W. Neudorff GmbH KG v Colin Leslie Young - [2005] APO 23

ABSTRACT OF DECISION
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 689399 in the name of Colin Leslie Young

Title: Stomach-action molluscicides

Action: Opposition by W.Neudorff GmbH KG to amendments under section 104, and the final determination of an opposition under section 59

Decision: Issued 02 May 2005.
Abstract

The amendments are allowable.
The amendments do not overcome the deficiencies noted in the original opposition. Claims still lack novelty and inventive step.
The applicant given a further opportunity to propose amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 689399 by Colin Leslie Young, and opposition by W.Neudorff GmbH KG to amendments under section 104, and an opposition under section 59

BACKGROUND

Patent application number 689399 in the name of Colin Leslie Young was opposed by W.Neudorff GmbH KG and Arthur Yates & Co Ltd. I issued a decision in the opposition on 23 November 2001 (see [2001] APO 68), finding that the opposition succeeded on the grounds of novelty, inventive step and section 40. I allowed Professor Young 8 weeks to propose amendments to overcome these deficiencies.
Amendment of the specification was opposed by Neudorff. Evidence in relation to that opposition has been served. During the evidence stages, Professor Young proposed further amendment to the specification. The Commissioner directed that the opposition and all evidence filed was to be treated as an opposition to the later amendment without the need to file separate documentation.
The present matter is an opposition to both requests to amend. The matter was heard in Canberra on 3 February 2005. A final determination of the original opposition was also heard at the same time. Professor Young did not attend the hearing. Neudorff was represented by Mr Ray Evans, patent attorney of Phillips Ormonde & Fitzpatrick. Dr George Puritch attended the hearing.
THE SPECIFICATION
The specification relates to compositions for controlling molluscs, particularly slugs and snails. The invention is said to relate to the use of a metal chelate, in which the chelating ligand is a complexone. These compounds are stated to act as stomach-action poisons. The preferred metal is iron, and the preferred forms of the complexone include EDTA. The prime focus of the specification is the compound Fe(III)EDTA.
The specification as accepted has two independent claims:
1. A stomach-action molluscicide including a metal complexone and a suitable non-liquid carrier therefor, wherein the molluscicide has a pH above about 7.
26. A metal complexone when used as a stomach-action molluscicide, wherein the pH of the molluscicide is above about 7.
The amendments
The specification following the first amendment also has two independent claims:
1. A stomach-action molluscicide including a metal complexone and a suitable non-liquid carrier therefore, wherein the molluscicide has a pH above about 7, with the proviso that when the metal complexone is only [FeEDTA]-Na+, bone meal is not present in an amount of 84.4% by weight or greater of the dry components of the molluscicide.
26. A metal complexone when used as a stomach-action molluscide, wherein the pH of the molluscicide is above about 7, with the proviso that when the metal complexone is only [FeEDTA]-Na+, bone meal is not present in an amount of 84.4% by weight or greater of the dry components of the molluscicide.
The second set of amendments simply deletes one of the dependent claims. The independent claims are renumbered as claims 1 and 25, and are identical to claims 1 and 26 of the first amendment.
The first set of amendments also introduced a description of the method of determining the pH of molluscicidal compositions. This will be described in more detail later in the decision.
Claims 2, 3, 7, 8 and 17 (which were the subject of objection by Neudorff) differ from claim 1 by the inclusion of the following features:
Claim 2: the pH of the molluscide is “about between 7 and 10”
Claim 3: the pH of the molluscide is “about 8”
Claim 7: the metal complexone is “hydroxyl-metal complexone [Fe(OH)EDTA]^2-”
Claim 8: the non-liquid carrier “includes a mollusc food, a filler, a mollusc phagostimulant, a lubricant, a water-proofing agent, a flavouring agent, a preservative and a pH adjustment agent”
Claim 17: the metal complexone is [Fe(OH)EDTA]^2-, which “comprises about 9% by weight of the molluscide”
Construction of claim 1
The construction of claim 1 as amended is critical to the issues raised in this opposition. Claim 1 as proposed to be amended reads:
A stomach-action molluscicide including a metal complexone and a suitable non-liquid carrier therefore, wherein the molluscicide has a pH above about 7, with the proviso that when the metal complexone is only [FeEDTA]^-Na⁺, bone meal is not present in an amount of 84.4% by weight or greater of the dry components of the molluscicide.
This claim differs from that in the specification as accepted by the inclusion of the proviso. The proviso operates when the metal complexone “is only [FeEDTA]^-Na⁺”. This could mean that the composition is prepared using only ferric sodium EDTA, or it could be a reference to the nature of the ion in the composition (i.e only FeEDTA^-anions, as distinct from any hydroxylated species).
The appended claim 7 specifies that the metal complexone is [Fe(OH)EDTA]^2-. In my earlier decision I interpreted this as a reference to “Fe(III)EDTA under conditions of pH such that the Kari article would predict that [Fe(OH)EDTA]^2- should be present” (page 16). Mr Evans submitted that [FeEDTA]^-Na⁺ should also be construed as a reference to the nature of the species rather than the material used to prepare the composition. On the other hand, I note that [FeEDTA]^-Na⁺ is the compound ferric sodium EDTA, a compound that is commercially available, whereas [Fe(OH)EDTA]^2- is an ion rather than a compound. I believe that the proviso is referring to the situation where ferric sodium EDTA is used as the metal complexone.
The proviso goes on to place a restriction on the amount of bone meal that can be present in the composition. No issues of construction are raised by this part of the proviso.
Claim 25 is in similar terms to claim 1, and the construction is analogous.
The determination of pH
A method of pH determination has been inserted on page 10 of the description. The method is:
“Determination of the pH of the molluscicide according to the present invention is carried out by using the following standard technique. The molluscide is firstly ground to a coarse powder and then mixed with ten times its volume of freshly distilled water. The mixture is then stirred for two minutes and allowed to settle for 30 seconds. The pH of the resulting supernatant solution is measured with a glass electrode and recorded after 10 minutes in order to allow the electrode to stabilise. The person skilled in the art would understand that normal precautions, such as suspending the electrode in the solution and precalibration of the meter, should be taken.”
This method of pH determination is not identical to any of the methods presented during the earlier opposition. However, it is similar to the Bread Test and the method used by Mr Freeman, both of which were considered to be reasonable methods of pH determination.
ALLOWABILITY OF THE AMENDMENTS
The relevant law
This opposition relates to the operation of section 102 of the Act, the relevant parts of which read:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)       a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)       the specification would not comply with subsection 40(2) or (3).
(2A) For the purpose of subsection (2),
relevant time means:
(a)       in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted; …
The test of “in substance disclosed” in section 102(1) is similar to the test for fair basis.
Particulars of the opposition
Neudorff have specified that the amendment is objectionable on several bases:
i)Claims 2, 3, 7, 8 and 17 would claim matter not in substance disclosed
ii)Claims 2, 3, 7, 8 and 17 would not in substance fall within the scope of the claims before amendment
iii)Claims 1 and 26 would not be clear
iv)Claims 1 and 26 would not be fairly based
The objections to the claims raise several issues. First, the proviso implies that it is possible to have a composition with a pH above 7 in which the species is FeEDTA^- (rather than a species predicted on the basis of the Kari article). This argument is based on the alternative construction of claim 1. Given that I have found against that construction, it follows that this objection cannot be sustained.
Second, the reference in the claims to a pH other than 7 is now defined by reference to the method inserted into the description. Prior to amendment the pH could be determined by any reasonable method. It follows that a composition could fall within the scope of claim 2 (for instance) which previously did not. This is true as a theoretical possibility. However, all such compositions fall within the scope of claim 1, so there is no increase in the subject matter covered by the claims as a whole.
Third, it was argued that the pH determination is not the same as that used in the Kari article. The point of this argument is that some claims refer to the species present in the composition, and the determination of the species is based on the Kari article. Professor Young agrees that the curves in the Kari graphs shift depending on concentration. The construction of references to specific species was discussed in my earlier decision:
“Reading the specification as a whole, I consider that these claims should be construed as referring to Fe(III)EDTA under conditions of pH such that the Kari article would predict that [Fe(OH)EDTA]^2- should be present. I note from Figure 1 in the Kari article that at pH values between 5 and 12 the species [Fe(OH)EDTA]^2- is present, and represents the predominant species at about pH 8. Consequently, these claims are restricted to compositions where the pH ranges from 7 to 12.”
This construction also applies to the amended specification. To the extent that there may be a difference between the pH determination by different methods, this does not result in the claims claiming new subject matter (for the same reasons as in the previous point). The pH values are set by Kari, and pH determination method does not increase the subject matter covered by the claims as a whole. This objection cannot be sustained.
Fourth, it was suggested that we do not know if the pH determination method is that which Professor Young used in the examples. The specification indicates that the method was used to determine the pH of the examples. In the absence of evidence to the contrary, I accept that the method will give the correct pH values. This objection cannot be sustained.
Fifth, it was argued that the proviso relates to an aspect of the invention that was not previously described. It is true that there is no disclosure of the figure of 84.4%. This number is not significant to the essence of the invention, and only arises from an attempt to avoid the prior art. There is a disclosure of compositions that fall within the scope of the claim, and that is sufficient to give the claims fair basis. This objection cannot be sustained.
Conclusion
The amendment is allowable.
DETERMINATION OF THE OPPOSITION
The next issue is whether the amendments overcome the deficiencies found in the original opposition. The opposition succeeded on the following grounds:
* Claims 1 – 9, 20 and 26 are not novel in the light of the Puritch patent
* Claims 1 – 9, 11 – 14, 16 to 18, and 20 to 26 lack inventive step in the light of the Puritch patent
* Claims 2, 3, 7, 8 and 17 are not clear with regard to the determination of pH
* The specification does not fully describe the invention in relation to the determination of pH
The inclusion of a method of pH determination addresses the last two matters. This leaves the issue of anticipation to be resolved.
Novelty
In the earlier decision I came to the conclusion that the Puritch patent teaches compositions of Fe(III)EDTA and bone meal: “I believe that a reader of Puritch is entitled to view a bone meal containing composition as made public”. The decision went on to say “It is clear that claim 1 is not novel in so far as it includes a composition of Fe(III)EDTA and bone meal. Such a composition would have a pH of about 7.5 to 8.5, based on the data of Mr Bradbury and Ms Carpenter. Puritch discloses that the composition also contains a water-proofing agent, a phagostimulant, a preservative and other additives. The amount of the active ingredient appears to be less in Puritch and there is no calcium carbonate in Puritch.”
Professor Young has sought to overcome this problem by means of the proviso inserted into claim 1. The rationale behind the amount of 84.4% by weight is explained in correspondence from the patent attorney to the examiner during examination of the amendment. In a letter dated 15 November 2002, Dr Houlihan stated:
“The Opponents have shown in their previous evidence that by relying upon Example 8 of Puritch and substituting the amount of wheat flour given for bone meal, that they apparently arrive at a molluscicide having a pH of about above 7. By our calculation, bone meal as present according to the requirements of Example 8 occurs where it occupies 84.4% of the total weight of the composition. … Thus, we are only faced with having to exclude from our claims Example 8 of Puritch where bone meal totally substitutes wheat flour.”
I agree with Dr Houlihan that the Puritch patent teaches that the carrier is a single substance, rather than a mixture of substances. This conclusion follows from a reading of the patent, where the carrier is always a single substance. Consequently, Puritch teaches the use of bone meal as the sole carrier. Further insight into the maths behind the 84.4% is given in a letter dated 18 February 2002, where Dr Houlihan stated:
“In the Table in Column 5 [of the Puritch patent], we see listed the dry components of the carrier, where wheat flour is included as the ‘bait’ in a quantity of 211.1g. The total weight in grams of the dry components of the carrier is 250g. Flour at 211.1g of the total of 250g of the carrier therefore represents 84.4% on a dry weight basis of the carrier.”
The table to which Dr Houlihan refers is an exemplary formulation:

INGREDIENT PURPOSE QUANTITY

DRY Wheat flour Bait 211.1g

COMPONENTS Edetic acid a.i. Precursor 2.7g

Iron compound a.i. Precursor 5.0g

Paraffin Wax Water-proofing 25.0g

Sucrose Phagostimulant 6.2g

LIQUIDS BITREX Taste-altering 5.0g (0.1% sol’n)

Legend MK® Preservative 33.3g (0.015% sol’n)

Water - 67.1g

TOTAL 355.40

Clearly, the proviso excludes the composition according to Example 8. The critical question is whether the Puritch patent teaches compositions in which bone meal is present in less than 84.4% by weight. The Puritch patent states that the components can be present in other amounts: for instance, phagostimulants can be present at about 1 to 2.5% by weight, and the water proofing agent can be present at about 5 to 12% by weight. It is clear to me that the Puritch patent teaches compositions beyond that of Example 8. Consequently, claim 1 is not novel. It follows from the findings in my earlier decision that claims 2-8, 19 and 25 also lack novelty.
Inventive step
The discussion of inventive step in the earlier decision led to the following conclusion:
“the Puritch patent should be accepted on its face as clearly providing an indication that bone meal is an equivalent carrier that is well worth trying. Puritch discloses that the composition also contains a water-proofing agent, a phagostimulant, a preservative and other additives. The amount of active ingredient appears to be less in Puritch, but I do not believe that this can be regarded as inventive. On the other hand, Puritch does not disclose the use of calcium carbonate, which I found was not a routine ingredient in molluscicides. Consequently, the compositions containing carbonate are not obvious, but the other compositions are obvious.”
It is clear from this passage that bone meal containing compositions are obvious. This finding is not restricted to compositions where the metal complexone is ferric sodium EDTA. It is clear from the above quote that all compositions containing bone meal are obvious, and need to be removed by proviso. Alternatively, the claims could be limited to compositions containing carbonate. Professor Young’s approach of excluding only some bone meal containing compositions does not overcome the lack of inventive step.
Conclusion
Claims 1-8, 15-25 lack an inventive step insofar as they include the possibility of compositions that contain bone meal. Claims 1-8, 19 and 25 also lack novelty. This can be overcome by excluding bone meal as an ingredient, or specifying that the compositions contain carbonate.
The issue of lack of inventive step appears to have been ignored, and has not been overcome by the amendments. I originally stated that it is likely that this problem can be rectified by amendment. It is open to debate whether the applicant should be allowed a further opportunity to amend given the poor attempt to amend so far. However, as it would be simple to overcome the problem, I will allow the applicant one month from the date of this decision to propose further amendments.
I am nevertheless concerned that there is potential for future actions by either party to cause the present proceedings to be unreasonably protracted. If such turns out to be the case, I will consider exercising my powers as the delegate of the Commissioner, including the directing of the filing of amendments under the provisions of section 108, in favour of the public interest in having uncertainty as to the status of the application resolved expeditiously.
Costs
Although the amendments are allowable, the amendments do not overcome all of the defects identified in the earlier decision. The determination of these matters has been made more difficult because of the decision of Professor Young to not appear or provide submissions. I consider that there should be no award of costs with regard to the opposition to the amendments. However, there should be an award of costs with regard to the final determination (i.e. the hearing fee, and the cost of attending the hearing). I award costs in relation to the final determination against Professor Young.
Dr S.D.Barker
Delegate of the Commissioner of Patents
02 May 2005
Patent attorneys for the applicant : Houlihan²
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick

INGREDIENT	PURPOSE	QUANTITY
DRY	Wheat flour	Bait	211.1g
COMPONENTS	Edetic acid	a.i. Precursor	2.7g
Iron compound	a.i. Precursor	5.0g
Paraffin Wax	Water-proofing	25.0g
Sucrose	Phagostimulant	6.2g
LIQUIDS	BITREX	Taste-altering	5.0g (0.1% sol’n)
Legend MK®	Preservative	33.3g (0.015% sol’n)
Water	-	67.1g
TOTAL	355.40