Wimmera Industrial Minerals P/L v RGC Mineral Sands Limited

[1994] APO 46

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 626682 by WIMMERA INDUSTRIAL MINERALS PTY. LTD.

Title:    Production of Acid Soluble Titania

Action: Opposition under Section 59 of the Patents Act 1952 by RGC MINERAL SANDS LIMITED

Decision:    Issued            .

Abstract:    Novelty, obviousness and S.40 matters considered.

Grounds of opposition not established. Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 626682 by WIMMERA INDUSTRIAL MINERALS PTY. LTD. and opposition thereto under Section 59 of the Patents Act 1952 by RGC MINERAL SANDS LIMITED.

background

Patent Application No 626682 by WIMMERA INDUSTRIAL MINERALS PTY LTD (WIMMERA) was lodged on 10 May 1990 as PCT application PCT/AU90/00190 and is based on an Australian provisional application PJ 4122 lodged on 11 May 1989.

Acceptance of the application was advertised on 6 August 1992. RGC MINERAL SANDS LIMITED (RGC) filed a notice of opposition on 5 November 1992 and served a statement of grounds and particulars on 7 December 1992 (subsequently amended on 8 June 1993). Evidence-in-Support was completed on 7 April 1993, Evidence-in-Answer on 15 June 1993 and Evidence-in-Reply on 26 October 1993.

The opposition came to hearing in Melbourne on 18 February 1994. Mr B J Hess of Counsel and Mr G Munt, Patent attorney of Griffith Hack & Co., Melbourne represented the applicant. Mr G Noonan, Patent attorney of Davies Collison Cave, Melbourne represented the opponent.

As the application was lodged prior to but advertised accepted after commencement of the Patents Act 1990, the opposition is in substance determined, in accordance with the provisions of section 234(3) of the 1990 Act, under Part V of the Patents Act 1952 but with the procedures of the opposition governed by Chapter 5 of the Patents Regulations 1991

The opponent's notice of opposition referred to paragraphs (c) to (i) of sub-section 59(1) of the 1952 Act; however particulars were supplied only in respect of paragraphs (f),(g),(h) & (i). The grounds of lack of novelty, obviousness & non-compliance with section 40 were pursued at the hearing.

SPECIFICATION

The specification commences by stating that

"The present invention relates to a process for the formation of acid digestible titania products. The major application of titania bearing minerals is feed to processes for the formation of white titania pigments. Two types of alternative pigment production operations exist, viz. chloride and sulphate processing. Of particular interest to the present invention is the sulphate method of pigment production, for which specifications on mineral feed, both in composition and particle size distribution, are generally less stringent than for the chloride method."

Following a discussion of the prior art, the object of the invention is said to be the provision of an industrially useful process for the production of acid soluble titania. A consistory statement is provided corresponding to claim 1 and then a detailed description including 8 examples. The specification ends with 18 claims of which claims 1 and claims 6 to 8 read as follows:

"1. A process for producing acid soluble titania which process comprises the steps of:

(i) adding, if necessary, a manganese or magnesium compound to a titaniferous mineral so that the mineral contains sufficient manganese and magnesium to satisfy the following relationship:-

1.98a + 1.14b > 0.08

d

where a represents the percentage by weight of MgO contained in the mineral,

b represents the percentage by weight of MnO contained in the mineral, and
   d represents the percentage by weight of TiO2 contained in the mineral;

(ii) heating the titaniferous mineral in the presence of a reductant at a temperature and for a time sufficient to permit contained iron to be reduced to its metallic form and contained titania to convert to an acid soluble form without significant accretion of the mineral occurring;

(iii) cooling the product of step (ii); and

(iv) subjecting the product of step (iii) to an aqueous chemical treatment to substantially remove iron from the mineral
wherein the manganese or magnesium compound is an oxide or is capable of decomposing to an oxide under reaction conditions."

"6. A process according to any one of the preceding claims wherein the aqueous chemical treatment comprises aqueous aeration in the presence of a sequestering agent that is capable of sequestering iron in aqueous solution and buffering local pH so that iron oxides form only at higher oxidation potentials at sites away from metal bearing grains.

7. A process according to claim 6 wherein the aqueous solution contains from 0.06 to 1% by weight of the sequestering agent.

8. A process according to claim 6 or claim 7 wherein the sequestering agent is citric acid."

EVIDENCE

Evidence-in-support consists of declarations by:

.  Ivan William George, Consulting Energy Engineer, dated 2 March 1993

. Gregory Joseph Noonan, patent attorney of Davies Collison Cave, together with exhibits GJN-1 to 4, dated 4 March 1993

. Ivan William George, dated 29 March 1993 together with exhibit IWG-1

. Gregory Joseph Noonan, dated 7 April 1993 together with exhibits GJN-5 & 6

Evidence-in-answer consists of declarations by:

. Brian Francis Bracanin, Consultant to the Mineral Sands, Synthetic Rutile and Titanium Dioxide Pigment Industries, dated 4 April 1993

. Brian Francis Bracanin, dated 25 May 1993, together with two exhibits

. Michael John Hollitt, General Manager Process Development-Wimmera Industrial Minerals, dated 31 May 1993 together with Annex 1

Evidence-in-reply consists of a declaration by Ivan William George dated 22 October 1993

I will discuss the relevant parts of the evidence where appropriate in my decision.

DECISION

Section 40

Mr Noonan for the opponent raised a number of issues in relation to Section 40 and in particular asserted that claim 1 was speculative and not fairly based due to the inequality included in step (i). He also submitted that the inequality is not explained in a theoretical fashion nor is there an indication of its origin or the manner in which it has been derived. Furthermore, the examples do not show that the inequality does not work below the 0.08 limit specified. The applicant on the other hand has submitted that it is a discovery which does not require an explanation.

The claim clearly states that the feed to the process must satisfy a compositional inequality and has specified the components that are being compared. This is also clearly disclosed in the description at page 7 and thereafter at page 16, as well as being practiced in the examples. The opponent has also not provided evidence illustrating the speculative nature of the inequality. On this basis I find that claim 1 is fairly based and is not speculative.

Furthermore, section 40 requires that there be a description and a best method of performance known to the applicant. There is no requirement to illustrate the non-working of the invention and therefore I believe that the specification is sufficient in its discription of the invention including the inequality.

The opponent also claimed that step (ii) of claim 1 recites some desirable objectives of the invention but does not define the feature whereby these objectives are achieved. Step (ii) defines "heating the titaniferous mineral in the presence of a reductant at a temperature and for a time sufficient to permit contained iron to be reduced to its metallic form and contained titania to convert to an acid soluble form without significant accretion of the mineral occurring." Thus it refers to desirable results but does not specify the temperature, time, or reductant. The description however specifies a temperature range of 1130-1200°C, a time greater than 0.5 hour (see page 34) and a variety of reductants including lignite, coke breeze coke fines, etc.(see page 14, lines 24 to 35) and also states at page 13, lines 24 to 35 that "Kiln operation according to the present invention is similar to that for synthetic rutile production." There is therefore clear directions within the specification and I believe that a skilled worker could ascertain the operating parameters in relation to step (ii) without "exercise of any new inventive faculty" (No-Fume v Frank Pitchford (1935) 52 RPC 231).

The opponent submits that agglomeration of the feed to the reduction kiln is an essential feature of the invention. The description at page 8 states "In a preferred form of the invention:- ...The majority of titanium bearing minerals... will benefit by grinding during mixing in order to provide adequate mineral/additive contact or sufficient mineral surface area for subsequent steps. The minerals are then optionally agglomerated...". Again at page 10, line 19 "The flowsheet consists of an (optional) grinding step followed by an optional mixing/agglomeration step..". Similarly at line 24 "Where fine grained minerals are to be treated or where additives are required a particular preferred step is agglomeration prior to the heating step". The examples also illustrate some embodiments where no agglomeration has been practised and the end result shows the desired percentage of TiO2 in the product. I am therefore satisfied that agglomeration is not an essential feature of the invention and accordingly claim 1 is not deficient in this regard.

The opponent furthermore alleged that claims 6 to 8 were not supported by the relevant examples and were therefore speculative and not fairly based on the specification as a whole. Claim 6 refers to an aqueous chemical treatment comprising aqueous aeration in the presence of a sequestering agent that is capable of sequestering iron in aqueous solution and buffering local pH so that iron oxides form only at sites away from metal bearing grains. Claim 7 specifies the weight percent range of the agent in aqueous solution and claim 8 specifies the agent as citric acid. I believe however that the description at page 17 to 19 and the examples provide a detailed disclosure of the invention claimed and therefore claims 6 to 8 are fairly based and are not speculative.

Issues otherwise raised by the opponent at the hearing in relation to fair basis and sufficiency can I believe be dismissed in similar fashion. The opponent has therefore failed to establish that the claims or description do not comply with section 40 of the 1952 Act.

Novelty

The particulars submitted by the opponent state that the invention as claimed in any claim of the opposed application was not novel in light of the following documents published in Australia before the priority date:

(a) US patent 3502460
(b) Australian patent 247110

(c)Bracanin et al, "The Development of a Direct Reduction and Leach Process for Ilmenite Upgrading" 101st AIME Meeting, San Francisco, 1972

(d)Aus IMM Monograph, Series No. 10 "Mining and Metallurgical Practices in Australasia", Editor J T Woodcock, published 1980, pp 782-784

(e)Cassidy PW et al, "Synthetic Rutile-Its Present and Future Role as a Feedstock in the Pigment and Metal Industry", 7th "Industrial Minerals" International Congress, Monaco, 1-4 April 1986, pp 207-215.

(f)Cassidy PW et al, "The AMC Narngulu Synthetic Rutile Plant", The Aus IMM Perth Branch Conference, September-October 1986, pp 123-128.

The most relevant of these documents are US Patent 3502460 and Australian Patent 247110, with the other documents essentially describing minor variations of the Becher process referred to below.

Australian patent 247110-The Becher specification

The specification describes an invention which is an improved process for the beneficiation of ores containing contaminating iron. An example of such an ore is ilmenite which is a source of titanium dioxide pigments. The presence of iron in these pigments would cause their discolouration. The process comprises roasting the ore with a reducing agent to reduce substantially all the iron present to the metallic state, separating the reduced ore from the gangue and unused reducing agent, agitating the separated ore under aerated water until the iron passes into solution and is precipitated as a light rust and separating the ore from the rust. The reduction may be carried out by any known method in a rotary kiln or other suitable apparatus such as a fluid bed or saggers with a carboniferous reducing agent such as coke, coal, coal char or charcoal or with reducing gases such as hydrogen or gases derived from carboniferous materials. The aeration can use air, oxygen or other oxidising gases. The rate of extraction of metallic iron from reduced mineral by oxidation under water, hereinafter referred to as the oxidation of iron, may be catalysed by the addition of a small amount of acid to adjust the pH to about four. Other reagents which may be added to increase the rate of oxidation of the iron include oxidising agents, cations such as ammonium, the alkali elements, copper, or cobalt and organic anions such as acetates, chlorides, sulphates, nitrates, fluorides and thionates. The agitation should be sufficient to keep the reduced ilmenite in suspension in water. The aeration should be carried out in such a manner as to obtain a maximum solution of the oxidising gas. The oxidation may be carried out at atmospheric pressure and a temperature of 60-80°C. However, if required, the oxidation may be carried out under pressure. The colour of the iron oxides produced may be varied by controlling the conditions under which oxidation is carried out, altering the composition of the aqueous media used, the bulk density of the system, the temperature at which the oxidation is carried out and the amount of available oxygen. The examples relating to beneficiation of ilmenite disclose reduction temperatures of 1000°C and 1150°C.

US patent 3502460-The Martin patent

The specification initially states that the invention relates to a method of treating titaniferous minerals such as ilmenite, rutile, or alteration products thereof so as to convert them largely to a material which contains a high proportion of titanium in the trivalent state and has a much higher degree of solubility in dilute acids than the original mineral. Later on it states that an object of the invention is to produce a titaniferous material containing from 75% to 100%, and preferably from 90% to 100%, of its weight in a form "equivalent" to TiO2, but also having a high rate of digestion in sulphuric acid in the conventional "acid" process for pigment manufacture. By "equivalent" is meant that the material does not necessarily contain TiO2 as such in its structure but on digestion in sulphuric acid, followed by steps of oxidation and hydrolysis of the solution, a certain dry weight of TiO2 can be obtained and expressed as a percentage of the original weight of the material used in the digestion step. This percentage is termed the "TiO2-equivalent" of the product as a means of expressing its potential content of titanium values.

Claim 1 defines a process for producing a titaniferous material from a titaniferous mineral which is ilmenite, rutile, or an alteration product thereof, comprising pre-heating the mineral in granular form in an oxidising atmosphere at a temperature within the range of between 950°C and 1320°C in the presence of a magnesium compound in an amount such that the mineral grains become coated with a zone of magnesium bearing pseudobrookite, thereafter heating the product of the pre-heating stage with a reducing agent at a temperature of at least 1130°C, to produce a mixture of metallic iron and anosovite, said anosovite having the formula: (AO.2TiO2)x.(B2O3.TiO2)y wherein A is Mg, divalent Mn, Ti or Fe and B is Al, or trivalent Ti or Cr said reducing step being carried out in the presence of sufficient divalent ions selected from the group consisting of magnesium, iron, titanium and manganese to ensure that the proportion of A in the cations of the anosovite is at least 0.04.

The reducing step of the process is preferably carried out in a rotary kiln, and the production of zones of magnesium pseudobrookite on the surfaces of the mineral grains is very important because the refractory nature of these zones prevents agglomeration of the material in the rotary kiln. The magnesium compound is normally a salt, the preferred compound being magnesium carbonate. This compound is present in the range of 0.6% to 3.0% by weight. The upper limit of the temperature range in the reduction step is selected as 1320°C. Carbon is a preferred reducing agent with lignitic coal char mentioned as a specific agent.

The test for novelty was stated by Aickin J. in Meyers Taylor Pty Ltd v. Vicarr Industries Limited & Ors (1977) 137 CLR 228 at p. 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."

Regarding infringement Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd. 1969 RPC 367 at 391 stated:

"To constitute infringement the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."

On comparing claim 1 of the present application with the Becher and Martin specifications I find that the feature at item (i) of claim 1 has not been disclosed in the description or practiced in the examples of those specifications. This feature requires that the feed to the reduction step contain sufficient manganese and magnesium to satisfy the inequality

1.98a + 1.14b > 0.08

d

It is clearly an essential feature of the invention and therefore claim 1 and appended claims 2 to 18 do not lack novelty.

Obviousness

The law in Australia in regard to obviousness under the 1952 Patents Act as laid down in the decision of the High Court of Australia in the case of Minnesota Mining and Manufacturing Company and Another v. Beiersdorf (Australia) Limited, 144 CLR 253, has required that in order that an allegation of obviousness be made out it must be established that the information relied upon had become part of the common general knowledge, at the priority date of the application in suit, of those engaged in the particular art to which the invention belongs.

The test for obviousness is whether the invention claimed would have been obvious to a non-inventive worker in the art who is equipped with the common general knowledge in the art in Australia at the relevant date. As to what constitutes common general knowledge, the following definition was provided by Aickin J in the 3M case, at page 292:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The declarants Dr. Hollitt and Mr George both agree that the Becher specification forms part of the common general knowledge with regard to the processing of titaniferous minerals in Australia. Further, Mr George refers to a paper by Bracanin et al, "The Development of a Direct Reduction and Leach Process for Ilmenite Upgrading" 101st AIME Meeting, San Francisco, 1972. This paper discloses that the Becher process was practised with an extra step of pre-oxidation prior to the reducing step during the late 60's to the late 70's. Mr George then states that the pre-oxidation was discontinued after 1981 and this would therefore indicate that a process similar to the original Becher process was now in practice. The Becher process produced synthetic rutile which was suitable for use in the chloride process used for TiO2 pigment production.

The opponent then contends that it would have been obvious for the skilled non-inventive person when looking at the Martin patent to have applied the teachings of the Becher specification to arrive at a process for manufacturing acid soluble titania. However, in my view there is no clear evidence that the process disclosed in the Martin patent was part of common general knowledge at the priority date. Mr George in his declaration dated 2 March 1993 states that he was aware of the Martin patent "for at least 15 years" but he does not go as far as saying that it was common knowledge nor is this suggested by any of the other declarants. In light of the 3M decision, any argument in relation to obviousness based on the Martin patent can not be valid since it is not information that has become part of the common general knowledge.

Even if this had not been the case the opponent would still be required to show that the person skilled in the art would have as a matter of course combined the aqueous aeration step of the Becher process with the Martin patent while eliminating the pre-oxidation step and ensuring that the inequality of claim 1 was satisfied in the feed prior to the reduction step. There is insufficient evidence to support this contention and accordingly the opponent has failed to prove that the claimed invention was obvious.

MANNER OF MANUFACTURE

The opponent did not make any substantial submissions in relation to this ground of opposition. As I do not consider the subject matter of the claims to be such that it manifestly is not a manner of manufacture, I do not uphold the opposition on this point.

conclusion

I find that the opponent has not succeeded in proving any of the grounds raised in relation to the opposition and accordingly I dismiss the opposition.

costs

Having found that the opposition has failed on all counts I see no reason why costs should not follow the event. I therefore award costs against RGC MINERAL SANDS LIMITED.

P M Spann
Delegate of the Commissioner of Patents

Patent attorneys for the applicant :  Griffith Hack & Co., Melbourne

Patent attorneys for the opponent  :  Davies Collison Cave, Melbourne