FEDERAL COURT OF AUSTRALIA

Technological Resources Pty Limited v Tettman [2019] FCA 1889

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be allowed.

2.    The decision of the delegate of the Commissioner of Patents given on 27 March 2018 be set aside.

3.    Australian Patent Application 2011261171 proceed to grant.

4.    The respondent pay the appellant’s costs of this appeal and of the opposition before the Commissioner of Patents.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

JAGOT J:

THE APPEAL

1    This is an appeal under s 60(4) of the Patents Act 1990 (Cth).

2    The appellant is the applicant for Australian patent no 2011261171 titled “Separating mined material” (the 171 application). The respondent successfully opposed the 171 application before the Commissioner of Patents: Raymond Ludwig John Tettman v Technological Resources Pty. Limited [2018] APO 22. The Commonwealth Scientific and Industrial Research Organisation (CSIRO) also successfully opposed the 171 application: Commonwealth Scientific and Industrial Research Organisation v Technological Resources Pty Limited [2018] APO 23 (CSIRO). Dr David Miljak from the CSIRO gave evidence in the CSIRO opposition proceedings and was one of the expert witnesses called by the respondent in this proceeding.

3    After filing its appeal the appellant applied for and obtained leave to amend the claims of the 171 application. The amendment involved narrowing the scope of the independent claims by adding a limitation from then claim 35 (“wherein the grade assessment [in the method] is a direct assessment of the grade”): Technological Resources Pty Limited v Tettman [2018] FCA 1770 at [10].

4    On 24 May 2019 the respondent filed amended grounds and particulars of opposition to which no reference has been made in this proceeding. During the hearing the appellant made it clear that it was proceeding on the basis that the respondent’s case was confined in accordance with the respondent’s submissions. The respondent did not suggest this was inappropriate. Accordingly, I proceed on the same basis. The respondent identified its grounds of opposition as follows:

(a)    all of the claims are not to a manner of manufacture;

(b)    claims 1, 3, 4, 6, 7, 8, 9, 10, 12, 13, 14, 15 and 16, 17, 19, 21, 22, 24, 25, 26, 27, 28, 30, 31, 32, 33, 35, 37, 38, 40 and 41 are not novel in light of Nienhaus et al, “Quality of LIF”, Australian Mining Monthly, September 2003 (Nienhaus);

(c)    claims 1, 2, 5, 8, 9, 10, 12, 13, 14, 15, 16, 19, 20, 23, 26, 27, 28, 30, 31, 32, 33, 34, 35, 37, 39, 40 are not novel in light of Kurth, “Online Analyser Technologies for Conveyed Materials – Timely, Representative and Reliable Data for Improved Process Control”. Presented at the Australian Mining Technology Conference, October 2007 (Kurth 2007);

(d)    none of the claims are inventive in light of the common general knowledge alone, or taken together with Nienhaus or Kurth 2007;

(e)    all claims lack clarity because the phrase “direct assessment of grade” is not clear.

5    It was common ground that given the undisputed priority date of the 171 application of 2 June 2010, the amendments made by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) do not apply.

6    It was also common ground that while called an appeal, the proceeding is in the Court’s original jurisdiction and involves a hearing de novo in which the respondent bears the onus of proof. In Commissioner of Patents v Sherman [2008] FCAFC 182; (2008) 172 FCR 394 the Full Court explained at [18]-[21] that:

(1)    the Court upholds the opposition only if clearly satisfied that the patent, if granted, would be invalid;

(2)    the only evidence to be taken into account at the hearing of an appeal under s 60(4) will be the evidence tendered or admitted at the hearing;

(3)    “…the outcome of a proceeding such as this ‘must be decided upon the evidence adduced before [the] Court’, even if a different case than that made before the Commissioner”; and

(4)    “…whilst the Court will make its own decision on the basis of the evidence before it, in deciding whether the applicant…has made out his case on the balance of probabilities, the Court will take into account the nature of the proceeding and the fact that the proceeding concerns the decision of an expert administrative decision-maker.”

7    In F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; (2000) 99 FCR 56 Emmett J explained the onus on the respondent in these terms at [67]:

The language employed in the cases to which I have referred suggests that it should appear clear to the Court that no patent granted in respect of the specification would be valid. I consider that, before the Court would uphold an opposition to the grant of a patent, the Court should be clearly satisfied that the patent, if granted, would not be valid.

8    In Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420 Bennett J said at [12]:

…where there are two opposing expert views that are conclusive on obviousness, both presented bona fide by witnesses of accepted expertise, unless one set of views can be rejected on proper grounds, the legal burden to establish a ground of opposition is not discharged; the Court cannot be practically certain that obviousness or lack of inventive step is established.

9    In Merial, Inc v Intervet International BV (No 3) [2017] FCA 21; (2017) 122 IPR 128 Moshinsky J explained the cases in these terms:

14.    While, for an opposition to be upheld, it must be “clear” that the patent if granted would not be valid, the standard of proof that applies is the standard generally applicable in civil proceedings, namely that prescribed by s 140 of the Evidence Act 1995 (Cth): Commissioner of Patents v Sherman at [16], [21]. Section 140 is in the following terms:

(1)    In a civil proceeding, the court must find the case of a party proved if it is satisfied that the case has been proved on the balance of probabilities.

(2)    Without limiting the matters that the court may take into account in deciding whether it is so satisfied, it is to take into account:

(a)    the nature of the cause of action or defence; and

(b)    the nature of the subject-matter of the proceeding; and

(c)    the gravity of the matters alleged.

15.    In Communications, Electrical, Electronic, Energy, Information, Postal, Plumbing and Allied Services Union of Australia v Australian Competition and Consumer Commission (2007) 162 FCR 466, Weinberg, Bennett and Rares JJ stated at [30]:

The mandatory considerations which s 140(2) specifies reflect a legislative intention that a court must be mindful of the forensic context in forming an opinion as to its satisfaction about matters in evidence. Ordinarily, the more serious the consequences of what is contested in the litigation, the more a court will have regard to the strength and weakness of evidence before it in coming to a conclusion.

16.    In the present context, the Court approaches the task of fact finding mindful of the ultimate issue to be determined, which is whether the opponent has clearly satisfied the Court that a patent, if granted, would not be valid.

10    In Meat & Livestock Australia Ltd v Cargill, Inc [2018] FCA 51; (2018) 354 ALR 95 at [11], Beach J said:

Now there seems to be some difference in the authorities concerning the formulation of the relevant test. Some authorities use the language of “practically certain”, whilst other authorities use the language of “appears clear” or “clearly satisfied” that the patent, if granted, would be invalid. It has been suggested that the varying phraseology is to similar effect (Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52; [2010] FCA 1061 at [33] per Besanko J) although I am not so convinced; there is something to be said for justifying the historical use of the former phrase in the earlier acceptance phase only, which is ex parte, rather than in the later opposition phase, which is inter partes. In any event, for my part I prefer the phraseology of Emmett J. But I have also adopted the approach of Bennett J in Austal Ships at [12] that where there are conflicting sets of expert opinions on an issue such as a lack of inventive step presented bona fide by witnesses of accepted expertise, then unless one set of views can be rejected on proper grounds, the legal burden on the opponent to establish to the requisite degree the relevant ground of opposition will not be discharged. In such a scenario, I could not be clearly satisfied that the ground of opposition had been made out. But notwithstanding these observations, I accept for present purposes that primary facts (as distinct from secondary conclusions or the ultimate ground of opposition question) that are relevant to and that are said to support any ground of opposition need only be established by the opponent on the balance of probabilities.

11    In SNF (Australia) Pty Ltd v BASF Australia Ltd [2019] FCA 425; (2019) 140 IPR 276 at [22]-[28] Beach J explained that:

(1)    the respondent bears the onus of establishing its grounds of opposition and for the opposition to be upheld it must be clear that the patent, if granted, would not be valid;

(2)    as Bennett J said in Austal Ships, this means that if there are competing expert opinions on a question such as lack of inventive step and one set of opinions cannot be rejected on proper grounds, the respondent will have failed to discharge its onus of proof;

(3)    the higher standard of satisfaction does not apply to findings of underlying primary facts: Austal Ships at [12];

(4)    as Besanko J said in Aspirating IP Ltd v Vision Systems Ltd [2010] FCA 1061; (2010) 88 IPR 52 at [35]:

The primary facts are to be established on the balance of probabilities, but the ultimate facts – the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness – must be proved to the level of practical certainty;

and

(5)    the following matters need be proved on the balance of probabilities only:

(a)    the materials routinely referred to by a person skilled in the art;

(b)    whether various matters formed part of the common general knowledge at the priority date and what about them and their use was common general knowledge at the priority date…;

(c)    whether relevant prior art…would have been ascertained, understood and regarded as relevant by a person skilled in the art at the priority date…;

…

THE 171 APPLICATION

Technical information

12    The appellant provided a summary of the evidence about the technical background of the relevant field of mineral processing of ore which may conveniently be adopted. This part of my reasons is not intended to suggest that all of this information formed part of the common general knowledge of the skilled addressee of the 171 application. I deal separately below with the common general knowledge.

13    Accordingly, as the appellant put it, mining is the process of extracting rock containing valuable minerals from the earth. Mineral processing is the process of extracting the valuable minerals from the mined rock, utilising a number of interconnected stages. The percentage of a desired element (i.e. an “element of interest”) in the rock (either by weight or volume) is called the grade of that element (although there is an issue of construction about the meaning of grade as used in the 171 application which I do not intend to pre-determine). The grade of the valuable element or elements is an important factor (together with the cost associated with mining and mineral processing) in determining whether an area (or block) of material in the mine is economic to treat (i.e. whether the value of the revenue received from the sale of the minerals outweighs the costs). High grade materials contain more of an element of interest than low grade materials.

14    Material that is economic to process is called ore and material that is not economic to process is called waste. Waste material can also be inadvertently mixed in with the ore and this is known as dilution. Some areas of waste need to be mined to access areas of ore, but the waste is not processed.

15    The mined ore, also known as run-of-mine (ROM) ore, is the feed for the mineral processing plant (also called “mill” or “concentrator”, which is typically where the majority of the mineral processing equipment is located). Ore contains both valuable and non-valuable minerals and the non-valuable minerals contained within the ore are often referred to as gangue.

16    Throughput describes the amount of material that can pass through a machine in a set period of time (tonnes per hour).

17    The role of a mineral processing engineer includes: (a) characterising ROM ore for the purposes of mineral processing; (b) developing flowsheets for the recovery of valuable minerals; (c) building and/or operating mineral processing plants for the recovery of valuable minerals; and (d) optimising mineral processing circuits. Broadly speaking, mineral processing involves: (a) coarse comminution (crushing and screening); (b) fine comminution (grinding); and (c) recovery stages (e.g. flotation, leaching).

18    Comminution is the term used to describe the processes which reduce the particle size of rocks by, first, crushing (most often in combination with screening) and, secondly, grinding (in combination with size classification).

19    Crushing can be required to prepare the ore to a particle size suitable for the next stage in the comminution process or to prepare the ore to a particle size suitable for a recovery stage (e.g. leaching). Crushing can be done in a single stage (e.g. implemented by a “primary crusher”) or multiple stages (e.g. by a “primary crusher”, “secondary crusher” and “tertiary crusher”), before the crushed material moves onto the grinding stage. For example, the ore discharged from a primary crusher consists of a range of particle sizes (i.e. rock sizes) from very small (a few millimetres) up to typically a maximum of around 500mm in diameter and sometimes coarser. Primary crushed size ore is typically fed onto a plant feed conveyor belt where the particles stack on top of each other in a continuous stream. The material becomes progressively finer as it moves through secondary and tertiary crushing.

20    The product from the crushing circuit is usually fed to the grinding circuit. It may be that the product from the crushing and screening circuit is itself the final product of the mineral processing circuit. In this case the crushing and screening circuit operates as the recovery stage.

21    Grinding can be undertaken in a single stage or multiple stages and by a variety of types of grinding mills. Grinding aims to further reduce particle size as compared to crushing in order to further improve the liberation of valuable minerals. Grinding is often interspersed, in various combinations and permutations, with the recovery stages.

22    A recovery stage refers to processes where: (a) valuable minerals are separated from neighbouring gangue minerals; and/or (b) valuable metal is extracted from the minerals; and/or (c) valuable minerals are separated from other neighbouring valuable minerals. Recovery stage techniques are typically used in combination. A recovery stage technique is usually classified as either wet (using water as a significant part of the process) or dry (largely in the absence of water). Some examples of recovery stage techniques are leaching (wet recovery); flotation (wet recovery); gravity concentration, also referred to as gravity separation (wet recovery); magnetic separation (wet or dry recovery); and particle sorting (dry recovery).

23    Particle sorting is a dry recovery process which uses sensors to measure the grade of individual particles, and separates the individual particles based on that measurement. The sensor assesses each individual particle (i.e. each rock) and measures something that is different in the valuable particles compared to the waste particles (for example, density, colour or reflectiveness). Based on that measurement, an assessment is made whether to accept or reject each particle. The sorting system will then separate individual particles using a particle ejection mechanism which can be physical (e.g. flappers or a paddle) or pneumatic (high pressure air).

24    Pre-concentration refers to a mineral processing stage, occurring early in a mineral processing operation (ideally, as early in the operation as possible), in which waste is removed from ore in preparation for downstream conventional mineral processing steps.

25    Bulk sorting is a form of ore sorting in which a sensor is used to make an assessment of material on a bulk basis (rather than on a “particle” basis as occurs in particle sorting) to allow the material to then be separated on the basis of that assessment. A bulk sorting system would typically comprise a sensor, directly coupled to a microprocessor to assess the reading, and a physical diverter directly coupled to the microprocessor in order to effect the separation based on that assessment.

The skilled addressee

26    It was common ground that the 171 application is to be construed through the eyes of the person skilled in the relevant art and that this notional construct may involve not a single person but a team whose combined skills would normally be used in interpreting and carrying into effect the instructions in the patent: General Tire & Rubber Co Ltd v Firestone Tyre and Rubber Co Ltd [1972] RPC 457; (1971) 1A IPR 121 at 138.

27    The skilled addressee is a non-inventive worker in the field: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173 (Lockwood [No 2]) at [54]. Depending on the field, the hypothetical non‑inventive worker may be highly qualified with a demonstrated capacity for original research: Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 at [30].

28    The respondent submitted that the skilled addressee of the 171 application is involved in a team with experience in mineral processing in Australia and has expertise in sensing technologies for the sorting of ores. Further, according to the respondent, the 171 application is directed to technical consultants and mineral processing engineers in the research and development departments of mining companies who had a greater level of knowledge of technical developments than mineral process engineers who were operators on a mine site. The 171 application, said the respondent, is not directed to the “…lowest common denominator of mineral processing engineer”.

29    The appellant accepted that the skilled addressee of the 171 application would have knowledge of sensor technologies to the extent that they formed part of the common general knowledge before the priority date but disputed the respondent’s proposition that the skilled person would necessarily be engaged in research and development in mineral processing or have the highly detailed knowledge of an expert in sensor technology.

30    I agree with the appellant’s submissions. The background to the 171 application, as will become apparent, is the processing of low grade stockpiles of ore in a cost efficient manner. The skilled addressee of the 171 application is a mineral processing engineer involved in ore processing but is not to be taken to be confined to a technical consultant or member of a research and development team with knowledge far exceeding that of an engineer directly involved in the processing activities. As the appellant said, such a notional person would have knowledge of sensing technologies to the extent they formed part of the common general knowledge but would not be an expert in sensor technologies.

31    The respondent adduced expert evidence from Dr Miljak and Dr Robert Morrison. The appellant adduced expert evidence from Dr Andrew Bamber.

32    Dr Miljak is a Principal Research Scientist and Group Leader at the CSIRO. His specialist expertise is in the on-line measurement of ores in the mineral industry. As such, I consider that his experience of and expertise in relation to sensor technologies exceeds that of the skilled addressee of the 171 application who would not have Dr Miljak’s specialist expertise in sensor technologies. It is also apparent that Dr Miljak is an inventive expert. He has developed a low frequency microwave (LFM) moisture analyser. He has been involved in original research in relation to sensor technologies. He is the inventor named in respect of a patent concerning the on-line magnetic resonance measurement of conveyed material. Accordingly, Dr Miljak’s evidence should not be seen as necessarily representative of the knowledge that would be held by the skilled addressee of the 171 application.

33    Dr Morrison is a mineral processing engineer who has worked in the mining industry in Australia and overseas and as a technical consultant in the field. His description of his experience indicates that he too should not be seen as representative of the non-inventive expert in the relevant field. He has been involved in the development of software for the simulation and analysis of comminution (that is, grinding mills). He has also been involved in a number of collaborative research programs coordinated by the Australian Minerals Research Association (AMIRA). He routinely reviewed patents to understand whether his research team could obtain patent projection for projects. From this it is apparent, in my view, that Dr Morrison’s knowledge cannot be characterised as representative of the skilled addressee of the 171 application. In common with Dr Miljak, but for different reasons, I consider that Dr Morrison’s knowledge of the field would exceed that of the skilled addressee of the 171 application.

34    Dr Bamber is a mineral processing engineer whose main experience in the field has been outside of Australia. There is evidence that the field is international and Dr Bamber has been involved in collaborative work with Australian universities and institutions including AMIRA. His PhD thesis area concerned pre-concentration and waste disposal systems for the increased sustainability of hard rock metal mining. He has worked in mines and the consulting industry in Africa, the Americas, Asia, Australia and Europe. He founded MineSense Technologies Ltd in Canada in 2009, a company which develops and markets sensor-based grade control and sorting solutions to large scale base-metal and precious-metal mining operations. He has conducted original research and development into new sensor based sorting technologies and is listed as a co-inventor on various patents related to his research. For these reasons I also consider that Dr Bamber’s knowledge would exceed that of the skilled addressee of the 171 application.

35    My conclusions about the experts, that they are inventive experts in or connected with the relevant field, does not mean that their evidence is irrelevant. It means that it cannot be assumed that the knowledge of the experts is common general knowledge in the field. While I do not suggest that the skilled addressee of the 171 application is the “lowest common denominator of mineral processing engineer”, I consider it important to recognise that the experts who have given evidence should each be seen as highly qualified and inventive workers in the field with specialised knowledge and experience which should not necessarily be attributed to the skilled addressee of the 171 application who is a mineral processing engineer with an interest in the processing of low grade stockpiles of ore in a cost efficient manner. Such a person would not necessarily be engaged in research and development and would not necessarily have the highly detailed knowledge of any of the expert witnesses or an expert in sensor technology.

36    The respondent submitted that Dr Bamber was not as well-placed to assist the Court as Dr Miljak and Dr Morrison. The respondent said that Dr Bamber’s direct experience in Australia was after the priority date of the 171 application and he had not undertaken any educational course in Australia or attended any conferences organised by peak mining industry bodies in Australia. According to the respondent, it is not to the point that the field was international as it was apparent that a distinction could fairly be drawn between the person skilled in the art in Australia and elsewhere. According to the respondent:

Although Dr Bamber obtained information in relation to pre-concentration from the Australian Mineral Industries Research Association (AMIRA) (a body which was highly regarded in Australia in relation to mining techniques and mineral processing), and was broadly aware of the work AMIRA was undertaking, Dr Bamber did not otherwise collaborate with them. Although he worked as an international consultant, he did not work in Australia. He worked with a number of Australian individuals, each of whom were aware of pre-concentration, but does not explain how that interaction enabled him to comment on their common general knowledge. He was aware of CSIRO, but he had no contact with them before the priority date. He did not know of Dr Cutmore, who had won the Australia Prize for his work on online analysis systems in 1992. Nor did he have much knowledge about CSIRO’s sensing technologies. He was not aware of Scantech, or Mr Kurth. He was not aware of online analysis technology used for bulk sorting coal in Australia.

…

As well as not being aware of many aspects of sensor-based sorting technology that was being developed and commercialised in Australia, Dr Bamber’s evidence is that he had a greater knowledge and understanding of pre-concentration techniques than most mineral processing engineers.

37    It was apparent that given his exposure to Australian developments (which was more limited than that of Dr Morrison and Dr Miljak), Dr Bamber was unaware of some matters in Australia of which Dr Miljak and Dr Morrison were aware. As I have said, however, Dr Miljak and Dr Morrison both possessed specialised expertise and knowledge which I would not accept as common general knowledge possessed by the skilled addressee. Given the international nature of the field and Dr Bamber’s highly specialised knowledge and research of the very field with which the 171 application is concerned I do not find the respondent’s submissions about the limited utility of Dr Bamber’s evidence to be persuasive. In particular, if some knowledge had been generally assimilated in the field in Australia then I anticipate that given his highly specialised expertise in that field such knowledge would also have been assimilated by Dr Bamber. I do not accept that in this international field where mineral processing engineers frequently work around the world Australia was a bastion of particular knowledge not shared by other countries involved in the mineral processing industry.

38    I also consider that all of the experts gave relevant evidence and, in my view, did their best to assist the Court. The appellant’s criticisms of Dr Morrison as not having answered questions clearly and directly should not be given much weight. It seems to me that Dr Morrison’s answering style was a product of his personality rather than any desire to avoid answering the question. It may be accepted that Dr Miljak was in a position of a potential conflict of interest given that he is an inventor of magnetic resonance sensor technology for ore sorting and is on the advisory board of a company established to commercialise this technology. However, I did not apprehend that Dr Miljak was doing anything other than answering all questions to the best of his ability whilst mindful of his obligations to the Court. The appellant also noted that all of Dr Miljak’s evidence was given after he had seen the 171 application which raises the spectre of hindsight bias in respect of his evidence. The risk of unconscious hindsight bias is real and should not be disregarded in the weighing of Dr Miljak’s evidence. I consider that this feature of Dr Miljak’s evidence is particularly relevant to the issue of inventive step and I have taken it into account as indicated in my reasons below.

The common general knowledge – principles

39    The common general knowledge “…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”: Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 292.

40    Accordingly, as Middleton J said in Ranbaxy Laboratories Ltd v AstraZeneca AB [2013] FCA 368; (2013) 101 IPR 11 at [215]:

Common general knowledge is knowledge actually known or used by skilled addressees generally, or accepted by “the bulk of those who are engaged in the particular art”: see British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 at 250. As the High Court emphasised in Aktiebolaget Hässle (2002) 212 CLR 411 at 426 [31], information cannot be treated as part of the common general knowledge unless there is “evidence of its general acceptance and assimilation” by persons skilled in the art.

41    Justice Middleton said further at [217] in Ranbaxy:

…information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art.

42    It has been said that the common general knowledge is “…not limited to material which might be memorised and retained at the front of the skilled worker’s mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course”: ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577 at [112].

43    The High Court has said that “‘[c]ommon general knowledge’ was well understood as being ‘part of the mental equipment of those concerned in the art under consideration’”: Lockwood [No 2] at [55], citing Lektophone Corporation v S G Brown Ltd (1929) 46 RPC 203 at 225.

44    In Lockwood [No 2] the High Court also described the common general knowledge as that which was “known or used” in Australia as background knowledge available to all in the relevant field.

45    The appellant made this submission:

A fact does not form part of the CGK [common general knowledge] merely because it is known or even well known. Something should not be considered part of the CGK unless it has been used. Even then, it must be sufficiently widely used to become generally accepted and assimilated into the minds of people skilled in the relevant art and, therefore, part of the CGK.

(a)    Wake Forest v Smith & Nephew (No 2) [[2011] FCA 1002] (2011) 92 IPR 496 at [99].

(b)    Orion v Actavis [2015] FCA 909 at [294], [299], [300], [312].

46    In Wake Forest v Smith & Nephew (No 2) at [99] this was said:

A fact does not form part of the common general knowledge merely because it is known or even well known. Nor does the use of something per se qualify it, as Luxmore J in British Acoustic (cited by the Court of Appeal in General Tire at 135) stated at 250:

It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art.

47    In Orion v Actavis Rares J was dealing with the specific circumstances relevant to the use of a particular drug and was not expressing any issue of principle.

48    As a matter of principle, I consider it possible that some fact might be common general knowledge in a field but otherwise accept that a lack of use will be a relevant factor in deciding whether a matter does or does not constitute part of the background knowledge assimilated by the bulk of the practitioners in the relevant field. For example, as was recognised in Lockwood [No 2] at [111]:

Common general knowledge has negative as well as positive aspects. Practical and technical issues can affect the means by which a concept may be implemented in respect of an already known vendible product, and scepticism can inhibit recognition of the utility of applying a concept or idea to a known set of integers.

49    It follows from this that the touchstone is ultimately knowledge. Use or lack of use may tend to prove or disprove that the fact, matter or thing is available to and has been assimilated by the bulk of those engaged in the field.

The common general knowledge – content

50    Having regard to the submissions of the parties and the evidence, I make the following findings about the common general knowledge as at the priority date of the 171 application.

51    The concept of “grade” as meaning the concentration in the dry mass of a mineral or element of interest was common general knowledge.

52    The concept of “wet processing techniques” as unit operations in mineral processing that require the addition of water or an aqueous environment was common general knowledge.

53    The concept of “dry processing techniques” as unit operations in mineral processing that do not require the addition of water or an aqueous environment and often require the removal of water was common general knowledge.

54    It was common general knowledge that wet processing techniques were far more common in mineral processing than dry processing techniques because the conditions under which most minerals can be separated from other minerals are improved by the presence of water.

55    It was common general knowledge that dry processing techniques involved disadvantages, including low throughput, in minerals processing.

56    The concept of primary crushed ore as the product of the first crusher in mineral processing was common general knowledge.

57    The concept of pre-concentration, meaning a mineral processing step occurring as early as possible in which waste is removed from ore in preparation for downstream conventional mineral processing steps, was common general knowledge but the use of pre-concentration techniques in mineral processing outside of niche areas was not common general knowledge. Accordingly, a typical flow sheet strategy for mineral processing would not have included a pre-concentration step.

58    The experts all agreed that the concept of bulk sorting was known but not well known in the mineral processing industry and was not widely used in that industry. On this basis, I am not satisfied that the concept of bulk sorting in mineral processing formed part of the common general knowledge of the skilled addressee of the 171 application. I do not accept the respondent’s submissions to the contrary for the following reasons.

59    The common general knowledge of the skilled addressee of the 171 application is the knowledge that had been assimilated before the priority date by the bulk of those in the field which is the processing of ore. The fact that the experts in this case all knew of the concept of bulk sorting before the priority date does not establish that it was part of the common general knowledge in circumstances where the experts also all gave evidence that the concept was not well known in the industry and was not widely used. I do not accept that the experts, in saying that the concept was not well known in the industry, were engaging in nothing more than hearsay and speculation. From their expertise and experience they were in a position to give opinions about the extent to which knowledge of the concept of bulk sorting had been assimilated in the ore processing industry. They were also in a position to know that their knowledge and expertise exceeded that of mineral processing engineers generally due to their particular expertise and experiences. The fact that it was common ground between the experts that the mineral processing industry is conservative, with the result that it may take many years for new ideas to be implemented, does not undermine the effect of the evidence of the experts that the concept of bulk sorting had not been assimilated so as to form part of the stock-in-trade of mineral processing engineers involved in the processing of ore. As such, I do not accept the respondent’s submission that:

…where each of the witnesses (as a skilled addressee) gave evidence that they knew a particular fact, and that that fact was known, and appeared in texts which were widely read (if not by everyone) it should be found on the balance of probabilities that the relevant fact is common general knowledge.

60    Further, I do not accept that it was part of the common general knowledge that the concept of whole stream diversion (meaning the directing of a pre-determined stream of ore to a different destination) was a form of bulk sorting. I am not satisfied on the evidence that the concept of whole stream diversion itself formed part of the common general knowledge. The fact that all experts were aware of examples of it and it had been mentioned in a number of documents does not mean that the concept had been assimilated into the knowledge of the bulk of mineral processing engineers involved in ore processing.

61    In particular, the respondent has not proved that the work of the Aachen University research group and the AMIRA P902 report formed part of the common general knowledge. Dr Morrison’s evidence that the work relating to the AMIRA P902 report was supported by a number of mining companies (including major Australian mining companies) and was available for purchase does not mean that the information in the report had been assimilated into the stock of knowledge of the notional mineral processing engineer involved in the processing of ore in Australia. Dr Bamber did not accept that “…a great number of people in the mining industry would have been aware, especially if they were in Australia, about the AMIRA Project…”. The AMIRA P902 report contains a statement to the effect that it was for internal use only and disclosure to others was prohibited. Dr Morrison explained that the report would have been confidential for a limited period only and publicly available about 18 months after it was prepared (and thus before the priority date). However, as Dr Bamber said, to purchase the report a person would have to be aware of its existence which he was not before the priority date. While Dr Morrison described the report as “…very well known” he was heavily involved in its preparation whereas Dr Bamber was not. In my view, Dr Morrison’s experience cannot be attributed to the notional skilled addressee and Dr Bamber’s experience is more representative of the state of knowledge of that notional construct than that of Dr Morrison. It may be accepted that Dr Bamber is not located in Australia, but he is an expert in a narrow field where knowledge is an international commodity, so his evidence cannot be discounted. If the AMIRA P902 report had become part of the common general knowledge of persons in this field then I would have expected Dr Bamber to have become aware of it by one means or another. I infer that Dr Morrison’s knowledge of it was based on his personal involvement with the project, an involvement which I do not consider can be attributed to the skilled addressee. Having regard to the evidence about the AMIRA P902 report as a whole, the respondent has not persuaded me that the report’s existence or the content of it formed part of the common general knowledge of the skilled addressee of the 171 application at the priority date.

62    Nor do I accept that the respondents have proved that the Scantech PGNAA (prompt gamma neutron activation analysis) technology formed part of the common general knowledge. It may be accepted that Kurth 2007 and Kurth 2008 (which will be referred to in more detail below) were presentations by Henry Kurth on behalf of Scantech at mining industry conferences in Australia for the purpose of promoting the technology and that both Dr Morrison and Dr Miljak were aware of the Scantech technology. This does not mean, however, that the Scantech technology and its potential applications had been assimilated into the common general knowledge of the skilled addressee of the 171 application at the priority date. As the appellant noted, the Kurth documents are basically marketing. It must also be taken into account that, as noted above, it was common ground between the experts that the mining industry is conservative and slow to adopt new technologies. Given this, there is no reason to infer that knowledge of the Scantech technology and its potential applications had been absorbed into the stock-in-trade knowledge of the notional mineral processing engineer as at the priority date.

63    The fact that there were, as Dr Miljak put it, known technical markers to bulk sorting in the literature does not mean that a technique used in niche areas only had become part of the common general knowledge of the relevant skilled addressee. Nor has the respondent proved that the Cutmore and Eberhardt article, which Dr Miljak referred to as “…a very major marker for my group at CSIRO in understanding what was out there in terms of bulk sorting”, was part of the common general knowledge of the skilled addressee. Dr Bamber, who, as I have said, is (and was) an expert in a narrow field, remained unaware of Cutmore and Eberhardt but agreed with the views expressed therein that “…to date, industry applications have been limited by a lack of suitable sensors to a few niche processing areas such as for diamonds, magnesite, talc and uranium ores” and that there were “…entrenched misconceptions in regard to the economic viability of sorting”. This evidence suggests that even if bulk sorting as a concept did form part of the common general knowledge, the content of that knowledge would have been that the technique was suitable for niche applications but had not been proven to be suitable otherwise. This was for a number of reasons which included a lack of suitable sensors, despite what was described by Cutmore and Eberhardt as a renewal of interest in sorting between 1992 and 2002. This is a view with which Dr Bamber disagreed based on his experience. Dr Bamber’s experience is entitled to weight particularly given that, as he explained, he focused on pre-concentration techniques in his PhD thesis (before the priority date) because of its underutilisation in the industry.

64    Dr Morrison referred to the sorting of truckloads of uranium by sensing techniques in Western Australia as being described in a paper published in 1980 in what he described as the Mawby volume of Mining and Metallurgical Practices in Australasia. About this three things may be said. One is that this is also a description of a niche application. The next is that if it is the case that, as Dr Morrison said, most people in Australia “…doing mineral processing plant design would have spent a fair bit of time studying that volume because it’s a hugely useful summary of mining and processing operations across Australasia”, it is not apparent that they would have absorbed the particular paper to which Dr Morrison referred. Finally, if the content of the paper had been absorbed, it would have done no more than confirm bulk sorting as a niche technique inapplicable to the general processing of ores. Contrary to the submissions of the respondent, the evidence was not to the effect that bulk sorting was included in “…widely distributed references that would have been studied by students of mineral processing plant design”.

65    While all of the experts were aware of the development of sensing technologies for use in the bulk sorting of ore, Dr Bamber did not agree that the available sensor technologies were suitable for use in bulk sorting and was also not aware of the existence of heterogeneity at a suitable scale to enable bulk sorting. Dr Miljak and Dr Morrison had a different view based on the Scantech technology and its promotion but, as I have said, I do not accept that this technology and its applications formed part of the common general knowledge of the skilled addressee. When I also take into account that Dr Miljak and Dr Morrison, given their respective roles, were in positions which would have ensured they were aware of the most recent developments in ore sorting sensing technology in Australia, I am reinforced in my conclusion that Dr Bamber’s state of knowledge is more likely to be representative of the skilled addressee of the 171 application than that of Dr Miljak and Dr Morrison. As Dr Bamber said, and I accept, it “…would be unlikely that a mining company R&D manager or other technical appointee would be a specialist in sensor technologies”. While Dr Miljak said the “…the representatives of the research arms of the mining companies had gone to a lot of trouble to try and understand sensor technologies when they were speaking to my group in particular”. Dr Miljak’s group specialised in sensor technologies so it is likely that he was dealing with a more specialised cohort of mineral processing engineers than I consider representative of the skilled addressee. Dr Morrison’s evidence of people being very interested in instrumentation development was too vague to be helpful in this regard. Overall, I do not see the evidence of Dr Miljak and Dr Morrison as more persuasive than that of Dr Bamber about this issue.

66    I am also not persuaded that Dr Morrison’s evidence about Scantech’s CoalScan technology establishes any part of the relevant common general knowledge. As Dr Bamber said, he was not a coal engineer and did not particularly monitor developments in the coal industry. I consider this likely to be representative of the skilled addressee. As Dr Bamber put it, and as I accept forms the context for the 171 application:

This topic that we’re talking about is about minerals. My experience is in minerals in general, and my knowledge relates to minerals in general and, in particular, with respect to pre-concentration and the sorting of minerals an[d] ores. I cannot comment about coal. I wouldn’t claim to have particular knowledge or expertise in or of coal, so I can only comment with respect to minerals, mined ores of a mineral nature.

67    The appellant submitted, and I accept that:

Coal is not ore. Coal processing and mineral processing are different disciplines. Mineral processing engineers are not knowledgeable in, and do not typically refer to products and publications associated with, the coal processing field.

68    The experts all agreed that the concept of particle sorting was well known in mineral processing as a niche application, such as the radiometric sorting of uranium, optical sorting of industrial minerals, and x-ray luminescent sorting of diamonds. On this basis I am not satisfied that the use of particle sorting in the processing of ore formed part of the common general knowledge of the skilled addressee of the 171 application which is not concerned with any of the niche applications in which particle sorting was used. Rather, at best, the skilled addressee would have been aware that the use of particle sorting was confined to niche applications and had not been used in the general processing of ore. I do not accept the respondent’s submissions to the contrary for the following reasons.

69    The skilled addressee of the 171 application is a mineral processing engineer in relation to the processing of ore. The fact that particle sorting was a niche application meant that knowledge of particle sorting as a concept relevant to the field had not been assimilated so as to form part of the stock-in-trade of the skilled addressee of the 171 application. Further, as the appellant submitted, the weight of the evidence indicated that:

There was resistance to the application of particle sorting of ore in mineral processing because it faced significant challenges including difficulties associated with discrimination techniques provided by sensor technology, feed preparation and material handling.

70    This resistance is a kind of knowledge which, based on the evidence of the experts, I consider should be attributed to the skilled addressee.

71    The evidence also indicated that, as the appellant put it:

The resistance to the application of particle sorting of ore in mineral processing was compounded by the limitations of sensor based sorting technology. Apart from optical sorters used in the niche application of industrial minerals, sensor based sorters were not “off the shelf products” but rather were highly specialised for each application and required in-depth examination and integration into existing processes, even altering the processes to the sorters need.

…

There could be no reasonable expectation that any given sensor for sorting of ore would work unless and until it was tested in the actual mineral process. Laboratory testing of sensing based sorting could not provide that information.

72    The experts all agreed that the combination of bulk sorting of ore followed by particle sorting of ore was not known by them as a concept in mineral processing, was not well known and generally accepted by those working in the field of mineral processing in Australia and was not used in mineral processing in Australia. On this basis I am satisfied that the combination of bulk sorting of ore followed by particle sorting of ore was not part of the common general knowledge of the skilled addressee of the 171 application.

73    In the context of common general knowledge, the respondent submitted that:

X-ray fluorescence (XRF), natural gamma, PGNAA and derivatives, and laser induced fluorescence (LIF) sensor technologies were well known and generally accepted for use in on-line analysis of ores. They were being used in mineral processing for on-line analysis of ore. To be used in on-line analysis of ore, the sensors needed to be accurate and fast, and sufficiently robust to survive an industrial environment. That evidence is consistent with a 2002 article by Klein, Dunbar and Scobie, “Integrating mining and mineral processing for advanced mining systems” which names LIF and PGNAA as potential underground concentration technologies, and characterises them has having no particle size limitation and no capacity limitation (a characterisation which Dr Bamber accepted was reasonable). The article noted that LIF and PGNAA could be applied to online quality control for bulk solids during transportation on conveyors or in open vehicles. It also suggested their use in systems for allowing steering of flows, which the Respondent says is a reference to bulk sorting.

74    It is necessary to unpack this submission. The experts agreed that the identified technologies were well known and generally accepted in the relevant field as available technologies for mineral processing. However, the respondent has not proved that the 2002 article by Klein, Dunbar and Scobie, or its content, formed part of the common general knowledge of the skilled addressee. The fact that Dr Bamber was aware of the article does not prove this fact. Further, even if the article had been assimilated by the bulk of those in the field and formed part of the common general knowledge, I am not persuaded that the skilled addressee would have read the reference to the “steering of flows” in the context of an article dealing with online analysis as a form of bulk sorting. Dr Bamber disagreed with this proposition saying it was a reference to whole stream diversion which, despite the respondent’s submissions to the contrary, I consider Dr Bamber never accepted to be a form of bulk sorting. It is also necessary to note that, as the appellant submitted, the evidence supported the conclusion that:

The requirement for sensors for online analysis are very different to the requirements of sensors for sorting ore (bulk or particle sorting). Sensors for online analysis measure in near real time and can occur at various stages in the mineral processing operation. In contrast, sensors used for ore sorting must operate in real time, with fast and precise readings, with a direct connection to a microprocessor and communicate with low latency to physical diverters, in challenging physical environments.

(emphasis in original.)

75    To the extent the respondent suggested to the contrary based on the potential for a time lag between the sensing and the time for the material to travel through the system, I do not accept that online sensing is the same as the sensing that would be required for use in the bulk sorting of ore. Dr Miljak accepted that “…automatic ore sorting…requires fast and precise readings over a short time period” and that “…sensors used for ore sorting…have to operate in challenging physical environments”, and “…have to communicate with low latency to physical diverters that will affect the sort [sic]”. Dr Bamber agreed that there were these differences between online analysis and the potential use of sensors for bulk sorting, as did Dr Morrison. Dr Bamber said this:

So in the particle sorting world and the real time sorting world, the measurement time available, the phenomenon you’re trying to measure, is of the order of milliseconds. And therefore, the sensor measurement interval for a single measurement is of a similar order, milliseconds. And that measurement, if you think about a shot like a photograph, trying to take a photograph, it’s like taking photographs at a Formula One race where you’re trying to take a photograph of the Formula One car. And so your exposure needs to be sufficient to be able to take a picture of the car and know that it’s not just a red blur, but in actual fact a Ferrari. That’s the level of timeframe and fidelity that you need for a real-time measurement, in order to make a real-time decision, in order to make a real-time sort. And latency of a similar order. So latency being the time it takes for a measurement to be taken, and that measurement to be reported to the microprocessor is also of that similar order of milliseconds.

In the online analysis world, your criteria are not so much the fidelity of the single shot. So you’re not trying to take pictures of the Formula 1 car. You are trying to measure with very high precision and accuracy the metal content of the material that is past the censor in order to be able to report that with high fidelity to, for instance, the – you know, let’s say metal accountants at the mine. But it would correspond very closely over that period of time to the actual content of that material. So we’re now talking – on the one hand, we’re talking milliseconds with millisecond levels of latency. And on the other hand, we’re talking about measurements that themselves may take – I think it’s quoted in one of the articles. I think it’s the Kurth article – a matter of minutes. And many of those measurements that take themselves individually a matter of minutes add up over time to give you the result that you’re looking for. So you’re in orders of magnitude different timeframe world with respect to online analysis than you are with sensor-based sorting.

76    Further, I accept the appellant’s submissions that the evidence also supports the following conclusions at the priority date, having regard to the difference between bulk sorting of ore and online analysis of ore:

(1)    laser-induced breakdown spectroscopy (LIBS) had not been used for either bulk sorting or particle sorting of ore;

(2)    laser-induced fluorescence (LIF) had not been used for either bulk sorting or particle sorting of ore;

(3)    X-ray fluorescence (XRF) had not been used for either bulk sorting or particle sorting of ore;

(4)    PGNAA had not been used for either bulk sorting or particle sorting of ore; and

(5)    sensors based on radio frequency technology had not been used for either bulk sorting or particle sorting of ore.

77    Accordingly, the potential use of these technologies for the bulk or particle sorting of ore did not form part of the common general knowledge of the skilled addressee. To the contrary, as the appellant submitted, it was generally thought that sensor technologies were too slow, inaccurate or of insufficient scale in order to be incorporated into a conceivable bulk sorting application. Dr Miljak confirmed that even as at 2016:

…there are few sensors suitable for bulk ore sorting, as the ore sorting sensor ideally has a large sensing volume and be able to measure ore on conveyors that contain long metallic cores.

78    Otherwise, I accept the respondent’s submissions that the common general knowledge of the skilled addressee would have included the following:

(1)    Capacitance, moisture analysers, particle size analysers (coarse and fine) and weightometers, density gauges, and flowmeters were in use for online analysis; and

(2)    off-the-shelf sensor sorting systems for use in mineral processing were not available before the priority date. There was trial and error involved in every installation. Automatic sensor systems needed to be configured by optimising the speed of the conveyor, the type of sensor, the time taken to process the signal and the time to send instructions.

79    As to the relevance of heterogeneity, Dr Bamber’s PhD thesis was based on the premise that there was heterogeneity that was effectively overlooked in the industry, including in Australia. Dr Miljak agreed with Dr Bamber that you would have to know about heterogeneity for bulk sorting but considered that the relevant point was the scale of heterogeneity, and at the block mining scale the issue was well understood in Australia whereas at the two metre scale there was probably very limited information about heterogeneity. Dr Morrison also considered that the issue was one of scale and was one the industry was “…enormously well aware of” at the priority date. Dr Bamber made the point that it was heterogeneity between the two extremes of scale that was the necessary information for a bulk sorting operation and said “…there are no publications that I’m aware of that either speak to that length scale of heterogeneity or quantify that length scale of heterogeneity before the priority date”. Dr Miljak also gave evidence which I consider supports Dr Bamber that heterogeneity in the 20 to 1000 tonnes range was neither quantified nor well known at the priority date. Dr Morrison also agreed that such heterogeneity was not well known but said it was “becoming known”. He said that it was “[b]ecoming well known, but it wasn’t generally known, I think is fair”. As a result, I do not accept the respondent’s characterisation of Dr Morrison’s evidence that “…heterogeneity from 20 tonnes to 1000 tonnes was harder to detect without PGNAA online analysis, but that the existence of such heterogeneity was known, and techniques existed to measure it”. In my view, Dr Morrison’s evidence was more nuanced than this and, properly understood, did not suggest that knowledge of the relevant scale of heterogeneity was common general knowledge of the skilled addressee.

80    To the extent it is necessary to say so, I am not persuaded that Australia was necessarily leading the way in relation to sensing technologies for use in sorting before the priority date. Australia had made advances in that field, but as Dr Bamber said, and as I accept, the leading developer was Europe.

81    In the context of the common general knowledge the respondent made this submission:

Professor Herman Wotruba and his team (which included Nienhaus) at Aachen University were recognised by all of the witnesses for their expertise in sensing and sorting ore. In 2006, Professor Wotruba wrote a paper (the Wotruba article), which each of Dr Bamber and Dr Morrison had read before the priority date. Professor Wotruba described the Australian paper, Salter & Wyatt, as “fundamental”, and the CSIRO paper, Cutmore & Eberhardt, as “essential” and “fundamental”. Dr Bamber accepted the characterisation of Cutmore & Eberhardt as “i” [sic – “essential”].

Cutmore & Eberhardt describe sensing technologies for the automated analysis and sorting of mineral ores, based on a literature review. The Respondent says that Cutmore & Eberhardt was CGK, or alternatively, that the information in Cutmore & Eberhardt was CGK. The different technologies which were summarised in that review included nuclear, optical, x-ray sensor, and radio techniques.

82    The respondent has not proved that Cutmore and Eberhardt or that any part of its content was part of the common general knowledge of the skilled addressee. The respondent pointed to a passage in Cutmore and Eberhardt as follows:

The equipment and processes used depend on whether individual particles or bulk ore lots are being sorted…There have been a limited number of developments for the sorting of bulk ore lots. Bulk sorting can have a number of advantages in ore handling and throughput, but has the attendant disadvantage of offering less discrimination…CSIRO Minerals is presently involved in the development of new sensing techniques suited to ore sorting and characterisation…techniques that are currently being evaluated by CSIRO for bulk analysis are nuclear quadrupole resonance and neutron generator based elemental analysis.

83    Far from proving that this information formed part of the common general knowledge, the information itself indicates that the CSIRO’s evaluation and the results of that evaluation would not have been assimilated by the bulk of mineral processing engineers.

84    Apart from these matters, I accept the appellant’s submissions that it was common general knowledge that:

(1)    the feed size of the ROM ore that is fed into primary crusher is up to approximately 1.5m;

(2)    primary crushed ore is typically fed onto a conveyer belt where the particles will stack on top of each other and be unevenly distributed on the conveyer belt; there will be substantial variation of mass cross-section of particles of the conveyer; and

(3)    the minerals industry was conservative, relied on proven technologies and was slow to develop and implement new technologies.

85    I consider that the conclusions I have reached about the common general knowledge are supported by the evidence of Dr Bamber which I have accepted and, in particular, his PhD thesis. Dr Bamber completed his PhD thesis before the priority date. He explained that at that time and as at the priority date the concept of pre-concentration was known but not widely or commonly applied in the mining industry including in Australia. Because of his research for his Masters and PhD, he had a greater knowledge than most mineral processing engineers about this area including those in Australia. In his view, there was industry-wide resistance and opposition to new approaches including pre-concentration in the mining industry including in Australia. It was largely for this reason that he chose to centre his PhD on pre-concentration techniques and suggested in his thesis that the general industry-wide resistance to pre-concentration was largely unfounded and that mining companies should be considering pre-concentration including by comminution and size classification, ore sorting, dense media separation and coarse-particle flotation. Dr Bamber did not discuss bulk sorting as a pre-concentration technique in his PhD thesis even though he knew that bulk sorting was a subset of ore sorting which he did discuss. He did not do so because while he understood the concept he was not aware of how it could be applied in practice and believed that particle sorting would be preferable to bulk sorting as a pre-concentration technique. He anticipated that suggesting bulk sorting as a pre-concentration technique as a theoretical application “…would meet even more resistance than particle sorting or other pre-concentration techniques”. He continued to hold these views as at the priority date and before that date had not considered the details as to how bulk sorting could be applied in practice. He first published in relation to bulk sorting after the priority date in 2012.

The specification for the 171 application

86    The appellant provided a convenient summary of the 171 application which may be adopted.

87    Accordingly, as the appellant put it, the 171 application describes and claims methods and apparatus for identifying and separating mined material on a bulk basis (i.e. using bulk sorting). The specification explains that low grade ore stockpiles have “…potentially significant economic value notwithstanding the low grade of the ore” (page 3, lines 1 and 2). In addition, it describes how low grade iron ore (either stockpiled or not yet mined) can be upgraded “…using wet concentration and dry sorting plant flowsheets” (page 3, lines 27 and 28). However, it also highlights that the high operating costs associated with such upgrading methods which can often restrict the use of such flowsheet options.

88    The 171 application describes a method and apparatus for upgrading ore by implementing a system that assesses the grade of segments of ore and then separates the ore based on the assessed grade of segments of ore. This involves a combination of steps, initially separating ore on a bulk basis (i.e. bulk sorting), followed by either wet recovery stages or particle sorting or disposal. The use of bulk sorting followed by particle sorting presents an “…effective method of sorting mined material, particularly when it is necessary to sort large volumes of mined material at a high throughput and cost effectively” (page 5, lines 27 to 30).

89    Claim 1 is in the following terms:

A method of mining that comprises:

(a)    mining ore;

(b)    reducing the size of mined ore in a crushing step and producing a crushed ore having a primary crushed ore particle size;

(c)    assessing the grade of successive segments of the crushed ore by direct assessment of grade as the crushed ore is transported along a pathway;

(d)    separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segment; and

(e)    processing separated segments in a downstream processing plant and producing upgraded material.

90    As the respondent noted, independent claim 19 is for a “method of separating mined ore” that similarly comprises each of steps (b) to (e) of claim 1. Independent claim 37 is to an “…apparatus for separating a mined ore” that comprises each of steps (b) to (e) of claim 1, save that the separated segments which are processed are separated segments which are above the first grade threshold.

91    Accordingly, as the appellant summarised:

Independent method claims 1 and 19 and apparatus claim 37 each claim the following combination of features:

(a)    reducing the mined ore to a “primary crushed ore particle size”;

(b)    assessing the grade of successive segments of the crushed ore by “direct assessment of grade” as the crushed ore is transported along a pathway;

(c)    bulk sorting, i.e. separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segment;

(d)    processing separated segments in a downstream processing plant and producing upgraded material.

92    Further, as the appellant put it:

Claims 2 to 18 and 20 to 36 to 41 are dependent claims and introduce further limiting features to the claimed combinations. For example:

(a)    claims 3 and 21 include downstream processing by processing at least one separated segment by dry sorting particles;

(b)    claims 5 and 23 include processing: (i) at least one separated segment that is above the first grade threshold by dry sorting particles; and (ii) at least one separated segment that is below the first grade threshold by processing steps other than dry sorting particles basis, such as by wet concentration steps;

(c)    claims 8, 9, 26 and 27 include where the mined ore is iron ore or low grade iron ore;

(d)    claims 13 and 31 include assessing the grade by analysing the entire bed depth;

(e)    claims 14 and 32 include using prompt gamma neutron analysis (PGNA) to assess grade; and

(f)    claims 17, 35 and 41 include using a splitter system and chutes.

THE CONSTRUCTION ISSUES

Principles of construction

93    In Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 65 IPR 86 at [67] the following summary of the relevant principles was provided:

(i)    the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;

(ii)    a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24];

(iii)    the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corp Pty Ltd at 391;

(iv)    while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 at 39;

(v)    experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and

(vi)    it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485–486.

94    To adopt the respondent’s submission in this regard:

The principles of construction are well-established and are set out by Sheppard J in Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400. This summary was subsequently approved by French, Lindgren and Crennan JJ in Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 225 ALR 416 at 468 and Sundberg, Jessup and Middleton JJ in PAC Mining Pty Ltd v Esco Corp (2009) 80 IPR 1 at [27]:

(1)    The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.

(2)    It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

(3)    Nevertheless, in approaching the task of construction, one must read the specification as a whole.

(4)    In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.

(5)    If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.

(6)    A patent specification should be given a purposive construction rather than a purely literal one.

(7)    In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.

(8)    The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.

(9)    Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.

(10)    If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.

The issues in dispute

95    The respondent identified that the dispute between the parties concerned the meaning of the terms “grade” and “direct assessment” in claim 1 sub para (c) of the 171 application which refers to “assessing the grade of successive segments of the crushed ore by direct assessment of grade as the crushed ore is transported along a pathway”. The appellant identified that the issues in dispute would require consideration of the phrases and words “primary crushed ore particle size”, “grade”, “direct assessment of grade”/“indirect assessment of grade” and “dry sorting particles”.

Grade

96    The essence of the respondent’s case in relation to the meaning of “grade” in claim 1 involved the following propositions.

97    The 171 application states that the term “grade” is understood to mean “the concentration of an element of interest in an ore resource”.

98    There is a difference between an element of interest in an ore resource and the element of interest in an ore resource.

99    Dr Morrison explained that an “element of interest” may be “…either an element that is of commercial value or an element which could result in a penalty or rejection of the product material”. Accordingly, for iron ore, the key element with commercial value is the iron, while an element which could result in penalties is phosphorous.

100    Dr Miljak expressed views to the same effect saying that an “element of interest” could refer to a valuable element or an undesirable element. Thus, an element of interest is “…an element that mineral processing aims to control (e.g. sort or blend) from the mined material”. Further, the Kurth 2007 paper supports this position by stating that “[t]he neutrons interact with elemental atoms to generate gamma rays with distinctive energy levels. The spectral analysis identifies the elemental peaks and calculates abundance for each element of interest”.

101    The respondent submitted that Dr Bamber’s evidence to the contrary, that an element of interest means an element of commercial interest, involved a gloss on the definition in the 171 application. Dr Bamber accepted, however, that there are deleterious elements in ore which had to be managed through the mineral processing and that these deleterious elements are of interest to the customer. The experts agreed that, for iron ore, “phosphorous does not contribute to the quantitative definition of iron grade but it is an important component of how we view the ‘grade’”.

102    In respect of the passage in the 171 application following the definition of “grade” which refers to “…dry sorting particles from at least one segment that is above the first grade threshold and producing upgraded material that is above a second grade threshold” on which the appellant relied, the respondent made the following points:

(a)    The passage at page 6, lines 5-21 is referring to one embodiment of the invention that includes a step of dry sorting after the bulk separation step to produce upgraded material – earlier parts of the specification and the claim 1 are not so limited.

(b)    In any event, as noted by Dr Morrison, the outcome of such a dry sorting step will be two streams of material, one that is of a higher grade (i.e. concentration) of phosphorous and another that is of a higher grade (i.e. concentration) of iron.

103    The meaning of the term grade in the 171 application, submitted the respondent, is clear. It is the concentration of an element of interest in an ore resource. On this basis sub para (c) of claim 1 means:

…assessing the [concentration of an element of interest] of successive segments of the crushed ore by direct assessment of [the concentration of an element of interest] as the crushed ore is transported along a pathway.

104    According to the respondent, as a result, there is no basis for importing a limitation into the claim that the “grade”, that is “…the concentration of an element of interest…”, refers only to the valuable element. To do so would be to confine the scope of the claims by reference to limitations sought to be drawn from the specification but not reproduced in the claims and in the face of a clear definition. If the appellant had wanted to confine the scope of the claims in that way, it ought to have done so clearly.

105    The appellant submitted that “grade” in sub para (c) of claim 1 had to be construed in the context of the claims as a whole. Sub paragraph (b) refers to “…crushed ore having a primary crushed ore particle size”. In the context of the claim this means particles (i.e. rocks) of a size that would be produced by a primary crusher, which is the first crusher in the mineral processing circuit. On the evidence this would consist of particles in a size distribution typically ranging from very small (a few millimetres) up to a (theoretical) maximum of around 500mm in diameter. Further, as the experts agreed, the size distribution of particles produced by a primary crusher may be defined in terms of its P80, which means the maximum size of 80% of particles produced by the primary crusher. A typical P80 is around 200-250mm in diameter. The P100 or “top size” is a theoretical value being the maximum size of a particle that could be produced by the primary crusher (i.e. up to around 500mm).

106    In respect of the definition of “grade” in the 171 application, the appellant noted that the experts agreed that this is a “quantitative definition” of grade, in that it refers to the concentration of an element of interest, as opposed to a broader, “qualitative” understanding of grade that takes into account factors such as the presence of other (undesired) elements in addition to the element of interest. In this context, the “element of interest” in an ore resource is the desired element to be extracted from the ore resource. In the case of iron ore, this is iron.

107    Although Dr Morrison and Dr Miljak argued that an undesired or deleterious element such as phosphorus could be an “element of interest” in this context, according to the appellant, that proposition should be rejected. The proposition is inconsistent with the words of the definition, the teaching of the specification, the ordinary usage of the phrase “…of interest”, and the way in which a skilled person would ordinarily quote the grade of an ore resource. Specifically, the appellant relied upon the following references:

(a)    171 Application, p 6.1-3 – in the context of an “ore resource”, the words “of interest” refer to the desired element to be extracted from the “resource”.

(b)    171 Application, eg p 16.14-22; T35.4; T31.27-43; T32.3-20; T34.4-11; T34.31-T35.4; T36.35-T37.4; – the discussion of “waste”, “low grade” and “high grade” ore throughout the specification only makes sense if an increase in grade equates with an increase in concentration of the element of interest (not the converse). For example, it is non-sensical to want to achieve a “high grade” of a deleterious element such as phosphorous.

(c)    Morrison [62], [140], CB Tab 11 1.0141, 1.0160 – ordinary usage of “… of interest”.

(d)    JER [joint experts’ report] Q2; T21.17-23; T25.34-42; T26.23-40; T28.1-18 – it would be highly unusual to quote the “grade” of iron ore based on its phosphorous content.

108    Accordingly, the appellant submitted, a “common sense” construction should be given to the specification: Ranbaxy at [108]. The common sense construction involves construing grade to mean the concentration of a desired or valuable element of interest in an ore resource.

109    I agree with the appellant’s submissions. Construed in the context of the specification as a whole, the definition of “grade” does not take the meaning for which the respondent contends of an element of interest, be it valuable or deleterious, in an ore resource. In the context of the specification as a whole it is clear that the term “grade” is being used to describe the valuable or desirable element of interest in an ore resource. It is not to the point that the immediately succeeding passage on p 6 of the specification involves one embodiment of the claimed invention only. The relevant point is that the passage therein is consistent with the numerous other references in the specification, to which the appellant has referred, which indicate that the term “grade” as used in the specification is concerned with the valuable or desirable element of interest. This does not involve confining the scope of the claims by reference to limitations sought to be drawn from the specification but not reproduced in the claims and in the face of a clear definition. The definition is not clear. It is itself ambiguous. The definition is thus to be construed in the context of the specification as a whole. Once this is done its meaning becomes clear. To adopt the respondent’s meaning would be to give a literal rather than a purposive construction to the definition. Once the definition is given a purposive construction it cannot be said that applying that purposive construction to the term as it appears in claim 1 involves impermissibly narrowing the scope of the claim. To the contrary, it is to give the defined term its meaning as specified in the specification, that meaning having been determined by the orthodox processes of construction.

Direct assessment

110    The respondent submitted that “direct assessment of grade” as it appears in sub para (c) of claim 1 means an assessment relying on information that provides an indication of grade or, if not, that the phrase was unclear; as a result of the requirement for clarity in s 40(3) of the Patents Act (the claims must be clear) any patent granted in response to the 171 application would be invalid.

111    The respondent pointed to p 8 of the specification which states that the grade assessment “…may be a direct assessment or an indirect grade assessment based on detected information that provides an indication of the grade”. The respondent said that the words “based on detected information…” should be read as qualifying both the direct assessment and the indirect assessment.

112    The respondent relied on Dr Morrison’s evidence that:

No definition of the term ‘direct assessment of grade’ is provided within the text of the patent. There is a possibility that the authors of the patent are talking about a measurement which is strongly related to the elements of interest within the ore but the patent fails to discuss how the mass of ore or its water content might be assessed as part of that content. The term is not well enough defined to form a definitive view.

113    Dr Miljak expressed similar views to the effect that the term “direct assessment of grade” is “ill defined” and that it “…might involve an assessment through the use of a proxy”.

114    Dr Bamber, however, distinguished between “proxy” sensors and “analytical” sensors, and equated analytical sensors with sensors that make a “direct assessment of grade” within the meaning of the 171 application. However, submitted the respondent, there is no clear boundary between such sensors. As the respondent put it:

For example, Dr Bamber’s characterisation of radiometric sensing as being “analytical for uranium” demonstrates the difficulty between demarcating between direct and indirect on the basis of proxy and analytical, sensors. Radiometric sensing relies on detecting the radiation emitted by the decay products of uranium. In particular, as explained by Dr Morrison (and not contested by Dr Bamber in his written evidence), while the radioactive emission from a uranium ore is correlated with the concentration of elements, such as uranium, it is dependent on measuring the radioactive emission from the decay products of uranium, such as radium. Dr Miljak and Dr Morrison agreed that the correlation between the amount of uranium and radium is not constant and Dr Bamber agreed that:

…for a particular deposit of uranium what you would do is conduct an assay of some sort, determine what the ratio of radium to uranium is in that ore deposit and then you could use that ratio to determine the amount of uranium by assessing the amount of gamma radiation produced by radium; is that a fair analysis?

DR BAMBER: Yes, it is.

Nevertheless, Dr Bamber says the radiation that is detected is “directly related to the concentration of uranium”. That is, he contended that there is a relationship between the signal being detected and the element sought to be assessed. If this is correct, then it would appear that the term “direct assessment of grade” is sufficiently broad to encompass a method in which a sensor is measuring something that is directly related to the concentration of an element of interest within the ore, but which is not itself a direct measurement of the concentration of the particular element.

At the same time, Dr Bamber says LIF is to be distinguished. Nevertheless, it is apparent that LIF measures fluorescence, and in an iron ore body where apatite is the major contaminant (which is the case in the ore body described in the Nienhaus paper), the fluorescence can be quantitatively correlated to the amount of phosphorous (as a known component of apatite), being an element of interest in the ore. That is, just as uranium and radium are tightly related such that, once calibrated on the basis of a known ratio of the two for a particular mine, the measurement of gamma radiation from radium can be taken as a direct assessment of grade of uranium, so too phosphorous and apatite are tightly related (indeed, one is in the other) such that the measurement of fluorescence from the apatite can be taken as a direct assessment of grade of phosphorous, once the system is calibrated for a particular mine.

The Respondent therefore submits that, on the basis of the definition proffered by Dr Bamber, in the ore body described in the Nienhaus paper, LIF does in fact enable a “direct assessment of grade”, as discussed further below.

In the alternative, the Respondent submits that the expression is not clear.

115    The appellant submitted that the phrase “direct assessment of grade” as used in the claims means the assessment of ore grade in a direct manner, as opposed to an “indirect assessment” using measurement as a proxy for grade, which is achieved by an analytical sensor as opposed to a proxy sensor. The 171 application provides an example of “direct assessment of grade” where it describes and claims the use of PGNAA to assess ore grade. Other examples of “direct assessment of grade” were given by Dr Bamber in his evidence, with reference to analytical (direct) sensors.

116    The appellant submitted that the passage on p 8 of the 171 application makes clear that a direct assessment of grade is a term used in distinction from an indirect assessment of grade. The words “based on detected information…” relate to the indirect assessment of grade only. The direct assessment of grade involves measuring the concentration of the element of interest directly, whereas the indirect assessment of grade relies on the detection of some other property of the ore that provides an indication of grade; i.e. a proxy measurement.

117    According to the appellant, the evidence of Dr Morrison and Dr Miljak about the expression “direct assessment of grade” being unclear should not be accepted given that:

(1)    the experts all accepted that an indirect assessment of grade involved the use of a proxy measurement;

(2)    construed in light of the specification as a whole, it is apparent that the phrase “direct assessment of grade” is being used in distinction from an indirect assessment of grade;

(3)    Dr Miljak did not suggest in his affidavit evidence that he had any difficulty with the meaning of “direct assessment of grade”, his only concern being in respect of the meaning of an element of interest;

(4)    Dr Miljak accepted that a direct assessment of grade was one that did not use a proxy which was “quite straightforward”; and

(5)    Dr Morrison distinguished between one step indirect and two step indirect sensing techniques. While he did not accept that the 171 application treated his one step indirect assessment of grade examples as direct assessments of grade, he did accept that a direct assessment of grade was “one which is closely related to the element of interest” and he could distinguish this from the indirect assessments of grade using a proxy for the element of interest.

118    Therefore, as the appellant put it:

…there is no lack of clarity in the claims of the 171 Application on account of the use of the phrase “direct assessment of grade”. It is well-established that this ground is established made out only if “it is impossible to ascertain what the invention is from a fair reading of the specification as a whole”; the claim must be so ambiguous as to be incapable of resolution, applying common sense and the CGK. There is no basis for such a conclusion on the evidence here [Welch Perrin v Worrel (1961) 106 CLR 588 at 610; Welcome v Catuity (2001) 113 FCR 110 at [164]-[168]]

119    I agree with the appellant’s submissions. From the evidence as a whole, I consider it is apparent that the person skilled in the art would construe “direct assessment of grade” as an assessment based on or closely related to the element of interest in contrast to an indirect assessment of grade based on a proxy. In common with the appellant, I do not read the words “based on detected information…” on p 8 of the specification as qualifying both direct and indirect assessment of grade. The natural and ordinary meaning of this part of the text is that the qualification explains the difference between a direct and indirect assessment of grade by applying to the latter only. The phrase “direct assessment of grade” in the claims is not unclear. It takes the meaning the appellant proposed of an assessment based on or closely related to the element of interest in contrast to an indirect assessment of grade based on a proxy.

120    For these reasons, I do not accept the respondent’s submission that the claims of the 171 application do not comply with s 40(3) of the Patents Act.

Dry sorting particles

121    A number of the claims (claims 3, 4, 6 and 7 for example) refer to “dry sorting particles”. I accept the appellant’s submission that this means sensor-based particle sorting. Accordingly, the phrase means particle sorting involves the use of sensors to measure individual particles and make a separation of the individual particles from each other based on that measurement.

MANNER OF MANUFACTURE

122    Section 18(1)(a) of the Patents Act requires a patentable invention to involve a manner of manufacture within the meaning of s 6 of the Statute of Monopolies 1624 (UK).

123    The respondent contended that the clams of the 171 application are not to a manner of manufacture on two bases – first, that they are to a mere collocation and/or are nothing more than a claim for the use of a known material for a purpose for which its known properties make that material suitable and, secondly, as the delegate in Tettman found, that the claims are to a mere scheme. In respect of the latter basis, the respondent relied on the delegate’s reasoning. While the appellant contended that the respondent should not be permitted to rely on this latter argument, the appellant had an opportunity to make submissions about it and I propose to consider it.

Mere collocation/use of known material for known purpose

124    According to the respondent, this is a case in which there is no inter-related working between the integers in the sense that any one of the integers is doing something which it could not do without the presence of one or more of the others integers. The respondent said:

…what the claims encompass is a mere collocation in the sense described in Smith & Nephew Pty Ltd v Wake Forest University Health Sciences (2009) 82 IPR 467 (Smith & Nephew).

In Smith & Nephew, the court at [21]-[24] cited Dixon J in Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 at 73 in support of the proposition that “the point in a combination patent must always be that the elements of which the combination is composed are combined together so as to produce one result.” The Court cited Dixon J’s statement at p 73 that:

…the characteristic which a combination of known integers must possess in order to afford subject matter is mutual relation in the operation of such integers. Separate elements may be brought together and yet each may continue to operate as it did before. In other words, all that the patentee may have done is assemble together things or ideas which apart from sequence, order, position and proximity of association continue to perform their known functions as before. He may in such a case have produced a more convenient and a better appliance or process but he has contributed nothing in doing so which amounts to invention.

The Court also referred to the judgment of Lord Tomlin in British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171 (British Celanese) at 194:

In truth and in fact there is no inter-related working between the integers in the sense that any one of the integers is doing something which it could not do without the presence of one or more of the others.

125    The respondent noted the observation of Lord Tomlin in British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171 at 194 that:

In truth and in fact there is no inter-related working…in the sense that any one of the integers is doing something which it could not do without the presence of one or more of the others. Each…is performing its own part and is not functionally dependent on the presence of any other integer at all.

126    The respondent submitted:

The essential integers of the claims in British Celanese are set out at page 199 of the judgment. It is clear there is a sort of interrelationship between the integers, in that the downward spinning occurs in the casing, and the silk which is spun is subsequently dried in warm air and wound. However, the Court nonetheless concluded that there was no patentable combination, because everything was performing its own part and not functionally dependent. That is to say, the way the silk was wound does not depend on the fact that it is formed inside a casing.

127    Further, in Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366; (2014) 110 IPR 82 at [312] Beach J cited Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142; (2009) 82 IPR 467 and British Celanese with apparent approval at [311] and then said at [312]:

The correct approach to construing the “result” requires consideration of not only the claims, but the specification as a whole. In Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 (Palmer v Dunlop) at 73, Dixon J stated:

In applying the test thus stated, it is always important to determine what is the result which the combination achieves. In the present case, it may be said the result is a vulcanized box produced in a different and more efficient manner. But the characteristic which a combination of known integers must possess in order to afford subject matter is mutual relation in the operation of such integers. Separate elements may be brought together and yet each may continue to operate as it did before. In other words, all that the patentee may have done is to assemble together things or ideas which apart from sequence, order, position and proximity of association continue to perform their known functions as before. He may in such a case have produced a more convenient and a better appliance or process but he has contributed nothing in doing so which amounts to invention.

128    According to the respondent, there is no patentable combination because, even though there is a relationship in the sense that ore is dealt with in subsequent steps of each claim, each step is performing its own part and is not functionally dependent on the other. As the respondent put it:

The way that the processing plant in step (e) processes a separated segment does not depend on how it was separated in step (d), at least at the level of generality (the conceptual level) of the claims under consideration. Whether the ore it is high grade or low grade, the process is the same and the processing plant does the same thing (produce an upgraded material) – again, at least at the level of generality of the 171 Application.

This is even more stark in claim 1 in that the processing plant in step (e) can process segments which are a combination of above and below grade segments because there is no requirement that the segments in (e) be one or the other.

While that issue is resolved in claim 4 (and independent claim 37), claim 4 because in those claims the processing step is now working with segments that are all above or below the first grade threshold, it is still not to a manner of manufacture, because step (d) is still doing what it normally does – upgrading material – regardless of the material which is processed. That is, the way the processing step occurs does not on its face depend on the way the segment is sorted.

Furthermore, the first grade threshold and the second grade threshold can be the same grade so any distinction between the two does not give rise to any better result.

129    The respondent also relied on Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232. In Microcell at 246, the Court observed that in Re Application of Compagnies Réunies des Glaces (1930) 48 RPC 185 at 187, Sir Stafford Cripps SG explained that where there is admittedly no invention in the sense of an inventive step, the admission itself would disentitle the appellant to argue that there was even an alleged invention disclosed. In such a case, the application or grant should be refused on the footing that no manner of new manufacture was disclosed. In this regard, no express admission is required, but it must be clear on its face that the specification discloses no inventive step. The respondent noted, with reference to Microcell:

(1)    at pp 246-247, the Court adopted a formulation from Terrell on Patents, which provided that:

…applications have invariably been refused where the invention is merely for a new use of 'an old and well-known substance by itself, without saying more', and in such cases it is not enough for the appellant to show that he has produced a vendible article;

(2)    at p 248, the Court cited with approval the case of Re L. & G.’s Application (1940) 58 RPC 21, in which Morton J (as he then was) accepted that the mere fact that an applicant says “I make a particular article of a particular known material, and no prior document mentions the making of that particular article of this material” does not make that Appellant the inventor of a manner of new manufacture;

(3)    at p 249, the High Court noted that the Patent Office’s practice, recorded in Re L. & G.’s Application, was to refuse to grant a patent in these cases unless:

(a)    a change or variation in the construction of the apparatus is rendered necessary by reason of the use of a particular kind of material not previously used for that purpose;

(b)    the use for a particular apparatus of a known material not previously used for that purpose is due to a hitherto unknown or unsuspected property of the material;

(c)    the adaptation of the known material to the particular piece of apparatus leads to a new departure in the technique of the production of the apparatus;

and

(4)    The High Court observed (at [249]):

Many valid patents are for new uses of old things. But it is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles, and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before.

130    The respondent referred to Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91; (2006) 154 FCR 31 at [64] in which this was said:

Clearly, it is not sufficient that a claimant simply asserts ‘newness’. It is necessary that the specification be ‘construed and understood’. Technical terms may need explanation, but that is by no means uncommon in cases of this kind. We acknowledge the need to avoid incursion into areas correctly addressed under other sections of the Act. See Bristol-Myers (supra).

131    Further, at [67]-[69] in Merck the Court referred to Morgan & Co v Windover & Co (1890) 7 RPC 131, in which the House of Lords considered a patent which claimed an invention in the use of a certain type of spring at the front of a carriage, as well as at the rear where it had previously been used. At [67], the Full Court recorded Lord Halsbury LC’s judgment in that case at 134 as follows:

…there is no invention in this supposed patent that the man has simply seen the hinder part of the carriage with those springs…and has applied them to the front of the carriage. When so applied it may very well be, for aught I know to the contrary (indeed, I will assume in favour of the patentee that it is so), that they have the useful effect which is attributed to them in giving greater ease and comfort in the motion of the carriage; but if it is simply the application of well-known and well-understood things to an analogous use, although it may be true that it is accompanied by advantages not thought of or practised before, that will not save him from the fatal objection that there is no invention; because it is then simply the application of well known things to an analogous use, of which a great many instances might be given. If this patent and the ground upon which this patent is supported could stand, it would be very difficult indeed to say what would not be an invention, provided there was any additional advantages gained by the application of any known thing to an analogous use. It is well known and acted upon and must now be considered to be the law, that that does not constitute invention within the meaning of the Patents Laws.

132    The respondent also relied on the comments of Lord Herschell in Windover extracted at [68]-[69] of Merck, in particular, the following:

It is common knowledge that when a new mechanical contrivance, such as a new spring (and many other illustrations might be given) is first invented it is often a very considerable time before its advantage are seen and realised. Men are slow to try experiments, however successful they may turn out to be when once tried. But if the argument of the Respondents were well founded, then if there was an invention of a new spring, let us say, for railway engines or carriages, and for some years no one had taken advantage of it in a particular part of an engine or carriage in which a spring was used until some one thought he would use it in that place, the first person who used it in that place could take out a patent for so using it and protect himself against all the rest of the world, and acquire a monopoly if it turned out that there were advantages in its use in that particular place which had not occurred to anyone before. It seems to me, my Lord, that that would be extending the rights which are conferred upon patentees of new inventions beyond anything which preceding cases will justify.

133    The respondent submitted that the statement on p 3 of the specification that the “…above description is not to be taken as an admission of the common general knowledge in Australia and elsewhere” did not assist as the respondent relied on material appearing below that statement. Further, the statements on p 4 do not claim inventiveness, merely that the method claimed is different to those known to the patent appellant. According to the respondent:

(1)    the “inventive concept” seems to be set out at p 5 lines 25-30. The method is said to be based on a realisation of the appellant that a combination of bulk and then particle sorting is an effective method of sorting mined material, particularly when it is necessary to sort large volumes of mined material at a high throughput and cost effectively;

(2)    the terms of the passage at p 5 suggest that bulk sorting is known. There is no explanation of the concept, and it is not said that the patent appellant’s realisation was a realisation that bulk sorting was effective;

(3)    the 171 application is not teaching the addressee how to bulk sort, because it leaves every detail of the implementation to the addressee;

(4)    further, the specification indicates that the particles may be any suitable particles (p 8 lines 20-37); that the segments may be any suitable amount (p 9 lines 1 to 8); and that the sorting step may use any suitable analytical technique (p 10 lines 37 to 26). The technique is said to depend on factors at the area to be mined (p 11 lines 28 to 31). The conveyor is any suitable assembly (p 13 lines 21-22). The grade assessment is any suitable system (p 13 lines 24-25). The separation system is any suitable system (p 13 lines 28-31). The dry sorter is any suitable dry sorter (p 13 lines 33-35); and

(5)    from the total absence of any useful instruction that the 171 application it is apparent that the claimed invention involves the use of known systems to a purpose to which they are all well suited – or, at most, to an analogous use for which their known properties make them suitable.

134    According to the appellant, however, the respondent’s contentions disregard the nature of the claimed invention, which is a combination of integers that have a working interrelationship to produce a new and useful result. The appellant submitted:

The claimed invention in this case is in no sense a “mere collocation of parts”. For the method claims, the invention is not a combination of parts at all, but rather a method comprising a series of steps undertaken in a sequential manner for the processing of ore. In each of the claims, the ore is processed sequentially by each step and does not proceed to the next step until it has completed the previous step. In that sense, the steps plainly have a “working interrelationship”.

The position is similar for the apparatus claims, which define an apparatus comprising a series of physical components. Those components clearly have a working interrelationship, in that they are configured to carry out the same sequential process steps as are reflected in the method claims for the processing of ore.

The description in the body of the specification also emphasises, in many passages, the working interrelationship between the steps of the method as outlined above.

(a)    171 Application, p 5.19-30 – describing the properties and advantages of the “above-described combination of steps”.

(b)    171 Application, p 16.9-12 – describing the effectiveness of the “combination of bulk and then particle sorting” in sorting large volumes of material at a high throughput and cost effectively.

(c)    See also, eg, 171 Application, pp 6.5-21, 6.29-7.9.

135    The appellant put its case this way:

…in the application of the methods and apparatus as claimed, ore is mined; the size of that mined ore is reduced in a crushing step to produce crushed ore having a primary crushed or particle size; the grade of successive segments of that crushed ore is assessed by direct assessment of grade as it is transported along a pathway; each of those segments is separated on the basis of that assessment of grade; and those separated segments are subjected to downstream processing to produce upgraded material, for example by (in some claims) dry sorting of particles.

In this way, all of the integers of the claims interact to produce a new and useful result, being upgraded material as referred to in the claims. That result is an artificially created state of affairs of economic utility, and signifies the existence of a manner of manufacture in the classic sense discussed in NRDC [(NRDC v Commissioner (1959) 102 CLR 252 at 275-276.].

136    Contrary to the respondent’s contentions that the invention involves the use of materials for known purposes, the appellant submitted that there is no suggestion in the specification and there is no evidence that the particular combination of steps or components claimed was known, let alone known to be suitable to be used in that combination for the claimed purpose. The appellant said that it is well-established that a claimed combination may be constituted by integers each of which are old, the interaction between them being the essential element: Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142; (2009) 82 IPR 467 at [16]. Further, to succeed on this ground, the appellant noted that the lack of invention must be made out on the face of the specification: Microcell at 250. The Microcell principle is very narrow and applies only in the rarest of cases: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) [1995] HCA 15; 183 CLR 655 at 663-664, Lockwood [No 2] at [106]-[111], Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81; (2009) 177 FCR 239 at [31]-[32], AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324 at [392], and Bristol‑Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316; (2000) 170 ALR 439 at [45].

137    According to the appellant:

…the specification “on its face” does not show that the invention claimed is not a manner of new manufacture. It does not anywhere admit that the method or apparatus of any of the claims formed part of the CGK, or is not new and inventive over the CGK or any other prior art. To the contrary, the specification asserts in various places that the combination of the invention is “different” to any other methods or apparatus known to the appellant.

138    Further, said the appellant, that the methods and apparatus claimed are in fact different to anything that formed part of the common general knowledge is confirmed by the expert evidence, in particular the evidence that bulk sorting and particle sorting were niche applications not widely used in mineral processing and that the combination of the two was not known or used at all before the priority date.

139    I accept the appellant’s submissions.

140    First, the claimed invention is not a mere collocation of parts which have no functional interdependence. As the appellant said, what is involved in both the method and apparatus claims is a functionally integrated series of steps in which each subsequent step depends on the creation of a new state of affairs by the preceding step. Ore is mined. That ore is crushed to a primary crushed ore particle size. Segments of that primary crushed ore are subject to the direct assessment of grade. Those segments are separated by dry sorting (that is, bulk sorting by using sensors). The separated segments are then processed downstream to produce upgraded material. Given this, the respondent’s claims of a lack of a manner of manufacture on the basis that the claimed invention is a mere collocation of separate parts cannot succeed. It is by no means clear from the terms of the specification and the evidence as a whole that the 171 application, if granted, would be invalid on this ground.

141    Second, the specification on its face does not involve an admission of lack of inventiveness. Contrary to the respondent’s submissions, the specification does not support the inference that bulk sorting and particle sorting formed part of the common general knowledge of the skilled addressee. The specification identifies bulk sorting on pp 4 and 5 and asserts that the method is different to the method of assessing the grade of individual particles. On p 5 the combination of bulk sorting and then particle sorting is also said to be a different method from the method of assessing the grade of individual particles. Further, none of the experts knew of the concept of bulk sorting followed by particle sorting as a method of mineral processing. In these circumstances the respondent’s case that the claimed invention involves the mere use of known material for known purposes cannot succeed.

Mere scheme

142    The respondent did not make any submissions in support of this ground but instead relied upon the reasoning of the delegate. The delegate found that the claimed invention did not involve a manner of manufacture on two bases – first that what was claimed was a mere scheme ([156]-[169]) and second that what the claimed invention involved were mere working directions ([170]-[173]). According to the appellant, neither ground is sustainable as they involve a mischaracterisation of the invention claimed in the 171 application, are unsupported by authority, and proceed upon a misapplication of the principles concerning manner of manufacture.

143    The appellant noted that the delegate’s reasoning proceeded by analogy to Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; (2014) 227 FCR 378 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; (2015) 238 FCR 27. As the appellant explained:

In summary, the computer-implemented invention cases concern claims to business methods or schemes which involve the gathering, processing or presentation of information in financial or business fields, sometimes referred to in the authorities as “abstract ideas”. The issue addressed by those cases is whether such a business method or scheme, which has long been held not to be patentable, can become patentable if it is implemented by means of a computer. The answer is no, if the substance of the invention is the business method or scheme and the manner of its implementation in the computer is purely “generic”.

144    Further, the appellant said, the 171 application does not involve a business method or scheme and has nothing to do with the gathering, processing or presentation of information in the fields of finance or business. In the appellant’s words, there is “nothing abstract” about the claimed invention. To the contrary, the “…claimed invention resides in the field of mining or mineral processing, a technical field, and involves methods and apparatus for the processing of ore in a series of physical process steps to produce upgraded material, a physical and tangible result. So understood, the invention is a classic example of a manner of manufacture according to traditional principle”. In support of these conclusions the appellant made a series of propositions as follows.

145    In National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252, the High Court held that an invention which gave rise to an artificially created state of affairs of utility in a field of economic endeavour, i.e., in the useful arts, was proper subject matter for a patent. Specifically, the Court held that a method or process (i.e., a series of steps for doing something) which met that requirement could be a manner of manufacture. By contrast, “…business, commercial and financial schemes as such have never been considered patentable”: Grant v Commissioner of Patents [2006] FCAFC 120; (2005) 154 FCR 62 at [14]. The appellant referred to Re Cooper’s Application for a Patent (1901) 19 RPC 53 at 54, “[y]ou cannot have a Patent for a mere scheme or plan – a plan for becoming rich; a plan for the better government of a State; a plan for the efficient conduct of business”. In other words, as the appellant said, the principle is that a “mere scheme” is something that is abstract, in the sense that it concerns ideas or information, and is not tied to the doing of any physical thing or the creation of any physical or tangible result. In Grant, the claimed invention was to an “…asset protection method” comprising a series of steps, including establishing a trust, making a gift to the trust, making a loan from the trust and securing the loan which was held to be a mere scheme and not patentable.

146    The appellant continued:

In Research Affiliates, the claim in issue was to a computer-implemented method of assembling a portfolio of assets (at [65]). The purported advance achieved by the invention was in a financial or business field, not the field of computer technology. The implementation of the method in the computer was entirely generic, and simply used the computer for its speed and processing power. Considered as a matter of substance, the method was of a kind that was traditionally unpatentable, and the fact of its implementation in a computer in a generic way did not render it patentable (at [102]-[120]).

RPL Central was a similar case. The claim was to a computer-implemented method of “gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard”, involving retrieval of information from the internet, processing that information, presentation of questions to an individual requiring assessment, and receiving responses from the individual (at [36]). Again, the field in which the invention purported to be an advance was a field of business, namely assessing the competency or qualification of individuals with respect to standards. Insofar as the claimed method involved computer-implemented aspects, they were “generic” and did not involve any ingenuity, and accordingly the invention remained, in substance, a business method or scheme (at [96]-[113]).

147    The appellant referred to the observations of the Full Court in RPL Central at [96]:

A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions.

148    The appellant also referred to Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161; (2019) 145 IPR 1, submitting as follows:

The Full Court confirmed the correctness of Research Affiliates and RPL Central and reached a similar conclusion in relation to the claim in suit. The claim was directed to a computer-implemented method of “displaying information relating to one or more entities”, involving generating a network representation by querying remote data sources, displaying the network representation to a user, receiving a response from the user, performing a search to determine additional information and presenting that information to the user (at [27]-[28]). The Full Court found that the invention, considered as a matter of substance, was “no more than an instruction to apply an abstract idea” (ie, the method of displaying information relating to one or more entities) “using generic computer technology” (at [99]; see, generally [77]-[113]).

149    The appellant referred in particular to the observations of the Full Court in Encompass at [91]:

In each case, the Full Court was seeking to describe the conceptual distinction between a manner of manufacture and an unpatentable abstraction. In each case, the Full Court was explaining that a claimed method that is unpatentable does not change its legal character merely because the method is implemented by the instrumentality of a computer.

150    That is, the appellant said, the cases concern “…business methods or schemes which were unpatentable subject matter according to traditional principle because they involved the gathering, processing or presentation of information in financial or business fields, or, put another way, abstract ideas”. Such abstractions “…did not become patentable merely because they were implemented by means of a computer, in circumstances where the manner of their implementation in the computer was purely ‘generic’”. Given this, the appellant submitted, there is no analogy that may be drawn between those cases and the claimed invention in the present case.

151    In the present case, the appellant submitted:

Each claim involves a defined series of process steps, to be carried out sequentially, with mined ore being passed from step to step and transformed throughout the process to produce upgraded material. These are physical steps carried out on a physical product using physical apparatus, to produce a physical and tangible result. They include steps such as the crushing of the ore, the direct assessment of the grade of segments of it using sensors, the separation of those segments on the basis of that assessment, and so on. The claims are not concerned with the gathering, processing or presentation of information, or any abstract idea, which would be unpatentable according to traditional principle. The methods and apparatus claimed are nothing like those considered in the computer-implemented invention cases outlined above.

152    The delegate, however, reasoned that:

(a)    the steps in the claims were broadly defined without reference to “technical components” and made use of “generic” technology (at [164]);

(b)    the assessment of grade was “entirely subjective” and “dependent on costs of a customer specification” (at [165]-[166]);

(c)    the problem addressed by the claims was not a “technical” one but rather a “logistical or business problem” (at [166]); and

(d)    the substance of the invention was “nothing more than the arrangement of mineral processing concepts” and “a logistical process” (at [167]-[168]).

153    The appellant submitted that this reasoning involved error as:

(1)    Research Affiliates and RPL Central have no application in the present case as the invention here is not a business method or scheme of the kind which has never been patentable;

(2)    it is not necessary in this case to look for “technical” components, or the use of something other than “generic” technology. Such considerations might have been relevant if the invention was in truth directed to a computer-implemented business method or scheme, such that it was necessary to search for patentability in the manner of its implementation in a computer. That is simply not the case here;

(3)    it is inapt and inappropriate to describe the substance of the invention as “nothing more than the arrangement of mineral processing concepts” or “a logistical process”. As submitted, the invention is a method and apparatus for the processing of mined ore. It involves physical process steps which can only be carried out using physical apparatus on a physical product;

(4)    it is not to the point that the assessment of grade in a particular case may be said to be “subjective”, or “dependent on costs of a customer specification”. That simply means that the threshold for the assessment of grade in a particular case will be selected according to the requirements of that particular case. There is nothing unusual about this, and it does not support any finding that the invention claimed is a “mere scheme” and not a manner of manufacture; and

(5)    references to the prior art and to the technical features of the invention being “all well-known processes” impermissibly intrude conceptually distinct elements of patentability, i.e. novelty and inventive step, into the consideration of whether the methods and apparatus claimed in the 171 application are directed to a manner of manufacture.

154    I accept the appellant’s submissions. The claimed invention is not analogous to those considered to be mere schemes. Accordingly, the reasoning in the mere scheme cases is inapt. The delegate’s reasoning, in my view, involves a mischaracterisation of the claimed invention. As the appellant said, the invention involves physical steps carried out on a physical product using physical apparatus, to produce a physical and tangible result. It does not bear a resemblance to the cases on which the delegate relied. No meaningful analogy to those cases may be drawn.

Mere working directions

155    The appellant identified that the delegate’s reasoning involved the following steps:

(a)    a working direction “is defined as the mere optimisation of a known process to more efficiently produce an old product, or to more efficiently operate a known device to an old effect” (at [171]);

(b)    the claims were directed to an “old result”, being the sorting or upgrading of mined material (at [172]);

(c)    the claimed steps were generally described and “either obvious on the face of the claim, or would simply be a matter of routine” (at [172]); and

(d)    as a result “all of the claimed steps are mere working directions” (at [173]).

156    The appellant noted that no authority was cited in support of proposition (a) but the delegate might have had in mind Grant at [15] in which the Full Court said:

Historically, working directions and methods of doing things fell outside s 6 of the Statute of Monopolies. As summarised by Heerey J in Catuity [Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110] at [106], directions for the operation of a known article or machine or carrying out a known process so as to produce an old result were not patentable, even if they provided a different and more efficient method. Patents were refused for operating a jet engine in a way to reduce noise during takeoff (Rolls Royce Ltd’s Application [1963] RPC 251); improved methods for charcoal burning (Commissioner of Patents v Lee (1913) 16 CLR 138); improved methods for utilising an existing mechanism of septic tank purification (Neilson v Minister of Public Works (NSW) (1914) 18 CLR 423); and a method for felling trees by use of fire (Rogers v Commissioner of Patents (1910) 10 CLR 701).

157    The appellant submitted that the principle did not apply to the present case. The delegate had focused on the individual integers of the claims in isolation from each other rather than the combination of integers which constituted the invention. As the appellant put it:

The claims are to a new combination of process steps and apparatus components for the processing of mined ore to produce a new and useful result. The combination of features includes the reduction of the size of mined ore in a crushing step to produce crushed ore having a primary crushed ore particle size; assessing the grade of successive segments of that crushed ore by direct assessment of grade as it is transported along a pathway; each of those segments being separated on the basis of that assessment of grade; and those separated segments being subjected to downstream processing to produce upgraded material, for example by (in some claims) dry sorting of particles (ie, particle sorting). Various additional features and limitations are added by dependent claims.

158    Further, the appellant submitted that:

(1)    the specification does not admit that this combination of process steps or apparatus components was known before the priority date but, rather, indicates to the contrary;

(2)    the evidence confirms at the least that the combination is new and did not form part of the common general knowledge;

(3)    because it is a new combination that enables the processing of mined ore and the production of upgraded material in a way that was not previously known, the result achieved by the invention is also new;

(4)    it follows that the delegate’s reasoning that the claims were directed to an “old result” is misplaced;

(5)    the delegate’s assertion that the claimed steps were obvious or routine disregards the combination as a whole and the specification which is to the contrary;

(6)    in any event, it is unclear how such considerations relating to the alleged obviousness or routine nature of individual steps in the claims could properly form part of any inquiry into manner of manufacture or the characterisation of the invention as “mere working directions”; and

(7)    properly understood, the concept of “mere working directions” encapsulates a narrow class of unpatentable subject matter, where the claimed “invention” relates to a mere variation in the working of a known apparatus or process in order to produce an old result. The evidence makes it clear that, at the very least, the particular combination of features claimed was not part of the common general knowledge before the priority date. The process and apparatus claimed were not known, and nor is the result old.

159    Again, I accept the appellant’s submissions. The claimed invention is said to involve the combination of bulk sorting followed by particle sorting to produce the economically useful result of upgraded material. The delegate’s reasoning does not focus on the combination as claimed. As the appellant submitted, the invention as claimed is not amenable to the principle of mere working directions as invoked by the delegate. Both the specification and the evidence indicate that the combination claimed is a new combination. As a result, the claimed invention cannot properly be characterised as involving nothing more than mere working directions.

NOVELTY

Principles

160    Section 18(1)(b)(i) of the Patents Act requires that an invention be novel when compared with the prior art base as it existed before the priority date of each claim.

161    There was no dispute between the parties about the relevant principles. As summarised by the parties in their submissions the relevant principles include the following.

162    The “reverse infringement test” remains a touchstone, so that the question posed is whether the alleged anticipation would constitute an infringement of the patent: Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235.

163    The disclosure is assessed by reference to a person of ordinary skill in the art, and the question is whether the prior publication is sufficient to make the claimed invention apparent to that skilled addressee: Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 561.

164    Something less than a full description of the invention may be sufficient to render it not novel, and something less than a full description of an effective means by which the claimed combination may be produced may be sufficient to a reader equipped with the common general knowledge: Nicaro at 561 and 563.

165    A direction, recommendation, or suggestion may be inherent or implicit (as opposed to being express) in what is described: Bristol-Myers Squibb at [67]. However, while a disclosure in a prior art document may be implicit, it is impermissible to use the common general knowledge to fill the gap between what is disclosed in the prior publication and the claimed invention, by adding features to the disclosure. Thus, the common general knowledge cannot be “…deployed complementarily to arrive at a disclosure which the document alone, properly construed, does not make”: AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324 at [352].

166    The “…prior publication must ‘plant the flag’ at the precise destination of the claim; or provide ‘clear and unmistakable directions’ to do what is claimed; or involve ‘the accuracy of a sniper, not the firing of a 12 gauge shotgun’”: General Tire at 485-486, Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) [2012] FCAFC 102; (2012) 204 FCR 494 at [181], Apotex Pty Ltd (formerly GenRx Pty Ltd) v Sanofi-Aventis [2008] FCA 1194; (2008) 78 IPR 485 at [91], H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151 at [170].

167    Thus, unless a prior publication actually discloses exactly what is claimed, or the inevitable result of following the directions contained in the prior publication will be to arrive at the claimed invention, the claim is novel: General Tire at 485-486; Novozymes A/S v Danisco A/S [2013] FCAFC 6; (2013) 99 IPR 417 at [145]. In order for an anticipation by inevitable result to be made out, it must be established that the prior art document contains directions that if followed must inevitably “as a matter of hard fact” produce something falling within the claims: Novozymes at [187].

168    A broad or general disclosure that “includes” or “encompasses” the claimed invention or is capable of being carried out in a number of ways some of which do not fall within the scope of the claim will not anticipate the claim: Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846; (2011) 196 FCR 1 at [180].

169    In the case of an alleged lack of novelty there is a prohibition on mosaicking, that is, the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that the mosaic reveals the thing claimed. A claim that involves a combination of features will not be anticipated on this basis: Nicaro at 517 and 526; Minnesota Mining and Manufacturing Co at 292-293; Sunbeam Corp v Morphy-Richards (1961) 180 CLR 98 at 113.

Nienhaus

170    Nienhaus is an article entitled “Quality of LIF” which was published in September 2003 in Australia’s Mining Monthly. LIF is short for laser-induced fluorescence.

171    The respondent’s submissions about the article being novelty destroying are summarised below.

172    The article states that:

Quality control in all stages of production is coming more and more into focus in the mining minerals industry. Detailed 3D block modelling of deposits is already common practice, and chemical analysis of bulk material mineral processing is state-of-the-art procedure.

Nevertheless, there is an information gap in the correlation of actual quality of mined material at the face and predicted quality. Therefore, the question of how to control dilution of run of mine ore (ROM) on the belt conveyor or the shovel has not been answered satisfactorily.

Laser-induced fluorescence (LIF) has emerged as an answer to the quality problem. It can be used to detect and distinguish different rock types by setting up an LIF analyser above a bulk stream between the actual mining operation and the processing plant. The technology acts as a quality control instrument for the diversion of ROM ore to different processing lines. Consequently, the amount of waste material to be processed can be reduced, better recovery can be achieved and related costs reduced.

Two LIF applications in bulk material handling and processing are described here. They are phosphor monitoring at an iron ore mine and dilution control at a copper operation.

173    Figure 3 is a “[t]ypical flow sheet for a LIF analyser functioning as a bulk sorter”. The text states:

After the analyser has been calibrated to a specific orebody and mining environment, it can be set up permanently on site to deliver on-line rock identification data to the process control unit of a mine. Examples of current dilution control applications by means of LIF in the mining industry include limestone, dolomite and magnesite quarrying (control of MgO, Fe2O3 and Al2O3 grades), iron ore operations (control of phosphor content), diamond operations (control of waste rock), gold, copper and uranium mining (control of waste rock and uranium content), lead-zinc mining operations (grade control), and lignite mining (control of waste rock).

Standard applications of LIF analysers so far have dealt with the direct control of a bulk-sorting unit that is able to divert the whole belt feed. Figure 3 illustrates a typical flow sheet for a LIF analyser functioning as a “bulk sorter”. The ROM ore is analysed in its bulk state by the LIF analyser above a belt conveyor behind the primary crusher. After the waste grade has been measured on-line, the bulk mass can be diverted according to a certain cut-off grade in a two or three way diverter. Low waste material can then be sent directly to a processing plant while high waste material is treated in an additional pre-concentration plant. By employing this method, bulk masses with excessive waste content can be sorted out. Throughput of a pre-concentration plant is maximised by pre-sorting the bulk mass with a LIF analyser in combination with diverters. A combination with other on-line sorting techniques like opto-sorter systems could even enhance the performance.

174    The article explains:

Fluorescence in minerals is generally not caused by intrinsic physical properties of the mineral but by defects in the crystal structure and/or trace element ions. These properties are determined during the genesis of minerals, therefore minerals can have various glow centres and it is not possible to achieve an absolutely quantitative element analysis by means of LIF. One raw material from a certain deposit may fluoresce in a completely different way than the same material from another location. Therefore, an individual fingerprint of each mineral for each individual deposit has to be established for mineral classification to occur.

175    The article continues:

When compared to other optical detection and analysis methods like X-ray Fluorescence (XRF) or Prompt Gamma Neutron Activation Analysis (PGNAA), LIF...measures only the surface of the sample and cannot analyse the whole of the material. On the other hand, the distance between the energy source and the sample is, unlike the other presented methods, unrestricted. Samples several metres away from the laser source can be measured with statistically confident results.

176    The article describes that in an iron ore underground mine, a LIF analyser “…was set up underground above an LHD roadway”. The LIF analyser is described as measuring the element phosphor present in the mineral, apatite, and where high phosphorous ore is identified it is “…treated separately in the processing plant…”. According to the respondent:

Nienhaus also describes a “quantitative correlation between fluorescence intensity and phosphor content”. While this discussion appears in a section of Nienhaus that describes a different use of LIF to that depicted in the flowsheet in Figure 3 (namely to analyse ore on LHDs within a mine), it is clear that Nienhaus is indicating that, at the particular iron ore mine (and associated mineral processing plant) described in the paper, it is possible to directly correlate fluorescence intensity and phosphor content (an element of interest). The Appellant attempts to overcome the express disclosures in Nienhaus by suggesting that it should be disregarded because of the relatively unique iron ore body at the mine described. It also suggests the reference to a quantitative correlation between fluorescence and phosphor content is limited to the description of the LHD application. However, Dr Miljak confirmed that he would understand the reference to the quantitative correlation as also applying to Figure 3. As Dr Morrison also noted, the system would work better on a conveyor (as depicted in Figure 3) than on an LHD and Dr Bamber agreed.

177    The respondent submitted that the experts agreed that the following integers of claims 1 and 19 of the 171 application are disclosed in Nienhaus:

(a)    reducing the size of mined ore in a crushing step and producing a crushed ore particle size – this is disclosed in the Primary Crusher in Figure 3 of Nienhaus;

(b)    assessing successive segments of the crushed ore as the crushed ore is transported along a pathway – this is disclosed in the LIF Analyser sitting over the conveyor in Figure 3 as it assesses the concentration of phosphor (an element of interest) in the iron ore (noting that Figure 3 is not related to the copper mine dilution analyser example in Nienhaus described on page 71 where no sorting is conducted – see Fig 4);

(c)    separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segment – this is disclosed in the 2-way Diverter in Figure 3 of Nienhaus, which creates a stream of High Waste product (elevated phosphor content) and a stream of Low Waste Material (reduced phosphor content); and

(d)    processing separated segments in a downstream processing plant and producing upgraded material – Figure 3 discloses processing the High Waste stream in a Pre-concentration Plant and the Low Waste Stream in a Processing Plant.

178    The respondent submitted that the level of disclosure of each of these steps in Nienhaus is substantially the same (if not greater than) as that in the 171 application.

179    The respondent acknowledged Dr Bamber’s view that LIF does not provide a direct assessment of grade because:

(a)    where LIF is being used in relation to iron ore it does not measure the concentration of an element of economic value in the iron ore because that element is iron not phosphorous; and

(b)    LIF is not a direct assessment of the concentration of phosphorous.

180    The respondent submitted that on his construction of “an element of interest” as meaning a valuable or deleterious element then the method described in Nienhaus is measuring the grade of the iron ore. Further, the LIF sensor in Nienhaus is (as explicitly stated in Nienhaus) is relying on a “…quantitative correlation between fluorescence intensity and phosphor content”. According to the respondent:

Regardless of whether the ability to make this correlation is unique to the particular iron ore body, it is nevertheless stated in Nienhaus that, in this case, it has been made. The paper recognises that fluorescence detected by the sensor is “a characteristic fluorescence signature” of the apatite mineral, which contains the phosphorous (in the form of calcium phosphate). As Dr Morrison explained, it is “making a measurement of the apatite which we have to correlate with the apatite content which also correlate with the phosphorous content”. It is therefore a direct assessment of the concentration of phosphorous, which is an element of interest.

181    The respondent noted Dr Miljak’s evidence that “I would not really regard that as a proxy because it’s not a – a loose association between what’s being measured and what you’re trying to measure”. The respondent submitted that Dr Bamber’s willingness to characterise radiometric sensing of uranium (which relies on the relationship between uranium and radium) as analytical and direct appears inconsistent with his resistance in the particular case described in Nienhaus to describe the LIF sensor as making a direct assessment of the concentration of phosphorous.

182    The respondent also submitted that a number of the dependent claims include, as their further processing step, a dry particle sorting step and that Nienhaus specifically suggests the use of an optosorter system which Dr Bamber said is a type of dry particle sorter. According to the respondent:

It is noted that the JER recorded an agreed answer that Nienhaus does not “specify a dry sorter”. That is true in the sense that, broadly described, the pre-concentration plant can be any form of such plant. However, it is apparent from Nienhaus itself and from the oral evidence that the experts recognise there is a suggestion in Nienhaus to use an optosorter in combination with a bulk sorter. It does not “specify” in the sense of definitively stating an optosorter has been or must be used. Rather, it provides a clear suggestion to use a sensor such as an optosorter, which is a dry particle sorter.

(emphasis in original.)

183    The appellant submitted that Nienhaus did not disclose the combination of features of any claim of the 171 application.

184    The appellant advanced the following propositions:

(1)    the LIF sensor in Nienhaus measures the spectrum of fluorescence stimulated by a laser as a proxy for phosphorus content;

(2)    the LIF sensor does not measure the grade or content of iron in the iron ore. It provides an indirect assessment of phosphorous content;

(3)    Nienhaus also refers to a “special case” (using Dr Miljak’s words) of the use of LIF in respect of ROM ore at LKAB’s (Luossavaara-Kiirunavaara Aktiebolag) iron ore operation which, in his view, would provide a direct assessment of grade in that particular case. LKAB’s iron ore type is very specific, and does not exist in Australia. Dr Miljak accepted that the general discussion of LIF in Nienhaus (including by reference to Figure 3) performed an indirect assessment of the phosphorous content. Dr Miljak accepted that LIF ordinarily provides an indirect assessment, and would do so in relation to Australian iron ore. Dr Morrison also characterised LIF as providing an indirect assessment; and

(4)    Figure 3 does not disclose any details of the pre-concentration plant. The general reference could encompass a range of different possible pre-concentration techniques.

185    Accordingly, the appellant submitted, Nienhaus does not disclose the method or apparatus claimed in claims 1, 19 or 37. It does not involve a “direct assessment of grade” of the iron ore. The LIF analyser is a proxy sensor that indirectly assesses the presence of phosphorous and does not (directly or indirectly) assess the grade of the ore.

186    Additionally, the appellant submitted that Nienhaus does not disclose the features added by at least the following dependent claims, in combination as required: claims 2, 5, 20, 23, 39 (wet processing steps/plant); claims 3, 4, 6, 7, 21, 22, 24, 25, 38 (dry sorting steps/plant); claims 11, 29 (mining steps); claims 13, 31 (entire bed depth); claims 14, 32 (PGNAA); claims 16, 34 (segment size); claims 17, 35, 41 (chutes); and claims 18, 36 (stockpiling). This was agreed between Drs Bamber, Miljak and Morrison. Further:

The above agreement also reflects an understanding of the experts that the reference to “opto-sorter” in Nienhaus is not a reference to particle sorting in the pre-concentration plant. Although Dr Miljak changed his answers to JER Q28 (discussed below), he did not change his answers to JER Q25. The answer to Q25 correctly reflects the fact that Nienhaus does not disclose any combination including particle sorting, for novelty purpose.

187    I find the appellant’s submissions persuasive.

188    First, and as discussed, I do not accept the respondent’s construction of “grade” as it appears in the clams of the 171 application. On this basis it is readily apparent that Nienhaus is not disclosing the assessment of the grade of the ore at all because it is concerned with a measurement of phosphorous content which is not an assessment of grade as provided for in the 171 application.

189    Second, the disclosure in Nienhaus is that the LIF analyser uses luminescence as a proxy for the phosphorous content of the iron ore. The reference to the LKAB iron ore operation, for these reasons, does not assist the respondent.

190    In any event, and as the appellant submitted, to use that example involves the impermissible “cherry picking” of different parts of the disclosure in Nienhaus.

191    I otherwise accept the appellant’s submissions that based on the answers to question 25 in the joint experts report it cannot be concluded that Nienhaus discloses all integers of any of the dependent claims of the 171 application.

192    I am also not persuaded that the respondent’s criticisms of Dr Bamber’s evidence are warranted. Dr Bamber’s evidence that the LIF was a proxy sensor for the concentration of phosphorous (not itself a measure of the grade of iron ore) was based on cogent reasoning. As I do not consider Dr Bamber’s evidence should be rejected it is not to the point that Dr Miljak and Dr Morrison held a different view. The respondent has not discharged its onus of establishing that Nienhaus destroys the novelty of any of the claims of the 171 application.

Kurth

193    Kurth 2007 is a publication by Scantech International Pty Ltd, an Australian supplier of sensor equipment, entitled “Online analyser technologies for conveyed materials – timely representative and reliable data for improved process control”.

194    The respondent made the following submissions to support its contention that Kurth 2007 destroyed the novelty of the claims of the 171 application.

195    The respondent noted that Kurth 2007 describes that:

Scantech International has developed a range of online analyses that allow for full stream, through-belt, non-contact analysis of conveyed materials. Realtime results provide timely information for effective process control.

196    The respondent submitted that “…timely information for effective process control…” is a reference to sorting.

197    The respondent noted that Kurth 2007 explains:

The measurement of mine production has been problematic for many years due to the inability to easily and cost-effectively take representative samples of coarse materials. Sampling plants can be used but these require laboratory analysis which does not permit real-time process control.

The aim of this paper is to review the importance of process control in the mining environment and discuss existing grade determination practices and salient industry trends. Scantech’s range of online analyser technologies, their applications and benefits are outlined. The integration of these technologies into plant control systems is discussed in relation to automation of process control.

198    Kurth 2007 continues, stating:

The key issue we all have to face in our planning is that ore resources are very rarely homogenous, so the quality of production is rarely predictable on an hourly or daily basis.

199    Under the heading “Grade Determination Practices” Kurth 2007 states:

Mine production quality can be estimated through theoretical ore reserve. The run-of-mine material is difficult to sample due to the large fragment size and natural heterogeneity. Visual grade estimates, dilution factors, stockpile samples are often used to ‘verify’ the quality.

…

Some bulk handling plants, such as for iron ore, incorporate multi-million dollar sampling systems to take representative samples from large tonnage flows with large fragment sizes. Sampling plants are complex and ultimately produce a physical sample designed to be representative of the flow. These samples are also unsuitable for real-time process control, as laboratory turnaround time represents major delay in availability of results.

200    Kurth 2007 continues, stating:

Scantech International develops, manufactures, supplies and services a range of online analysers for conveyed materials. The whole stream is analysed. Sample error is no longer a significant issue. Particle size is not a significant limitation, as long as the bed physically fits through the analyser.…

The technologies are through-belt, so surface effects are nullified. Belt speed does not affect analysis. Results are available in real-time and transmitted to the site control system for trending, alarming, archiving and, most importantly, automation of process control decisions, etc.

…

Online analysers can monitor ash in coal, moisture, ash + moisture, moisture in conductive materials, natural gamma (for coal, iron ore, uranium, mineral sands) and elemental content. Analysers are customised to the site geology based on sample valuations.

…

Scantech’s current range of online real time analysis technologies are summarised below.

201    Kurth 2007 states that:

Prompt gamma neutron activation analysis (PGNAA) is used to measure elemental composition of material and to report the dry weight of each element when moisture analyser input and belt weigher inputs are utilised.

…

Results are gathered continuously and composited using tonnage weighted averaging over a few minutes then transmitted to the plant control system where either elemental composition or ratios can be trended. These can be customised to suit the site processes, control or reporting requirements. Process control decisions can be made based on these results.

202    Figure 3 shows a “[t]hrough belt elemental analyser”: that is, a configuration in which a PGNAA analyser is used to assess material on a plant feed conveyor. Kurth 2007 states that the analyser is “…ideally suited to plant feed conveyors although a bed depth limit applies due to the tunnel configuration; up to 380 mm bed depth on a conveyor up to 2200 mm wide, based on current models”. Kurth 2007 continues:

General applications include grade monitoring of feed and product streams, bulk sorting through stream diversion…

203    The respondent submitted that Kurth 2007 accordingly discloses stream diversion based on bulk assessment, with material being diverted to further downstream processing. Further, Kurth 2007 discloses that PGNAA measurements can be used to assess iron content of ore and divert any waste, thereby satisfying the “direct assessment of grade” requirement regardless of which construction is applied. The respondent also submitted that Kurth 2007 discloses a passive gamma analyser that can be used to analyse iron and uranium ores, noting that the paper states:

Strong relationships between the natural radioactivity signatures and material composition are particularly evident with some iron ores, coal, mineral sands and uranium ores. The technology is suited to large conveyed flows on primary crushed material, as larger bed depths improve the performance of the analyser.

204    Under the heading “Integration with plant control systems” Kurth 2007 states:

The analysers transmit data to the site control system using existing site communication systems. Typically the moisture content and major elements of interest are transmitted every few minutes for trending. The site control system usually contains tools that generate elemental ratios, trends and other values which have meaningful treatment implications.

This allows process control to be performed and automated to reduce the operator interaction required. Operators may no longer require a high level of understanding about the process or direct guidance from a metallurgist or process engineer to make plant corrections.

…

Where a beneficiation process is being supplied with variable quality material, there may be a requirement to classify material into waste, treatable material and bypass quality (high grade and not requiring upgrading). This can be the case in iron ore, phosphate rock and coal applications.

205    The respondent observed that in this phrase Kurth 2007 is using “elements of interest” consistently with the respondent’s proposed construction of that phrase as it appears in the definition of “grade” in the 171 application. The respondent submitted that Kurth 2007, in these passages, discloses the sorting of material on a conveyor belt by reference to whether the material is waste, treatable material or bypass quality based on the assessment made by either the PGNAA or the gamma assessor.

206    The respondent noted that the experts agreed in their answer to question 30 in their joint report that Kurth 2007 disclosed assessing the grade of successive segments of crushed ore, by direct assessment of grade, as the crushed ore is transported along a pathway. The experts, however, also agreed in this answer that Kurth 2007 did not disclose the integer of claim 1 of processing separated segments in a downstream processing plant and producing upgraded material. The respondent submitted that Dr Morrison’s view was that bullet points 6 and 7 on p 7 of Kurth 2007 suggested that identified segments of the ore feed stream may be directed to the beneficiation plant or to bypass direct product or be diverted to waste, which he characterised as “the essence of bulk sorting”. According to Dr Morrison, Kurth 2007 identified bulk sorting by stream diversion. Dr Miljak also considered that the processing of separated segments was strongly implied. According to the respondent:

…it was apparent from their evidence that each of Dr Miljak and Dr Morrison considered that bulk sorting by means of separating high grade and low grade streams was implicitly disclosed (in the sense required by the authorities) by Kurth 2007.

207    In answer to the appellant’s proposition that the material on which Dr Morrison and Dr Miljak relied was a mere possible application rather than a description of a process that had been undertaken, the respondent said that the distinction was of no legal significance, citing in support the reference to disclosure of a direction, recommendation or suggestion being sufficient anticipation in Bristol-Myers Squibb at [67] and the statement in Merck at [110] that:

…a characterisation of an alleged anticipation as suggestion is not necessarily fatal to a novelty argument. Nor is it necessary that a reader, or even all readers, agree with the suggestion.

208    In response to Dr Bamber’s evidence that Kurth 2007 does not disclose bulk sorting but rather whole stream diversion by reference to figure 4, the respondent said it was not relying on figure 4 as the relevant disclosure. I interpolate that it should be noted here, however, that Dr Bamber’s evidence did not depend on figure 4 but was based on his understanding of the whole of Kurth 2007. According to the respondent:

…Dr Morrison and Dr Miljak’s evidence that bulk sorting through stream diversion means directing a stream of ore to a different destination (Dr Morrison and Dr Miljak) and encompasses bulk sorting (Dr Miljak) should be accepted. This evidence is consistent with Dr Bamber’s evidence in his first affidavit, which should be preferred to his evidence in the joint session.

209    It is also convenient for me to note here that in his first affidavit Dr Bamber said that Kurth 2007 disclosed whole ore diversion, which is consistent with his latter evidence that Kurth 2007 did not disclose bulk sorting as Dr Bamber understood that term and as used in the 171 application. In his first affidavit, Dr Bamber said that if (contrary to his view) Kurth 2007 was referring to bulk sorting then it was unclear whether bulk sorting had in fact been tested and implemented by Scantech or that this application was “only a possibility”. Further, the nature of the apparatus including the location of the sensor, how diversion was to be effected and the basis on which diversion decisions would be made, as well as the speed of the device and how it could be used to support the levels of selectivity required for bulk sorting were all unclear.

210    In any event, the respondent submitted that claims 1, 2, 5, 8, 9, 10, 12, 13, 14, 15, 16, 19, 20, 23, 26, 27, 28, 30, 31, 32, 33, 34, 35, 37, 39, 40 of the 171 application are anticipated by Kurth 2007.

211    The appellant submitted that Kurth 2007 is a “…high-level marketing document with limited references (and where they are used, appear to be limited to applications in coal and cement) and does not include data or studies” which “…discusses new online analyser sensor technologies, manufactured by Scantech, for conveyed materials to improve process control in wide number of potential applications”. The only data provided in Kurth 2007 is in figure 4 which shows trucks delivering ROM ore (i.e. prior to any crushing) onto a conveyor belt for on-line analysis.

212    According to the appellant, it must be understood that process control (with which Kurth 2007 is dealing) is not synonymous with bulk sorting and that, as Dr Morrison said, process control encompasses a “huge range” of techniques. Further, the reference in Kurth 2007 to “bulk sorting by stream diversion” (p 6) and the other similar references relied on by the respondent are references to “whole ore diversion”, a quite different concept, and not bulk sorting as claimed in the 171 application. The appellant referred to Dr Bamber’s evidence in answer to question 4 in the joint report and otherwise that he did not agree that whole stream diversion constituted bulk sorting. Dr Bamber explained that whole stream diversion:

…requires some a priori knowledge of the beginning and the end of the lot. We know what the lot is. We know where it is in space. We know where it begins. We know where it ends. Or we’ve assigned arbitrary beginnings or ends to the lot.

213    In contrast, as Dr Bamber put it:

Bulk sorting fundamentally differs, because we do not know or don’t care, for instance, about the beginning, the end, the middle or any particular dimension or time characteristic of that stream, because we’re reaching inside that stream. Segments that we’re interested in are subsets of the stream, and we’re using the sensor not so much to tell us or confirm the a priori quality of that stream or lot.

We’re using the sensor to tell us whether segments that exist inside that stream are different to our presumption of the grade. …And then we use the diverter to select out that segment from the lot and divert that into that pile and the segments that are not selected from the lot by the diverter would continue to go into that pile, and that’s bulk sorting.

214    The appellant also submitted that it would not be possible for the PGNAA sensor described in Kurth 2007 to be applied to primary crushed size ore. This is apparent because when Kurth 2007 is dealing with the use of a sensor on primary crushed ore on p 8 it is clear that the paper is not referring to the use of PGNAA. Dr Miljak confirmed this to be so in oral evidence. The experts agreed that the only reference to primary crushed size ore in Kurth 2007 is on p 8 in relation to a radiometric sensor being used in the context of on-line analysis and not bulk sorting.

215    The appellant submitted that having regard to Dr Bamber’s evidence it should be accepted that Kurth 2007 does not disclose bulk sorting or the bulk sorting of primary crushed ore or any downstream processing following such steps. As a result “Kurth does not disclose at least the following features of claims 1, 19 and 37, in combination as required: ‘producing a crushed ore having a primary crushed ore particle size’; ‘assessing the grade of successive segments of [that] crushed ore’; ‘separating each segment of [that] crushed ore on the basis of grade of the segment’; and ‘processing separated segments in a downstream processing plant and producing upgraded material’”. Kurth 2007 also does not disclose the features added by at least the following dependent claims: claims 3, 4, 6, 7, 21, 22, 24, 25, 38 (dry sorting steps/plant); claims 11, 29 (mining steps), 17, 35, 41 (chutes); 18 and 36 (stockpiling) nor does it disclose the features added by the following dependent claims: 2, 20 and 39 (wet processing plant/steps); claims 13, 31 (entire bed depth).

216    I accept the appellant’s submissions. In particular I do not consider that Kurth 2007 discloses bulk sorting as that term is to be understood in the context of the 171 application. It is clear, in my view, that when Kurth 2007 refers to “bulk sorting through stream diversion” the reference is, as Dr Bamber said, to diversion of the entire ore stream which is not bulk sorting as understood by Dr Bamber to be used in the 171 application. I prefer Dr Bamber’s evidence in this regard to that of Dr Morrison and Dr Miljak. It seems to me that there is a fundamental difference between what is claimed in the 171 application, involving the steps of “producing a crushed ore having a primary crushed ore particle size”, “assessing the grade of successive segments of [that] crushed ore”, “separating each segment of [that] crushed ore on the basis of grade of the segment”, and “processing separated segments in a downstream processing plant and producing upgraded material” and diverting the whole of a stream of ore. In the context of Kurth 2007 as a whole, I consider that what is disclosed is a potential use of PGNAA for the diversion of an entire stream of ore to prevent waste from entering the processing system. It is not disclosing the application of PGNAA to primary crushed ore and “assessing the grade of successive segments of [that] crushed ore”, “separating each segment of [that] crushed ore on the basis of grade of the segment”, and “processing separated segments in a downstream processing plant and producing upgraded material”.

217    On this basis, it is unnecessary to consider the dependent claims other than to say I see no reason not to accept Dr Bamber’s evidence as to what a person skilled in the art would take from Kurth 2007. Further, the answer agreed by the experts to question 31 in the joint report undermines the respondent’s propositions of disclosure by Kurth 2007 of numerous integers of the dependent claims.

218    For these reasons the respondent has not discharged its onus of establishing that Kurth 2007 destroys the novelty of any of the claims of the 171 application.

INVENTIVE STEP

Principles

219    Section 18(1)(b)(ii) of the Patents Act requires that the claimed invention involve an inventive step when compared with the prior art base before the priority date. In accordance with s 7(2), the question is whether the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, considered separately or together with information of the kind referred to in s 7(3) of the Patents Act.

220    In Lockwood [No 2] at [52] the High Court said that:

…as a basic premise, obviousness and inventiveness are antitheses and the question is always “is the step taken over the prior art an ‘obvious step’ or ‘an inventive step’”? An inventive step is often an issue “borne out by the evidence of the experts”. There is no distinction between obviousness and a lack of inventive step. A “scintilla of invention” remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be “some difficulty overcome, some barrier crossed”. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which “any fool” could devise. It also accords with the requirement in the United States that for an invention to be “non-obvious” it must be “beyond the skill of the calling”.

221    The respondent referred also to AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324 at [524] in which Jessup J (with whom Besanko, Foster, Nicholas and Yates JJ agreed at [228]-[229]) said:

However, one must then move to a consideration of the task which subs (3) allocates to the skilled person. Although it has been noted that inventions do not invariably come about by the development of a solution to a problem, the intellectual exercise for which s 7(3) provides does, in my view, require one notionally to have the skilled person giving attention to the subject concerned, in the sense of working upon, or at least thinking about, some possibilities for an improvement in the existing state of things, whether by the solution of a problem or otherwise.

222    The appellant referred to Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at 271 and AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356 at [18] in support of the proposition that obviousness is to be tested by reference to a legal construct: the hypothetical, non-inventive person skilled in the relevant art.

223    In Lockwood [No 2] at [56] the High Court said:

Whether a patent is obvious under the Act is still to be determined by reference to the hypothetical non‑inventive worker in the field (now a “person skilled in the relevant art” (ss 7(2) and 7(3)) equipped with common general knowledge…

224    The appellant referred to Valensi v British Radio Corporation [1973] RPC 337 at 377 to the effect that the hypothetical person is “…not a person of exceptional skill and knowledge…” and is “…not…expected to exercise any invention nor any prolonged research, inquiry or experiment”, but is “…prepared to display a reasonable degree of skill and common knowledge in the art…”.

225    The appellant noted that, as stated in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324 at [200]:

…s 7(2) requires that an invention be taken to involve an inventive step when compared with the prior art base unless it would be obvious to the hypothetical person skilled in the relevant art in light of the common general knowledge and any s 7(3) information. Put another way, the invention is deemed to involve an inventive step when compared with the prior art base unless it would be obvious to the hypothetical skilled addressee having regard to such knowledge and information.

226    The test for obviousness is whether the hypothetical skilled addressee armed only with the common general knowledge and any available s 7(3) information would be directly led, as a matter of course, to try the claimed invention in the expectation that it might well produce a useful or better alternative than the common general knowledge or s 7(3) prior art: Aktiebolaget Hässle at [53]. In this formulation, the expectation is a reasonable expectation of success which is an additional requirement to being directly led to the claimed invention: Ranbaxy at [209]. The test of “worthwhile to try” is not the law in Australia: Apotex Pty Ltd v ICOS Corporation (No 3) [2018] FCA 1204; (2018) 135 IPR 13 at [348] and [349], Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; (2014) 222 FCR 336 at [71].

227    As the appellant emphasised, a scintilla of invention is sufficient: Lockwood [No 2] at [52]; Ranbaxy at [213]. The combination defined by the claimed invention must be “very plain” to the notional skilled person to be obvious: Aktiebolaget Hässle at [34].

228    Further, the appellant noted that hindsight may not be used and this danger “will be particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known”: Aktiebolaget Hässle at [21].

229    As the appellant put it:

(1)    a patentable invention may lie in achieving a known goal, implementing into practice a known concept or having an inventive insight about a known product: Garford Pty Ltd v DYWIDAG Systems International Pty Ltd [2015] FCAFC 6; (2015) 110 IPR 30 at [64]; Lockwood [No 2] at [111];

(2)    a patentable invention may lie in showing that, contrary to mistaken prejudice, an idea will work or is practical: Ivax Pharmaceuticals UK Ltd v Akzo Nobel BV (No 2) [2007] RPC 3 at [48];

(3)    “[p]ractical and technical issues can affect the means by which a concept may be implemented in respect of an already known vendible product, and scepticism can inhibit recognition of the utility of applying a concept or idea to a known set of integers”: Lockwood [No 2] at [111];

(4)    what the skilled addressee perceives as technically and practically possible cannot be divorced from the commercial realities at the priority date: Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22 at [87]-[88]; and

(5)    in a pre-grant opposition proceedings of the present kind, the respondent’s “clear” or “practically certain” onus is particularly significant in the context of inventive step. Where there are conflicting sets of expert opinions on that question, it may not be possible for the respondent to discharge the onus to the requisite degree: Austal Ships at [12], SNF (Australia) Pty Limited v BASF Australia Ltd [2019] FCA 425; (2019) 140 IPR 276 at [22]-[28].

Competing cases on inventive step

The respondent’s case

230    The respondent submitted that the “problem to be solved” by the 171 application was improving processing techniques in circumstances where there is a variable quality feed of material entering a processing plant (either by reason of dilution or by reason of natural heterogeneity in the feed material), this being, (it was said) a common problem for mineral processing plants.

231    The respondent submitted that at the priority date it would have been obvious to:

(a)    initially reduce the size of mined material via the use of a crusher (this was a standard part of mineral processing);

(b)    transport the mined material by conveyor belt (this was a standard part of mineral processing); and

(c)    perform bulk assessment of the grade of the material and separate the material on the basis of that assessment (using a sensor such as PGNAA or LIF or, in the case of a uranium mine, a radiometric analyser. This step would have been obvious in light of the fact that each of the experts knew about the work of the Aachen group into LIF, and the experts with experience in Australia knew that Scantech was in fact promoting its PGNAA sensors for use in bulk sorting, and finally, all the experts were aware of the sorting by truck load after radiometric analysis of uranium ore, in particular at Rossing; and

(d)    subject at least part of the separated material to further processing (using any process, including wet concentration, which was a standard part of mineral processing).

232    According to the respondent, the skilled addressee would have considered the above with an expectation that it might well provide a solution to the issue of feed heterogeneity, whether or not they appreciated that the feed heterogeneity resulted from block heterogeneity or just lack of proper dilution control. In the respondent’s words “…even if the skilled addressee was not aware of and actively measuring within block heterogeneity, that is not an issue since they would appreciate that something was going wrong in terms of the feed to the beneficiation plant”.

233    The respondent submitted that the skilled addressee would appreciate that this solution would not work for every mine, but this was inherent in the nature of mineral processing, which requires large-scale customised solutions and feasibility studies. The respondent emphasised that:

(1)    the skilled addressee who worked in Australia and therefore knew of the Scantech technology (as Dr Miljak and Dr Morrison did, and as the respondent submitted most mineral processing engineers would) would appreciate that a bulk analyser was a useful tool; and

(2)    the skilled addressee who worked in Australia would be aware of the use of radiometric analysis on a least a truck scale and there is no reason to think the same could not occur on a conveyor belt.

234    According to the respondent there was no difficulty overcome, and no barrier crossed, in respect of the claimed invention. The respondent said there was no invention in specifying that:

(1)    segments would be scanned on a conveyor since that was the technology promoted by Scantech;

(2)    particles would be crushed by a primary crusher since uncrushed material would destroy the belt; and

(3)    it was desirable to reject waste as early and in as coarse sizes as possible, because processing waste is expensive and time consuming.

235    The respondent pointed to Dr Morrison’s evidence that:

A beneficiation plant is going to cost you, in today’s dollars, a couple of billion dollars, and it’s very expensive to operate as well. So if you can decide online that you can make the decision as part of your process control system, which is sorting, the – that – some of that material can bypass the beneficiation plant, that is it’s more than 90 per cent haematite, or could just as easy – well, more than 90 per cent haematite, let’s say, which is about 63 per cent Fe, there’s no point in putting it through the beneficiation plant, it just wastes space. If it’s too low grade, there’s no point in putting it through either because it’s going to be very difficult to achieve the saleable product. So you really only want to be running the beneficiation plant on the right range of ore, that is, above a first grade and below a second grade.

236    In other words, submitted the respondent, Dr Morrison considered that waste should not proceed to further crushing or sizing.

237    Further, the respondent submitted, the experts agreed that “…it would be obvious to incorporate the processing of at least one segment in the wet processing plant”. Further, Dr Miljak said that the concept of the 171 application would have been obvious to him. In this regard, it is convenient for me to note that Dr Miljak’s evidence in this respect was that:

I think as a concept it was obvious to me. I think it would have been obvious to a small cohort of mineral processing engineers in the research arms. And I don’t think it would have been obvious to a non-inventive process engineer.

238    The respondent noted that Dr Miljak said his evidence in the joint report was based on the “…lowest common denominator of mineral processing engineer”. As the respondent put it:

Dr Miljak was unable to comment from his own expertise on whether the implementation of the idea was obvious, because he is not a process engineer. But in any event, since the 171 Application does not disclose how to implement the concept, the Respondent says that the Court should not conclude that there is an inventive step merely because it would be hard to implement bulk sorting and then particle sorting. The 171 Application admits that the addressee may use any suitable system for that purpose.

239    The respondent thus submitted that in light of the common general knowledge alone, the claimed invention was obvious at the priority date.

240    The respondent also submitted that the claimed invention was obvious in light of the common general knowledge together with the information in Nienhaus. According to the respondent, the experts agreed that if they identified Nienhaus in “…a literature search relating to dry processing of ore” they would have considered the information contained in Nienhaus relevant to bulk sorting. Further, the experts agreed that in light of Nienhaus they would be “…directly led as a matter of course to try some of the methods in the 171 Application”. In the respondent’s submissions:

Dr Bamber agreed in his oral evidence that you could take the flowsheet in Figure 3 of Nienhaus and replace the LIF sensor with [a] PGNAA sensor. This was [a] concept that was available in light of Nienhaus. It is significant that Nienhaus specific identifies PGNAA as an alternative sensor technology to the LIF technology that is the focus of the paper. Dr Miljak also confirmed his view in oral evidence, saying “I think figure 3 would show a nice flowsheet that relates to bulk ore-sorting”. Dr Morrison said:

Well, it provides me with a very nice flowsheet. But the method of detection, using LIF, would not be appropriate for an ore which does not contain a mineral of interest which fluoresces under laser.

241    The respondent submitted that a suitable sensor for material that does not fluoresce would be PGNAA, which was commercially available in Australia through Scantech, and suggested in Nienhaus.

242    As to Dr Bamber’s evidence that he would not have any expectation of success if he decided he wanted to use PGNAA in the flowsheet described in Nienhaus, it is apparent that he was referring to the complexity of implementation. Dr Miljak explained that the success of any method will depend on a range of factors that would be studied as part of the implementation of such a new system. Further, Dr Bamber agreed that the 171 application does not solve the problem of implementation (assuming there was one).

243    The respondent noted that:

Figure 3 of Nienhaus includes a pre-concentration plant, and the discussion in Nienhaus suggests that an optsorter might used [sic]. Dr Miljak says he doesn’t need that information because he knows that within the pre-concentration plant box in Figure 3, he has numerous options, dry sorting being one of them. But he understands the Nienhaus is suggesting an optosorter (which is particle sorter to him). As noted above, Dr Bamber also recognised this in his affidavit evidence.

244    The respondent submitted that:

…all of the claims of the 171 Application should be found to be invalid for lack of inventive step in light of Nienhaus. In making this submission, the Respondent emphasises how close the disclosure in Nienhaus is to the disclosure in the 171 Application. In circumstances, where the 171 Application does not disclose any more technical detail, including any detail in relation to implementation, and is not directed to any particular sensing technology (and at best it relies on the use of commercially available technology that was already being promoted in Australia for bulk sorting), it cannot be the case that it can be inventive in light of the Nienhaus prior art reference simply because of the nature of the sensor focussed on in Nienhaus.

245    The respondent further submitted that the claimed invention was obvious in light of the common general knowledge together with the disclosure in Kurth 2007.

246    According to the respondent, the experts agreed that if they had ascertained Kurth 2007 they would have considered it to be relevant. As the respondent put it:

Dr Morrison and Dr Miljak (who had knowledge of Mr Kurth and Scantech as part of their common general knowledge, and were therefore aware of Scantech’s promotion of its product for the purpose of bulk sorting) considered it was relevant to bulk sorting. Dr Bamber (who did not have that knowledge) considered that the paper was relevant to solving the issue of a beneficiation process which has been supplied with variable quality material.

247    The respondent noted that the experts also agreed that based on Kurth 2007 it would be obvious to try PGNAA for the bulk analysis of ores in an ore sorting application. The respondent continued:

Dr Morrison gave evidence that bulk sorting required large scale heterogeneity, but that access to Kurth 2007 would give the engineer a better chance of a functioning system which measured mass and moisture as well as elements. He considered that the system disclosed in Kurth 2007 could be used with primary crushed material. Dr Miljak agreed. He considered that the success of a bulk sorting method would depend on factors including the presence of heterogeneity at a suitable scale for sorting and the fitness for purpose of the sorter (although he noted that Kurth 2007 also disclosed a natural gamma analyser that could be used for uranium).

Dr Bamber gave evidence in the Joint Expert Report that a skilled addressee could have no reasonable expectation of success on the basis of lack of knowledge of heterogeneity. He also expressed the view that the Scantech analyser could not handle primary crushed ore, and that the development of a diverter would be non-trivial.

In cross-examination, Professor Bamber accepted that a primary crusher could provide particles which would fit in a bed depth of less than 380 mm.

In any event, the evidence of the other witnesses was that the PGNA analysers could be set off further than 380 mm and still be effective.

Ultimately, Dr Bamber accepted that the Scantech Analyser described in Kurth 2007 (which was also known to the Australian addressees as part of their common general knowledge) would be an obvious tool to use with bulk sorting as at the priority date in order to overcome a problem with the variable quality going to a beneficiation process.

248    In these circumstances the respondent submitted that the claimed invention is obvious in light of the common general knowledge together with the information in Kurth 2007.

249    The respondent also contended that Nienhaus and Kurth 2007 could be reasonably expected to have been ascertained, understood and regarded as relevant by the skilled person before the claimed priority date in accordance with s 7(3) of the Patents Act. According to the respondent, the appellant’s contention that the requirements of s 7(3) should not be found to be met because these documents were not found by a patent searcher involves error. The respondent referred to Otsuka Pharmaceutical Co, Ltd v Generic Health Pty Ltd (No 4) [2015] FCA 634; (2015) 113 IPR 191 in which Yates J:

…accepted that the question of what the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant, is to be determined on the evidence (at [399]). But he did not accept that every case that seeks to invoke s 7(3) of the Act required evidence of detailed factual inquiries (at [399]). He observed that much will depend on how the particular case on obviousness is sought to be advanced (at [399]).

250    The respondent submitted that this case was similar to Otsuka. Thus:

The question raised by the respondent’s case is whether, given the common general knowledge (summarised above) that there was a need for new and improved dry processing systems, the person skilled in the art seeking such a sorting system could be reasonably expected to have ascertained, understood and regarded as relevant Nienhaus and/or Kurth 2007.

251    The respondent said that question should be answered in the affirmative.

252    As to Nienhaus, according to the respondent:

(1)    Nienhaus and the Aachen University Group were well known for their research into sensing technologies, including in mining;

(2)    Nienhaus’ work was referred to in the widely read Wotruba article;

(3)    Dr Miljak regularly conducted literature reviews for technical literature, but he also reviewed industry magazines. He was aware of Nienhaus’ work because it had been identified during Cutmore & Eberhardt’s literature review. His colleague, Dr Death had also described the work to him after a visit to Aachen University, from which he returned excited about the work being done by the Aachen group;

(4)    Dr Morrison reviewed academic and industry literature weekly, including Australia’s Mining Monthly, which he received every month. He had attended a presentation in South Africa on Aachen University’s work. Because he knew Professor Nienhaus was associated with Aachen University, which was well regarded for its work in sensing technology, he would have been interested to read the Nienhaus article in the September 2003 edition of Australia’s Mining Monthly. The Nienhaus article published in Australia’s Mining Monthly in September 2003 was also cited in the AMIRA P902 Final Report, which Dr Morrison used as a resource. Dr Morrison’s evidence was that he found Nienhaus when he was looking for sorting references in connection with a project with his colleague Nenad Jokorvic (which took place in 2005-2007). He thought he read the article in about 2006, some three years after the publication of Nienhaus;

(5)    Dr Bamber’s evidence is that it is possible he came across the Nienhaus article relied upon in this proceeding in his research. He explained that since there were a number of publications that Nienhaus and his group were publishing in, he could have come across the article many different ways. Although Dr Bamber had a “technical bias” against LIF by 2010, based on his own investigations, and so considered that at that time he would have disregarded the article, this reflected his personal view and not the view of the skilled person;

(6)    Australia’s Mining Monthly is an industry publication that was regularly reviewed by mineral process engineers and a good source of information about technical developments. The fact that it was ascertainable is apparent from the fact that it was cited in the AMIRA report on dry processing techniques, P902, which was published in November 2005. The AMIRA P902 report is characterised by Dr Morrison as an important source of information;

(7)    Dr Bamber agreed that literature reviews provide a source of references. He explained that “I am interested in the references of articles, and I trace the references to other articles that – with more curated interest”;

(8)    Dr Bamber knew about AMIRA, who had provided him some assistance in writing his thesis. He accepted that the list of contributors to the P902 report included some of the major mining companies operating in Australia and internationally, as well as JKMRC, CSIRO and Aachen. Although Dr Bamber expressed the view he could not have obtained a copy of the P902 report (apparently based on his understanding of the copyright notice), Dr Morrison’s evidence was that since the project was sponsored by the CRC for Sustainable Resource Processing, there was a statutory requirement that research be released for public access, usually within 18 months and certainly, in the case of P902, well before June 2010;

(9)    Dr Morrison explained that all of the researchers, Australian and international, were free to talk about and publish about the P902 report from the day the report was generated, so that there was a lot of subsidiary publication, including at Aachen and JKMRC. Dr Morrison himself discussed the report with others, pursuing opportunities with sorting, because Professor Wotruba had persuaded him it might be the next big thing if the problems could be overcome;

(10)    Dr Morrison explained that the P902 report would have been part of the CSRP (Centre for Sustainable Research Processing) website and the AMIRA website. This would have occurred before the priority date;

(11)    Dr Bamber accepted that if he went on the AMIRA website, he would see a project called P902 Dry Processing of Minerals, and he could ring up AMIRA, contact them, and get a copy of P902;

(12)    Since chapter 5 was a review of sorting technologies, it would have been of interest. This was particularly so because it was written by Professor Wotruba and Professor Riedel of Aachen University. It contained a literature review; and

(13)    The skilled addressee (who knew Professor Riedel was at Aachen from the contributor details to chapter 5, and knew Aachen was reputable), would have considered articles by Professor Riedel of interest. The literature review referred to a series of Nienhaus articles, including the one in Australia’s Mining Monthly.

253    The respondent submitted that, on the balance of probabilities, if interested in mineral processing techniques at the priority date, the skilled addressee could reasonably have been expected to have found Nienhaus by browsing their folder of useful articles, which would have included Nienhaus, or by reviewing Chapter 5 of AMIRA’s P902 report, these being the kinds of thing Dr Morrison said he would do as the priority date.

254    As to Kurth 2007, the respondent submitted:

(1)    Dr Miljak knew Scantech and their products. He would have been interested in the Kurth 2008 paper (a subsequent document by Scantech) because he would have been interested in the applications that Scantech was chasing;

(2)    Dr Morrison was also aware of Scantech’s products, and knew Dr Kurth, whom he had met at industry conferences. Dr Morrison had asked Dr Kurth to give a presentation about Scantech’s sensing technologies to JKMRC around 2008, after he saw Dr Kurth give a paper at the 2008 MetPlant conference (Kurth 2008), which was a conference organised by the peak industry body, AusIMM. Kurth 2008 references Kurth 2007;

(3)    if Dr Morrison was undertaking a research project relating to dry processing of ores, he would have obtained more material about Scantech. In the event, Dr Morrison obtained this information by asking Dr Kurth to present to JKMRC;

(4)    Dr Morrison’s actions demonstrate that a skilled addressee who was interested in dry processing generally and sorting in particular would have made enquiries to learn more about Scantech’s products after seeing the Kurth 2008 paper presented. Dr Miljak’s evidence is consistent with that conclusion;

(5)    A skilled addressee could reasonably have been expected to trace the references in Kurth 2008, and thereby obtain a copy of Kurth 2007; and

(6)    Dr Bamber’s evidence in relation to this issue is of very limited assistance, since he was not working in Australia at the priority date and did not know Scantech, and since it was not his practice at the priority date to review marketing papers. Dr Bamber accepted that if he had worked for a research and development department for a mining company, it was common for colleagues to go to major conferences and come back and talk about the conference. If a colleague had pointed the article out to him, he would have reviewed it. When Dr Bamber considered whether, if he had a beneficiation process which had been supplied with variable quality material, Kurth 2007 would be of interest to him – he accepted the proposition. Further, if he had been at the Australian Mining Technology Conference, 2007, he would have been interested in the paper based on the title and the abstract.

The appellant’s case

255    The appellant submitted that the combination of features claimed by each of the independent method claims 1 and 19 and apparatus claim 37 were not obvious in light of the common general knowledge alone for the following reasons.

256    Bulk sorting was not well known and generally accepted or widely used at all in mineral processing, but rather was a “niche application” limited to ROM ore in trucks and one instance of testing ROM ore in LHDs (load haul dumpers).

257    The experts were agreed that bulk sorting of ore requires prior knowledge of heterogeneity in situ at a suitable scale, which was not well known. Without knowledge of heterogeneity, there would be no motivation for the skilled person to consider applying the concept of bulk sorting to the processing of ore. This, submitted the appellant, makes it impossible to conclude that the taking of this step would have been obvious before the priority date. The appellant said:

The Appellant apprehends that the Respondent may rely on Dr Morrison’s evidence to suggest that a PGNAA sensor could have been used by the skilled person to measure the heterogeneity in a particular ore deposit, after which it would be known that the necessary heterogeneity existed such that bulk sorting could be used. But why would the skilled person have done so, without the very existence of the relevant type of heterogeneity being well known?

Further, even if the skilled person might for some reason have obtained and used a PGNAA sensor in an attempt to measure the heterogeneity of an ore deposit, this would have been far from the sort of exercise required to establish obviousness. It would not involve the skilled person being directly led to try as a matter of course the use of the methods and apparatus of the claims, with a reasonable expectation of success. As the experts agreed, the skilled person would have had no expectation of success without first taking that step, and only then, in a subsequent series of steps, could consideration be given to attempting to develop a bulk sorting solution.

Additionally, as Dr Bamber explained, at the Priority Date, sensor technologies were thought to be too slow, inaccurate or of insufficient scale in order to be incorporated into a conceivable bulk sorting application. Even at 2016, Dr Miljak’s evidence was that there were very few sensors suitable for bulk sorting.

…

These were examples of “negative aspects” of CGK, or scepticism in the field, and provide an additional reason why the claimed invention was not obvious.

258    According to the appellant, even if the bulk sorting of pre formed part of the common general knowledge, it was not obvious to apply it to primary crushed sized ore as claimed in the independent claims of the 171 application because bulk sorting had only been used in niche applications and was not well known in the field outside of those applications. Further, it would not have been obvious to apply bulk sorting to primary crushed sized ore as claimed. As Dr Bamber explained, primary crushed sized ore is not typically moved using trucks (in contrast to the niche applications). As a result, a bulk sorting solution for primary crushed sized ore would have needed to be adapted to account for the pathway along which primary crushed size ore moves, which is typically a conveyor. Further, as Dr Bamber and Dr Morrison explained, the loading of ore on a conveyor belt from a primary crusher is uneven. The uneven loading of large rocks on a conveyor belt would have presented several technical difficulties for the skilled addressee with respect to sorting that ore using a sensor, had that person conceived of doing so. The appellant said, for example, that a sensor would need to be positioned such that it is not impacted by the primary crushed sized ore as it is moving along the conveyor belt and the varying bed depth of the ore would need to be accounted for.

259    The appellant also submitted that the combination of features claimed by each of the dependent method claims (2 to 18, 20 to 36) and apparatus claims (38 to 41) were not obvious in the light of the common general knowledge for the same reasons. Further to these reasons, however, on any view, each of the dependent claims which includes bulk sorting followed by particle sorting (claims 3 to 7, 21 to 25, 38) was not obvious in light of the common general knowledge. The appellant said the respondent had adduced no evidence of the obviousness of that combination and the weight of the evidence in relation to the dependent claims in the light of the cited prior art (Nienhaus and Kurth 2007) is that the combination is not obvious. In addition, each of the each of the dependent claims in which the mined ore is iron ore (claims 8, 9, 10, 16, 26, 27, 28 and 34) was not obvious in light of the common general knowledge. This is because it was not obvious to apply the “niche application” of bulk sorting to the specific case of iron ore, to which it had never been applied before the priority date. Finally, each of the each of the dependent claims which include the use of PGNAA for bulk sorting (claims 14 and 32), were not obvious in light of the common general knowledge as it was not obvious to take a particular measurement technique used in different contexts and apply it to the non-obvious application of bulk sorting of ore.

260    As to Nienhaus, the appellant submitted that the respondent had not discharged the onus of proving that the method or apparatus of any of the claims does not involve an inventive step in the light of the common general knowledge together with the information in Nienhaus for the following reasons.

261    The appellant submitted that the evidence does not support a finding that Nienhaus could reasonably be expected to have been ascertained and regarded as relevant under s 7(3) as:

(1)    Dr Morrison’s evidence was that he would conduct a literature search if undertaking a research project relating to dry processing of ores as at June 2010. However, not one of the many searches proposed by Dr Morrison would in fact have located Nienhaus. Instead, they produced tens of thousands of search results of other publications. The appellant said that this was “a ‘haystack’ with no needle in it”; and

(2)    as to the fact that the respondent does not rely on any literature search but instead said that Nienhaus would have been ascertained by the skilled person by means of industry knowledge and/or review of the P902 report, the evidence does not establish that the skilled person could be reasonably expected to have done so:

(a)    the literature search evidence cannot be put aside as irrelevant as this is what Dr Morrison said he would have done and is thus a step that can be attributed to the skilled addressee and, on the evidence, none of the searches conducted would have located Nienhaus and the results of the searches would have led the skilled addressee in different directions away from Nienhaus;

(b)    Dr Morrison gave evidence that he was aware of and had read Nienhaus before the priority date but his “…idiosyncratic experience cannot be attributed to the notional skilled person”;

(c)    Dr Morrison’s suggestion in his affidavit evidence to the effect that he would have reviewed the P902 report and located Nienhaus amongst the references in that document cannot be accepted, because this is an exercise he never in fact undertook despite being engaged in research relating to dry processing of ores and the exercise cannot be attributed to the skilled addressee;

(d)    Dr Miljak had not read the Nienhaus paper before the priority date despite his involvement in developing sensor technologies at that time;

(e)    question 26 of the joint expert report is of little utility as it was framed by reference to a “…literature search relating to dry processing of ore, and particularly bulk sorting”, and thereby assumes part of the invention and does not reflect a starting point that was common general knowledge; and

(f)    the title of Nienhaus (“Quality of LIF”) and its abstract do not suggest relevance to the development of ore processing or sorting techniques, including bulk sorting.

262    The appellant submitted further that the evidence does not support a finding that the skilled addressee would be directly led as a matter of course to try the method or apparatus of claims 1, 19 or 37 with a reasonable expectation of success in the light of the common general knowledge and Nienhaus:

(1)    Nienhaus strongly recommends the use of the LIF analyser to measure the fluorescence of phosphorous, which is not covered by the method or apparatus of claims 1, 19 or 37 and discourages the use of other sensing technologies including PGNAA; and

(2)    it cannot be said that it would have been obvious to take Nienhaus but discard the essence of that disclosure and attempt to develop a system that used PGNAA instead of LIF in the application that is described in Nienhaus. The evidence does not establish, to the requisite standard, that the skilled person would directly be led as a matter of course to do so with a reasonable expectation of success.

263    The appellant also submitted that the evidence does not support a finding that the skilled person would be directly led to try as a matter of course the additional features of the method or apparatus of at least the following dependent claims with a reasonable expectation of success in the light of the common general knowledge and Nienhaus: claims 3, 4, 6, 7, 21, 22, 24, 25, 38 (dry sorting steps/plant); claims 11, 29 (mining steps). Nor does the evidence support a finding that the skilled person would be directly led to try as a matter of course the additional features of the method or apparatus of the following dependent claims with a reasonable expectation of success in the light of the common general knowledge and Nienhaus: claims 13, 31 (entire bed depth); claims 14, 32 (PGNAA).

264    Dr Miljak’s evidence that the concept of the claimed invention would have been obvious to him but not to the “…lowest common denominator of mineral processing engineer”, which formed part of his explanation as to how he understood question 28 in the joint experts’ report (about supplementing the disclosure in Nienhaus) does not assist the respondent because the evidence was given:

(1)    with the benefit of hindsight, having already seen the 171 application;

(2)    from the perspective of a research and development physicist only (not a non-inventive mineral processing engineer); and

(3)    in addition to other evidence in which he accepted that even from his perspective (not that of the skilled addressee) the implementation of the concepts would not be obvious and, therefore, there would be no expectation of success.

265    Further, the appellant submitted:

…as the Appellant understands Dr Miljak’s changed position: (i) his answers in the JER [joint experts’ report] that the addition of the dry sorting steps was not obvious would remain correct if answered from the point of view of the “non-inventive” (his words) person skilled in the art; and (ii) while he said that the “concept” (but not its implementation) would have been obvious to him, he expressly confirmed that the concept would not have been obvious to the non-inventive skilled person.

…

Finally, whatever the weight of Dr Miljak’s changed evidence, it cannot assist the Respondent to make out his onus given the opposing views of Dr Bamber and Dr Morrison as reflected in the JER.

266    As to Kurth 2007, the appellant submitted that the respondent had not discharged the onus of proving that the method or apparatus of any of the claims does not involve an inventive step in the light of the common general knowledge together with the information in Kurth 2007.

267    According to the appellant, the evidence does not support a finding that Kurth 2007 could reasonably be expected to have been ascertained and regarded as relevant under s 7(3). In common with Nienhaus, Dr Morrison’s evidence was that he would conduct a literature search if undertaking a research project relating to dry processing of ores as at June 2010. However, not one of the many searches proposed by Dr Morrison would in fact have located Kurth 2007 but instead produced tens of thousands of search results of other publications. While one of the searches conducted did locate the Kurth 2008 article, this does not assist the respondent as:

(1)    it was one search only that located Kurth 2008 in contrast to the many searches done and the return of tens of thousands of results;

(2)    there is no evidence to support the proposition (which forms part of the respondent’s onus) that the skilled person would have zeroed in on this particular search and identified and obtained Kurth 2008;

(3)    the search which located Kurth 2008 (amongst many other articles) was for the term “bulk sorting” and thus involved the use of hindsight, assuming as the starting point part of the subject-matter of the claimed invention whereas from the common general knowledge and the use of non-hindsight returns the searches did not locate Kurth 2008;

(4)    Dr Morrison’s assertion that he “would have” located Kurth 2007 by reviewing Kurth 2008 cannot be accepted because he in fact had Kurth 2008 from his attendance at the conference where Kurth 2008 was presented and never in fact undertook the exercise he said he would have conducted despite being “engaged in the very task to which his evidence was directed: research in relation to the dry processing of ores”;

(5)    there is no other evidence to suggest that the skilled addressee, with Kurth 2008, would have done what Dr Morrison said; and

(6)    an objective consideration of Kurth 2008 and the way in which it refers to Kurth 2007 confirm that the skilled addressees “…would not have gone down this particular rabbit hole” as the reference is in the context of process control, not sorting or bulk sorting.

268    The appellant also noted that none of the experts had in fact read Kurth 2007 before the priority date or, it should be inferred, before giving evidence in relation to the 171 application. Further, the question in the joint experts’ report concerned with the relevance requirement under s 7(3) (question 32) is of little or no utility as it is framed by reference to a literature search relating to dry processing of ore, and particularly bulk sorting, and thus assumes part of the invention and does not reflect a starting point that was part of the common general knowledge. In addition, the title of Kurth 2007, its abstract, and its general disclosure, do not suggest any relevance to the development of ore processing or sorting techniques, including bulk sorting. The paper is concerned with process control, not sorting techniques.

269    The appellant submitted that the evidence does not support a finding that the skilled person would be directly led to try as a matter of course the method or apparatus of claims 1, 19 or 37 with a reasonable expectation of success in the light of the common general knowledge and Kurth 2007. Kurth 2007 does not disclose bulk sorting and there is no data provided which would enable the skilled person to try bulk sorting, let alone to try bulk sorting with a reasonable expectation of success. It also would not have been obvious to use the PGNAA sensor on primary crushed ore. The only disclosure in Kurth 2007 in relation to primary crushed size ore involved the use of a radiometric sensor for on-line analysis and there is no evidence that it would have been obvious, based on this disclosure, to use such a sensor for bulk sorting.

270    The appellant submitted that the evidence does not support a finding that the skilled addressee would be directly led to try as a matter of course the additional features of the method or apparatus of at least the following dependent claims with a reasonable expectation of success in the light of the common general knowledge and Kurth 2007: claims 3, 4, 6, 7, 21, 22, 24, 25, 38 (dry sorting steps/plant); claims 11, 29 (mining steps). The appellant referred to the answer in question 34 of the joint experts’ repot that integers of those claims were non-obvious in light of the common general knowledge and Kurth 2007 and the evidence of Dr Bamber to this effect.

271    The appellant also submitted that the evidence does not support a finding that the skilled addressee would be directly led to try as a matter of course the additional features of the method or apparatus of the following dependent claims with a reasonable expectation of success in the light of the common general knowledge and Kurth 2007: claims 13, 31 (entire bed depth); claims 14, 32 (PGNAA); claims 18, 36 (stockpiling) and 17, 35,41 (chutes), again referring to the experts’ answers to this effect in question 34.

272    As to Dr Miljak’s evidence that the claimed invention would have been obvious to him, the appellant repeated its submissions that this evidence was made from the position of hindsight (having already seen the claims of the 171 application) and from the perspective of research and development physicist only (not an non-inventive mineral processing engineer), with Dr Miljak confirming that even from his perspective (not that of the skilled addressee) the implementation of the concepts would not be obvious and, therefore, there would be no expectation of success. The appellant also reiterated its submissions as set out above in relation to Dr Miljak’s evidence concerning question 28 of the joint experts’ report.

Discussion

273    In my view the appellant’s submissions in relation to all aspects of the question of inventive step are compelling.

274    My general observations about this issue are as follows.

275    The respondent has not confronted the totality of the expert evidence (including, in certain regards, that of its own experts) which supports the conclusion that the claimed invention would not have been obvious to a person skilled in the relevant art by reason of the common general knowledge alone or the common general knowledge taken together with either Nienhaus or Kurth 2007 (even assuming that those articles would have been ascertained by the skilled person, which I do not accept) before the priority date.

276    The respondent has not persuaded me that the evidence of Dr Bamber, contrary to the respondent’s case on inventive step, should not be accepted.

277    The respondent has not persuaded me that the evidence of Dr Morrison and Dr Miljak, where it is contrary to the evidence of Dr Bamber and supports one or more aspects of the respondent’s case in relation to inventive step, should be accepted in preference to the evidence of Dr Bamber.

278    As discussed above, I consider that none of the expert evidence about the experts’ own state of knowledge should be taken to be representative of the notional skilled addressee. In particular, I consider that each of the experts in this case are inventive. Further, I do not accept that the concept of the skilled addressee should be confined to a mineral processing engineer within the research and development arm of an international mining company. In my view, while the concept of the skilled addressee should not be reduced to what Dr Miljak described as the lowest common denominator of a mineral processing engineer, I see no reason on the evidence and given the terms of the 171 application to confine the concept of the skilled addressee in the manner the respondent has proposed. The concept of the skilled addressee must include mineral processing engineers more generally, albeit ones specifically interested in process control of ROM.

279    The respondent has not adduced evidence sufficient to persuade me that the relevant starting point for the notional skilled addressee is that there was a problem of variable quality of feed of material entering a processing plant which was perceived as requiring a solution through any form of pre-concentration technique before the priority date. The evidence is to the effect that the notional skilled addressee would have shared a general scepticism about the practicality of sorting processes for ROM and new technologies particularly those relating to dry processing separation and pre-concentration techniques. Accordingly, while it may be taken that the skilled addressee was focusing on improvements to the control of mineral processing, I do not accept that it may be taken that the skilled addressee would have perceived there to be a problem of variable feed quality for either of the reasons identified by the respondent (heterogeneity of feed material or dilution of ROM through waste) which was to be solved through pre-concentration techniques. Knowledge of the heterogeneity of ore in situ at the relevant scale was not itself common general knowledge and the evidence is insufficient to indicate that dilution by waste was a problem requiring a solution of the kind proposed in the claims of the 171 application.

280    Otherwise, I do not accept that it would have been obvious to the skilled addressee to apply the technique of bulk sorting to primary crushed material for the reasons given by the appellant.

281    In addition to the point made immediately above, as the appellant said, on the evidence, the technique of bulk sorting was not well known or widely accepted and used in the mineral processing industry. The technique requires prior knowledge of the heterogeneity of the ore in situ at the relevant scale and such knowledge was not itself common general knowledge of the skilled addressee. Further, as the appellant also said, the commercial and practical realities (including the perceived limitations of sensor technologies) which would have informed the state of mind of the skilled addressee do not suggest that the skilled addressee would have had any motivation or reason to apply the concept of bulk sorting to the processing of ore.

282    Contrary to the respondent’s submissions, in the commercial and practical context which existed at the priority date, I consider that the skilled addressee would not have been directly led as a matter of course to try bulk sorting in the expectation that it might well produce a useful or better alternative than existed before the priority date. The fact that bulk sorting was not well known and had only been used in niche applications involving sensing of ROM in trucks or loaders means that the skilled addressee would not have been directly led as a matter of course to apply those same bulk sorting techniques to primary crushed ore which, as the appellant submitted, was not typically transported using trucks but, rather, was transported via a conveyor.

283    Contrary to the respondent’s submissions, there were good reasons for the skilled addressee not to consider that merely because bulk sorting had been used in niche applications involving the application of sensing technologies to ROM in trucks, the same could be applied to primary crushed ore on a conveyor belt. The respondent has not proved that Scantech’s marketing was part of the common general knowledge of the skilled addressee or that the skilled addressee would have considered that the implementation of bulk sorting on primary crushed ore would have been commercially feasible or even desirable in light of the limitations of sensing technologies and the practical difficulties of applying such a niche application to primary crushed ore on a conveyor belt.

284    For these reasons I accept the appellant’s submissions as to non-obviousness of the claimed invention including that the adaptations that would have been required for the application of bulk sorting to primary crushed ore was by no means obvious at the priority date.

285    I also accept the appellant’s submissions that, on any view, the evidence does not support the conclusion that bulk sorting followed by particle sorting would have been obvious to the skilled addressee before the priority date. The evidence weighs heavily against any conclusion to that effect. For the reasons given, the mere fact that it was desirable to reject waste as early as possible in the process does not mean that the skilled addressee would have been considering pre-concentration techniques of the kind claimed in the 171 application. To the extent that Dr Morrison gave contrary evidence in this regard to Dr Bamber, as I have said, I see no reason to reject the evidence of Dr Bamber. As to Dr Miljak’s evidence, I consider that the appellant is correct. Properly understood, Dr Miljak’s evidence, both written in the joint experts’ report and oral, supports the inference that the claimed invention would not have been obvious to the notional skilled addressee despite Dr Miljak saying it would have been obvious to him.

286    As to Nienhaus, one difficulty confronting the respondent is that I am not persuaded that Nienhaus would have been ascertained by the notional skilled addressee before the priority date. The evidence of the experts was premised on the condition that if they ascertained Nienhaus they would have considered it relevant to developing a mineral processing operation that included bulk sorting and bulk sorting of primary crushed ore (joint experts’ report question 26). The evidence weighs in favour of the conclusion that the notional skilled addressee would not have ascertained Nienhaus before the priority date even assuming (contrary to my view) that it is legitimate to attribute to the skilled addressee the view that they were solving the problem of variable ore feed by the application of the concept of either bulk sorting per se or bulk sorting of primary crushed ore. The literature searches of Dr Morrison did not lead to the ascertainment of Nienhaus. Dr Morrison is not representative of the skilled addressee and his evidence that he had ascertained and read Nienhaus before the priority date, as the appellant submitted, cannot be attributed to the skilled addressee. Further, and as the appellant also submitted, I am not persuaded by Dr Morrison’s evidence that he would have located the reference to Nienhaus in the P902 report because despite in fact being involved in the very exercise to be attributed to the notional skilled addressee (that is, being focused on improving process control for the mineral processing of ores) Dr Morrison did not ascertain Nienhaus by this method. It is also relevant that Dr Miljak, who had particular expertise in sensor technologies, had not ascertained Nienhaus by the priority date. I also accept the appellant’s submission that a mere cross-reference to the title of Nienhaus in another report would not have led to its ascertainment by the notional skilled addressee even assuming an interest in bulk sorting because its title (“Quality of LIF”) would not have alerted the skilled addressee of its relevance to ore processing techniques and bulk sorting. I do not find the factors on which the respondent relied to establish the contrary proposition sufficient to discharge the respondent’s onus of proving that the skilled addressee would have ascertained Nienhaus and considered it be relevant to improving the control of the processing of ore.

287    I accept the appellant’s submissions that it cannot be said that the skilled addressee would have been directly led as a matter of course to try the methods or apparatus in claims 1, 19 or 37 of the 171 application with a reasonable expectation of success in light of the common general knowledge and Nienhaus given that the entire purpose of the article is to establish that LIF “…has emerged as an answer to the quality problem” in mineral processing. In my view it is not plausible that the skilled addressee would take from Nienhaus anything other than the use of LIF to measure the fluorescence of phosphorous. As the appellant said, it would not have been obvious for the skilled addressee to use Nienhaus in a manner which ignores the essence of its disclosure as a basis for the development of a system using PGNAA.

288    I do not accept the respondent’s submissions that the evidence of Dr Bamber about the lack of any expectation of successfully using PGNAA instead of a LIF sensor may be disregarded. Dr Bamber’s evidence of the complexity of implementation, given the agreement between the experts as to the conservatism of the industry about new technologies and its scepticism concerning sensor technologies, supports the conclusion that the skilled addressee would not have been directly led as a matter of course to try to combine the disclosure in Nienhaus with the use of PGNAA with a reasonable expectation of success.

289    I accept the submissions of the appellant about Dr Miljak’s oral evidence that the concept of the claimed invention would have been obvious to him. That evidence, as I have said, in fact confirms the non-obviousness of the clamed invention when it is considered as a whole.

290    I accept further the appellant’s submissions that the dependent claims of the 171 application would not have been obvious to the skilled addressee in light of the common general knowledge and Nienhaus. The evidence in the joint report and as given orally by the experts does not support the contrary conclusion advocated by the respondent.

291    As to Kurth 2007 I accept the appellant’s submissions that the respondent has not proved that the skilled addressee would be reasonably expected to have ascertained Kurth 2007 and regarded it as relevant before the priority date. The literature searches did not disclose Kurth 2007 and only one such search, which used the term “bulk sorting”, disclosed Kurth 2008. Apart from this I do not accept that Dr Bamber’s evidence should be given little weight. Dr Bamber is an expert in an international field in respect of the very issues with which the 171 application is concerned and he was unaware of Kurth 2007. Dr Morrison’s evidence that he would have ascertained Kurth 2007 because of the cross-reference in Kurth 2008 is unpersuasive for the reasons given by the appellant.

292    I also accept the appellant’s submissions (for the reasons given by the appellant) that the claimed invention, in any event, would not have been obvious in light of the common general knowledge and Kurth 2007 because Kurth 2007 is concerned generally with process control and does not disclose bulk sorting as that term is used in the 171 application.

CONCLUSIONS

293    The respondent has not discharged its onus of proving that the patent as sought in the 171 application would be invalid if granted. It follows that the appellant’s appeal should be allowed and consequential orders should be made enabling the 171 application to proceed to the grant of a patent.

Associate:

Dated:    15 November 2019