Slatter 3
145 Slatter 3 deals with "the treatment of mineral material, especially waste from the Bayer alumina process, including the treatment of red mud wastes in order to render it more easily disposable". In the third paragraph on p 1 it is said that:
In some cases the waste material such as mine tailings can be conveniently disposed of in a mine to form a backfill. Generally backfill waste comprises a high proportion of coarse large sized particles together with other smaller sized particles and is pumped into the mine [as a] slurry where it is allowed to dewater leaving the sedimented solids in place. It is common practice to use flocculants to assist this flocculation process.
146 The patent identifies the need to load multiple layers of waste in stacks and refers to the difficulties, identified in Patent 944, in ensuring that it flows over the surface of previously rigidified waste, within acceptable boundaries, and is allowed to rigidify to form such stacks. Those stacks may be used to support multiple layers of rigidified material without the risk of collapse or slip. There is then reference to the Bayer process and to some of the prior art also mentioned in Patent 944.
147 At the third and fourth paragraphs on p 3 it is said that:
A process according to the present invention provides a process in which material comprising an aqueous liquid with dispersed particulate solids is pumped as a fluid then allowed to stand and rigidify and the rigidification is improved whilst retaining the pumpability of the material by combining polymeric particles with the material during or prior to pumping the material, wherein the polymeric particles comprise water soluble polymer which has an intrinsic viscosity of at least 3 dl/g.
The addition of the polymeric particles, comprising water soluble polymer to the material enables the material to retain its fluidity and to be easily pumped but upon standing forms a solid mass that is strong enough to support layers of subsequent rigidified material. We have surprisingly found that the presence of water soluble polymers applied in the form of particles actually enables the material to remain fluid and pumpable during the pumping stage but results in rapid loss of fluidity and rigidification on standing. Furthermore this treatment desirably results in aqueous liquid being released from the material on standing.
148 At para 4 on p 6, Slatter 3 continues:
In the invention the water soluble polymer may be formed by any suitable polymerisation process. The polymers may be prepared for instance as gel polymers by solution polymerisation, water-in-oil suspension polymerisation or by water-in-oil emulsion polymerisation.
149 At para 3 on p 7 it is said that:
Alternatively the water soluble polymer particles may be provided as a dispersion in an aqueous medium.
150 In the last paragraph on p 14 and on p 15 it is said that:
It is surprising that the process according to the invention forms a product which rigidifies far better than alternative treatments, for instance the use of water swellable, water swellable polymers or pre-formed solutions of water soluble polymers. It is surprising that especially good results are obtained by employing solid grade particulate polymers, comprising solid grade polymer, comprising individual large size polymer particles as described herein.
151 In the second paragraph on p 15 it is said that:
One advantage of additions in powder form is that the viscosity does not increase or diminish as rapidly as a solution-based addition.
152 The primary Judge accepted Dr Farrow's evidence that the addition of the polymer as an aqueous solution was an essential element of claim 1. Dr Farrow accepted that water-soluble polymer might be added to mineral tailings, other than in solution, but said that in such cases, the polymer would act in a different manner, and have different effects compared to its use in solution.
153 At [96] her Honour concluded that Slatter 3 "recommends against the addition of polymer in aqueous solution and in favour of the use of polymeric particles" and continued:
Consistently with this, Slatter 3 distinguishes between aqueous solutions, emulsions and dispersions. Slatter 3 expressly describes its own teaching (the use of polymer in the form of particles, whether solid, in dispersion or an emulsion) as "far better" than alternatives such as "pre-formed solutions of water soluble polymers".
154 Her Honour then observed that Dr Slatter had conceded that:
… first, Slatter 3 does not teach the administration of aqueous solution of polymer; second, Slatter 3 teaches that adding the polymer either as a particulate dispersion or as an emulsion gives a far better result than using an aqueous solution; third, where particulate matter is present in an aqueous medium, it is not dissolved; and, finally, there is "no doubt" that Slatter 3 is particularly looking at adding the polymer to the slurry in a particle form.
155 Use of language such as "distinguishes between", "recommends against" "describes its own teaching" and the word "teaching" raises questions concerning the precise requirement of the Patents Act 1990 (Cth) (the "Patents Act") as to novelty. Resolution of these questions involves consideration of s 7 of the Patents Act in conjunction with the definitions of the terms "prior art base" and "prior art information" contained in the statutory dictionary. It appears to be common ground that Slatter 3 is an article of prior art information and that it was, at the relevant time, part of the relevant prior art base for the purpose of determining, pursuant to s 18, whether the claimed invention was novel. Section 7(1) provides:
For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than mentioned in paragraph (c) made publicly available in a single document or through doing a single act … .
156 The requirement is that the invention be novel when compared with an appropriate prior art document. Thus a question arises as to whether an earlier disclosure anticipates a claim in a later patent if, in the document containing the earlier disclosure, another process or product is said to be better in achieving a particular purpose. I turn to the cases. The starting point is the decision of the English Court of Appeal in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1971) 1A IPR 121, especially at 137-138 where Sacks LJ said:
The word "anticipation" is not used in the text of the Patents Act 1949, although it appears in the side notes to ss 7 and 8 of the Act. The language of s 32(1)(e), with which we are concerned in this aspect of the case, is as follows:
That the invention, so far as claimed in any claim of the complete specification, is not new having regard to what was known or used, before the priority date of the claim, in the United Kingdom.
Stated in the shortest terms, the problem is to determine whether the device, to use a neutral expression, has been forestalled in this country. For the sake of clarity we will refer to the patentee or would-be patentee of the device which is alleged to have been anticipated as the "patentee" and to the inventor of the device which is alleged to constitute anticipation as the "prior inventor".
In the present case we are not concerned with anticipation by earlier use of the patentee's device but with anticipation by prior publication: that is to say, it is contended that the plaintiffs' invention as claimed in their patent was at the priority date of their claim something which was known in the United Kingdom by reason of prior publication. To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim. The earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events. The patentee's claim must similarly be construed as at its own date of publication having regard to the relevant surrounding circumstances then existing. If the earlier publication, so construed, discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented, the patentee's claim has been anticipated, but not otherwise. In such circumstances the patentee is not the true and first inventor of the device and the claimed invention is not new in the terms of s 32(1)(e).
The earlier publication and the patentee's claim must each be construed as they would be at the relevant respective dates by a reader skilled in the art to which they relate having regard to the state of knowledge of such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date. …
When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee's claim is new for the purposes of s 32(1)(e) falls to be decided as a question of fact. If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented: ….. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
157 In this passage anticipation is variously said to arise because the invention was "known", or the "device" was "disclosed", or it was "described", or there were "instructions to do or make" something which would infringe the patentee's claim.
158 In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517, Lockhart J expressed the test for anticipation in this way:
It is well established that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication … .
159 At 530 Gummow J (Jenkinson J concurring) cited the following passage from the speech by Lord Reid in Van der Lely NV v Bamfords Ltd (supra) at 71-72:
The law regarding anticipation derives from Lord Westbury's statement of it in Hill v Evans … . There are two branches of this statement. The first is that "a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments". The appellants maintain that even if the skilled man could perceive in the photograph all the integers in claim 1 he could not apply the discovery without making further experiments. But Lord Westbury must have meant experiments with a view to discovering something not disclosed. He cannot have meant to refer to the ordinary methods of trial and error which involve no inventive step and are generally necessary in applying any discovery to produce a practical result. … The other requirements is that "the information given by the prior publication must for the purposes of practical utility be equal to that given by the subsequent patent". There may be cases where the skilled man has to have the language of the prior publication translated for him or where he must get from a scientist the meaning of technical terms or ideas with which he is not familiar, but once he has got this he must be able to make the machine from what is disclosed by the prior publication … .
160 After reference to other authorities Gummow J observed at 531:
It follows from the English authorities as they have been applied in Australia that, whilst Hill v Evans does not require a literal disclosure and something less may suffice, and whilst an alleged paper anticipation is to be treated as read by a skilled addressee, a disclosure will fall short of an anticipation by description of an effective means by which the combination claimed in the patent in suit might be produced, if what is required of the skilled addressee is the exercise of any inventive ingenuity and the taking of any inventive step.
161 In Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 at 546-547, Black CJ and Lehane J set out the following passage from the judgment of Lord Westbury in Hill v Evans (1862) 4De & GFJ 258; 45 ER 1195 at (300; 1199):
The question then is, what must be the nature of the antecedent statement? I apprehend that the principle is correctly thus expressed: - the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent.
And (at 301, 302;1199-1200):
The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication.
Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application.
The reason is manifest, because much further information, and therefore much further discovery, are required before the real truth can be extricated and embodied in a form to serve the use of mankind. It is the difference between the ore and the refined and pure metal which is extracted from it.
Again, it is not, in my opinion, true in these cases to say, that knowledge, and the means of obtaining knowledge, are the same. There is a great difference between them. To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it. There may be a latent truth in the words of a former writer, not known even to the writer himself; and it would be unreasonable to say that there is no merit in discovering and unfolding it to the world.
Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use.
162 Their Honours then referred to the decision of Parker J in Flour Oxidizing Co Ltd v Carr & Co Ltd (1908) 25 RPC 428. That case concerned a patent for using an apparatus previously disclosed as suitable for a different use. His Lordship said (at 457):
But where the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier Specification could have been used to produce this or that result. It must also be shown that the Specification contains clear and unmistakable directions so to use it.
163 After considering other authorities Black CJ and Lehane J continued at 548:
What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it. (emphasis added)
But in this case medical practitioners hardly needed to be told that it was possible to infuse a particular dose of Taxol over three hours, or how to do it. Nor, equally obviously, is that the point of the claims … .
164 In that case, the claimed invention was a process of administering a drug (Taxol), in the treatment of cancer. The relevant prior art documents were reports of clinical trials. Their Honours concluded that although the prior art disclosed the treatment of cancer, using Taxol, and although the process of administration, the subject of the patent, was actually disclosed, problems of toxicity and hypersensitivity were also identified. In effect, the various items of prior art demonstrated that there had been trials, identifying positive outcomes, but with complications and/or that further work was necessary before the drug could be used for clinical purposes. In that sense the prior art documents did not recommend the use of the drug, either in accordance with the regime identified in the patent or otherwise.
165 In H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151, Emmett J said at [69]:
If the prior art information discloses information that enables the so-called invention to be performed, the so-called invention will not be novel. Whether prior art information does so will depend upon the claims made in respect of the so-called invention. Thus, it is necessary to identify the so-called invention, so far as claimed in a particular claim. Once the so-called invention has been properly identified, it is a question of whether the prior art information discloses sufficient information to enable the relevant skilled addressee, at or before the priority date for the claim of the so-called invention, to perform the invention.
166 At [178] et seq, Bennett J said:
178 Care must be taken to distinguish between the tests for novelty and want of inventive step, in particular when looking to see what the prior art "teaches". The concept of novelty in Australia involves a comparison between the invention as claimed in the claims of the patent and prior art information. Often, this must be determined by looking to prior publications which are to be read by the skilled addressee to determine what they disclose. Generally speaking, the consideration of what a prior publication "teaches", especially when one talks of "teaching away" from the claimed invention, tends to be relevant to questions of obviousness not inventive step.
179 As Lord Hoffmann said …, an invention is a piece of information and making matter available to the public therefore requires the communication of information. Whether or not such information has been communicated depends on the subject matter of the claim and the extent of the prior disclosure to the skilled addressee.
180 Where the prior publication discloses exactly what is claimed, there is anticipation. This can be objectively determined and, apart from an understanding of terms of art, the evidence of the skilled addressee is not likely to be of much further assistance. However, this does not always occur and many of the authorities contain discussions of the extent to which a disclosure less than the entirety of the claim constitutes an anticipation of a product or a process to deprive the claimed invention of novelty.
181 If the prior art discloses some but not all integers of a claimed patent to a product, such as a combination, there is anticipation if the skilled addressee would add the missing information as a matter of course and without the application of inventive ingenuity or undue experimentation … .
182 It may be that the prior disclosure is of a method that produces the claimed product. If that method leads inexorably to the product, there is anticipation … . If it may or may not result in the claimed product, there is no anticipation.
183 It is these last two examples that, in Australia, could be said to be within a shorthand description of "enabling disclosure". That is, the disclosure is not complete but it is sufficient to enable the skilled addressee, in the ordinary course and without invention, to add what is missing in the prior publication to obtain the claimed invention … .
167 At [190] her Honour continued:
It follows that, where the prior publication is of the subsequently claimed invention, that is sufficient. Where the prior disclosure falls short of a complete disclosure, the question of the sufficiency of that disclosure arises. It is there that consideration must be given to the quality of a disclosure to the skilled addressee armed with common general knowledge. It is in that context that, in a limited fashion, questions of "enablement" can be said to arise. The use of that expression tends to cause confusion between anticipation and sufficiency. Rather, the Court, armed with the evidence of the skilled addressee as to terms of art and the nature and extent of the disclosure in the prior art document, must determine whether the prior disclosure is sufficient to enable the skilled addressee to perceive, understand and, where appropriate, apply the prior disclosure necessarily to obtain the invention.
168 Concern over the use of the word "teach" in connection with novelty is, I suspect, founded upon a fear that it may tend to emphasize recommendation rather than disclosure. As Black CJ and Lehane J said in Bristol-Myers, an anticipating direction, recommendation or suggestion may be implicit in a description or disclosure. Where, as in that case, the disclosure was accompanied by a description of negative aspects of the trials, it was difficult to construe the document as a "direction, recommendation or suggestion". Further, some cases use other words to describe the necessary essence of a disclosure. The word "disclosure" is, itself, commonly used. Whilst the Bristol-Myers disclosure was not sufficient to constitute anticipation, this was because of the negative aspects, disclosed by the clinical trials.
169 In the end, the question is whether Slatter 3 discloses the use of a polymer solution as part of the process of improving rigidification given that, save for integer (o), all other integers of the claimed invention are disclosed. In my view the passage on p 14, commencing with the words "It is surprising" involves a comparison of the performance of the invention using polymers in particulate form and in solution. As I have said, Slatter 3 discloses that the use of particulate polymers "forms a product which rigidifies far better than the alternative treatments", and that the "process of the invention more effectively minimizes the area taken up by the stack of the material of given volume" whilst "maintaining the pumpability of the material." There is no suggestion that use of a polymer solution will not work. Slatter 3 rather implies that a polymer solution will work, but not as well as if it be used in particulate form. Thus it discloses use of a polymer solution in the process claimed. The difference in performance may be attributable to the fact that use in particulate form will not produce any increase or diminution in viscosity. In any event, integer (e) is disclosed as part of the process described in Slatter 3.
170 Slatter 3 does not describe the method for preparing a solution of the aqueous polymer. That matter is dealt with in some detail in Patent 944. I do not understand Ciba to rely upon the absence of such instructions. No doubt the mechanics of performing that function would be well known to a person skilled in the relevant art.
171 I should add that Professor Slatter saw anticipation of integer (e) in other aspects of Slatter 3. However, on appeal, SNF does not rely on that aspect of his evidence.
172 I turn to integer (o). I have previously discussed it in connection with Slatter 10, Slatter 12 and Slatter 13, concluding that the question depends upon resolution of the conflict between the evidence of Professor Slatter and that of Dr Farrow. The same problem arises in connection with Slatter 3. Dr Slatter read Slatter 3 as disclosing the mixture of fine and coarse particles, and that the polymer solution should be added during or after combination. SNF submits that this evidence was unchallenged and, perhaps, supported by Dr Farrow's evidence that in the Bayer process, some plants separate the fines from the sand, whilst others transfer the material in combined form. However Ciba points out that in his written evidence Dr Farrow disputed the assertion that Slatter 3 disclosed integer (o). If it be necessary that the conflict be resolved in order to decide the case, the question should be remitted.