FEDERAL COURT OF AUSTRALIA

Imperial Chemicals Industries Pty Ltd v Commissioner of Patents

[2004] FCA 1658

PATENTS – novelty – anticipation of specific chemical compound in an earlier broad claim – distinction between a general disclosure and a disclosure for novelty purposes – application by third party to appear amicus curiae in an appeal from delegate of Commissioner of Patents – refused – applicant’s appeal allowed.

Administrative Decisions (Judicial Review) Act 1977 (Cth)

Patents Act 1990 (Cth) – ss 7, 18(1)(b), 49, 50, 51 and 160(a), (d) and (e)

Australian Associated Motor Insurers Limited v NRMA Insurance Limited & Anor (2002) 124 FCR 518 referred to

Beecham Group Limited’s (Amoxycillin) Application [1980] 97 RPC 261 referred to

Blair v Curran (1939) 62 CLR 464 followed

Bristol‑Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 followed

British Thomson-Houston Co Ltd v Metropolitan‑Vickers Electrical Co Ld. (1928) 45 RPC 1 referred to

Bropho v Tickner (1993) 40 FCR 165 followed

Commissioner of Patents v Microcell Ltd & Ors (1958 - 1959) 102 CLR 232 referred to

C. Van der Lely N.V. v Bamfords Ltd [1963] 80 RPC 61 referred to

Dupont (Witsiepe) Application [1982] FSR 303 (H.L.) referred to

Edison & Swan United Electric Light Co. v Holland (1889) 6 RPC 243 referred to

EI Dupont de Nemours & Co v Imperial Chemical Industries plc (2002) 54 IPR 304referred to

Flour Oxidizing Company Ld v Carr & Co. Ld & Ors (1908) 25 RPC 428 referred to

General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd & Ors [1972] 89 RPC 457 referred to

Genetics Institute Inc. v Kiran Amgen Inc. (1996) 67 FCR 527 referred to

F Hoffmann-La Roche AG v Commissioner of Patents [2000] FCA 1845 referred to

F Hoffmann-La Roche AG v New England Biolabs Inc. (2000) 99 FCR 56 referred to

Haines v Australian Broadcasting Corporation (1995) 43 NSWLR 404 referred to

Harwood v Great Northern Railway Co (1865) H.L.C. 654 referred to

Hill v Evans (1862) 4 De G. F & J 288 referred to

HPM Pty Ltd (In Liq) v FEAR [2002] FCAFC 403 referred to

ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577 referred to

ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 617 referred to

Imperial Chemical Industries plc v EI Dupont de Nemours Co. [2002] FCAFC 264; (2002) AIPC 91-818 referred to

ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (2000) 106 FCR 214 followed

Kabushiki Kaisha Sony Computer Entertainment & Ors v Stevens (2001) 116 FCR 490 considered

Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 referred to

King, Brown & Co. v Anglo‑American Brush Corp. (1892) 9 RPC 313 referred to

La Macchia & Ors v Minister for Primary Industries & Anor (1992) 110 ALR 201 considered

Levy v Victoria (1997) 189 CLR 579 followed

Makita (Australia) Pty Ltd v Sprowles (2001) 52 NSWLR 705 referred to

Meyers Taylor Pty Ltd v Vicair Industries Ltd (1977) 137 CLR 228 applied

Michaels v Commonwealth of Australia (2002) 124 FCR 473 referred to

Miller v University of New South Wales (2003) 132 FCR 147 referred to

Nicaro Holdings Pty Ltd v Martin Engineering Co & Anor (1990) 91 ALR 513 applied

Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589 referred to

Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 followed

Rippon v Chilcotin Pty Limited (2001) 53 NSWLR 198 referred to

Rogers v The Queen (1994) 181 CLR 251

Sea Culture International Pty Ltd v Scoles & Ors (1991) 32 FCR 275 referred to

Shell Refining and Marketing Co Ltd’s Patent [1960] 77 IPR 35 referred to

Spalla & Ors v St George Motor Finance Ltd (2004) 209 ALR 703 referred to

State Bank of New South Wales v Stenhouse (1997) Aust. Torts Rep. 81-423 referred to

Technip France SA’s Patent [2004] RPC 919 considered

University of Georgia Research Foundation Inc v Biochem Pharma Inc (2000) 51 IPR 222 referred to

Walton v Gardiner (1992-1993) 177 CLR 378 referred to

Werner (RD) & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 followed

Washex Machinery Corpo v. Roy Burton & Co. Pty Ltd (1974) ALJR 12 followed

Wimmera Industrial Minerals Pty Ltd v R G C Mineral Sands Ltd (1997) 40 IPR 110 referred to

IMPERIAL CHEMICALS INDUSTRIES PTY LTD V COMMISSIONER OF PATENTS

V 833 of 2003

IMPERIAL CHEMICALS INDUSTRIES PTY LTD V COMMISSIONER OF PATENTS

V 840 of 2003

CRENNAN J

16 DECEMBER 2004

MELBOURNE

THE COURT ORDERS THAT:

In proceeding V833 of 2003:

1. The application by E.I. Dupont de Nemours & Company (“Dupont”) to be granted leave to appear and to be heard as amicus curiae be refused.
2. The applicant’s cost of and occasioned by Dupont’s application be paid by Dupont.
3. The appeal pursuant to s 51 of the Patents Act 1990 (Cth) be allowed.
4. The decision of the respondent’s delegate dated 11 August 2003 be set aside.
5. The matter be remitted to the respondent’s delegate to reconsider the application and amendments proposed by the applicant in accordance with the Court’s reasons for judgment.

In proceeding V840 of 2003:

6. The proceeding be dismissed.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     The applicant in proceeding V833 of 2003 appeals pursuant to s 51 of the Patents Act 1990 (Cth) (“the Patents Act”) against a decision of a delegate of the Commissioner of Patents, refusing the applicant’s Australian patent application No. 29314/02 entitled ‘Working Fluid Compositions.’  This application was filed as a divisional application from parent application 658005.  The alleged invention claimed in the specification of 658005 was found by the Federal Court to lack novelty: EI Dupont de Nemours & Co v Imperial Chemical Industries plc (2002) 54 IPR 304 (“Dupont v ICI”).  Leave to appeal to the Full Court from this decision was refused: Imperial Chemical Industries plc v EI Dupont de Nemours Co. [2002] FCAFC 264(“ICI v Dupont”). 

2                     The delegate made the decision after a hearing at which the delegate received submissions on behalf of the applicant in response to an adverse examination report that the invention claimed lacked novelty over claims in Australian patent 638710 granted to The Lubrizol Corporation (“the Lubrizol patent”). 

3                     The delegate also refused a request by the applicant that it be allowed an opportunity to propose further amendments to the claims of the application in the event that the delegate found that the claims lacked novelty.  This refusal was based on the delegate’s view that there was no prospect of the applicant overcoming the identified lack of novelty by amendments to the claims.  The proposed amendments are annexed to the delegate’s decision and the claims as proposed to be amended are the substantive subject matter of this proceeding.

4                     The other proceeding before the court, V840 of 2003, involves an application for an order of review pursuant to the Administrative Decisions (Judicial Review) Act 1977 (Cth).  In the light of the decision to which I have come, it will not be necessary to describe that proceeding in any detail.

5                     The main issue for this court is whether the applicant’s claims in the form in which it wishes to proceed in its application are novel over the Lubrizol patent, contrary to the conclusion of the respondent’s delegate.  A subsidiary issue which will only need to be considered if the court concludes that the claims as they presently stand lack novelty, is whether any lack of novelty as found may, nevertheless, be cured by further amendment.  For reasons which will become clear I do not need to deal further with the subsidiary issue.

6                     It also needs to be noted that EI Dupont de Nemours & Co(“Dupont”) has sought leave by motion to be heard as amicus curiae in this proceeding.  The application of Dupont is based on an assertion that the patent application which is the subject of the present proceeding is the same as the patent application found to be lacking novelty by the court in Dupont v ICI.  Thus, it is said, a question arises as to whether the present proceeding constitutes an abuse of process, being an impermissible attempt to re‑litigate issues determined against the applicant in a previous Federal Court proceeding. 

7                     It is necessary to describe the background to the present proceeding in some detail before turning to consider the application by Dupont. 

Background

8                     The present application 29314/02, the parent application 658005 from which it was divided, application 654176 and the Lubrizol patent all cover fluid compositions used in refrigeration and similar applications. 

9                     The applicant has filed two affidavits from experts in the field of refrigeration: an affidavit of Mr Roger Symons, a consultant to the refrigeration industry, sworn on 20 November 2003, and an affidavit of Professor John Ball, a recently retired Professor of Engineering, sworn on 25 November 2003.  These affidavits deal with the technical background and the state of the art at the relevant date, as well as some specific issues concerning the disclosure of the Lubrizol patent.  These have been admitted pursuant to the power contained in s 160(a) of the Patents Act.  Both deponents explain relevant technical aspects of refrigeration which are summarised below.  A more detailed account can be found in the judgment of Emmett J. in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577 at [8] –[23].

10                  Working fluid compositions such as those the subject of the claims of the present patent application generally comprise two components.  First, they contain a refrigerant component, which performs the function of transferring heat from one part of the refrigeration apparatus to another so as to achieve a cooling effect.  Secondly, they contain a lubricant component, which serves to lubricate the moving parts of the refrigeration apparatus as the composition circulates through it.

11                  Prior to the 1990s, the principal chemicals used as refrigerants in such compositions came from the family of compounds called chlorofluorocarbons (“CFCs”) or the related family of compounds called hydrochlorofluorocarbons (“HCFCs”).  CFCs are made up of atoms of chlorine, fluorine and carbon, whereas HCFCs are made up of atoms of hydrogen, chlorine, fluorine and carbon.  Significantly, both contain chlorine atoms.

12                  It was discovered in the mid‑1970s that both CFCs and HCFCs, when released into the atmosphere, result in damage to the ozone layer, which is caused by the chlorine atoms in the refrigerants.  The capacity of a refrigerant to damage the ozone layer is identified as its ozone depletion potential (“ODP”).  CFCs have a high ODP due to their chemical structure whereas, the ODP of HCFCs is significantly lower, but still appreciable.

13                  In 1987, the Montreal Protocol on Substances that Deplete the Ozone Layer opened for signature.  The Protocol provided for the phasing out of CFCs over time.  Thus there was a need to find replacements for CFC refrigerants.  In 1992, the Protocol was amended to provide that the use of HCFCs could continue for a specified period of time but that they would subsequently be phased out.  HCFCs were seen as transitional replacements for CFCs.  Thus, it was clear that a long-term ozone friendly replacement would need to be found.  Long-term replacements for CFCs and HCFCs principally come from a class of refrigerants called hydrofluorocarbons (“HFCs”).  HFCs are also sometimes referred to as hydrofluoroalkanes.  HFCs are made up of hydrogen, fluorine and carbon atoms alone and do not contain chlorine atoms.  Accordingly, they have zero ODP.

14                  Refrigerants are generally classified according to a numbering system where the numbers represent the quantity of different atoms present in a molecule of refrigerant, according to a particular formula.  Thus, the refrigerant difluoromonochloromethane, which is an HCFC, is also known as HCFC-22 or R-22 where ‘R’ stands for ‘refrigerant’. Other refrigerants relevant to the present proceedings include difluoromethane (R-32), 1,1,1,2-tetrafluoroethane (R‑134a) and pentafluoroethane (R‑125). R‑32, R‑134a and R ‑125 are all HFCs and as such have zero ODP. 

15                  The second component of a typical working fluid composition of a refrigerant system is the lubricant.  An important requirement of the lubricant is that it be compatible with the refrigerant component, which generally means that the refrigerant must be soluble in the lubricant.

16                  Prior to the phasing out of CFC and HCFC refrigerants, mineral oils were widely used as refrigeration lubricants.  These oils were suitable for such use in that most CFCs and some HCFCs were soluble in them.  However, the solubility of HFCs and other HCFCs in mineral oils is very low.  As such, it was found that mineral oils lubricants were not suitable for the use as lubricants with ozone friendly HFC refrigerants, and it was recognised that alternative lubricants had to be found.

17                  The fluid compositions claimed and disclosed in the present divisional application, the parent application 658005, application 654174 and the Lubrizol patent, generally include HFC and/or HCFC refrigerants in combination with a particular class of lubricant called carboxylic esters.  The amendment sought to the divisional application would confine the claims to a specific ternary composition of HFCs only.  The applicant has conceded for the purposes of this proceeding that the lubricant in the present application is the same as the lubricant in the Lubrizol patent.  Essentially, the proceeding turns upon a consideration of the refrigerant component of these compositions, and it is unnecessary to further consider the lubricants in the working fluids under consideration.

18                  It is necessary to understand the similarities and differences between the claims in the divisional application (both as it stands and as it is proposed to be amended), the parent application 658005, application 654176 and the Lubrizol patent.  It is convenient to commence with the relevant claim of the Lubrizol patent.

Lubrizol patent 638710 - Claim 1

19                  Claim 1 provides:

‘1.        A liquid composition comprising:

(A)              a major amount of at least one fluorine‑containing hydrocarbon containing 1 or 2 carbon atoms; and

(B)              a minor amount of at least one soluble organic lubricant comprising at least one carboxylic ester of polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formula.’

20                  Integer (A) of Claim 1 includes as a possibility a ternary mixture.  Further, in disclosing a large range of HFCs, the patent referred to ternary mixtures although it did not mention R-32 or R‑125.

Parent application 658005 – Claims 1 and 4

21                  Claim 1 provides:

‘1.        A working fluid composition comprising:

(A)              a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2‑tetrafluoroethane and pentafluoroethane; and

(B)              a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula.

(formula follows)’

Claim 4 provides:

‘4.        A working fluid composition as claimed in 1 wherein the heat transfer fluid (A) comprises a mixture of:

(1)       1,1,1,2‑tetrafluoroethane;

(2)       difluoromethane; and

(3)       pentafluoroethane.’

22                  Difluoromethane is R‑32, 1,1,1,2‑tetrafluoroethane is R‑134a and pentafluoroethane is R‑125.  Because integer (A) of Claim 1 refers to a mixture of ‘at least two’ refrigerants selected from a group of three, the claim covered four separate mixtures of refrigerants, three binary and one ternary as follows:

(a)                R‑32 and R‑134a;

(b)               R-134a and R-125;

(c)                R-32 and R-125; and

(d)               R-32, R-134a and R-125.

Claim 1 of the present divisional application, unamended, is identical to Claim 1 of the parent application.

Proposed amendment of present application 29314/02 – Claim 1

23                  Claim 1 as proposed to be amended provides:

‘1.        A working fluid composition comprising:

(A)              a heat transfer fluid comprising a mixture of difluoromethane, 1,1,1,2‑tretrafluoroethane and pentafluoroethane; and

(B)              a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula:

(formula follows)’

24                  Thus the amendment proposed has the effect of narrowing the invention claimed to one specific ternary mixture of HFCs, R‑32, R‑134a and R‑125.  It will be noted this is the same mixture as the subject matter of Claim 4 of the parent application 658005.

Application 654176 – Claims 1 and 10

25                  Claim 1 provides:

‘1.        A refrigerant composition comprising:

(I)                 a refrigerant comprising a ternary or higher mixture of:

(a)               tetrafluoroethane and/or heptafluoropropane;

(b)               difluoromethane and/or 1,1,1‑trifluoroethane and optionally

(c)               pentafluoroethane: and

(II)              a lubricant comprising a polyalkylene glycol and/or an ester.’

Claim 10 provides:

‘10.      A refrigerant composition comprising:

(II)       a refrigerant comprising:

(a)               1,1,1,2‑tetrafluoroethane;

(b)               difluoromethane and

(c)               pentafluoroethane; and

(III)      a lubricant comprising a polyalkylene glycol and/or ester.’

26                  The restriction to ternary or higher mixtures is noted.  Claim 10 claims a refrigerant which is identical to that described in Claim 4 in the parent of the present divisional application and in Claim 1 as proposed to be amended in application 29314/02.

27                  In Dupont v ICI, Branson J. dealt with issues of novelty of the parent application 658005 and application 654176 in an appeal by Dupont from an unsuccessful opposition by it to those applications.

28                  Relevantly in respect of parent application 658005 her Honour found at [68]-[71]:

‘I conclude on the basis of my own reading of the Lubrizol patent and with the benefit of the evidence of Professor Ball, and to a lesser extent Mr Symons, that the delegate was clearly wrong in concluding that “it is unlikely that a reader would consider that they [sic] had been taught mixtures of HFCs including R-32 and R-125” by the Lubrizol patent.  I observe that in ICI Chemicals v Lubrizol Corporation 1999 45 IPR 577 Emmett J. concluded, apparently on the basis of a concession, that if the Lubrizol patent was valid it had been infringed when certain air conditioning and refrigeration systems were retrofitted using a refrigerant that was a ternary mixture of R‑32, R‑125 and R‑134a and a lubricant that was a synthetic ester.

It was argued by the respondent that the single example of a blend of two HFCs referred to in the Lubrizol patent under the heading “Description of the Preferred Embodiments” does not teach the mixture of the patent application.  The patent application requires at least two HFCs out of R‑32, R‑134a and R‑125 and there is no mention of R‑32 or R‑125 in the Lubrizol patent.  The answer to this argument in my view is that integer (A) of the invention of the Lubrizol patents is “a major amount of at least one fluorine containing hydrocarbon containing one or two carbon atoms” and the specification refers to mixtures of fluorine‑containing hydrocarbons including binary and ternary mixtures.  HFCs are fluorine‑containing hydrocarbons.  Even without the assistance of Professor Ball’s evidence, I would have been inclined to conclude that integer (A) is to be understood as encompassing any mixtures of HFC containing one or two carbon atoms . . .  I understand the Lubrizol patent, as it seems to me that Emmett J. did also, as disclosing in integer (A) of the invention a broad class of potential refrigerants, extending beyond those identified specifically in the preferred embodiments, with which the lubricant of integer (B) might be used.  With the benefit of Professor Ball’s evidence I am satisfied that a person skilled in the art to which the patent application relates would have so read it . . .

I conclude that the Lubrizol patent does deprive the patent application of novelty . . .’

29                  Relevantly in respect of application 654176, her Honour found at [143]-[144]:

‘In giving consideration to the Lubrizol Application the delegate, in the decision from which this appeal  is brought, drew the same distinction between its “intellectual content” and what it would make public to the instructed reader as he drew in his decision from which the appeal in matter N1248 of 1999 was brought.  He concluded, as he had in that decision that while the intellectual content of the disclosure includes mixtures of HFCs, thus including compositions of the present application, it did not in fact disclose a mixture including R-32, R‑125 or R227ea.  For the reasons given . . . above, I conclude that the delegate erred in reaching the above conclusion and that the Lubrizol Application does disclose ternary and higher mixtures of HFCs. 

The above conclusion does not, however, lead inevitably to the conclusion that the Lubrizol Application contains “clear and unmistakable directions to do what the patentee claims to have invented”: see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 486 per Sachs LJ.  Having regard to the highly particularised blends of refrigerants claims by the patent application, I conclude that it is not clearly established that the Lubrizol Application deprives the claims of novelty.’

30                  An application for leave to appeal from the decision of the primary judge was refused by the Full Court in ICI v Dupont at [18] in the following terms:

‘Clearly each of those compounds [difluoromethane tetrafluoroethane and pentafluoroethane] is encompassed by the description “fluorine-containing hydrocarbon containing one or two carbon atoms”. Thus, the use of a liquid composition described in claim 1 of PA 658005 is clearly disclosed by the Lubrizol patent.’

It was the noted by the Full Court that the parent application 658005 was not an application for a selection patent and then at [20] the Full Court observed:

‘It is, therefore, crystal clear that a patent granted pursuant to PA 658005 would be revokable.  The correctness of that conclusion by the primary judge is attended with no doubt.’

Dupont’s application

31                  The application to be heard as amicus curiae is brought in reliance on the principles established in Levy v Victoria (1997) 189 CLR 579 at 604 (“Levy”) and Kabushiki Kaisha Sony Computer Entertainment v Stevens (2001) 116 FCR 490 at 494 (“Kabushiki”).

32                  For the purposes of the argument, it is accepted by Dupont that the earlier decision of the Federal Court does not operate as an estoppel (either as a res judicata or as an issue estoppel) against the applicant in these separate proceedings against the Commissioner as the parties are not the same parties as in the previous proceedings.  However, it is submitted that the court can stay, as an abuse of process, a proceeding in which an applicant seeks to litigate against a third party an issue decided against the applicant in a previous proceeding: Rippon v Chilcotin Pty Limited (2001) 53 NSWLR 198 (“Rippon”).  See also Rogers v The Queen (1994) 181 CLR 251 at 287-289; Walton v Gardiner (1993) 177 CLR 378 at 393; Haines v Australian Broadcasting Corporation (1995) 43 NSWLR 404; Australian Associated Motor Insurers Limited v NRMA Insurance Limited (2002) 124 FCR 518 per Conti J.; Michaels v Commonwealth of Australia (2002) 124 FCR 473 per Allsop J..  The allegation of an abuse of process is said to arise because the applicant wishes to argue in this proceeding that the decision of Branson J. in the previous proceeding was incorrect, at least insofar as it covered the parent application.

33                  It is also submitted by Dupont that the amendment proposed by the applicant does not assist its position since it selects one of four mixtures, namely a specific ternary mixture of R‑32, R‑134a and R‑125.  It is submitted this was previously held by the trial judge to lack novelty and thus the present case is an attempt to re‑litigate issues decided already adversely to the applicant.  That position, it is said, is reinforced by the Full Court’s refusal to grant leave to appeal from that occasion. 

34                  It is further argued that the time and place for amendment was prior to the disposition of the proceedings before the earlier trial judge: ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 617; Wimmera Industries Minerals Pty Ltd v R G C Mineral Sands Ltd (1997) 40 IPR 110; Genetics Institute Inc. v Kiran Amgen Inc (1996) 67 FCR 527; F Hoffmann-La Roche AG v Commissioner of Patents [2000] FCA 1845. 

35                  Connected with that submission is a further argument that having failed to prosecute any amendment prior to the disposition of the previous proceedings, it is not open to the applicant to now seek to amend.  It is also argued that the previous judgment, being a judgment on pure questions of construction of two patents should be followed in the present appeal except in the most unusual circumstances: Flour Oxidizing Company Ld v Carr & Co Ld (1908) 25 RPC 428 at 448; Edison & Swan United Electric Light Co. v Holland (1889) 6 RPC 243 at 276.

36                  Without deciding, many of the arguments Dupont raise appear to me to be proleptic submissions which would be more appropriately raised either as an opponent or as a party seeking revocation.  Seeking to raise such arguments on an appeal, arising from a decision by the respondent’s delegate refusing an application after an examination and hearing is a course to be discouraged.  The examination process and appeals arising therefrom were not intended to be encumbered by third parties who have an opportunity to be heard, after advertisement, in an opposition under Chapter 5 of the Patents Act.

37                  The applicant’s response to the submissions of Dupont is to rely on the established principle that the role of amicus curiae is usually confined to assisting the court in some manner which may otherwise be overlooked: Kabushiki at [14] per Sackville J.; Bropho v Tickner (1993) 40 FCR 165 at 172/173 per Wilcox J.; see also Levy at 604. 

38                  Since the issue of whether any abuse of process arising out of the circumstances of this application is dealt with both by the applicant in submissions, and by the respondent Commissioner, there is no danger that the issue will be overlooked.

39                  It was also submitted by the applicant that the underlying rationale for holding an attempt to re‑litigate issues already decided is an abuse of process is that inconsistent results may occur.  Rippon at [20]; see also Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589 at 603/604.  It is submitted that in this case inconsistent results have already occurred in the earlier judgment on the issue of whether the Lubrizol patent discloses the specific ternary composition of HFCs now sought to be claimed by the applicant.

40                  When dealing with an application such as the present one, a court is entitled to consider whether there is any fresh evidence and to consider an overall need to balance justice to the person seeking to re‑litigate against matters supporting an allegation that the re‑litigation is an abuse of process: Rippon at [32]-[36]; State Bank of New South Wales v Stenhouse (1997) Aust. Torts Rep. 81-423 at 64,089; Haines v Australian Broadcasting Corporation (1995) 43 NSWLR 404 at 414.  The applicant further argued that the power to stay or dismiss a proceeding on the ground that it was an abuse of process is an exceptional one to be used sparingly: Sea Culture International Pty Ltd v Scoles (1991) 32 FCR 275 at 279; HPM Pty Ltd (In Liq) v FEAR [2002] FCAFC 403 at [69]; Spalla & Ors v St George Motor Finance Ltd (2004) 209 ALR 703 at 715; see also Miller v University of New South Wales [2003] FCAFC 180 at [81].

Consideration of Dupont’s application

41                  Dupont’s submission that the applicant wishes to assert that the decision of Branson J. in the previous proceeding is incorrect, insofar as it covered the parent application, is not entirely correct.  The applicant is seeking to raise before me a much narrower question than the question before her Honour in respect of the parent application.

42                  The question before me, stated summarily, is whether the Lubrizol patent anticipated (that is, disclosed for novelty purposes to a qualified reader) the specific ternary composition of HFCs which the present applicant now seeks to claim.  In dealing with that much narrower question, I am bound to accord her Honour’s decision great respect.

43                  There is no issue estoppel as conceded responsibly by Dupont, nor is there any res judicata.  Anshun estoppel does not arise in all the circumstances as there has been no practical opportunity for the applicant to amend the claims prior to the opportunity arising in the course of prosecution of a divisional application.

44                  If, and to the extent there is an apparent inconsistency in the earlier judgment in respect of the novelty of the specific ternary mixture of HFCs which would be the subject matter of an amended application, I would not regard the present proceeding as an abuse of process.  The respondent Commissioner takes the same view.

45                  It is relevant to note that it was sufficient for her Honour’s disposal of the proceeding before her to find that Claim 1 of the parent application lacked novelty over the Lubrizol patent.  In making that ultimate finding of fact, it was not necessary for her Honour to deal with Claim 4 of the parent application, that is the claim to the specific ternary mixture of HFCs which the applicant now claims.  Furthermore, her Honour’s finding that integer (A) of the Lubrizol patent encompassed ternary and higher mixtures of HFCs and her implicit finding that the Lubrizol patent taught mixtures of HFCs is not to be confused with, or taken to be equivalent to, a much narrower finding that integer (A), or the Lubrizol patent as a whole, taught (ie. disclosed for novelty purposes) the specific ternary mixture of HFCs which the applicant now claims.  Her Honour made no such narrow finding and her judgment at [144] suggests to me that this was deliberate rather than constituting some inconsistency in her Honour’s reasons.  Such a narrow finding was unnecessary because it could not be said that the question of whether or not the Lubrizol patent taught the specific ternary mixture of HFCs now sought to be claimed ‘was a fact fundamental to the decision arrived at’ as that phrase is explained by Dixon J. in Blair v Curran (1939) 62 CLR 464 at 532.  For me to now consider that narrow issue, on evidence which was not before her Honour, cannot impugn her Honour’s decision in relation to a much wider question of anticipation.

46                  There is also a further important circumstance adverted to above which is that I will have the assistance of skilled addressees giving more extensive evidence on the narrow issue I have to decide than was available to her Honour on the broader issue which she decided.

47                  In all the circumstances, the application by Dupont for leave to be heard as amicus curiae is refused with costs.

The delegate’s decision

48                  In refusing the application and refusing to allow any amendment, the delegate stated:

‘Her Honour came to the conclusion that a person skilled in the art would have regarded the Lubrizol patent as providing clear and unmistakable directions to use any heat transfer fluid (or binary mixture) of the broad class described (paragraph 69).  On this basis, the heat transfer fluids that are clearly and unmistakably disclosed are all those that are encompassed by the broad terminology, not just those that are preferred forms.  However, it seems that more complex blends (having a large number of highly particularised components) are not part of the teaching (paragraph 144).

But what of ternary blends, and in particular the specific ternary blend of the present application?  It appears that Her Honour (sic) may not have been aware that he single ternary blend f the 658005 application is also one of the blends of the 654176 application.  It seems hard to believe that Her Honour (sic) forgot about the ternary blend when considering the 658005 application, as that application covers only four blends.  Looking at paragraph 65, it seems clear that Her Honour (sic)  accepted Mr Symons (sic) evidence that the Lubrizol patent discloses binary and ternary blends of R‑134a, R‑125, R‑32 and R‑143.  This statement leads inevitably to the conclusion that a ternary blend of R‑32/R‑125/R‑134a would be not novel in the light of the Lubrizol patent.  Paragraph 144, on the other hand, says that the highly particularised blends are novel without noting the composition of those blends.  I think it would have been possible to overlook the specific composition of one of the ternary blends (of which I believe there are 15 possible combinations), even though claim 10 is directed to the specific blend in question.

I believe that Her Honour (sic) decided that the Lubrizol patent contains clear and unmistakable directions to use the ternary blend in question.’

Appeal 

49                  On the substantive appeal, it should be noted that the appeal is not an appeal in the strict sense but is a hearing de novo.  The position in respect of an appeal against a refusal to accept a patent application is no different from an appeal in respect of inter partes opposition proceedings: Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 126 at 142-143; F Hoffmann-La Roche AG v New England Biolabs Inc. (2000) 99 FCR 56 at [29]. 

50                  The delegate made the decision in the present case under s 49 of the Patents Act (as amended by the Patents Amendment Act 2001 (Cth) with effect from 1 April 2001), which relevantly provides as follows:

‘49. (1)     Subject to section 50, the Commissioner must accept a patent request and complete specification relating to an application for a standard patent if:

(a)   the Commissioner is satisfied that the invention, so far as claimed, satisfies the criteria mentioned in paragraph 18(1)(b); and

(b)   the Commissioner considers that:

(i)      there is no lawful ground of objection (other than a ground in respect of paragraph 18(1)(b)) to the request and specification;

(ii)           any such ground of objection has been removed.

(2)     If subsection (1) does not apply, the Commissioner may refuse to accept the request and specification.’

51                  Prior to those amendments taking effect from 1 April 2002, s 49(1) required the Commissioner to accept a patent request and specifications if she considered that there was ‘no lawful ground of objection’ to it, as set out in the present s 49(1)(b).  Section 49(1)(a) now imposes a different test in relation to the criteria mentioned in s 18(1)(b) of the Patents Act, namely novelty and inventive step, by providing that the Commissioner must be satisfied that these criteria are satisfied.

52                  As explained in the Explanatory Memorandum, the intention behind these statements was to remove the so‑called ‘benefit of doubt’ approach which had been applied under s 49 and earlier equivalent provisions.  On that approach, it was said that a patent application should be accepted by the Commissioner unless it was ‘practically certain’ that a patent granted on the application would be invalid: see Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 244-245 (“Microcell”).

53                  Section 49(2) remained the same.  This provision confers a discretion to refuse a patent request and specification where the conditions for acceptance in s 49(1) are not fulfilled.  The applicant submitted that the exercise of this discretion will continue to be guided by the kinds of considerations discussed in the Microcell case, including the consideration that refusal of acceptance is final, whereas acceptance is not: see Microcell at 244-245.

54                  Section 18(1)(b) relevantly provides:

‘18.     (1)        Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:

(a)   . . .

(b)   when compared with the prior art base as it existed before the priority date of that claim:

(i)                 is novel; and

(ii)               . . .

(c)    . . .

(d)   . . .’

55                  Novelty is described in s 7 as follows:

‘7.       (1)        For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

                       (a)        prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;

                       (b)        prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;

                       (c)        prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art basein Schedule 1.’

It only needs to be noted for s 7 purposes that the Lubrizol patent is relevant prior art.

56                  In advancing its case that the claims of the present application as confined to the specific ternary mixture of the HFCs now claimed by it are novel over the Lubrizol patent for the purposes of s 49 of the Act, it was submitted by the applicant that the delegate was in error in regarding Branson J.’s decision as determinative of the facts in this proceeding.

57                  It was also submitted that a comparison of the Lubrizol patent with the present claims sought showed that Lubrizol did not disclose R‑32 or R‑125 or disclose for novelty purposes, the specific ternary mixture of HFCs which the applicant now seeks to claim.

58                  While it was conceded that the description in Claim 1 of the Lubrizol patent of ‘at least one fluorine‑containing hydrocarbon’ was a description of a class of compounds sufficiently broad to include a ternary mixture of R‑32, R‑134a and R‑125, and it was also conceded that the description in the consistory clause was similarly broad, it was argued that that did not amount to a disclosure for novelty purposes, in accordance with established principles, of the specific ternary mixture of R‑32, R‑134a and R‑125.

59                  Further, there was evidence from Mr Symons and Professor Ball, skilled addressees, as to what they each understood the Lubrizol patent to disclose.  It appears from the decision of Branson J. that her Honour did not have the benefit of this evidence.  She made it plain at [69] that she relied on Professor Ball’s evidence that integer (A) of the Lubrizol patent encompassed any mixtures of HFCs, as tantamount to disclosing to Professor Ball a broad class of refrigerants going beyond those disclosed in the preferred embodiments.   Her Honour referred to binary and ternary mixtures in that context.  However, she made no express finding that the evidence before her supported a finding that there was a disclosure for novelty purposes, of the specific ternary mixture of HFCs now claimed by the applicant.  I will return to this point.  She also found at [65] that Mr Symons’ evidence was that integer (A) of the Lubrizol patent encompassed blends of two, three, four or more HFCs but  again she did not conclude that this supported a finding of disclosure for novelty purposes, of the specific ternary mixture now sought to be claimed by the applicant.  Her Honour made no express finding that integer (A) of the Lubrizol patent taught the specific ternary mixture now under consideration.

Established Principles of Anticipation

60                  The general approach to anticipation or want of novelty is to apply ‘the reverse infringement’ test which was stated by Aickin J. in Meyers Taylor Pty Ltd v Vicair Industries Ltd (1976-1977) 37 CLR 228 at 235 (“Meyers Taylor”):

‘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.’

Aickin J. relied on an English example, Harwood v Great Northern Railway Co (1865) 11 H.L.C. 654 at 681 (“Harwood”).  The test stated in Harwood was reiterated in the subsequent English authority, General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd [1972] 89 RPC 457 at 486, 496. (C.A.) (“General Tire’).  This approach has been relied on many times in subsequent Australian authorities.

61                  The test for anticipation by a prior document is frequently stated by reference to General Tire at 485-486.  Often repeated is Sachs LJ’s observation that ‘a signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee’ (at 486).  ‘Clear and unmistakable directions’ to do what the patentee claims to have invented are necessary: Flour Oxidizing Co. Ld v Carr & Co. Ld (1908) 25 RPC 428 at 457; see also British Thomson‑Houston Co Ld v Metropolitan Vickers Electrical Co Ld (1928) 45 RPC 1 at 24; Washex Machinery Corpo v. Roy Burton & Co. Pty Ltd (1974) ALJR 12 at 18; Nicaro Holdings Pty Ltd & Ors v Martin Engineering Co & Anor (1990) 91 ALR 513 (“Nicaro”) at 517 per Lockhart J. and at 529/530 per Gummow J.. 

62                  An anticipatory document must be read with the benefit of the understanding and from the point of view of or by adopting the mantle of the skilled addressee: Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 at [21]-[24].  Further, a qualified reader of an anticipatory document must be enabled ‘at once [to] perceive and understand and be able practically to apply the discovery with the necessity of making further experiments’: Hill v Evans (1862) 4 De G. F & J 288 at 300 (“Hill v Evans”). The Hill v Evans  phrase ‘without the necessity of making further experiments’ has been construed to mean without the need for the exercise of any inventive ingenuity by a qualified reader to understand what the invention discloses: C. Van der Lely N.V. v Bamfords Ltd [1963] 80 RPC 61 at 71/72; King, Brown & Co. v Anglo‑American Brush Corp. (1892) 9 RPC 313 at 320; Nicaro at 517 per Lockhart J. and at 531 per Gummow J., including the Australian cases referred to by Gummow J. at lines 2 and 36.  See also Werner (RD) & Co. Inc. v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 at 706.  It has been recognised in a number of authorities that something other than literal or explicit disclosure may be sufficient.  A recent statement to that effect was made by Black CJ and Lehane J in Bristol‑Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 at [67] (“Bristol‑Myers”), where their Honours said after reviewing the authorities (including General Tire):

“What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention.  A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”

63                  However, even allowing for disclosures implicit in what is described, skilled addressees are not required to rummage through the prior patentee’s ‘flag locker’ to find a ‘flag which the [prior patentee] possessed and could have planted’: ICI Chemicals v Lubrizol Corp (2000) 106 FCR 214 at [51] (“ICI v Lubrizol”).

64                  Questions of anticipation can be difficult in cases where a broad chemical claim in an alleged anticipatory document, in its terms, encompasses many, even thousands of compounds.  Questions can arise as to whether such a broad claim in a patent (or even a divisional thereof) discloses, sub silentio, a particular compound from the broad class, which is the subject matter of a later application.

65                  The world‑wide dispute between Beecham Group Limited and Bristol‑Myers Company over a new penicillin, Amoxycillin, is an example of such difficult questions of anticipation: Beecham Group Limited’s (Amoxycillin) Application [1980] 97 RPC 261 (“Beecham”); see also Bristol‑Myers at 546and University of Georgia Research Foundation v Biochem Pharma Inc. (2000) 51 IPR 222 at 233 (“University of Georgia”).  In such cases, in the absence of a skilled addressee understanding or perceiving that the specific compound was part of what was taught by the patent or in the absence of an ‘enabling disclosure’ of the particular compound claimed later, the earlier document does not necessarily disclose the particular compound claimed later, despite the fact that such a compound may be encompassed by a general disclosure.  A sound account of the relevant distinctions between a ‘paper disclosure’ and an ‘enabling disclosure’ in the field of chemistry is given by Dr S D Barker in University of Georgia at 233 and 237.

66                  Those cases (and the evidence of the experts in this proceeding to which I will turn shortly) highlight the danger of applying the ‘reverse infringement’ test to broad chemical claims by reference to whether a description of a broad class of compounds encompasses a specific compound later disclosed.  It is possible to imagine many cases where asking the question ‘does a prior claim encompass a later disclosure?’ will give the same practical result as asking the Meyers Taylor question which is ‘would a prior claim constitute an infringement of a later disclosure (if a patent therefor were valid)?’  However, with a claim to a broad class of chemical compounds, such an approach will not always or necessarily dispose of the question of what is taught to a skilled addressee; while no trope should be overworked in the law, on one view, adopting such an approach where the alleged anticipation contains a very broad claim to a whole class of chemical compounds, could lead to a finding of a want of novelty based on the disclosure of a whole flag locker without any teaching (ie. disclosure for novelty purposes) of a particular flag.  Such an approach in these circumstances might leave little room for patents of addition and selection patents.  For examples of the latter see Shell Refining and Marketing Co Ltd’s Patent [1960] 77 RPC 35; Dupont (Witsiepe) Application [1982] FSR 303 (H.L.)

67                  The refusal by the Full Court to grant leave to appeal in a brief decision in ICI v Dupont especially at [18] and [20] does not foreclose any question, arising on different evidence, as to whether the Lubrizol patent teaches the specific ternary compound of HFCs, which is the subject matter of this proceeding.

68                  In the field of chemistry fine distinctions are often necessary between a ‘fleeting’ or ‘paper’ disclosure or the ‘intellectual content’ of a disclosure on the one hand, and a ‘disclosure for novelty purpose’ or an ‘enabling disclosure’ on the other.  Not every disclosure is a ‘disclosure for novelty purposes.’  Beecham’s case, to which reference has already been made is apposite to this proceeding and illustrates this difficult point: Buckley LJ refers at 288 to the fact that the parent patent in that case encompassed ‘the entire field of α-aminopenicillins . . . and literally thousands of these compounds could be made.’  Buckley LJ also noted at 286 that an inclusive claim in a patent of addition for ‘broad spectrum penicillins’ must be treated as specifically claiming Amoxycillin.  Then at 290, he found that the prior patent of addition contained ‘no disclosure or promise’ or ‘teaching’ that taught Amoxycillin (emphasis added).  Accordingly, there was no want of novelty, arising out of a paper disclosure in an inclusive phrase.

The evidence

69                  Each of the skilled addressees (being the same skilled addressees upon whom Branson J. relied) gave evidence that despite the fact that integer (A) of the Lubrizol patent encompassed a ternary blend of HFCs, even encompassing specifically a mixture of R‑22, R‑125 and R‑134, it did not teach the specific ternary blend, at the relevant time.

70                  It is not clear to me why this evidence was not before her Honour on the earlier occasion.  It is often remarked that the role of the skilled addressee is confined to technical matters.  Skilled addressees do not necessarily give expert evidence, that is opinion evidence, about ultimate issues of fact.  The construction of a patent claim is a question of law and the question of what it discloses is a question of fact for the judge donning the skilled addressee’s mantle: see Nicaro at 523-524.

71                  In circumstances where a broad class of compounds is disclosed, the question of whether a skilled addressee is thereby taught a specific compound seems to me one where it is not inappropriate for a court to receive admissible expert evidence on the question of disclosure.  This opinion evidence then needs to be weighed in the usual way.  A greater willingness to receive such evidence has been discernible recently in both Australia and the United Kingdom: see ICI v Lubrizol at [49]; see also Technip France SA’s Patent [2004] RPC 919 at 927 [13/14]. 

72                  In this proceeding the expert evidence has been prepared on a clear substratum of fact in accordance with the principles explained by Heydon J. in the Court of Appeal of New South Wales in Makita (Australia) Pty Ltd v Sprowles (2001) 52 NSWLR 705.  This assists me in determining what is a narrow question of fact, namely, what is implicitly disclosed for novelty purposes, in the alleged anticipation. 

73                  The qualified experts, Mr Symons and Professor Ball, have endeavoured to read the Lubrizol patent and its claims in light of the knowledge they had in October 1991, this being the priority date of the claims.  This has been treated as the appropriate date for assessing the disclosure of a prior publication for novelty purposes (as opposed to merely construing it): see ICI v Lubrizol at [42]-[49]; Dupont v ICI at [61]-[62] and the authorities there cited by Branson J.; cf University of Georgia at 233.

74                  In any event, the possible alternative date for conducting this analysis, namely the date of publication of the Lubrizol patent, being November 1990, would only be more favourable to the applicant.

75                  The affidavits sworn by Mr Symons and Professor Ball set out in considerable detail their explanations as to what Lubrizol discloses to them in light of the knowledge they had in October 1991.

76                  They gave sworn evidence that:

(ii)                The Lubrizol patent discloses synthetic lubricants for use with a broad category or class of refrigerants, which includes HCFC and HFCs.

(iii)               The Lubrizol patent does not disclose any particular refrigerants, other than the specific examples of refrigerants and mixtures said to be useful in the liquid compositions of the invention at pages 8 and 9 of the Lubrizol patent.

(iv)              In particular, Lubrizol does not disclose R‑32 or R‑125, or either or both of them in a mixture with R‑134a.

(v)                Although the generic phrase “at least one fluorine‑containing hydrocarbon’ as used in the Lubrizol patent would encompass or include a ternary mixture of R‑32, R‑134a and R‑125, among many thousands of others, the Lubrizol patent does not teach or provide any direction or suggestion to adopt this particular ternary mixture of HFCs as a useful refrigerant.

77                  Mr Symons and Professor Ball also gave evidence that they had a very limited practical knowledge of R‑32 and R‑125 in or prior to October 1991.  Having regard to the circumstances in which this proceeding arises and having regard to her Honour’s reliance on Mr Symons and Professor Ball in the earlier proceeding, it is appropriate to set out the evidence before me in a little detail. 

78                  Mr Symons stated:

‘Read in light of the knowledge I had in October 1991, statement (A) [integer (A) of the Lubrizol patent] is to me a very broad, generic definition of a class of refrigerants.  I understand it as encompassing or covering all HFCs and HCFCs with one or two carbon atoms (as well as hydrocarbons containing fluorine and other elements) and blends or two or more such compounds.  However, I do not read statement (A) as disclosing any particular refrigerant or any particular blend of refrigerants.

The document at pages 8 and 9 clarifies that HFCs and HCFCs containing one or two carbon atoms can be used with the given lubricant.  The document then goes on to list eleven refrigerants that can be used in the fluid composition.  Thus, if I follow the teaching of this document in light of my knowledge in October 1991, the only direction that it gives me as to which particular refrigerant or refrigerants I should use with the polyol ester lubricant are these eleven refrigerants. However, even in this regard, the disclosure is very general.  For example, the document does not tell me whether any are suitable for use in, for example, low temperature applications.  Selection of say three refrigerants out of the eleven that are listed would provide potentially hundreds of blends to select from.  I envisage that to create even a small proportion of such blends, let alone every such blend, and test for its properties would be extremely onerous and time consuming.

Nowhere in the document am I told or taught to use R32 or R125.  There is no mention of these refrigerants at all.  Further, nowhere in the document am I taught to use a blend of R32, R125, and R134a.  Read in light of knowledge I had in October 1991, the document does not direct me to use this particular blend of refrigerants.

Statement (A) in Lubrizol includes within its scope any HFC having one or two carbon atoms, as well as blends of such HFCs.  It therefore encompasses R32, R125 and R134a, as well as a blend of these three HFCs.  However, it does not direct me to use this particular blend as part of the liquid composition of the invention.  If anything, reading Lubrizol as a whole in light of the knowledge I had in October 1991, I am directed to use one of the single refrigerants or blends disclosed on page 9 of the document or elsewhere in the document, such as R134a.  A blend of R32, R125 and R134a is only one of what could be many thousands of examples of HFCs, HCFCs and blends of HFCs and HCFCs falling within the scope of statement (A).

In October 1991, I was aware that R32 and R125 existed, however, I had had no experience with them and do not recall having any detailed knowledge of their properties or performance characteristics.  At the time I viewed them as exotic examples of HFCs, as opposed to R134a, which had been widely acknowledged and discussed in the literature. If I had read Lubrizol in October 1991 and my attention had been directed to these three refrigerants, I would have appreciated that each falls within the ambit of statement (A).  However, Lubrizol does not provide this direction and on reading Lubrizol in October 1991, I believe that these refrigerants would not have come to mind.  Accordingly, Lubrizol read in the light of my knowledge at that time, does not teach me to use a blend of these three refrigerants, or R32 or R125 at all.

In conclusion, for the above reasons Lubrizol, read in light of my knowledge as at October 1991, does not disclose the particular working fluid composition claimed in claim 1 of 29314/02 or the blend of R32, R125 and R134a that forms part of it.’  (emphasis added)

79                  Professor Ball stated:

‘With respect to component A [integer (A) of the Lubrizol patent), I understand that it is describing HFCs and HCFCs as well, both in general terms.  An HCFC is a fluorine‑containing hydrocarbon.  It includes chlorine as well as fluorine.  The document later on at page 6, lines 8-10 and page 8, lines 8-10 and lines 1517 expressly states that chlorine atoms may be present in addition to fluorine atoms in the hydrocarbon.

Component A also includes the limitation that the hydrocarbon contains only one or two carbon atoms and discloses that there maybe a blend of the hydrocarbons, as there is reference to there being “at least one” hydrocarbon present.

In light of my knowledge in October 1991, I understand component A as simply describing, by reference to a formula, a broad category of potential replacements for CFC refrigerants. That is, in light of my knowledge in October 1991, this part of Lubrizol tells me that a potential replacement refrigerant would be a hydrocarbon that contains fluorine atoms either alone or with chlorine atoms.  The statement excludes CFCs.

In October 1991, I understood that it was reasonable to limit the selection of a refrigerant to a hydrocarbon having one or two carbon atoms.  The majority of replacement refrigerants would likely have no more than two carbon atoms due to the issue of boiling point.  I also appreciated that a replacement refrigerant could be a single refrigerant or a blend of different refrigerants, which is consistent with component A.

As such, component A by itself does not disclose to me any particular refrigerant.  Rather, it is a general formula which describes a broad category of potential CFC replacements.  In effect, it describes by means of a formula the universe (or a very substantial part of it) of potential replacements for CFC refrigerants.

The refrigerant component of the liquid composition is further addressed at pages 8-9 of Lubrizol.  The passages at page 8 continue to be very broad, stating that chlorine may be present in addition to fluorine, although the presence of fluorine alone constitutes one preferred embodiment.  In another preferred embodiment there are two carbon atoms.  Thus, the passages on page 8 do not in my opinion assist in better describing the refrigerant component.

On page 9, 12 specific refrigerants are disclosed and three examples of refrigerant blends are disclosed, namely R142b/R22, R134a/R23 and R22/R24/R124/R152a.  These are disclosures of actual refrigerants which fall within the broad formula of component A above.  In my opinion, these are the only particular refrigerants, and the only particular refrigerant blends, disclosed by Lubrizol as part of the liquid composition.  I note that the only ternary blend disclosed, R22/R124/R152A contains two HCFCs and does not require a single component that is required in the ternary blend defined in claim 1 of 29314/02.

. . .

Read in light of the knowledge I had in October 1991, Lubrizol does not disclose to me the particular working fluid composition defined in claim 1 (or any of the other claims) of 29314/02 [the unamended application].  Although Lubrizol does disclose lubricants of the kind the subject of the claims of 29314/02 and does disclose R134a which forms part of the composition claimed in 29314/02, it does not disclose the use of R32 or R125 at all and certainly not in a refrigerant composition, either individually or together with R134a.  That is, Lubrizol does not disclose to me the use of a blend of R32, R125 or R134a as a refrigerant composition in combination with lubricants of the relevant kind (the subject matter of the proposed amended application).  Nor does it provide any indication, hint or suggestion to select a particular blend of this kind.

I appreciate in light of the knowledge I had in October 1991, that each of R32, R125 and R134a falls within or are encompassed by the broad statement that is component A in Lubrizol.  Similarly, a blend of R32, R125 and R134a is included within or is encompassed by component A.  However, neither component A itself, nor Lubrizol as a whole or any part of it, teaches me to use this ternary blend to me or directs or recommends to me to use it.’ (emphasis added)

80                  It is clear that each skilled addressee, qualified as an expert for the purposes of explaining the technology, does not regard the Lubrizol patent as teachingthe specific ternary mixture which the applicant now claims. Each recognises however that the broad disclosure of integer (A) of the Lubrizol patent encompasses the specific ternary mixture.  Such distinctions are the distinctions deployed by the majority in the Court of Appeal in Beecham’s case.  It is therefore clear that the specific ternary mixture the applicant claims required some further inventive ingenuity as that phrase is used in the established authorities.

81                  While Branson J. did not have the benefit of this evidence (nor did the delegate from whose decision this ‘appeal’ arises), the evidence supports the correctness of her Honour’s findings of fact at [144].  The fact that such findings were made in the course of an alternative basis for her adverse findings in respect of application 654176 does not detract from them.

82                  Approaching the question of whether the Lubrizol patent anticipated the specific ternary mixture of HFCs, R‑32, R‑125 and R‑134a, first by reference to the ‘Meyers Taylor test’, the ‘reverse infringement’ test as explicated in Nicaro, Werner, Bristol Meyers and ICI v Lubrizol,as explained above, and secondly with the benefit of donning the mantle of the skilled addressees, I find as follows:

(i)                  Integer (A) of the Lubrizol patent claims ternary compositions of HCFCs and HFCs. 

(ii)                Integer (A), and the consistory clause, of the Lubrizol patent are broad enough to encompass ternary compositions of HFCs and broad enough to encompass the specific ternary mixture which the applicant now claims.

(iii)               Pages 8 and 9 of the Lubrizol patent describe and teach specific examples of fluorine‑containing hydrocarbons described as ‘useful in the liquid compositions of the present invention’ which are shown in a table of four compounds only one of which is an HFC, R‑134a.

(iv)              On page 9, the Lubrizol patent teaches six examples of HCFCs all of which contain chlorine atoms (R‑22, R‑123, R‑1416, R‑124, R‑124a and R‑142b) and five examples of HFCs which are, as already explained, chlorine free (R‑23, R‑134a, R‑143a, R‑152a and R‑134).

            (v)        The Lubrizol patent teaches mixtures of “fluorine‑containing hydrocarbons” which may be used as follows: 

‘Mixtures of fluorine‑containing hydrocarbons may be used, and the amount of each fluorohydrocarbon in the mixture may be varied as desired.  Examples of fluorohydrocarbons mixtures useful as (A) include: 142(b)/22; 134(a)/23; 22/124/152(a).’

(Example 142(b)/22 is a binary mixture of HCFCs, 134a/23 is a binary mixture of HFCs and 22/124/135 is a ternary mixture of two HCFCs and an HFC).

(vi)       There is no disclosure for novelty purposes ie. no teaching, on page 9 or anywhere in the Lubrizol patent of any specific ternary mixtures of HFCs or the particular ternary mixture of HFCs which the applicant now claims.

83                  In my judgment it is not correct to say that the Lubrizol patent taught the specific ternary mixture of HFCs, R‑22, R‑125 and R‑134a.  Accordingly, I would find the present application, as proposed to be amended before the delegate, novel over the Lubrizol patent.

84                  It can be noted this is consonant with the approach of Branson J. to the ‘reverse infringement’ test at [144] of her Honour’s judgment in respect of ternary mixtures, which must have included the subject matter of Claim 10 of 654176.

85                  There is no inconsistency between findings numbered (i)-(v) in paragraph 82 above and findings made by Branson J. in the earlier decision.  In my view her Honour did not make any express finding on the subject matter of finding numbered (vi) above which I would regard as both careful and deliberate given her Honour’s findings at [144] of her judgment.  Accordingly, there is no genuine inconsistency between the finding numbered (vi) in paragraph 82 above and her Honour’s conclusions in respect of the parent application.

86                  If I am wrong in this analysis, and if and to the extent that my finding is not consistent with any implicit finding of Branson J. in respect of the parent application, the difference is confined very narrowly to the specific ternary mixture of HFCs now claimed by the applicant in its proposed amendments annexed to the delegate’s decision.  On that issue, I have had the benefit of evidence from skilled addressees which it appears her Honour did not have and I have applied the ‘reverse infringement’ test by reference to established principles binding on me.  I have for that purpose recognised a distinction between a ‘paper disclosure’ and a ‘disclosure for novelty purposes’, which distinction was not necessary to her Honour’s decision in respect of a much broader claim over the earlier anticipation.  To the extent that Branson J.’s earlier decision might be taken to implicitly cover the specific ternary mixture of HFCs now claimed, the doctrine of stare decisis does not compel me to adopt a factual conclusion, made by another single judge, in a different setting and based on different evidence: La Macchia & Ors v Minister for Primary Industries and Energy and Anor (1992) 110 ALR 201.  It is not necessary for me to consider the further proposed amendments provided for the purpose of this proceeding.

87                  The decision of the respondent’s delegate must be set aside under s 160(d) of the Patents Act.  As the respondent’s delegate did not have the benefit of the new evidence before me, it appears to me appropriate pursuant to the powers contained in s 160(e), to remit this matter to the delegate to reconsider the application, including the issue of proposed amendments in the light of these findings and the orders made.  While the appeal is successful, in all the circumstances, I would not regard it as appropriate to award any costs against the Commissioner.

Associate:

Dated:              16 December 2004