Some of those grounds are inter-related as will be apparent when I deal with them below.
4 Lubrizol contended that the Patent has been infringed by Woolworths having a liquid composition of KLEA refrigerant and EMKARATE lubricant in the refrigeration system at its Penrith supermarket following a retrofit in 1993. Austral carried out the retrofit when a combination of KLEA and EMKARATE was installed in the system. That was said to have been an infringement by Austral.
5 Lubrizol also contended that Woolworths Victoria infringed the Patent by having a liquid composition of KLEA and EMKARATE in the refrigeration system at its Safeway Milton supermarket following a retrofit in 1993. Lawrence carried out that retrofit when a combination of KLEA and EMKARATE was installed in the system. That was said to have been an infringement by Lawrence.
6 There was no dispute concerning the allegations of installation of KLEA refrigerant and EMKARATE lubricant in the two refrigeration systems. Assuming the validity of the Patent, the issues remaining on infringement were whether there was a "liquid composition" in terms of the claims in the Patent and whether the composition was present in the percentages referred to in the claims made in the Patent.
7 I shall first say something about the background to the Patent, the claims made in the Specification and the witnesses who gave evidence. I shall then deal separately with each ground of revocation. Finally, I shall deal with the question of infringement.
BACKGROUND
8 Refrigeration involves the transfer of heat from a medium of low temperature to a medium of high temperature. That effect is seen in domestic and commercial refrigeration systems, air conditioning systems, process chilling systems and heat pumps among other instances. A typical method of achieving such a transfer of heat is vapour compression, which is based on the circulation of a fluid compound known as a refrigerant around a refrigeration loop. The refrigeration loop comprises four main components, namely: an evaporator, a compressor, a condenser and an expansion device. A diagrammatic representation of a basic refrigeration loop is contained in Schedule 2. The cabinet surrounding the evaporator in the diagram is the refrigerator space where, for example, cold or frozen food is stored.
9 The cooling effect of a refrigeration system is provided by boiling the fluid refrigerant in the evaporator. The heat energy required for the refrigerant to boil is absorbed through the walls of the evaporator from the evaporator's external environment, namely the refrigerated space and its contents. Heat is thus removed from the refrigerated space and the contents of the refrigerated space are thus cooled.
10 The gas created by boiling the refrigerant in the evaporator is piped to the compressor. The compressor compresses the refrigerant in its gaseous form to a higher pressure. The compressing of the gas results in the gas being heated to a relatively high temperature. The hot gas from the compressor then passes through a closed system, often copper tubing, to the condenser. In the condenser, the gas loses its heat through the condenser's walls to the atmosphere. As the gas cools, it condenses into liquid.
11 The cooled liquid refrigerant, still under pressure, is then piped towards the evaporator where the pressure is reduced by an expansion device such as a valve or capillary tube. The refrigerant, now under low pressure, starts to boil as it enters one end of the evaporator. The liquid refrigerant absorbs heat as it passes through the evaporator causing it to continue to boil. By the time it reaches the other end of the evaporator, the heat which it has absorbed has boiled all the refrigerant liquid into vapour. The low pressure vapour is then drawn, via a suction line, back into the compressor where the cycle is repeated for as long as power is supplied to operate the compressor. The refrigerant in the system is in liquid form from the point where it turns into a liquid, as it is passing through the condenser, and remains in liquid form until it turns into a gas as it passes through the evaporator.
12 Refrigeration systems may be stationary or mobile. Stationery systems include domestic and industrial refrigeration and air conditioning systems. Mobile systems include automotive air conditioning systems. Refrigeration systems may also be distinguished by the compressor drive mechanism. The principal mechanisms are the integral electric motor, found in hermetic compressors, and the mechanical drive or open drive mechanism. Hermetic compressors are characterised by the intimate contact of refrigerant and compressor lubricant with the electric drive motor for the compressor.
13 The lubricant in such a system provides lubrication for the bearings in the compressor and also acts to form a liquid seal around the compression volume, for example, between the piston and the cylinder of a reciprocating compressor. Without such a sealing effect, the efficiency of the compression process would be reduced. The compressor is the only component of such a refrigeration system which requires lubrication by the lubricant.
14 In stationary refrigeration systems, the lubricant is charged to the compressor and remains essentially in the compressor sump while the refrigerant circulates around the refrigeration loop. A small quantity of lubricant, however, is inevitably entrained in the circulating refrigerant despite any efforts to minimise oil circulation in designing the compressor. In contrast, in the special case of automotive air conditioning systems, the lubricant is intentionally mixed with the circulating refrigerant so as to form a composition. Lubrication of the compressor in such a system is dependent on a high level of lubricant being delivered to the compressor under the variety of inclines and movement to which an automotive compressor is subjected in normal use.
15 The lubricant in a refrigeration system must have a number of properties in order to satisfy both its lubrication and sealing roles. On the other hand, the presence of significant levels of lubricant in the circulating refrigerant may have an adverse effect on system performance through reduction in heat transfer capability, increased pressure drops in suction lines and impaired thermodynamic properties of the refrigerant. It has long been recognised that stationary refrigeration systems must be designed so as to ensure that the small quantity of lubricant that inevitably passes into the circulating refrigerant is returned to the compressor. In order to ensure "adequate oil return", as the phenomenon is termed, the refrigerant and lubricant must be compatible and, in particular, must have adequate mutual solubility. That is to say they must be "miscible".
16 Chlorofluorocarbons ("CFCs") have for a considerable time been widely used as refrigerants. CFCs have also been used, because of their unique combination of properties, in other circumstances. For example, they have been used as propellants in aerosols. CFCs were first developed in the 1930s predominantly for use in refrigeration. They enjoyed considerable success throughout the world as they were both non-flammable and relatively non-toxic and were considered to be safe refrigerants.
17 There are several CFCs, generally gaseous at room temperature and atmospheric pressure, that have commonly been used as refrigerants. Such compounds have a low boiling point and are able to be liquefied under pressure. Some have been used for nearly a century. Others have been recently developed. For some years, particular substances which had been used as refrigerants were trichlorofluoromethane ("CFC-11"), dichlorodifluoromethane ("CFC-12") and 1,2,2-trifluoro-1,1,2-trichloroethane ("CFC-113"). Each has chlorine atoms.
18 Refrigerants are generally classified according to their chemical make up. For example, refrigerants that are composed of only chlorine, fluorine and carbon are referred to as CFCs. Refrigerants that also include hydrogen, as well as chlorine, fluorine and carbon, are generally referred to as HCFCs. Those refrigerants that include only hydrogen, fluorine and carbon are generally referred to as HFC's.
19 Such refrigerants, besides their chemical names, also have a universally accepted numbering system. The numbering system is related to the number of carbon, chlorine and fluorine atoms in the refrigerant molecule. The system is based on a three digit number, XYZ, where Z is the number of fluorine atoms, Y is one more than the number of hydrogen atoms and X is one less than the number of carbon atoms. X is omitted if there is only one carbon atom. Where necessary a small letter "a", "b", etc. is used next to the number to distinguish the refrigerant from another with the same number, but with a different molecular structure. The refrigerant number is usually prefixed with either the letter "R" or with the lettering system CFC, HCFC or HFC. Sometimes the refrigerant number is prefixed with the word "Freon", a trade name for refrigerants.
20 It is now accepted that the use of CFCs has a detrimental effect on the ozone layer of the Earth's stratosphere. The aspect of CFCs which is harmful to the ozone layer is the presence of chlorine atoms in the CFC molecule. Chlorine attacks the ozone molecule. The measure of the harmfulness of a particular substance to the ozone layer depends upon the combination of the percentage by weight of chlorine in the relevant substance and the life time of the substance in the atmosphere.
21 In the Earth's stratosphere, CFC molecules are cleaved by ultra violet radiation arriving at the ozone level of the stratosphere. Chlorine atoms are released which cause catalytic degradation of ozone molecules which can result in an increase in harmful ultraviolet radiation penetrating through to the Earth's surface. Such prospective harmful effects were recognised by academic and industrial chemists and engineers in the late 1970s and by the public at large during the mid to late 1980s.
22 Accordingly, from 1976 onwards, there were demands by environmentalists and governments for the reduction, if not a complete ban, on the use of CFCs in the aerosol industry and elsewhere. The aerosol industry has accordingly moved towards the substitution of hydrocarbon propellants for CFC propellants. Hydrocarbon propellants are readily available and inexpensive and the quality of the final product was unaffected by the substitution of such propellants. However, the problem of finding a replacement for CFC refrigerants was not quite so straightforward.
23 As a result of the concern about the use of CFCs, the Montreal Protocol on Substances that Deplete the Ozone Layer ("the Montreal Protocol") was opened for signature in September 1987. Australia became a party to the Montreal Protocol at that time. The Montreal Protocol is an international treaty to control the use of CFCs and certain other halogen-containing compounds. Halogens are the elements fluorine, chlorine, bromine, iodine and astatine. The Montreal Protocol recognised the problem caused by CFCs and highlighted the need to move to alternative refrigerants that do not include chlorine.
24 In 1987, HCFCs, in particular R-22, were considered to have an important part to play in the phase-out of CFCs. The propensity of a particular substance to cause depletion of the ozone layer is measured in terms of its ozone depletion potential ("ODP"). Manufacturers of refrigerants therefore looked towards the identification of refrigerants that had zero ODP. HFCs, because they contain only atoms of hydrogen, fluorine and carbon, were known at the time of the Montreal Protocol to have zero ODP. Following the Montreal Protocol therefore, many participants in the refrigerant manufacturing industry looked towards HFCs as replacements for CFCs.
25 The compound known as 1,1,1,2-tetrafluoroethane ("R-134a") is an example of an HFC. The compound has been known for many years. The United States Patent 19265 ("the Midgley Patent") was effective from 1934. The Midgley Patent was expressed to relate to the art of transferring heat from one point to another and specifically to the art of refrigeration. The claims related to the process of refrigeration comprising condensation of various compounds. Numerous compounds were identified including, without singling it out, R-134a. However, R-134a was not developed commercially as a refrigerant prior to the 1980s, principally because CFCs and HCFCs were readily synthesised and performed well as refrigerants. Prior to the time of the Montreal Protocol, there was no motivation in the industry, or from end users, to look for alternatives for CFCs and HCFCs.
26 R-134a was manufactured by ICI and possibly others on a low tonnage commercial scale in the late 1980s to provide a commercial supply following the Montreal Protocol. There was no manufacture of R-134a on a commercial scale in Australia at that time and no incentive to do so.
27 In 1987, most refrigeration compressors for use with CFCs or HCFCs used mineral oils or, in some cases, synthetic hydrocarbons, as lubricants. Following the Montreal Protocol, and prior to 1989, it was recognised widely in the refrigeration industry that the traditional mineral oil lubricants, which had been used with CFCs and some HCFCs, were not compatible with R-134a. Accordingly, it became necessary to find alternative lubricants that were compatible with HFCs generally, in particular R-134a, and which possessed the other properties that were required of refrigeration lubricants.
28 There is a variety of different classes of refrigeration lubricants that have been used extensively since the beginning of the 20th century. They can broadly be classified as mineral oils or synthetic oils. Mineral oils have been widely used mainly because of their availability and the knowledge that they are safe, relatively non-toxic and very easy to handle. Mineral oils are good lubricants, and generally have good thermal stability. They also show good compatibility with refrigerants such as R-11 and R-12 which have been extensively used since the 1920s.
29 Synthetic oils or lubricants have also been commercially manufactured since the late 1920s. The advantage with synthetic lubricants is that they may be tailored in order to meet specific qualities that an engineer, such as a refrigeration engineer, may desire. There is a considerable number of synthetic lubricants available including synthetic hydrocarbons, alkylbenzenes, esters such as dibasic acid esters, polyol esters, including neopentyl esters, phosphate esters, silicate esters and polyalkyleneglycols ("PAGs").
30 The American Society of Heating Refrigeration and Air Conditioning Engineers ("ASHRAE") is the peak professional association for the refrigeration industry in the United States. ASHRAE regularly publishes a handbook for the benefit of its members. ASHRAE handbooks have been generally available to air conditioning and refrigeration engineers in Australia from before 1989.
31 Chapter 8 of the 1986 edition of the ASHRAE handbook is concerned with "Lubricants in Refrigerant Systems". It contains a general discussion of oils that are suitable as lubricants in refrigerant systems. It discloses the properties desired of refrigeration oils including oil return, miscibility with refrigerant, adequate fluidity at low temperatures and chemical stability.
32 Under the heading "Synthetic Oils", Chapter 8 of the 1986 ASHRAE handbook referred to the limited solubility of mineral oils with R-13, R-22 and R-502 as having led to the investigation of synthetic oils for refrigeration use. It was said that, of the available types, alkylbenzenes perform satisfactorily. The handbook then went on to state that numerous other synthetic oils were commercially available and that many have properties suited to refrigeration purposes. Among those listed were synthetic paraffins, polyglycols, dibasic acid esters, neopentyl esters, silicons, silicate esters and fluorinated compounds.
33 Chapter 8 referred to a paper published by Sanvordenker and Larime in 1972 which describes the properties of those synthetic oils, alkylbenzenes and phosphate esters in regard to refrigeration application. In that article, each class of the synthetics is discussed with reference to the chemical structure, viscosity-temperature relations, miscibility with R-22 and R-502, low temperature fluidity, chemical compatibility, availability and cost. Chapter 8 records that, according to those authors, the phosphate esters are clearly unsuitable for refrigeration use because of their poor thermal stability and the fluorocarbon oils are extremely expensive. Among the others, according to the article, only the synthetic paraffins have poor miscibility relations with R-22. Dibasic acid esters, neopentyl esters, silicate esters and polygylcols all have excellent viscosity temperature relations and remain miscible with R-22 and R-502 to very low temperature levels. It was said that those and the alkylbenzenes are considered suitable for low temperature applications.
THE PATENT
34 The priority date of the Patent was 25 April 1989, that being the date on which an application was first made in the United States. The application for an Australian patent was lodged on 17 April 1990, but it is common ground that Lubrizol is entitled to the benefit of a priority date based on the earlier application in the United States.
35 The Specification states that the alleged invention relates to liquid compositions comprising a major amount of at least one fluorine containing hydrocarbon and a minor amount of at least one lubricant. After describing the background of the alleged invention, referring to the ODP of CFCs, the Patent states that HCFC-22 and HCF-134a are generally recommended as being alternatives to CFCs in refrigerant applications and that HCF-134a is particularly attractive because its ODP has been reported as being zero. The Specification refers to the need for any proposed replacement refrigerant to be compatible with the lubricant in the compressor and the fact that the proposed new alternative refrigerants have solubility characteristics different from the refrigerants presently in use. The Specification stated that the problem was particularly evident in automotive air conditioning since the compressors are not separately lubricated but a mixture of refrigerant and lubricant circulates throughout the entire system.
36 The Specification also states that, in order to perform as a satisfactory refrigeration liquid, the mixture of refrigerant and lubricant must be compatible and stable over a wide temperature range. It states that it is desirable for the lubricant to be soluble in the refrigerant at concentrations of about 5 to 15% over a temperature range from minus 40şC to 80şC. The Specification also states that the refrigeration liquid must have acceptable viscosity characteristics, even at high temperatures, and should not have a detrimental effect on materials used as seals in compressors.
37 All of the claims made in the Specification refer to a "liquid composition". The liquid composition is said to comprise two elements, being a refrigerant and a lubricant. Various alternatives of each, and combinations of those alternatives, are set out in the 26 claims. In each of the claims, more than 50% of the "composition" must be refrigerant and less than 50% must be lubricant. In some of the claims a more specific proportion is specified.
38 The claims can be divided into three groups. Claim 1 is for:
" 1. A liquid composition comprising:
(A) a major amount of at least one fluorine-containing hydrocarbon containing 1 or 2 carbon atoms; and
(B) a minor amount of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formula
R[OC(O)R1]n
wherein…"
39 Claims 4 to 9 inclusive are generally dependent on claim 1. Claim 1 and Claims 4 to 9 all concern HCFCs and involve variations only in the lubricant. Lubrizol concedes that it cannot maintain those claims.
40 Claims 2 and 3 are dependent on Claim 1. However, the variation is in relation to the refrigerant rather than the lubricant. Claim 2 varies Claim 1 by providing that fluorine is the only halogen in the fluorine-containing hydrocarbon (A). That is to say, the refrigerant must be an HFC. Claim 3 varies Claim 1 by providing that the refrigerant must be R-134a. Lubrizol wishes to maintain Claims 2 and 3 but accepts that it will be necessary for an amendment to be made to those claims if Claim 1 is deleted.
41 Claim 10 is relevantly in the following terms:
" 10. A liquid composition comprising:
(A) from 70 to 99% by weight of at least one fluorine-containing hydrocarbon containing 1 or 2 carbon atoms and wherein fluorine is the only halogen present; and
(B) from 1 to 30% by weight of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formula
R[OC(O)R1]n
wherein…"
42 Claims 11 to 17 are dependent on Claim 10 and comprise narrowing variations of Claim 10. Claim 11 involves variation of the refrigerant disclosed in Claim 10 and requires that the refrigerant must be R-134a. Claims 12 to 17 inclusive involve variation of the lubricant disclosed in Claim 10.
43 Claim 18 is in the following terms:
" 18. A liquid composition comprising:
(A) from 70 to 99% by weight of 1,1,1,2-tetrafluoroethane; and
(b) from 1 to 30% by weight of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing from 3 to 10 hydroxyl groups and characterized by the general formula
R[OC(O)R1]n
wherein…"
Thus, in Claim 18 the refrigerant would be R-134a. Claims 19 to 26 are all narrowing variations of Claim 18 in which the variation relates to the lubricant.
44 Each of Claims 1, 10 and 18 contains a series of definitions for "R", "R1" and "n", the variables in the formula which appears in each of the claims. The variations of the lubricant in the claims involve changes in the definitions of those variables. The lubricants which are the subject of the Patent are synthetic esters. Synthetic esters are the product of the reaction of acids with alcohols. The reaction produces esters and water. The process is referred to as esterification. The claims identify the classes of acids and alcohols which are capable of producing satisfactory esters.
45 No claim is made for any of the compounds described in the Specification. The essence of the alleged invention is the identification of a soluble organic lubricant which is suitable for use in refrigeration systems with HFCs generally and R-134a in particular. Putting it another way, the alleged invention is the identification of a lubricant having the properties described above in relation to HFCs generally and R-134a in particular.
WITNESSES
46 Several witnesses were called by each party and some of them were cross-examined at length. It is desirable to say something about the witnesses in order to explain references to their evidence.
47 Dr P.J.B. Fraser gave evidence on behalf of ICI. Dr Fraser is a scientist employed by the Commonwealth Scientific and Industrial Research Organisation ("CSIRO"). His expertise is generally in the field of atmospheric chemistry and more particularly in the chemistry of atmospheric ozone depletion and greenhouse gases. He completed a PhD in 1972 and has held positions at the University of Bristol and at the Australian National University. He has also held visiting positions at the University of Colorado and the University of East Anglia. He was first employed by CSIRO in 1974 and has remained an employee of CSIRO to the present day. Dr Fraser gave evidence, initially by affidavit, concerning the chemistry of CFCs and related substances, the chemistry and early research into atmospheric ozone depletion, the Montreal Protocol and the development of ozone protection in Australia.
48 Professor I.D. Rae gave evidence on behalf of ICI. Professor Rae's career has essentially been in the field of organic chemistry at an academic level. He is an expert in many areas of organic chemistry but has particular expertise in classifying and analysing the structures of chemical molecules and in particular organic and organo-metallic molecules. He has also had broad experience with the interaction of compounds including molecular interaction between chemical compounds. His career has been broadened by involvement in consulting work involving industrial chemicals. He has had considerable experience in synthesising synthetic esters. Professor Rae was awarded a PhD at the Australian National University and was Associate Professor of Chemistry at Monash University from 1981 to 1990 and Professor and Dean of the Faculty of Science at the latter University from 1990 to 1994. He was Deputy Vice Chancellor of the Victoria University of Technology from 1994 to 1997 and is presently a professorial fellow of the Department of History and Philosophy of Science in the faculty of Arts at the University of Melbourne. He has held acting appointments at the University of Canterbury, Cornell University and University of Buenos Aires. He has also held consultant research positions with ICI Pharmaceuticals, Environment Protection Authority Victoria and CSIRO.
49 Dr Stuart Corr gave evidence on behalf of ICI. Dr Corr is employed by ICI as a science and technology associate. He holds a PhD in physical chemistry and completed two years of post doctoral research prior to joining ICI in 1985. He works in the KLEA Business Research and Technology Group of ICI, conducting research in and around the application of hydrofluorocarbons to refrigeration and other uses. He has been involved in that technical field since the end of 1988 and his role has involved the development and execution of technical programs with global manufacturers of refrigeration equipment. Prior to that role, he worked for two years in the area of advanced functional fluids, in particular the development of electro-rheological fluids and their application in automotive engineering. Since commencing work in the refrigeration area, Dr Corr has focussed particularly on the behaviour of lubricants in refrigeration systems and their interaction with refrigerants. He is named as an inventor in a number of refrigerant-related patents and has published and presented extensively in international refrigeration conferences in Europe, USA and Japan.
50 Mr W.E. Dobney gave evidence on behalf of Lubrizol. Mr Dobney is a mechanical engineer and has worked in the field of refrigeration systems and air conditioning systems since 1944. He worked originally as a refrigeration mechanic in the RAAF and after the war studied mechanical engineering at the Melbourne Technical College where he was awarded a diploma in mechanical engineering. He is a life member of the AIRAH (Australian Institute of Refrigeration and Heating) and is a member of ASHRAE. He has worked extensively in the refrigeration and air conditioning industry as an engineer, sales engineer, product manager and manufacturing manager. Since retiring from full time employment in 1990, he has acted as a private consulting engineer in solving air conditioning and refrigeration problems. He is an active member of the Australian Standards Association Committee in relation to refrigerants.
51 Mr Bertrand Harrington gave evidence on behalf of Lubrizol. Mr Harrington is a retired industrial chemist and has worked in the field of fluorocarbons and their use as refrigerants since 1962. He has a BSc from London University and has had extensive experience in industry as a chemist, plant manager, product manager and marketing manager of Pacific Chemical Industries. He was the person chiefly responsible for providing technical service and advice on the use of fluorocarbons. The customer base with which he was concerned encompassed many industries but the refrigeration industry was one of the major ones. He acquired a good working knowledge of the operation of commercial and domestic refrigeration and air conditioning systems and particularly the interaction of refrigerants with other components of the system such as materials of construction, desiccants and lubricants. From 1984, he has been interested in HFC and HCFC refrigerants which were developed as the likely replacements for CFCs and the progress which was being made in solving problems associated with the new generation refrigerants.
52 Dr Scott Ted Jolley is named as the inventor in the Lubrizol Patent. He gave evidence on behalf of Lubrizol. Dr Jolley is a research chemist employed by Lubrizol and has held that position since 1981. He was awarded a PhD in organic chemistry in 1981. Before that time he held positions as an analytical chemist at Southern Utah University and then as a teaching assistant.
53 Evidence of all of those witnesses may be relevant to the question of whether or not the alleged invention of Lubrizol involved an inventive step. I am satisfied that all of the witnesses gave their evidence honestly. There was no conflict which requires resolution by me. I regarded each of the witnesses as perfectly competent in his field. Indeed Professor Rae was very impressive in his command of organic chemistry. Nevertheless, each witness was prepared to acknowledge areas into which his particular expertise did not extend.
NOVELTY
54 Lubrizol's application for the Patent was filed under the Patents Act 1952 ("the 1952 Act"). The 1952 Act was repealed by section 230 of the 1990 Act with effect from 30 April 1991. The Patent was granted under the 1990 Act and is subject to the grounds of revocation applicable under the 1990 Act. However, section 234(5) of the 1990 Act provides, in effect, that the Patent cannot be revoked on a ground which was not available under the 1952 Act - NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239.
55 Section 138(3)(b) of the 1990 Act provides that the Court may revoke a patent on the ground that "the invention is not a patentable invention". Section 18(1)(b)(i) relevantly provides that a "a patentable invention is an invention that, so far as claimed in any claim..., when compared with the prior art base as it existed before the priority date of that claim,… is novel". Under the 1952 Act, the corresponding ground of revocation was specified in section 100(1)(g) as follows:
"That the invention, so far as claimed in any claim of the complete specification… was not novel in Australia on the priority date of that claim."
Thus, under the 1952 Act, there was a territorial limitation in that the question of novelty was restricted to an assessment of the prior art base as it existed in Australia before the priority date. ICI accepts that the test of novelty under the 1952 Act is applicable in relation to the Patent.
56 The concept of novelty includes anticipation by documents. The question in the proceeding is whether the alleged invention was anticipated in a document or documents published in Australia before the priority date. ICI relies on the publication of United States Patent 2807155 ("the Williamitis Patent") which was published in Canberra on 10 April 1958 or, in the alternative, the publication of the Williamitis Patent coupled with the prior publication of United States Patent No. Re. 19, 265 ("the Midgley Patent"), which was published in Canberra on 13 September 1934. The Midgley Patent is referred to in the Williamitis Patent. Thus, the first question is whether the invention disclosed in the Specification is disclosed in the Williamitis Patent alone or together with the Midgley Patent.
57 A prior publication can only render a claim not novel if it clearly discloses each of the essential integers of the claim, subject to any question of cross-reference to another prior publication. The process of applying common general knowledge to the solution of a problem is not a process of picking out individual pieces of information and combining them, including inferences from known facts and known principles, as well as the application of such principles. It is not sufficient to pick out individual items of information from prior publications or prior objects and assemble them together so as to give them an appearance of unity - Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Pty Ltd (1980) 144 CLR 253 at 292-3.
58 If carrying out the directions contained in a prior publication will inevitably result in something being made or done which, if the patent under consideration is valid, would constitute an infringement of the claim made in that patent, that may demonstrate that the claim has been anticipated. On the other hand, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the claim but would be at least as likely to be carried out in a way which would not do so, the claim would not have been anticipated. To anticipate the claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented - General Tire & Rubber Co. v The Firestone Tyre & Rubber Co. Ltd [1972] RPC 457 at 485-6. It will not be sufficient if the prior publication contains a generalised disclosure which may, but does not necessarily, include the particular chemical groups characterising the claim in question - Ethyl Corporation v Commissioner of Patents [1969] AOJP 2860.
59 ICI contended that the alleged invention, as described in Claims 2, 3, 10-15, 17-23 and 25-27 of the Specification, is not novel when compared with the Williamitis Patent. The abandoned Claims 1, 4-7 and 9 are clearly anticipated. Claims 8, 16 and 24 are not anticipated by the Williamitis Patent which does not disclose lubricants in which the alcohol is "an alkanol amine containing at least two hydroxy groups". In each of Claims 8, 16 and 24 the alcohol is described in those terms. In the Williamitis Patent, however, the alcohol is a pentaerythritol, a dipentaerythritol or a tripentaerythritol.
60 The invention in the Williamitis Patent is entitled "Working fluids in refrigeration apparatus". The first object of the Williamitis Patent is described in the following terms:
"It is an object of this invention to provide a working fluid for a refrigeration apparatus which includes a refrigerant capable of being in liquid and gaseous phases within the operating temperature range of the refrigeration apparatus and a wax-free lubricant which is completely soluble in the refrigerant and is highly thermally stable within the refrigeration apparatus in the range of the operating temperatures thereof."
61 Thus, it describes a fluid which includes both a refrigerant and a lubricant. The "working fluid" is more specifically described as a "fluid which includes a fluoro halo substituted aliphatic hydrocarbon refrigerant and a lubricant comprising an organic acid ester of pentaerythritol". The refrigerant is more particularly described as:
"A fluoro halo derivative of an aliphatic hydrocarbon of the character disclosed in the patent to Midgley et al., Re. 19,265, reissued August 7, 1934, as, for example, trichlorofluoromethane (Freon 11), dichlorodifluoromethane (Freon 12) and particularly difluoromonochloromethane (Freon 22)."
62 The specification for the Williamitis Patent states that the lubricant of the invention may include:
"Esterified monomolecular pentaerythritol described by the following structural formula:
CH2OCOR
ROCOCH2 C CH2OCOR
CH2OCOR