William a. Newman v Solutions-IES, Inc
[2008] APO 18
•28 July 2008
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 782548 in the name of Solutions-IES, Inc
Title: Method for remediation of aquifers
Action: Opposition by William A. Newman to the grant of a patent
Decision: Issued 28 July 2008
Abstract
1. All claims found to be entitled to the earliest priority date. Although claim 28 does not contain some features of claim 1, these features are matters of routine that are always carried out.
2. All claims found to be novel and inventive. None of the documents that form part of the prior art base disclose the use of microemulsions. There is no evidence that it was a matter of routine to prepare a microemulsion with droplets of less than one micron.
3. Two minor section 40 deficiencies were identified in relation to the fair basis of claim 8 and the clarity of claim 28.
4. Costs awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 782548 by Solutions-IES, Inc and an opposition by William A. Newman to the grant of a patent
BACKGROUND
Patent application 782548 was filed as an international application by Robert C. Borden and Michael D. Lee on 16 October 2001, and was subsequently advertised accepted on 11 August 2005. During prosecution, the applicant was amended to Solutions-IES, Inc (hereafter referred to as the applicant). On 11 November 2005, a notice of opposition was filed by William A. Newman. The evidence stages were completed on 23 November 2007.
The matter was heard in Melbourne on 28 February 2008. Solutions-IES was represented by Benjamin Fitzpatrick of counsel, assisted by Dr Mary Turonek, patent attorney of Griffith Hack, Perth. Mr Newman was represented by David Tadgell, patent attorney of Phillips Ormonde Fitzpatrick, Melbourne.
During the hearing, I gave the applicant permission to make supplementary written submissions. These submissions were made in time, and have been taken into account.
Grounds of opposition
The statement of grounds and particulars filed under regulation 5.4 specifies the following grounds of opposition:
- Manner of manufacture
- Novelty
- Inventive step
- Utility
- Inadequate description
- Claims do not define the invention
- Lack of clarity, succinctness and fair basis
All grounds were argued at the hearing.
Standard of proof
The onus of proof in opposition proceedings lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolab Inc [2000] FCA 283 at [67]; (2000) 50 IPR 305 at 319). There is no doubt that this is can only be achieved by production of compelling evidence.
Evidence
Evidence in support of the opposition was served by Gene D Rose and Kristine Helen Baird. Evidence in answer was served by Christopher Barber. Evidence in reply was served by Gene D Rose.
Dr Rose has degrees in chemical engineering, and research experience in colloid chemistry, apparently in the United States of America. It is clear that Dr Rose has extensive experience in colloid chemistry. Dr Barber has degrees in geology, and has research experience in groundwater contamination and remediation in the United Kingdom and Australia. It is clear that Dr Barber has extensive experience in groundwater remediation.
Terminology
Due to the subject matter of the specification, it is necessary to use some technical terminology. In order to aid understand, the following definitions are provided.
Aquifer An underground layer of water-bearing permeable rock or unconsolidated material Bioremediation Remediation involving microorganisms Emulsion A mixture of two immiscible substances; one substance exists as droplets in the other substance Microemulsion In general terms, an emulsion which appears clear; discussed at greater length in the decision Micron One millionth of a metre; represented by the symbol μm Remediation Removal of pollution or contaminants from groundwater THE SPECIFICATION
The contamination of groundwater by chlorinated aliphatic hydrocarbons is a worldwide problem. The remediation of contaminated aquifers can be achieved by physical, chemical or biological means. The present invention lies predominantly in the field of biological remediation (commonly called bioremediation).
The basic concept of the invention is described at page 8 of the specification:
“It is an object of the invention to provide a safe, low-cost, effective method of bioremediation of aquifers using emulsified oil in the form of an oil microemulsion. The method of the invention enhances a wide variety of anaerobic biodegradation processes in the subsurface by providing a biodegradable, immobile organic substrate. Emulsified food-grade insoluble oil is an inexpensive electron donor source. In the aquifer, the emulsion of the invention can provide for a naturally coupled metabolic reaction between oil-degrading microorganisms and dehalorespiring microorganisms. Using emulsified oil according to the invention allows for improved distribution of the oil laterally away from the injection points and entrainment of the oil micro-droplets into the pore space of the aquifer material. In addition, the method of the invention may be implemented in a variety of configurations, including PRB and broad area coverage.”
The specification recites eight aspects of the invention. The first aspect is instructive:
“According to a first aspect of the invention, there is a [sic] provided a method for remediating a selected aquifer in a sediment having a mean pore size to reduce contaminants in the aquifer, comprising:
a) evaluating the aquifer for contaminant identity and location;
b) determining whether aquifer pre-treatment should be done, and if so, pre-treating the aquifer;
c) treating the aquifer with a selected amount of an oil microemulsion having an average droplet size less than the mean pore size of the sediment;
d) determining whether aquifer post-treatment should be done, and if so, post-treating the aquifer; and
e) monitoring the aquifer to determine if remediation has been accomplished.”
The other aspects of the invention all involve remediation including step c), with the addition of one or more of the other steps.
The specification includes three examples, which are titled “Preliminary Studies”, “Pilot Test”, and “Site remediation process”. Three figures are also included. The specification ends with 69 claims. Claim 1 is in similar terms to the first aspect of the invention. The broadest claim is claim 28, which was consequentially the subject of the closest consideration.
Who is the addressee of the specification?
It is well settled that
“[a] specification may be considered as addressed, at any rate primarily, to the persons who would in normal course have to act on the directions given for the performance. These persons may be assumed to possess not only a reasonable amount of common sense, but also a complete knowledge of the art or arts which have to be called into play in carrying the patentee’s directions into effect. I say art or arts because in carrying out the directions given by the patentee it may well be necessary to call in aid more than one art. Some of the directions contained in the specification may have to be carried out by skilled mechanics, others by competent chemists. In such a case, the mechanic and chemist must be assumed to co-operate for the purpose in view, each making good any deficiency in the other’s technical equipment.”
Osram Lamp Works Ld v Pope’s Electric Lamp Co Ld (1917) 34 RPC 369 at 391
The present specification is clearly directed to the environmental scientist wishing to carry out remediation of ground water. Such a person is clearly an addressee.
The specification specifically relates to preparing an emulsion having a small droplet size. The specification provides no details of how to prepare the emulsion, or how to measure the size of the droplets. The specification clearly assumes that the reader understands how to do this, so the addressee must be regarded as having knowledge of emulsion chemistry. Clearly, in this regard, the specification is addressed to an emulsion chemist.
I conclude that the specification has more than one addressee; it is addressed to an environmental scientist and an emulsion chemist.
What is a microemulsion?
The critical concept in the specification is the use of a microemulsion. Since the addressee is a team that includes an emulsion chemist, they would bring their understanding to this term. Dr Rose says the term is unclear, although it usually means an optically transparent emulsion:
“Although there is no official or universally accepted definition of what constitutes a microemulsion it has been generally used in the literature to define an emulsion in which the droplets are too small to scatter light, so that the emulsion appears clear to the human eye and which is thermodynamically stable. Literature sources have defined droplet sizes as being below 0.1 microns and actually having droplet sizes with diameters in the range or 100-600 Angstroms, or 0.01 to 0.06 microns” (para 4.15)
Dr Barber indicates “these terms are clear to me as I give them their ordinary meaning” (para 3.41). However, Dr Barber does not specify what he understands to be the ordinary meaning of the term. Instead, he gives the term a meaning by reference to the body of the specification (paras 3.41, 4.6, 4.75).
I note that Dr Barber provided exhibit CB-17 to his declaration. This is a paper presented to the 1999 Contaminated Site Remediation Conference held in Fremantle, Western Australia, between 21 and 25 March 1999. Relevantly, this paper discusses oil-in-water microemulsions in the context of remediation. The paper states that the diameter of microemulsion droplets
“generally range between 0.01 and 0.10 µm. These microemulsions are single phase, optically transparent, low viscosity, thermodynamically stable systems that form spontaneously on contact with an oil or NAPL phase” (page 443)
This paper provides evidence that the term microemulsion is also understood by environmental scientists. However, the diameter of the droplets is “generally” between 0.01 and 0.1 microns.
Overall, I conclude that the term microemulsion would be understood by a person skilled in the art of the present specification as an emulsion where the droplets are too small to scatter light. However, the size of the particles that will produce this result is not certain. The evidence shows that droplets of less than 0.1 microns are likely to achieve a microemulsion, although as Dr Rose concedes, there is some uncertainty.
Dr Barber looked to the specification to determine the droplet size of a microemulsion as that term is used in the specification. He considers that it is clear from the specification that droplets up to 1 micron in diameter produce a microemulsion. I agree that the specification does state that droplets of 1 micron diameter are within the scope of the invention, but there is no clear upper limit on the droplet size. While there is no evidence that these droplets of up to 1 micron diameter are microemulsions, there is a clear assertion in the specification that they are.
I am satisfied that the term microemulsion is used in the normal sense of that term as understood in the art, which is a visually clear emulsion. There is no clear droplet size understood in the art, but the specification asserts that a droplet size of up to 1 micron will produce a microemulsion. This is the sense in which the term is used in the specification.
How to determine droplet size
The evidence in support includes a copy of the article “The Flow Mechanism of Dilute, Stable Emulsions in Porous Media” by Hwalli Soo and Clayton J. Radke in Ind. Eng. Chem. Fundam. 1984, 23, 342-347 (GDR-12). This article will henceforth be referred to as the Soo and Radke article. Soo and Radke relates to oil-in-water emulsions and their flow through fine grained media. The preparation of emulsions is described, and the measurement of drop-size distribution. In this latter regard, the article states:
“Drop-size distributions of the emulsions are controlled by blender speed and are determined by manual counting (Zeiss particle counter) from photomicrographs.”
I conclude from this that there was at least one known method for determining the size of droplets in an emulsion.
I note that a later filed patent by Mr Newman (US 6,806,078) provides measurements of droplet sizes, but does not provide detail on how to do the measurement. It appears that the determination of droplet size is something that the person skilled in the art would be able to do, without the need for detailed instruction.
The droplet size is related to the pore size of the sediment, as there is a requirement for the average droplet size to be less than the mean pore size of the sediment. The specification provides no indication of how to determine the mean pore size. Also, I was not referred to a prior art document that provides an explanation. Dr Rose states that
“The Opposed Application defines the microemulsions to be used as having an average droplet size less than the mean pore size of the sediment. No determination of such a ratio is made in the actual experimental work disclosed and hence it is not evident how such determination is to be made for an actual sediment or even if such determination is required or necessary.” (para 7.3)
Dr Barber does not state how to determine the pore size of a sediment, but is able to state the normal pore size of an aquifer sediment:
“Typically, the pore size of the sediment which will be treated in the aquifer will be much above 5 microns” (para 4.76)
From this I conclude that the mean pore size of an aquifer sediment is well known to Dr Barber. As this is a matter that lies more in Dr Barber’s field, I accept that a person skilled in the art of the specification would understand that the mean pore size of an aquifer sediment would be “much above 5 microns”.
How is the microemulsion prepared?
The specification describes the formation of the emulsion in a portion of text from page 13 to 17. The oil, emulsifier and their ratio are discussed at length. The emulsion is produced by emulsifying the oil with the aid of a shear mixing apparatus.
In Example 2, the specification states:
“The oil-in-water emulsion was then prepared by passing a mixture of eight gallons of water per gallon of the lecithin-oil mixture through a high shear mixer to generate a microemulsion having less than 1 micron diameter droplets.”
(page 19)The later published document Coulibaly, K.M. et al “Distribution of edible oil emulsions and permeability loss in sandy sediments” (GDR-22) was referred to to indicate that producing emulsions with droplet diameters of 1 micron or less could not be achieved by standard techniques. The discussion focussed on Table 1, which reports droplet size distributions for different methods of emulsion formation. None of the tests report a mean droplet diameter of 1 micron or less. However, Table 1 shows that different mixers will give different droplet sizes when the surfactant is kept constant, with more powerful mixers giving smaller mean droplet sizes.
It was argued this document teaches that it would not have been possible to produce an emulsion with droplets of less than 1 micron by using the process of the specification. It seems clear that a person wishing to work the present invention would need to select a mixer capable of producing droplets of less than 1 micron. This would require some trial and error to identify the appropriate mixer. There is no evidence before me that such a mixer does not exist. I note that there is no evidence that anyone attempted to repeat the process of the present specification and failed to produce an emulsion with droplets of less than 1 micron.
I was also referred to the later filed Newman patent US 6,806,078. This patent discloses the use of emulsions of oil-in-water, where the droplet size is less than 1 micron. The patent discusses several known techniques for producing emulsions. Relevantly, it states:
“Emulsions with smaller droplet sizes can often be prepared by adding more physical energy to the emulsion through the use of a high shear mixer. The use of very-high shear mixing equipment such as a dairy homogenizer for field emulsification is difficult because of high equipment capital costs, large size and weight of the equipment, and excessive power requirements.” (column 3)
Instead, the Newman patent discloses a method for the formation of an emulsion with a droplet size of less than 1 micron by heating and homogenising. I can find nothing in the Newman patent to suggest that it was not possible to produce an emulsion with droplets of less than 1 micron diameter.
The evidence as whole is consistent in indicating that the formation of microemulsions having droplets of less than 1 micron requires high energy. The use of very-high shear mixing would appear to produce droplets of less than 1 micron, but that is not practical for field applications. I am satisfied that it has not been established that the specification does not fully describe how to prepare a microemulsion, or that a microemulsion could not be prepared by the method of the specification.
THE CLAIMS
Claim 28 is the broadest claim:
“28. A method for remediating a selected aquifer in a sediment having a mean pore size to reduce contaminants in the aquifer, comprising treating the aquifer with a selected amount of an oil microemulsion having an average droplet size less than the mean pore size of the sediment.”
The other independent claims are claims 1, 41, 43, 54, 65 and 67. To assist understanding, these claims are reproduced here.
“1. A method for remediating a selected aquifer in a sediment having a mean pore size to reduce contaminants in the aquifer, comprising:
a) evaluating the aquifer for contaminant identity and location;
b) determining whether aquifer pre-treatment should be done, and if so, pretreating the aquifer;
c) treating the aquifer with a selected amount of on oil microemulsion having an average droplet size less than the mean pore size of the sediment;
d) determining whether aquifer post-treatment should be done, and if so, post-treating the aquifer; and
e) monitoring the aquifer to determine if remediation has been accomplished.”“41. A method for remediating a selected aquifer in a sediment having a mean pore size to reduce contaminants in the aquifer, comprising:
a) creating an emulsified mixture comprised of oil, water, and one or more emulsifiers, wherein said mixture has a mean droplet size less than the mean pore size of the sediment; and
b) injecting said mixture into the aquifer.”“43. A method for remediating a selected aquifer in a sediment having a mean pore size to reduce contaminants in the aquifer, comprising:
a) evaluating the aquifer for contaminant identity and location;
b) treating the aquifer with a selected amount of an oil microemulsion having an average droplet size less than the mean pore size of the sediment; and
c) monitoring the aquifer to determine if remediation has been accomplished.”“54. A method for remediating a selected aquifer in a sediment having a mean pore size to reduce contaminants in the aquifer, comprising:
a) evaluating the aquifer for contaminant identity and location; and
b) treating the aquifer with a selected amount of an oil microemulsion having an average droplet size less than the mean pore size of the sediment.”“65. A method for remediating a selected aquifer in a sediment having a mean pore size to reduce contaminants in the aquifer, comprising treating the aquifer with a selected amount of an edible oil microemulsion having an average droplet size less than the mean pore size of the sediment.”
“67. A method for remediating a selected aquifer in a sediment having a mean pore size to reduce contaminants in the aquifer, comprising:
a) evaluating the aquifer for contaminant identity and location;
b) treating the aquifer with a selected amount of an edible oil microemulsion having an average droplet size less than the mean pore size of the sediment; and
c) monitoring the aquifer to determine if remediation has been accomplished.”Claim 69 is an omnibus claim.
Several terms used in claim 28 (which also appear in the other claims) need to be carefully considered.
“remediating”
The term remediating includes bioremediation as well as non-biological remediation.
“having a mean pore size”
It seems self evident that a permeable sediment will have pores, and as a consequence there will be a mean pore size. I interpret the expression “having a mean pore size” as providing an antecedent for “mean pore size” when that term is used at the end of the claim.
“treating”
The term treating does not seem to have caused any confusion for the declarants in this matter. General treatment methods are well known in the art; see for example pages 2 – 7 of the specification.
“oil microemulsion”
The expression used in the claims is “an oil microemulsion having an average droplet size less than the mean size of the sediment”
Is the term “microemulsion” used as a term of art, with a droplet size as understood in the art, or does it simply mean an emulsion with small droplets, and the size of the droplets solely defined by the words “having an average droplet size less than that of the sediment”. I note that the Federal Court recently considered a patent involving the term “microemulsion” in a different technology (Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178). The court reached the view that there was some ambiguity in the size of droplets encompassed by the term, and had regard to the description on the point. While that case is not authority for the meaning of a technical term, it demonstrates the proper approach to the construction of ambiguous technical terms.
In discussing the use of this term in the description, I concluded that the term does not have a clearly defined droplet size. Consequently, it is appropriate to have regard to the description to resolve the ambiguity. I have already stated that the description uses the term to describe droplets of a size up to 1 micron in diameter.
I am satisfied that the term microemulsion is used in the normal sense of that term as understood by an emulsion chemist, which is a visually clear emulsion. The droplet size that exists in the microemulsion is asserted to be up to at least 1 micron
I note also the language of claim 32
“32. The method according to any one of claims 28 to 31, wherein the microemulsion is an emulsion having an average droplet size that does not exceed approximately 1 micron in diameter.”
It is a long standing principle of construction that “you must construe the different claims so as to make them effective if possible, to be different from each other in some respects, or else they are not effective” (Parkinson v Simon (1894) 11 RPC 493 at 502). The presence of claim 32 leads to the inevitable construction that claim 28 must include microemulsions where the average droplet size exceeds 1 micron in diameter.
“average droplet size less than the mean pore size of the sediment”
Mr Tadgell raised problems with the understanding of this phrase. Specifically he stated that there is no indication how to determine the mean pore size and whether the average droplet size is less or greater than the mean pore size. It seems obvious that if a person can determine the average droplet size and the mean pore size, then it is a trivial matter to determine whether one is less than the other. I have already found that a person skilled in the art could determine the droplet size of the emulsion. Turning to the mean pore size of the sediment, I have found that this is a term that is understood in the art.
What are the steps of the process?
It was argued that claim 28 is a process in which there is only the treatment step, and thus by implication there is no site evaluation, pre-treatment, post-treatment or monitoring. The absence of features from a claim means that they are not a feature of the claim, unless a person skilled in the art would understand that they are inherent in the invention. For instance, a claim to a car that did not mention the wheels could not be construed as a claim to a car without wheels (without clear words of such intention).
It is understood in the art that site evaluation is always carried out prior to remediation. Dr Rose states:
“A person skilled in the art would understand such to be a requirement regardless of the method of remediation to be employed and well established in the art (see ‘Engineered Approaches to In-situ Bioremediation of Chlorinated Solvents: Fundamentals and Field Applications’; GDR-8).” (para 5.2)
Dr Barber states:
“In any remediation scheme for contaminated groundwater, there is a need for a thorough determination of the nature and distribution of contamination within the aquifer to allow targeting of the selected remediation treatment.” (para 3.13)
Dr Barber refers specifically to the omission of site evaluation from claim 28 in the following terms:
“The omission of site evaluation under certain conditions is described on page 11, where it is noted that ‘With increased experience with a particular type of aquifer, qualitative judgments may allow a reduction in the amount of preliminary evaluation that is necessary’. Additionally, it is conceivable that the evaluation of the site may already have been accomplished by another party and solely a method of remediation is required where additional evaluation would mean duplication of resources and effort.” (para 3.30)
Similarly in relation to monitoring Dr Rose states:
“I note that the fifth and final step (step (e)) in the method defined by claim 1 requires monitoring the aquifer to determine if remediation has been accomplished. The Opposed Application provides a number of parameters that are monitored with respect to step (e), such as the level of a contaminant in the aquifer and the permeability of the aquifer surrounding the injection well (see page 18, lines 7-16), which I believe to be standard procedures in subsurface remediation (see, for example, ‘Engineered Approaches to In-situ Bioremediation of Chlorinated Solvents: Fundamentals and Field Applications’; GDR-8).”
(para 5.10)The evidence satisfies me that it is standard practice to carry out a site evaluation prior to remediation. I am also satisfied that it is standard practice to monitor the groundwater following treatment. Turning to the pre-treatment and post-treatment steps, Dr Rose rightly states that these steps are “critical steps in the method of the alleged invention” (para 4.7). Dr Barber’s evidence in relation to these steps is more helpful. He responds to Dr Rose’s observations as follows:
“In my experience, such steps are certainly advisable to obtain optimal performance. … Additionally, where one is familiar with the porous media of the aquifer and its characteristics, the need for determining whether the pre-treatment or post treatment is required may be redundant. In some circumstances it may also be possible to omit the pre- and post-treatment steps. One must remember that the purpose of the pre- and post-treatment step is related to reducing the sorption of emulsifier or possibly the microemulsion by the porous media of the aquifer (as opposed to physical straining of oil emulsion droplets within pore spaces) so that the distribution of the oil microemulsion is not hampered. It is possible, though rare, that in some porous media there will be very little sorption, and employment of pre-treatment or post-treatment step as described in the Opposed Application will be redundant. In practice, the evaluation, remediation, and monitoring of contaminated groundwater is often conducted in separate stages over a period of time, in which the stages may be tendered to one or more parties.” (para 4.3)
It seems clear to me from the evidence of Dr Barber that it is normal in the art to determine whether or not to carry out pre-treatment and post-treatment. Dr Rose does not disagree, but notes that this is not stated in the specification (second Rose declaration at 2.8). I note that Dr Rose also states “it is apparent that the need to determine the use of pre- and post-treatments is essential to any remediation even if it is subsequently determined that such treatments are not necessary” (para 2.7 of the second Rose declaration). However, it is not clear whether this comment is made in relation to the state of the art, or the present specification. Consequently I have attached no weight to this comment.
I am satisfied that site evaluation, pre-treatment, post-treatment and monitoring are routine steps in the art. This is the background against which claim 28 must be read. Consequently, because claim 28 is a method of remediating an aquifer, it is inherent that there is a site evaluation, pre-treatment, post-treatment and monitoring. In the absence of clear words excluding these steps, claim 28 must be construed as including these steps.
PRIORITY DATE
The specification claims priority from US 09/702,533, which was filed on 31 October 2000. The priority document is essentially the same as the specification as filed. The specification was amended during examination. The filing date of the amendments was 10 and 25 June 2005. The dispute as to priority date is whether the claims take 31 October 2000 as their priority date, or whether priority should be deferred to 10 June 2005.
According to section 114 and regulation 3.14, where a claim claims matter that was in substance disclosed as a result of an amendment, the priority date of the claim is the date of filing the amendment. It follows that the key question is whether the matter in question was in substance disclosed in the specification before amendment. If it was in substance disclosed in the specification before amendment, then the priority date is not affected. If it was not in substance disclosed in the specification before amendment, then it has become in substance disclosed as a result of the amendment, and its priority date will be the date of the amendment. See ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 1417 at [34] – [36]; (1999) AIPC 91‑521 at 40,020.
The expression “in substance disclosed” has been considered in numerous cases. In ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349 at [118]; (2000) 49 IPR 513 at 548 – 54 the court stated:
“There is much authority for the proposition that there is a close relationship between the test for fair basing and the question whether matter is in substance disclosed in a specification. It is unnecessary to consider whether it is appropriate to go so far as to say that the two tests are "virtually the same" (Ethyl Corporation's Patent [1972] RPC 169 at 195). For the proposition that there is a close relationship there is no need to do more than refer to the decisions of the Full Court of this Court in CCOM at 280-282; Leonardis at 137-143; and RGC Mineral Sands at 460, 461. It will, we should think, be a rare case indeed where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification (and vice versa)”
It is now clear that the test for fair basis is the requirement of a “real and reasonably clear disclosure” such that the alleged invention as claimed is broadly, that is to say, in a general sense, described in the body of the specification (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69]; (2004) 217 CLR 274 at 300). As noted in Pfizer Inc v Commissioner of Patents [2005] FCA 137 at [63] – [70]; (2005) 64 IPR 547 at 556, the disclosure for fair basis purposes is different to that for novelty purposes. This is the law that I must apply to determine the priority date of the claims (particularly claim 28).
Mr Tadgell argued that claims 28 to 69 take a deferred priority date since they were introduced by amendments filed in 2005. Amendment item 2 (filed 10 June 2005) replaced the claims as filed with a new set of claims (pages 23 to 31). Amendment item 3 (filed 23 June 2005) replaced pages 30 and 31 with new pages. The main effect of these amendments is that claims 1-27 as filed are virtually unchanged (save for some technical alterations to appendancies), and new claims 28 to 69 have been added. Claim 28 is now the broadest claim, and is the key to the priority date issue. If claim 28 was in substance disclosed prior to the amendment, then the other new claims were also in substance disclosed. This was essentially acknowledged by Mr Tadgell in that he focussed his submissions on claim 28.
Amendment item 1 amended the description by deleting pages 8 and 9, and inserting new pages 8, 9, 9A and 9B. The effect of this amendment was to change the summary of the invention, so that it now elaborates eight aspects of the invention that correspond to the independent claims.
Mr Tadgell submitted that the amendments changed the emphasis of the invention. This submission relies on a finding that the invention disclosed at filing had five steps, and a process with fewer steps was not disclosed. The five steps are:
a) evaluating the aquifer for contaminant identity and location;
b) determining whether aquifer pre-treatment should be done, and if so, pre-treating the aquifer;
c) treating the aquifer with a selected amount of an oil microemulsion having an average droplet size less than the mean pore size of the sediment;
d) determining whether aquifer post-treatment should be done, and if so, post-treating the aquifer; and
e) monitoring the aquifer to determine if remediation has been accomplished.
Claim 28 only makes reference to step c), and does not explicitly mention steps a), b), d) or e). However, as discussed earlier, steps a), b), d) and e) are merely standard in the art, and the claim must be understood as including these standard steps. It follows that claim 28 does not represent a change in emphasis of the invention, and takes the earliest priority date. The other claims also take the earliest priority date.
NOVELTY
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235:
“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 (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim (see definition of "prior art base" in Schedule 1 of the Act).
The essential features of claim 28 are readily identified from the plain words of the claim:
(i) A method for remediating an aquifer by
(ii) treating the aquifer with an oil microemulsion
(iii) having an average droplet size less than the mean pore size of the sedimentIt is these features that must be found in the citation. When considering whether a microemulsion is used, there needs to be evidence that the droplet size is no more than 1 micron. It is only necessary to consider those documents that were published before the earliest priority date of 31 October 2000. I have not considered documents published after that date.
US 5265674 (GDR-9)
United States patent 5265674 in the name of J.K.Fredrickson et al was published on 30 November 1993. Fredrickson is referenced in the present specification as related art (page 7). The disclosure of Fredrickson is summed up in the abstract of the patent:
“Methods are provided for remediating subsurface areas contaminated by toxic organic compounds. An innocuous oil, such as vegetable oil, or other immiscible organic liquid, is introduced into the contaminated area and permitted to move therethrough. The oil concentrates or strips the organic contaminants, such that the concentration of the contaminants is reduced and such contaminants are available to be either pumped out of the subsurface area or metabolized by microorganisms.”
It is not apparent that Fredrickson employs an emulsion. Consequently, the claims are novel in the light of Fredrickson.
DE 3915930 (GDR-10)
German patent 3915930 was published on 22 October 1990. An English language translation was provided in the evidence. This document relates to a method for removing pollutants from a fluid, including water. The fluid flows past a polymer, lipoid or oil having particularly high solubility for the pollutant, so that the pollutant is dissolved in the second phase. The polymer, lipoid or oil can be emulsified. There are no details about the droplet size of the emulsion. Consequently, the claims are novel in the light of the German patent.
Hunter, W.J. et al “Use of vegetable oil to remove nitrate from flowing groundwater”
(GDR-19)The Hunter article was not part of the evidence in support, and was filed as evidence in reply. The article appears to have been published some time in 1997.
Hunter discloses the use of vegetable oil to cleanse nitrate from groundwater. Both corn and soybean oil are reported. The use of an emulsion is clearly disclosed:
“Vegetable oil, when vigorously mixed with water, forms an emulsion consisting of many small globules or droplets or oil suspended in water. As these droplets of are carried by flowing water into the matrix of a soil column the droplets would become trapped in the pore space between the soil particles and form a bioreactive zone rich in organic carbon through which water can flow.” (page 345)
“The emulsion was formed by forcing the mixture of oil and water back and forth through a 18 gauge syringe needle 10 times.” (page 347)
The droplet size of the emulsion is not reported, and there is no reason to think that the droplets are less than 1 micron. Consequently, the claims are novel in the light of Hunter.
Soo, H. et al “The flow mechanism of dilute, stable emulsions in porous media” (GDR-12)
The Soo article was published in 1984. It relates to the flow mechanism of dilute, stable emulsions in fine grained porous media. Specifically, oil-in-water emulsions of mean droplet size ranging from 1 to 10 microns were studied. There is no disclosure of the use of such emulsions to remediate groundwater. Consequently, the claims are novel in the light of Soo and Radke.
Enfield, C.G. et al “Evaluation of Alternatives for Source Zone Remediation of a Contaminated Aquifer” (CB-17)
The Enfield paper was not part of the evidence in support of the opposition, and was filed as evidence in answer. This document is a paper presented at the 1999 Contaminated Site Remediation Conference in Fremantle, Western Australia, between 21 and 25 March 1999. The paper reports an evaluation of different methods of remediation of an aquifer. The aquifer was contaminated with nonaqueous phase liquids (NAPLs), composed primarily of jet fuel. The method used under the heading of microemulsions is as follows:
“Microemulsions are usually stabilised by a surfactant and a cosurfactant. The mixture of water, surfactant, and cosurfactant used to form the microemulsion precursor should be a stable single-phase, low viscosity system. When this precursor is injected into a porous media containing residual NAPL, the NAPL is microemulsified and can be transported to an extraction well as an apparent single phase, low viscosity fluid.” (page 443)
It seems clear that the remediation is by formation of a microemulsion of the contaminant, rather than the injection of a microemulsion. Consequently, the claims are novel in the light of Enfield.
Zenker, M.J. et al “Insoluble substrates for reductive dehalogenation in permeable reactive barriers” (GDR-18)
The Zenker article is co-authored by Mr Borden, who is one of the inventors of the present application. The article is the publication of a paper presented in the United States between 22 and 25 May 2000. The publication date of the article is 23 February 2001 (para 10 of the Baird declaration). This document was published after the earliest priority date, so is not part of the prior art base. The oral disclosure was made before the earliest priority date. An oral disclosure made outside the patent area became prior art as a result of an amendment to the definition of “prior art base” introduced by the Patents Amendment Act 2001. This amendment applied to applications filed after 1 April 2002. Consequently, the expanded definition of prior art base does not apply to the present application, and the Zenker article is not prior art.
Conclusion on novelty
Lack of novelty has not been established.
INVENTIVE STEP
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“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.”
[Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 at 286]In the present case the problem that the hypothetical addressee is confronting is a method of remediating groundwater.
The opponent’s argument on inventive step was not particularly clear. They asserted that the importance of a small droplet size was already known. This is demonstrated in the two articles by Soo and Radke (GDR-11 and GDR-12). It would then have been a matter of routine to investigate the use of emulsions with very small droplet size. However, the evidence does not establish that the Soo and Radke articles were part of the common general knowledge. Consequently, this is not sufficient to establish lack of inventive step.
The Soo and Radke articles were also argued on the basis of section 7(3) of the Act. Dr Rose discusses how he would have approached solving the problem of remediating an aquifer
“I note that if I were faced with the problem of developing a method for remediating an aquifer, I would generally conduct a search or searches of the literature (or have them done for me). I would also rely on treatises and textbooks to provide background and theoretical information. As I was aware of the fact that in the bioremediation industry a large number of patents had issued, I would specifically have had a search conducted on the patent literature as part of my overall search strategy.
Following the search, I would look at documents and papers relating to methods of remediation, as well as patents and documents related to products for use in methods of remediation. Had this sort of search of search been conducted, I would have located all the documents to which I will refer to later in this declaration. These documents all refer to methods of remediation of an aquifer and/or to emulsion chemistry in general.” (para 6.1 – 6.2)
Dr Barber considers this an idealistic approach which does not reflect the practice in Australia:
“The approach taken, in general, by ground water remediation specialists in one where the remediation scheme is selected for the particular problem at hand, not only taking account of published date or prior art, but taking account of costs to the client, regulatory conditions relating to the site and community requirements. It is not simply a question of reviewing literature as one would do with a research project, as implied in his comments under 6.1 and 6.2. In choosing a remediation stratagem, most consulting remediation professionals will look at a range of options and shortlist those that have a track record for similar conditions. Additionally, they will follow developing technologies, and in most cases would be aware of technologies which are patented, and where appropriate would seek discussions with those companies licensed to use the technologies. Therefore, while Rose’s comments appear to be a very idealistic way of solving the problem of developing a method for remediating an aquifer with regard to searching the prior art, it is one which does not reflect the common practice in Australia amongst groundwater remediation specialists.” (para 4.57)
The inference I draw from Dr Barber’s declaration is that remediation professionals in Australia are very conservative, and will look for solutions with a proven track record. However, they are aware of advances and are prepared to try them when there is a sufficient likelihood of success.
Mr Tadgell asserted that the Soo and Radke articles were the type of references that the skilled addressee would have been expected to have ascertained, understood and regarded as relevant. Mr Fitzpatrick stated that Soo and Radke does not discuss groundwater remediation, so would not have been regarded as relevant. I agree with Mr Fitzpatrick. Soo and Radke are only relevant once you have made a decision to consider oil-in-water emulsions. I believe that the use of an emulsion is part of the solution, and not part of the problem. I believe this sufficient to dispose of the main argument on lack of inventive step.
However, the opponent appeared to indicate that it considered there was a lack of inventive step in the light of the documents discussed under the heading of lack of novelty. For completeness I will consider each of these documents to show that lack of inventive step is not established.
The evidence does little to establish the state of the common general knowledge, and the parties did not elaborate what they considered to be common general knowledge. From my personal reading of the evidence, the following comments appear to be relevant to determining whether there is an inventive step:
a)knowledge that an oil could be used in remediation would have led a person to try an emulsified oil (Rose at 6.3, 6.6, second Rose declaration at 5.15)
b)knowledge that an emulsified oil is effective in remediation would lead a person to use emulsions with the smallest droplet size (Rose at 6.10)
c)Rose states that the use of food grade materials (including soybean oil) in remediation was well known (Rose at 5.12, 5.18), whereas Barber states that the use of vegetable oils in remediation was not well known in the art (Barber at 4.24)
d)pre- and post-treatment were not obvious (Barber at 4.34)
e)the use of edible oil microemulsions was not well known in the art (Barber at 4.39)
However, the key issue is whether it would have been a matter of routine to prepare an emulsion with droplets of less than one micron. The evidence appears to show that the preparation of an emulsion would have been routine. Dr Rose at 6.8 says this (possibly with regard to GDR-9), and Dr Barber at 4.67 agrees. However, I can find no statement that the preparation of a microemulsion would have been a matter of routine. Indeed, given the argument on behalf of Mr Newman that the present specification does not teach how to prepare a microemulsion, it would be unbelievable if there were evidence that this was a matter of routine. I am satisfied that there is no evidence that it would have been a matter of routine to prepare a microemulsion with a droplet size of less than one micron.
US 5,265,674 (GDR-9)
The method used in Fredrickson does not employ an emulsion. While it may have been a matter of routine to replace the oil with an oil-in-water emulsion, there is no evidence that it would have been a matter of routine to prepare an emulsion with droplets of less than one micron. Consequently, lack of inventive step has not been established.
DE 3915930 (GDR-10)
This document relates to a method for removing pollutants from a fluid, including water. The fluid flows past a polymer, lipoid or oil having particularly high solubility for the pollutant, so that the pollutant is dissolved in the second phase. The polymer, lipoid or oil can be emulsified. There are no details about the droplet size of the emulsion, and there is no evidence that it would have been a matter of routine to prepare an emulsion with droplets of less than one micron. Consequently, lack of inventive step has not been established.
Hunter, W.J. et al “Use of vegetable oil to remove nitrate from flowing groundwater”
(GDR-19)Hunter discloses the use of vegetable oil to cleanse nitrate from groundwater. Both corn and soybean oil are reported. The use of an emulsion is disclosed, but the droplet size is not reported. There is no evidence that it would have been a matter of routine to prepare an emulsion with droplets of less than one micron. Consequently, lack of inventive step has not been established.
Soo, H. et al “The flow mechanism of dilute, stable emulsions in porous media” (GDR-12)
As already discussed, the Soo and Radke article is only relevant once the solution has been determined. Consequently, lack of inventive step has not been established.
Enfield, C.G. et al “Evaluation of Alternatives for Source Zone Remediation of a Contaminated Aquifer” (CB-17)
The Enfield paper reports the formation of a microemulsion of the contaminant, rather than the injection of a microemulsion. There is no reason to believe that this document would have led a person to consider injecting a microemulsion into the sediment. Consequently, lack of inventive step has not been established.
Zenker, M.J. et al “Insoluble substrates for reductive dehalogenation in permeable reactive barriers” (GDR-18)
As noted above, Zenker (both the oral disclosure and the published article) is not part of the prior art base.
Conclusion on inventive step
Lack of inventive step has not been established.
SECTION 40 ISSUES
Full description
The test for whether a specification contains a full description is whether it makes the nature of the invention plain to persons having a reasonably competent knowledge of the subject matter, and also makes it plain to persons having a reasonable skill how to perform the invention (Patent Gesellschaft AG v Saudi Livestock & Trading Co (1977) 37 IPR 523 at 530). However, it is not necessary to enable a claim over its entire scope (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [83]; (2004) 217 CLR 274 at 306), nor is it necessary to have shown that every aspect of the invention will work (PhotoCure ASA v Queen’s University at Kingston [2005] FCA 344 at [107] and [149]; (2005) 64 IPR 314 at 344 and 355).
a) Average droplet size and mean pore size
I have already found that a person skilled in the art could determine the droplet size of the emulsion and the mean pore size of a sediment. Consequently there is a full description with regard to these terms.
b) Whether pre-treatment or post-treatment is needed
These steps are referred to in the specification as “determining whether aquifer pre-treatment should be done, and if so, pretreating the aquifer’ and “determining whether aquifer post-treatment should be done, and if so, post-treating the aquifer”. It was argued that there is no indication as to how this is determined and under what conditions a person would determine if pre- or post-treatment is needed.
Dr Barber states at 4.77:
‘it is clearly taught that the purpose of pretreatment is to reduce sorption. If the aquifer sediment is of a type where sorption does not occur or is negligible (admittedly a rare occurrence), then the person skilled in the art would know from the teaching in the Opposed Application that the pretreatment would be unnecessary and pretreatment could be omitted from the remediation stratagem.”
This is consistent with the specification at page 6.
The situation with regard to post-treatment is different. Dr Barber does not seem to discuss the post-treatment issue. The specification states at page 17 – 18:
“Following injection of the oil-in-water emulsion, a post-treatment pulse of emulsifier, such as lecithin, in water solution is fed into the wells to reduce mixing of the oil-in-water emulsion with plain water and to displace more of the oil away from the injection well. Typically, the post-treatment comprises addition of emulsifier, followed by addition of water to the aquifer. The post-treatment emulsifier (e.g. lecithin) concentration is selected to match the ratio of lecithin to water in the oil-in-water emulsion. The post-treatment volume is selected based on computer modelling of the injection process to minimise mixing of the emulsion with plain water. The primary parameters controlling this are: (1) injection well spacing; (2) vertical variation in aquifer permeability; (3) aquifer dispersivity; (4) adsorption isotherm of lecithin to the aquifer matrix; and (5) oil-in-water emulsion volume.”
The specification contains details on selecting the appropriate post-treatment, but I cannot find any parameters for deciding whether to undertake post-treatment. However, the evidence of Dr Barber suggests that post-treatment is a routine matter, so consequently I accept it would be understood how to decide whether to undertake post-treatment. I consider that the specification fully describes the invention in this regard, although it would have been better to explain how to determine whether post-treatment should be done.
c) Does the specification describe how to produce an emulsion with a droplet size of less than 1 micron?
I have already stated that the specification teaches how to prepare a microemulsion, and it has not been demonstrated that the method described does not work. Conjecture cannot take the place of evidence. This ground of opposition has not been made out.
Clarity
I was referred to Stena Rederi Aktiebolag v Austral Ships Sales Pty Ltd [2007] FCA 864 at [21] – [23]; (2007) 73 IPR 257 at 264, where Tamberlin J discussed the use of imprecise language in patent specifications. In the present case, I have been able to determine the meaning of the claims, so they do not lack clarity. Specifically, the terms “microemulsion”, “average droplet size” and “mean pore size” appear to be clear.
As I noted previously, claim 32 implies that claim 28 must include microemulsions where the average droplet size exceeds 1 micron in diameter. This is in conflict with the meaning of microemulsion as used in the specification, and accordingly claim 32 renders claim 28 unclear.
Fair basis
100. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69]; (2004) 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
“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”
101. Mr Tadgell argued that the claims as a whole lack fair basis as they rely on the feature that the mean droplet size is less than the mean pore size. In the written submissions it is stated:
“the question here, with a view to Lockwood v Doric, is whether there is a real and reasonably clear disclosure of this feature as the inventive concept”
102. The requirement is for a real and reasonably clear disclosure of the invention as claimed. It is not necessary for each feature of the claim to be disclosed as the inventive concept. My consideration of the claims and description indicated that there is a broad consistency between them, and thus the claims are fairly based.
103. Dr Barber raised a specific matter of inconsistency in his declaration at para 4.23:
“I find Claim 8 inconsistent with the specification of the Opposed Application, as there is no description anywhere in the specification of the pretreatment step involving the injection of an oil microemulsion, and then water, after pre-treatment with the chemical agent (e.g. an emulsifier).”
Mr Fitzpatrick did not resile from this opinion. I agree with Dr Barber’s assessment, and find that claim 8 is not fairly based.
MANNER OF MANUFACTURE
104. Manner of manufacture is assessed by asking whether the claimed invention is obvious on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 183 CLR 655. The applicant argued that the specification does not reveal an invention, it has not been shown to work, and there are no essential features on the face of the specification. It was also stated that there is no evidence that microemulsions are prepared. It has not been shown that the invention is obvious on the face of the specification, or that a person could not work the invention. The opponent has not established that the invention is not a manner of manufacture.
UTILITY
105. When assessing utility, the test to be applied is:
“to judge of utility the directions in the specification must be followed, and if the result is that the object sought to be obtained can be attained, and is practically useful at the time when the patent is granted, the test of utility is satisfied … ‘Useful for what?’ is a question which must always be asked, and the answer must be useful for the purposes indicated by the patentee”
Lane Fox v Kensington & Knightsbridge Electric Lighting Co (1892) 9 RPC 411 at 417
Mr Newman’s position is that the specification does not teach how to prepare a microemulsion with droplets of less than 1micron (so that the invention cannot be worked), and also that method does not lead to a bioremediation of ground water.
106. Taking these points in order, I have already found that it has not been established that droplets of less than 1 micron cannot be produced. The second point depends on the distinction between remediation and bioremediation. Remediation is the reduction of contaminants, whereas bioremediation is the reduction in contaminants by the action of biological agents. All of the independent claims are directed to methods of remediating an aquifer. Consequently, this point does not succeed. However, it is apparent that the applicant intends the process to be a bioremediation, so I will consider the argument on this point further.
107. The mechanism of the remediation centres on Figure 3 of the specification.
It was alleged that the concentration of less halogenated products should initially increase, because the metabolism of highly halogenated alkanes involves a step-wise dehalogenation. Figure 3 does not show an increase in the concentration of any halogenated compound. This might be due to the fact that the first sample was taken after 70 days, and the increases all took place during prior to this time. An alternative is that the invention works by partitioning of the halogenated material into the oil droplets (which is remediation rather than bioremediation). However, it remains possible that microorganisms then slowly dehalogenate the halogenated compounds after they are partitioned into the oil droplets, leading to an overall bioremediation. This mechanism is recognised in US 5,265,674 (GDR-9) at columns 3 – 4.
108. I conclude that Figure 3 provides strong evidence for remediation of ground water, but does not prove the mechanism of the remediation. Lack of utility has not been made out by the evidence.
CONCLUSION
109. I have found several deficiencies in the specification:
a) Claim 8 is not fairly based.
b) Claim 28 is unclear due to the presence of claim 32.110. These matters can be easily overcome by amendment, and I allow the applicant 2 months from the date of this decision to file amendments.
COSTS
111. In matters before the Commissioner it is normal for costs to follow the event. Mr Newman has only succeeded in a minor part of his opposition, and normally this would not be regarded as succeeding in the opposition. The present opposition raised complex issues of construction and priority date, that required careful consideration, but this does not justify the opposition. I am satisfied that this is a case where the opponent has succeeded in such a minor part of his case that in practical terms he has not succeeded. Costs should therefore be reversed, and I award costs according to Schedule 8 against Mr Newman.
Dr S.D.Barker
Delegate of the Commissioner of Patents
28 July 2008Patent attorneys for the applicant : Griffith Hack, Perth
Patent attorneys for the opponent : Phillips Ormonde Fitzpatrick, Melbourne
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