which is the main substrate for methogenic bacteria found in the MBR reactor.[77] In light of this disclosure alone I am satisfied a process consistent with steps (b) and (c) of claim 1 is disclosed. However I am not convinced that D18 discloses a process in which coal is first chemically solubilized. Wyoming looks to D18’s disclosure that chemicals such as sodium citrate, sodium sulphide, and phosphorous acid are added to the bacterial medium to demonstrate that coal is chemically solubilized. However, like my discussion of D7 and D8, I am not convinced that addition of potentially dilute amounts of certain chemicals will result in solubilization of coal. In relation to sodium sulphide, I note D18 discloses it to be diluted and partially neutralised to a pH of 9[78] prior to its addition at a rate of 1mL / 20 mL to the medium.[79] I consider that the medium may at that point be only weakly basic. I am therefore not satisfied the disclosed addition of sodium sulphide will result in solubilization.
[77] Ibid, column 12.
[78] Ibid, column 8 lines 30-45.
[79] Ibid, column 8 lines 49-67.
I am not convinced any claim lacks novelty in view of D18.
D22
D22 discloses a process for stimulating microbial activity in a hydrocarbon bearing subterranean formation.[80] In relation to solubilizing coal, Wyoming directs me to column 11 lines 15-16, which states:
“For growth stimulants that involve injecting a material into the formation, the material can be added to a fluid flood such as an aqueous solution or gas (such as CO2) or solvent or polymer that is injected into the formation by any procedure found most convenient.”
[80] D22, abstract.
Professor Zhang considered this disclosure in his declaration:
“In the context of the disclosure in D22 of ‘solvents’, the solvents (or polymers as the solvents) are chemical (most likely, organic compounds) which are added to help dissolve part of the hydrocarbons in the geological formation (including coal) or help to keep other compounds (e.g. nutrients and stimulants) in solution. D22 does not explicitly describe that these solvents or polymers are, or what their purpose is.
D22 does not specifically mention that the solvents are intended to dissolve a part of the coal. Although, I would reasonably guess that this was the case, as it is well known in the oil and gas industry to add solvents to drilling fluids and flooding fluids to keep other chemicals, e.g. surfactants, in solution, that is, in a dissolved state.”[81]
[81] Zhang, [6.9.4], [6.9.5].
I do not consider a disclosure in which the person skilled in the art is required to guess at what is disclosed could be considered a clear and unmistakable direction. As such I am not convinced D22’s reference to use of a solvent necessarily results in solubilization of coal. I moreover note that the addition of “solvents” appears to relate specifically to in situ processes.
Wyoming also submits that the acetic acid which forms during digestion processes would necessarily also provide some level of chemical solubilization. My concern with this submission arises from what is said in D34 (which I discuss below) where it appears that production of acetic acid during anaerobic digestion is rate-limiting such that acetic acid will only accumulate if methanogenic digestion is inhibited.[82] I am not convinced that acetic acid would accumulate sufficiently during routine anaerobic digestion to perform any solubilization.
[82] D34, pages 43, 46, 52.
I am not satisfied any claim lacks novelty in view of D22.
D29
D29 relates to the biogenic production of methane from hydrocarbon bearing formations such as coal.[83] The disclosed process may occur in situ or ex situ.[84] In relation to feature (a) D29 relevantly discloses:
“The present invention may include an induction or perhaps even enhancement of organic matter released from coal, oil shale and the like. Physical (e.g., fracture and the like) and chemical approaches (e.g., treating with surfactants, acids, bases, oxidants and the like but not limited to acetic acid, sodium hydroxide, percarbonate, peroxide and the like) can be applied to enhance an availability of organic matters in coal and oil shale. These methods may be used to break down coal, oil shale, lignite, coal derivatives, and the like structures to release more organic matters, or perhaps even to make them more vulnerable to be degraded into smaller organic compounds. These organic matters may be consumed by methanogens to create methane.”[85]
[83] D29, abstract.
[84] Ibid, abstract.
[85] Ibid, page 13 lines 9-18.
In other words, D29 teaches that coal may be chemically treated with materials such as acetic acid, sodium hydroxide and percarbonate to break down coal into smaller organic matters and enhance bioavailability. I note that acetic acid, sodium hydroxide and peroxide are also taught to be useful solvents in the present application.[86] I am satisfied D29 teaches solubilization consistent with step (a).
[86] The present application, page 18 lines 1-10.
In relation to steps (b) and (c) D29 most explicitly teaches that:
“Methane production processes may be a versatile biotechnology capable of converting almost all types of polymeric materials to methane and carbon dioxide under anaerobic conditions. This may be achieved as a result of the consecutive biochemical breakdown of polymers to methane and carbon dioxide in an environment in which a variety of microorganisms which may include fermentative microbes (acidogens); hydrogen-producing, acetate-forming microbes (acetogens); and methane-producing microbes (methanogens) harmoniously grow and produce reduced end-products. Anaerobes may play important roles in establishing a stable environment at various stages of methane production.”[87]
[87] D29, page 2.
D29 also discloses:
“some microbial groups may be important in degrading coal seams, coal, coal derivatives, oil shale, and the like and may release small organic compounds that can be amenable to methanogens to produce methane in later stages.”[88]
[88] Ibid, page 12.
In view of the common general knowledge as I have identified previously I am satisfied that the person skilled in the art would understand D29 as providing an anaerobic digestion process, which implicitly involve use of microbes to hydrolytically break down materials into volatile fatty acids such as acetic acid, and that that these fatty acids would constitute the small organic compounds amenable to methanogens. I am satisfied D29 provides clear and unmistakable directions to convert coal to methane by anaerobic digestion, and that the coal may be first solubilized by use of chemicals such as acetic acid or sodium hydroxide. I am satisfied D29 provides clear directions to matter falling within the scope of claim 1. D29 also discloses that the coal may be crushed,[89] and that the coal may be lignite.[90] I am satisfied that claims 1, 2 and 4 are anticipated by D29.
[89] Ibid, pages 23 and 24.
[90] Ibid, page 1
D34
I have already referred to the D34 in my discussion of the common general knowledge. D34 is a 1990 report for the U.S. Department of Energy provided by ArcTech, Inc. entitled “Biological Gasification of Coals”. It details studies performed by ArcTech, Inc into various means of biologically gasifying coal. Chapter III begins by discussing the chemical depolymerisation of coal. It states:
“The primary objective of this subtask was to determine the extent of coal depolymerisation using chemical processes. This was achieved by subjecting pulverised coal to high temperature and pressure and/or using a combination of chemical treatments. The best methods for the depolymerisation were determined.
A variety of chemicals were tested to determine suitable agents for coal depolymerisation. Chemicals were used to solubilize the coals to create water soluble products which were subsequently evaluated as substrates for further microbial conversions to methane or other chemicals.”[91]
The evaluation of soluble products as substrates is relevantly further discussed beginning at page 43 of D34:
“Biological degradation of coal to methane was studied using untreated coals (North Dakota and Texas lignites) or coal products obtained via chemical and/or biological coal depolymerization. Three coals, North Dakota lignite, Beulah lignite and Wyodak subbituminous were treated to obtain biological and chemical depolymerized coal products.”
[91] D34, page 8.
Following page 43 are details of experiments performed on the listed coal products. Page 51 provides two tables (Tables 28 and 29) which note the production of methane from chemically depolymerised coal products inoculated with chicken waste microorganisms and leaf-litter samples. Beginning at page 64, D34 identifies the chemical intermediates created during the noted degradation of coal. D34 states:
“The mixed anaerobic cultures developed at ARCTECH degraded both coal and coal depolymerization products to methane. The bacterial cultures likely metabolize the parent substrate through various steps leading to methane as the final product. It is believed that at least two groups of bacterial cultures, acetogens and methanogens, are involved in biodegradation of coal to methane, similar to the anaerobic degradation of most aromatic compounds. The role of these two groups of bacteria are interrelated and one is dependent on the other for growth and survival. Acetogens, containing several species of microflora, degrade coal to methane precursors which serve as substrate for methanogens.
These microbial consortia not only produced alcohols, but also produced several short chain acids which accumulated when methane inhibitors were added to the cultures. Acetic acid was the principal acid produced, with accumulation up to 1300 ppm. Small quantities of propionic, butyric and valeric acid were also produced. The results obtained using three coals indicated that short chain acids can be produced from coals or coal depolymerisation products using anaerobic bacteria.
These results suggest that short chain alcohols and acids are produced during coal biodegradation to methane. Because the culture systems contain mixed bacterial populations, these products are being used as methane precursers and do not accumulate unless methanogenesis is blocked.”[92]
[92] D34, page 76.
I am satisfied D34 discloses a process in which coal is solubilized in a liquid, the products of solubilization are treated with acetogenic bacteria to provide fatty acids, and the fatty acids are digested by methanogens to produce methane. As such I am satisfied that all features of claim 1 are disclosed.
I am also satisfied the features of claims 2 and 4 are disclosed. The coal is described as being pulverised before treatment, and different coals are treated in the experiments, including in particular lignite.
Conclusion in view of all documents raised
Wyoming has satisfied me that claims 1-4 lack novelty in view of D5, and that claims 1, 2 and 4 lack novelty in view of: D11, D12, D29 and D34.
Inventive step
Subsection 7(2) of the Act states an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if “a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant.”[93]
[93] The Act 1990 (Cth), s 7(3).
The relevant test for obviousness was considered by Aikin J in Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd:[94]
"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."
[94] [1981] HCA 12 at [45], 148 CLR 262 at 286.
The problem to be solved
In determining the problem or ‘starting point’ for considering inventive step, the Full Court in AstraZeneca AB v Apotex Pty Ltd[95] stated:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
[95] [2014] FCAFC 99, [202]-[203].
I identify the problem to be solved as that set out at page 2 lines 1-7:
“A number of different coal conversion technologies that employ thermal and/or chemical processes have been in commercial use for many years but these processes convert coal to gases and chemicals under high pressures and temperatures with high capital and operating costs, relatively low thermodynamic efficiency, and generation of significant amounts of carbon dioxide and other gaseous emissions, and also require large amounts of water in the process with solid waste streams that must be disposed of safely.”
There is no suggestion that these issues were not part of the common general knowledge prior to the priority date.
In view of the common general knowledge
I have set out the relevant common general knowledge previously. I am satisfied the defined process was known before the priority date as an alternative means to produce methane from coal. I am therefore satisfied that, in view of the common general knowledge and the problem to be solved, the person skilled in the art would have tried the defined process as a matter of routine.
In view of the prior art
Wyoming relies on the same prior art for inventive step under s 7(3) as it does for novelty. As to the ascertainability of those documents Professor Zhang declared that, when researching problems, he would conduct literature searches on databases that include both journal articles and patent abstracts. [96] When searching he would prepare a list of keywords and then review the results. If a particular abstract suggests the related document is of interest he would obtain the document and review it in more detail.
[96] Zhang, [4.1]-[4.3].
I note that Professor Zhang is an academic and may take a more scholarly approach to research than others in the art. Nevertheless I am satisfied that the person skilled in the art would, in researching a particular problem, be likely to conduct a literature review and could be reasonably expected to ascertain, understand, and regard as relevant prior art documents such as those relied on by Wyoming.
I have previously noted that claims 1-4 lack novelty in view of D5, and that claims 1, 2 and 4 lack novelty in view of D11, D12, D29 and D34. I consider that it would be a matter of routine to follow the directions provided in those documents to confirm that the methods disclosed work as directed. I have discussed previously that I consider it obvious to remove impurities from coal prior to ex situ anaerobic digestion. As such claim 3 also lacks an inventive step in view of D11, D12, D29 and D34.
In relation to D7, D8, D18 and D22 I am not convinced that the person skilled in the art, having been taught by a document exclusively toward a process in which coal is degraded or depolymerised (i.e. solubilized) through biological means, would be motivated as a matter of routine to alter the taught process and provide chemical degradation. While I acknowledge both degradation means are known alternatives to one another, Wyoming’s evidence focuses on trying to prove that chemical degradation is inherent to the above documents and not on proving how or why one would be motivated to alter the disclosed processes. As such Wyoming has not satisfied me that any claim lacks an inventive step in view of these documents.
Summary
Wyoming has satisfied me that claims 1-4 lack an inventive step in view of D5, D11, D12, D29 and D34.
Manner of Manufacture
Wyoming submits the invention claimed does not define a manner of manufacture because:
- The process claimed is a mere collocation of known integers; and
·The process claimed lacks the requisite inventiveness on the face of the specification.
Mere collocation of known integers
Wyoming provided the following in its summary of submissions:
“Claims 1 to 4 are a mere collocation of known integers. Each of the integers of the claims is known from the common general knowledge and/or the cited prior art. There is nothing in the claims that is new. Although there is an interworking relationship between the various process steps i.e. the product of step (a) feeds into step (b), this interworking relationship is also known.”
According to my understanding a collocation comprises a number of known integers, process steps, or the association of materials or substances defined in such a way that no working interrelationship or potential working interrelationship exists between its various constituent parts. Wyoming has acknowledged that there is an interrelationship between features of the defined process but submits that this interrelationship was known. I know of no authority, and Wyoming have provided me with no authority, setting out that a group of features having a working interrelationship with one another may nevertheless constitute a collocation if the interrelationship is known.
In the present case the evidence demonstrates for example that the manner in which coal is depolymerised or degraded (solubilized) will provide different intermediate products which will affect how those products are metabolised. There is a clear working interrelationship between steps of the defined process.
Lacks the requisite inventiveness
Wyoming referred me to a relevant passage of NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd[97]:
“if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.”
[97] [1995] HCA 15; (1995) 183 CLR 655.
Wyoming then submitted that the following passage of the specification[98] provides an admission that the invention claimed lacks the requisite level of inventiveness:
Previous research has demonstrated the feasibility of anaerobically digesting this lignite, using a conventional single-stage stirred tank anaerobic fermentation reactor (Isbister, J.D. and Barik, S., Microbial Transformations of Low Rank Coals, pp 139-156. On the basis of its dry weight and via ultimate analysis, this lignite coal is approximately 63% carbon, 4. 5% hydrogen, 1.3% nitrogen, 1.2% sulphur, 16% oxygen and 14% ash. Because a C/N ratio of about 25-35 is needed for good anaerobic digestion, nitrogen is supplemented, and can be added in inorganic forms, such as ammonia, or in organic forms such as nitrogen contained in food wastes, animal manure or urea. In a preferred embodiment, the solubilized coal substrate is supplemented with a nitrogen source, and the nitrogen source is a member selected from the group consisting of animal manure, food waste, urea, inorganic nitrogen fertilizers, ammonia and combinations thereof.
[98] The specification, page 22.
The passage Wyoming recites forms the majority of the paragraph in which it is found in the specification, however Wyoming excluded the first sentence which states: “In one example, the organic substrate is Louisiana Wilcox formation lignite.” The addition of this sentence demonstrates that what is disclosed is an example provided by Ciris, in which Ciris admits that previously published research has demonstrated the feasibility of anaerobically digesting the coal used in the example. This is not of itself an admission that the entire process of claims 1-4 was known. The reference cited in the above passage is however incorporated by reference into the present specification[99] and was provided in evidence.[100] It is a chapter within an edited textbook,[101] and provides the following figure illustrating pathways for the bioconversion of coal to methane.[102]
[99] Ibid, page 33 lines 31-35.
[100] As Exhibit DZ-5.
[101] Jenefir Ibister and Sudhaker Barik, “Biogasification of Low Rank Coals” in Don Crawford (ed), Microbial Transformations of Low Rank Coals (CRC Press, 1993) 139.
[102] Ibid, 142.
The left hand side of the figure shows the indirect method of producing coal in which coal is first broken down into soluble coal products by chemical or biological means and these soluble coal products are converted by anaerobic digestion into methane. Page 140 of the cited reference explains anaerobic digestion as follows:
“Biological dissimilation of complex organic polymers to methane and CO2 occurs during the growth and metabolism of an anaerobic consortium. The metabolism of the organic materials involves a direct and continuous flow of electrons, resulting in the production of methane, the terminal product of anaerobic electron transfer. At least three groups of bacteria are involved in the dissimilation process: hydrolytic/fermentative, acetogenic, and methanogenic bacteria. The hydrolytic/fermentative bacteria convert complex biopolymers, sugars, amino acids, and fatty acids to acetate, hydrogen, and carbon dioxide or to a mixture of alcohols, volatile fatty acids (VFAs), succinate, and lactate. Proton-reducing acetogenic bacteria convert VFAs, alcohols, succinate, and lactate to acetate, hydrogen, and carbon dioxide, precursors for methanogenesis.”
Page 140 of the cited document also provides the following:
“Numerous research groups have investigated and continue to pursue the study of biological conversions of low rank coals to value-added, energy related products. Early work focused on the conversion of lignites to soluble coal-derived organics using chemical and/or biological systems to affect the coal "solubilization".”
The cited reference basically establishes that the process defined in claims 1-4 was known. As the reference forms part of the specification I find that the specification itself establishes that the defined process was known.
100. I am satisfied that claims 1-4 define matter that, on the face of the specification, lacks the requisite level of inventiveness. Claims 1-4 are not for a manner of manufacture.
101. I acknowledge that, given I have found that the cited reference discloses the invention, it is would be a relevant document for the purposes of novelty. However, even were I to introduce the cited reference as relevant art for the ground of novelty, I would arrive at the same practical result as the present. As such I see no benefit in doing so.
Conclusion
102. The opposition succeeds on grounds that claims 1-4 are not novel, do not involve an inventive step and define matter which is not a manner of manufacture. I note that the present specification discloses much that is not currently claimed nor has been presently subject to detailed review. As such there may be parts of the specification which have the potential to overcome the above grounds. Subject to an appeal of this decision I will allow Ciris two months to propose amendments.
Costs
103. Generally costs should follow the event. I see no reason to depart from this approach in the present circumstances. I will award costs according to Schedule 8 against Ciris.
Rhys Munzel
Delegate of the Commissioner of Patents
[55] Ibid, [5.4.32.1]
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