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Ewan Malcolm Campbell v Agrissentials Limited [2007] NZIPOPAT 13 (5 June 2007)

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Ewan Malcolm Campbell v Agrissentials Limited [2007] NZIPOPAT 13 (5 June 2007)

Last Updated: 16 October 2008

P13/2007

IN THE INTELLECTUAL

PROPERTY OFFICE OF
NEW ZEALAND

IN THE MATTER of the Patents Act 1953

AND

IN THE MATTER of an application for Letters Patent No 535782 in the name of EWAN MALCOLM CAMPBELL

Applicant

AND

IN THE MATTER of opposition to said application under section 21 by AGRISSENTIALS LIMITED

Opponent

Hearing: 9 May 2007

Ian Finch for the Applicant
Kim McLeod and Andrew Baker for the Opponent

Decision

BACKGROUND

Patent application 535782 was filed as a National Phase Entry on 5 October 2004, from PCT/NZ/2003/000040. The application was attributed a filing date of 4 March 2003, being the filing date of the PCT International Application PCT/NZ/2003/000040, which in turn claimed priority from New Zealand patent application No. 517612 dated 5 March 2002.

Acceptance was published in Intellectual Property Office of New Zealand (IPONZ) Journal No 1506 of 24 December 2004.

Notice of opposition and statement of case were filed by the opponent on 22 April 2005. Grounds (b), (d), (e) - both limbs, (f) and (g) of section 21(1) were. Ground (a) was additionally raised in the statement of case.

The applicant filed its counterstatement on 30 June 2005.

An amended counterstatement, containing proposed unconditional amendments to claim 1, was filed on 31 March 2006.

A second amended counterstatement containing further proposed unconditional amendments, to claims 1, 5, 6 and 22, was filed on 25 September 2006.

It is the claims as amended by way of the second amended counterstatement that are the subject of the present hearing.

First and second amended statements of case were filed on 27 September 2006 and 22 December 2006, respectively.

At the hearing the opponent confirmed that it was not pursuing the grounds of Obtaining, Prior Publication and Prior Use.

LOCUS STANDI

The applicant accepts the opponent as a person interest. I accept that the opponent has locus standi.

PRIORITY DATES

As the cited documents were said to be available before the earliest priority to which the claims could be entitled, the issue of the priority date would appear to be irrelevant to the present proceedings. The applicant questioned the availability of the cited documents, but accepted, I believe, that the issue of priority date would be irrelevant to the present proceedings.

EVIDENCE

The opponent’s evidence is in the form of affirmations by:

• Philip Charles MADELEY, Author of prior publication D1 below, of Patagonia, Arizona, United States of America (sworn on 6 October 2006).
  
• Philippa Margaret BLACK, Professor of Geology at the University of Auckland, of Auckland, New Zealand (sworn on 26 October 2005) (Black (1)).
  
• John Kenneth MORRIS, the General Manager and Sole Director of Agrissentials Limited, of Tauranga, New Zealand (sworn on 28 October 2005) (Morris (1)).
  
• Kevin John PRITCHARD, of Papamoa, New Zealand (sworn on 28 October 2005).
  
• Roy Jay HARLOW, Managing Director of Integrated System Engineers Limited and an organic gardener of 30 years, of Cambridge, New Zealand (sworn on 31 October 2005).
  
• Wei GAO, Professor of Materials Science and Engineering at the University of Auckland, of Auckland, New Zealand (sworn on 31 January 2007).
  

The applicant’s evidence consisted of statutory declarations of:

• Ewan Malcolm CAMPBELL, the Inventor of the application in suit, of Waihi, New Zealand (sworn on 3 May 2006).
  
• Shayne George Charles NAM, Intellectual Property Specialist employed by James & Wells, of Auckland, New Zealand (sworn on 27 February 2007).
  

The opponent’s evidence-in-reply is in the form of affirmations by:

• Philippa Margaret BLACK (sworn on 21 August 2006) (Black (2)).
  
• John Kenneth MORRIS (sworn on 27 July 2006) (Morris (2)).
  

AMENDMENT PROPOSALS

Section 40(1) relates to amendment of a specification after acceptance:

After the acceptance of a complete specification, no amendment thereof shall be effected except by way of disclaimer, correction, or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

The independent claims at acceptance read as follows:

1. A fertilizer composition, which includes

a sea based silica source and an iron source.

23. A fertilizer composition characterised in that said composition includes:

silica source, 20-80wt%,

calcium source, 10-50wt%,

paramagnetic source, 10-50wt%,

iron source, 1-10wt%,

chromium source, trace amounts

24. A fertilizer composition characterised in that said composition includes:

silica source, 30-60wt%,

calcium source, 20-40wt%,

paramagnetic source, 10-30wt%,

iron source, 1-5wt%,

chromium source, trace amounts

The unconditional amendment proposals filed with the second amended counterstatement read as follows (deletions are shown struck through, additions are shown underlined):

Claim 1 is to read:

1. A fertilizer composition, which includes

a sea based silica source and an iron source

characterised in that said silica source is predominantly formed through a sedimentary process in a marine or estuarine (brackish water) environment and is chosen from the group sea mud, greywacke or combination thereof.

Claims 5 and 6 are to be deleted as they are redundant once claim 1 is amended as proposed. The claims following deleted claims 5 and 6, together with their dependencies, are to be consequentially renumbered.

Claim 5 to be deleted, at acceptance, read:

5. A fertilizer composition as claimed in any one of claims 1 to 4, where the silica source is obtained from sea mud.

Claim 6 to be deleted, at acceptance, read:

6. A fertilizer composition as claimed in any one of claims 1 to 5, wherein the silica source is obtained from sedimentary rock.

Claim 23 is to read:

21. A fertilizer composition characterised in that said composition includes:

silica source sea mud, greywacke

or combinations thereof, 20-80wt%,

calcium source, 10-50wt%,

paramagnetic source, 10-50wt%,

iron source, 1-10wt%,

chromium source, trace amounts

Claim 24 is to read:

22. A fertilizer composition characterised in that said composition includes:

silica source sea mud, greywacke

or combinations thereof, 30-60wt%,

calcium source, 20-40wt%,

paramagnetic source, 10-30wt%,

iron source, 1-5wt%,

chromium source, trace amounts

The opponent does not appear to have an issue with the allowability of the amendment proposals. The amendments are clearly be way of disclaimer and explanation and are allowable.

NATURE OF THE INVENTION

The title of the specification is:

Silica based fertiliser

Opening paragraphs of the complete specification describe the technical field of, and background art to, the invention as follows:

TECHNICAL FIELD

This invention relates to an improved fertiliser.

In particular it relates to the formulation of a fertiliser from a number of components.

BACKGROUND ART

Fertilisers are spread on land in order to provide plants, and indirectly animals that graze those plants, with essential nutrients/elements for growth and development and to replenish the soil after both grazing and cropping.

Soil replenishment has been undertaken through a number of different practices throughout history. In the middle ages, crop rotation practices were utilised in order to save paddocks from nutrient exhaustion. Fallow paddocks had weeds ploughed back into them in order to enrich the soil.

Early settlers used fire to add both carbon and other essential elements back to the soil through the burning of bush and undergrowth.

As far back as recorded history goes, Egyptians were making use of the natural replenishing of the soils by the yearly Nile inundation. The nutrient rich lode carried by the Nile from upstream was deposited onto the floodplains as the river widened its course and slowed.

The major elements required in the soil to enable healthy growth of plants, and the life forms that are sustained by them are carbon, hydrogen, nitrogen, oxygen, calcium, potassium, phosphorus and sulphur. The minor or trace elements that are required for healthy growth are magnesium, iron, manganese, cobalt, copper, boron, selenium, zinc, sodium and molybdenum. Being trace elements, these are often required in minute amounts. However, their absence can prove devastating to plant health and that of animals grazing thereon.

Without the input of essential nutrients, which are not supplied naturally from the soil, all agricultural systems would, by definition, be non-sustainable. This is because agriculture is a net exporter of nutrients through product leaving the farm, uneven return of nutrients to non-productive areas, and inevitable nutrient losses in soil. Therefore, the addition of fertilisers in amounts and in a form to best match plant requirements is essential to maximise plant productivity, and indirectly animal health.

In recent times, higher population densities have lead to intensive cropping and heavier pasture grazing. Inorganic fertilisers have been added to the soil in increasing amounts in order to replace the nutrients taken out. Fertilisers have been added to the soil via ground spreading and topdressing, using aeroplanes and helicopters.

In order to get the greater returns from the land even more fertiliser has been added, to the detriment of the rivers and lakes surrounding these areas. Such large amounts of fertiliser, coupled with increased effluent from intensive herd grazing mean that run off from these areas carries with it a large amount of excess nutrients that cause eutrophication of rivers and lakes, choking waterways with increased plant growth. This growth in turn starves fish of oxygen and can destroy the delicate ecological balance of a region.

As people become more aware of the drawbacks of increased fertiliser use, rotation cropping has been re-established. Certain regions in Europe have made rotation-cropping law and have limited the amount of fertilisers that can be added to the land. Strict regulations mean that only certain types of fertiliser can be added back to the soil and organic farming is becoming more prevalent.

New Zealand continues to add large amounts of fertiliser to the land to compensate for intensive farming and cropping practices. While some areas require the addition of certain nutrients due to soil deficiencies, it would be an advantage to be able to reduce the amount of fertiliser added, while still bringing about the same effect of replenished soils and increased plant growth and the production of wholesome quality food in all growing conditions.

For New Zealand to be able to continue to market its products in regions such as the European Union, it must meet the farming practice guidelines set by the European Union, and imposed on its member states. New Zealand is not the only country in this position.

In recent years the soil and plant health has been categorised as its component parts, focussing on N-P-K ratios and the interaction of selected ‘lesser’ elements and ‘trace' elements taken into account. The fatal flaw with this approach is that nature did not make nor use these elements in their component parts but as an interrelated complex where the ‘trace’ and the unseen have as much value as that which can be seen and measured. The soil is not merely a medium for the delivery of fertiliser to plants but a vibrant living, complex ecosystem in its own right.

The understanding that there is more to growing healthy crops than simply replacing lost nutrition with inorganic fertilisers has been known and indeed researched in recent times by trained scientists. Dr William Albrecht [The Albrecht Papers Vol 1- 1975-Edited by Charles Walters] in the early part of last century showed that the quality of plant nutrition depended on the fertility of the soil and that human nutrition and health was a direct result of the quality of the food humans eat.

The soil and its fertility therefore are the basic starting points of a healthy human being. A small difference in soil fertility can lead to animal health problems in farming stock-if the soil is healthy then so too are the plants that grow on it and the animals that eat those plants. Questions must therefore be raised as to why so much money is spent on animal health remedies, routine drenches for parasites and why food plants have such high nitrate content instead of proteins. The answer appears to be that the soil is not healthy.

For a soil to be healthy, it needs certain components to deliver wholesome, healthy food. Clues to the right components to provide this outcome can be found in nature. Nature provides soil structure for roots to anchor in and sites for water and air to permeate into. Nature provides nutrition for the plants through decaying soil organisms and plant matter, mineralisation from weathered rocks and soil life to deliver the nutrition to plant roots. Nature also provides an electrical framework for these processes.

According to Nile Brady in ‘The Nature and Properties of Soil' [1984, 9th Edition, MacMillan Publishing, New York] there is a huge reservoir of minerals available in soils. For example in the top 150mm of one hectare of soil there is approximately 2.5 tons of nitrogen, 2.4 tons of phosphorus, 44 tons of potassium, 21 tons of calcium, 15 tons of magnesium, 3 tons of sulphur, 50 tons of iron, 5 tons of manganese, 200kg of zinc, 100kg of copper, 100kg of boron, 4kg of molybdenum and 400 of tons of silica. Given this huge reservoir, it appears more recent farming practices have altered nature's way of operating and the minerals have been bound up in a plant-inaccessible form.

Dr Maynard Murray found that on land, elements are found in a colloidal state defined as ‘a gelatinous substance which when dissolved in liquid will not diffuse readily through animal or vegetable membranes' (Acres USA-January 2003 ‘Trace elements in Nature's Balance'), thus ‘when an element is leached from the land, the resulting imbalance causes a blocking of the other elements present so they cannot be taken up by the plants, or substitution of some other element (for the one leached) takes place'. This creates the cycle previously mentioned where a small difference in the balance of soil fertility shows up as ill health in the plant and/or animal. Traditionally the elements removed from the soil were replaced via manure, decayed vegetation and dead animals in the same proportion in which they were removed, however, contemporary use of inorganic fertilisers tends to lead to the unavailability of trace elements and therefore disruption of physiological processes.

Dr Murray found that in the sea there was a balance of most of the known elements in a plant and animal available form. Nearly all elements of the atomic table are in a solution of consistency, balance and proportion, available to all sea life'. He also noted that sea animals were consistently healthy. His experiments found that using sea solids with this full range of elements on soils resulted in healthier plants and animals. It therefore appears that there is a tool to help unlock the bounty of available elements in the soil by using sea-sourced products for their range of all the elements.

Recent research by Dr Elaine Ingham [President of Soil Foodweb Institute in New South Wales, Australia] has made it possible to assay the micro life in the soil. Microscopic bacteria, fungi and protozoa create the soil structure, make nutrition available to plants through symbiotic relationships in the plant root zone and ensure sick and dying plants are destroyed. These organisms, too, have been adversely affected by modern fertiliser and pesticide practice. This is shown again through unhealthy or dying plants, plants that need constant pesticide use to keep them disease free. When the soil biology is healthy, so too is the life that lives in and on the soil.

It is not yet known how to measure all that is happening the complex system of the soil but some of the results of some of those processes have been observed. When kelp meal was left in a plastic drum on the farm during a storm a series of regular flux lines developed along the bottom surface of the container. These flux lines were formed by the highly ionised kelp meal being attracted to the earth's electrical flow. They ran in parallel in an east-west direction. On further investigation it was found that the soil below the drum had a low voltage current running along these lines. Soil has an electrical current. Flux lines also tend to form in response to a magnetic field So it would be reasonable to suggest that because the soil has an electrical current and exhibits flux lines that it also has an electromagnetic field.

Dr Philip Callahan in his book ‘Tuning into Nature’ observed and then demonstrated that plants grew well beside certain types of volcanic rock. In questioning why, the rocks were found to be paramagnetic. Paramagnetism measures a substance's tendency to move towards a magnetic source. So there was something about the paramagnetism that encouraged plant growth. Mr Callum Coates, when reporting on Victor Schauberger's work in ‘Living Energies' noted that paramagnetic rock dust enhanced plant growth and the activity of soil organisms.

A good source of paramagnetic rock is volcanic granite. One of the main components of granite is silica. In modern times silica has been virtually ignored in agriculture except those that use biodynamic methodology pioneered by Rudolph Steiner earlier last century. Silica is a main component of 'Preparation 501', thought to bring in the light energies and is known to enhance photosynthesis and strengthen the plant (Grasp the Nettle By Peter Proctor; ‘practical perspective on Biodynamics using world-wide experience').

In an interesting parallel to this, silica is the main component in a solar panel. Along with phosphate and boron the silica in the panel absorbs the energy from the sun to produce electricity. Again bringing in the ‘light’ energies. It has been observed that in areas with patches of soil with high silica content the plant growth is stronger than adjacent areas with lower silica content. Plant growth and health improvement has also been shown through the addition of basic slag-rich-in silica and magnetite.

The role of the electromagnetic field in plant growth has not been fully understood or widely researched but trials by Albert Davis and Walter Rawls in 'Magnetism and its Effects on the living system found that passing seeds through a EMF increased the subsequent growth potential by up to 40%. There appears to be something in the seed that recognises and utilises the effects of the electromagnetic field.

In summary therefore, it therefore appears that the elements of electrical and electromagnetic activity are in the soil. Paramagnetic rock is there to provide the background magnetic field; silica, the generator and magnetite or iron sand to provide the 'wires' for the current. From observations on in a commercial farming situation all three factors need to be present to 'kick start' the soil's electrical system. It is interesting to note the volumes of silica and iron present in the soil analysis provided by Neil Brady (as referenced above) there is a disproportionate amount of silica and iron in the soil compared with their known nutritional value.

It would be beneficial to determine a material that would allow nature to restore its complex balance to the soil while giving a sustainable wholesome food output. The substance would kick start the electrical potential of the soil to mobilise the elements and compounds locked therein, provide the full range of elements necessary in the appropriate balance and make them plant available. It was envisaged that the complex of biology, energy and minerals would be brought into a natural balance.

All references, including any patents or patent applications cited in this specification are hereby incorporated by reference. No admission is made that any reference constitutes prior art. The discussion of the references states what their authors assert, and the applicants reserve the right to challenge the accuracy and pertinency of the cited documents. It will be clearly understood that, although a number of prior art publications are referred to herein, this reference does not constitute an admission that any of these documents form part of the common general knowledge in the art, in New Zealand or in any other country.

It is an object of the present invention to address the foregoing problems or at least to provide the public with a useful choice.

Further aspects and advantages of the present invention will become apparent from the ensuing description which is given by way of example only.

The claims in full, as they are proposed to be amended, read:

1. A fertiliser composition, which includes

a silica source and an iron source

characterised in that said silica source is predominantly formed through a sedimentary process in a marine or estuarine (brackish water) environment and is chosen from the group sea mud, greywacke or combination thereof.

2. A fertiliser composition, as claimed in claim 1 which includes a calcium source.

3. A fertiliser composition, as claimed in claim 1 which includes a paramagnetic source.

4. A fertiliser composition as claimed in claim 1 which includes a calcium source and a paramagnetic source.

5. A fertiliser composition as claimed in any one of claims 1 to 4 wherein the level of silica in the silica source is greater than or equal to 40wt%.

6. A fertiliser composition as claimed in any one of claims 1 to 5 wherein the level of silica in the silica source is greater than or equal to 60wt%.

7. A fertiliser composition as claimed in any one of claims 1 to 6 wherein the silica source is in powder form.

8. A fertiliser composition as claimed in claim 7 wherein the particle diameter of powdered the [sic] silica source is less than or equal to 130 micrometers.

9. A fertiliser composition as claimed in any one of claims 1 to 8 wherein the composition is suspended in a liquid.

10. A fertiliser composition as claimed in any one of claims 2 to 9 wherein the calcium source is obtained from lime.

11. A fertiliser composition as claim [sic] in claim 10 wherein the calcium source is obtained from shell lime.

12. A fertiliser composition as claimed in any one of claims 3 to 11 wherein the paramagnetic source is obtained from rock dust.

13. A fertiliser composition as claimed in claim 12 wherein the rock dust is obtained from volcanic material.

14. A fertiliser composition as claimed in any one of claims 12 or 13 wherein the paramagnetic source has an effectiveness rating of greater than or equal to 1500cgs.

15. A fertiliser composition as claimed in any one of claims 1 to 14 wherein the iron source is obtained from iron sand.

16. A fertiliser composition as claimed in any one of claims 1 to 14 wherein the iron source is obtained from lodestone.

17. A fertiliser composition as claimed in any one of claims 1 to 14 wherein the iron source is obtained from magnetite.

18. A fertiliser composition as claimed in any one of claims 1 to 14 wherein the iron source is Fe₂O₃.

19. A fertiliser composition as claimed in any one of claims 1 to 18 which includes at least one chromium source.

20. A fertiliser composition as claimed in claim 19 wherein the chromium source is chromium ore.

21. A fertiliser composition characterised in that said composition includes:

sea mud, greywacke

or combinations thereof, 20-80wt%,

calcium source, 10-50wt%,

paramagnetic source, 10-50wt%,

iron source, 1-10wt%,

chromium source, trace amounts

22. A fertiliser composition as claimed in claim 21 wherein said composition includes:

sea mud, greywacke

or combinations thereof, 30-60wt%,

calcium source, 20-40wt%,

paramagnetic source, 10-30wt%,

iron source, 1-5wt%,

chromium source, trace amounts

23. A method of application of a fertiliser composition as claimed in any one of claims 1 to 22 to an imperfect soil, characterised by the step of:

a) applying the fertiliser to the imperfect soil.

24. A method of application of fertiliser composition, as claimed in claim 23, characterised by the steps of:

a) undertaking a soil analysis of the imperfect soil

2. premixing the components of the fertiliser to complement the requirements of the imperfect soil, and

c) applying the fertiliser to the imperfect soil.

25. A method of creating a flow of electrical current in soil, said method characterised by the step of adding to the soil the fertiliser composition as claimed in any one of claims 1 to 22.

26. A method of increasing the electrical flow of current in soil, said method characterised by the step of adding to the soil the fertiliser composition as claimed in any one of claims 1 to 22.

27. A composition for use with growing plants said composition including a fertiliser composition as claimed in any one of claims 1 to 22 and soil.

28. A composition as claimed in claim 27, said composition being a source of colloidal minerals.

29. A composition as claimed in claim 27, said composition being capable of enhancing germination.

30. A composition as claimed in claim 27, said composition being capable of enhancing plant strength.

31. A composition as claimed in claim 27, said composition capable of increasing nutrient availability within the soil.

32. A composition as claimed in any one of claims 1 to 22, said composition being capable of inducing electromagnetic fields in soil where the electromagnetic field has been previously deactivated or diminished.

33. A fertiliser composition substantially as herein described with reference to the accompanying examples.

34. A method of using a fertiliser composition substantially as herein described with reference to the accompanying examples.

THE LAW

The burden of proof in opposition proceedings rests on the opponent: Saxpack Foods v Watties Canneries (M 454/85, High Court, Wellington Registry, 11 July 1988, Ongley J):

I approach the proceedings upon the basis that the purpose of opposition proceedings is to clear the register of patents which are manifestly untenable. It is not to provide a method of disposing of truly contentious cases...

If there is any conflict of fact or credible expert opinion, the Commissioner should not refuse the grant unless the conflict is clearly resolved in the opponent’s favour: Beecham Group Limited v Bristol Myers Company (No2) [1979] NZLR 629, 634, quoting Diplock LJ from General Electric Company’s Application [1964] RPC 413:

The right principle is that if on the face of the written evidence filed there appears to be a bona fide conflict of fact or credible expert opinion upon a question on the answer to which the existence or non-existence of the ground for refusal specified in s.14(1)(e) [equivalent to New Zealand section 21(1)(e)] depends, the [Commissioner] should not exercise his jurisdiction to refuse the grant unless, after cross-examination of the witness if he thinks fit to order it, the conflict is clearly resolved in favour of the party opposing the grant.

This view was supported by Harrison J in Merck & Co Inc v Arrow Pharmaceuticals (NZ) Ltd (Harrison J, 29 September 2006, High Court Wellington CIV 2006-485-817) at paragraph 22. His Honour also considered the possible prejudice to the applicant in being deprived of the right to defend its invention in properly constituted revocation proceedings to be relevant. Paragraphs 24 and 25 of the decision read:

[24] In the other Beecham decision, Beecham Group Ltd v Bristol-Myers Company (No 2) [1980] 1 NZLR 192, Barker J put the test this way at 213:

I shall ask myself the questions in respect of each ground of opposition; is the claim to the patent in suit ‘manifestly untenable’? Is there a prima facie case for the grant of the patent? Does the justice of the case require the applicant to be permitted to resist the claim for invalidity in properly constituted revocation proceedings? All these tests, although differently stated really amount to the same thing.

[25] An issue to be given special weight by the Commissioner is: Dunlop Holdings Ltd [1979] RPC 523, per Buckley LJ at 544:

Whether there would be a real risk that an injustice might be done by depriving the applicant of an opportunity to protect his right to the patent in a full-scale revocation action in the High Court ... [That is a factor for] consideration by the Tribunal hearing the opposition proceedings and considering what degree of certainty it should have in relation to the alleged grounds of opposition...

The benefit of any doubt must also be given to the applicant: ex parte Swift [1962] RPC 37, 46:

[T]he function of the Comptroller-General and of the Tribunal under s.6 of the Act of 1949 is not to decide finally whether an alleged manner of new manufacture is actually patentable. Rather, their function is only to refuse to allow applications to proceed which on no reasonable view could be said to be within the ambit of the Act ... Thus if one goes back to s.2 of the Statute of 1623, it will be seen that from the very beginning it is for the High Court to determine actual patentability.

The Swift approach was approved by the Court of Appeal in the Pharmac decision (Pharmaceutical Management Agency Ltd v Commissioner of Patents [2000] 2 NZLR 529; CA 56/99, 17 December 1999), at paragraph 15.

THE PATENT SPECIFICATION

The opponent points out that the applicant describes the scope of the invention as relating to a formulation of a fertiliser from a number of components.

The opponent draws the following points from the complete specification:

• ‘Silica.[without identifying the source] is known to enhance photosynthesis and strengthen the plant...’ - page 6 lines 18-20 of the complete specification. [This would appear to relate to silica as part of a product ‘Preparation 501’ or that preparation itself. The source of the information, as described in the complete specification, would appear to be ‘Grasp the Nettle’ by Peter Proctor; ‘Practical perspectives on biodynamics using worldwide experience’. The foregoing is part of the background art to the invention in the complete specification.]
  
• ‘It has been observed that in areas with patches of soil with high silica content [again without limiting the source] the plant growth is stronger than adjacent areas with lower silica content.’ - page 6 line 24 to page 7 line 1 of the complete specification. [This is part of the background art in the complete specification.]
  
• ‘From observations on in [sic] a commercial farming situation all three factors [paramagnetic rock, silica and magnetite or iron sand] need to be present to ‘kick start’ the soil’s electrical system.’ - page 7 lines 11-12 of the complete specification. [This is part of the background art from the complete specification.]
  
• ‘Other sources of silica based marine sediments are also of high enough quality. Sources of marine based diatomite are equally as good as sea mud, also identified in other countries a product in Utah, USA called Azomite. These products retain the same qualities of having the range of materials required and also silica in a form that will produce electricity. The formations of these products are all different but still retain the same qualities.’ - page 9 lines 10-15 of the complete specification. [This is part of the disclosure of the invention in the complete specification.]
  
• ‘In New Zealand there are several sources of this type of rock, one well-known source is ‘Papa’, a type of sedimentary rock found in regions all over New Zealand.’ - page 9 lines 16-17 of the complete specification. [This is part of the disclosure of the invention in the complete specification.]
  
• ‘...sea mud sourced from greywacke should be from areas with low rainfall. High rainfall has the possibility of diluting the amount of elements imparted by the sea water, and will therefore lessen the benefits imparted to the sea mud.’ - page 10 lines 13-16 of the complete specification. [Part of the disclosure of the invention in the complete specification. The quoted wording is preceded with the words ‘In preferred embodiments’.]
  
• ‘The combination of components, being, in preferred embodiments, sea mud, shell lime, rock dust and iron sand, provides an unexpected advantage, that advantage being the increased growth, strength and increased resilience to water deprivation.’ - page 13 lines 7-8 of the complete specification. [This is part of the disclosure of the invention. The paragraph from which this quotation comes includes: ‘Sea mud carries fine particles of silica as well as phosphate and boron. These elements are constituents of solar panels.’]
  
• ‘However, the combination of sea mud, shell lime, rock dust and iron sand provides an even greater benefit clearly illustrating the synergistic effect provided by the combination.’ - page 16 lines 3-5 of the complete specification. [This is part of the disclosure of the invention. The wording quoted is preceded by: ‘Plants planted in soil with paramagnetic rock dust present exhibit thicker stems, greater leaf area and greater overall size.’]
  
• ‘However, it should be appreciated that the addition of the silica source with the extra elements added from the seawater is essential.’ - page 17 lines 21-22 of the complete specification. [This is part of the disclosure of the invention in the complete specification.]
  

The opponent points out that none of the foregoing points are features of the broadest claims.

OBVIOUSNESS - section 21(1)(e)

Section 21(1)(e) reads:

That the invention, so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step having regard to matter published as mentioned in paragraph (b) of this subsection, or having regard to what was used in New Zealand before the priority date of the applicant’s claim

The opponent submitted that determining the question of obviousness requires consideration of a number of factors. The invention must be obvious to the notional addressee of the patent. This notional addressee is a person who lacks inventive capacity, but is deemed to have the common general knowledge of the field (usually called ‘the common general knowledge in the art’). It is necessary for the Commissioner to assess whether the invention would be clearly obvious to that notional skilled addressee in light of the prior publications or prior use pleaded by the opponents.

The applicant drew on Beecham Group Ltd v Bristol-Myers Co (No 2) [1980] 1 NZLR 192, 232, the Court holding that obviousness should be judged from the viewpoint of a ‘notional’ person possessing the following characteristics:

• Skilled in the ‘art’;
• Knowledgeable in all relevant literature; but
• Incapable of a ‘scintilla of invention’.
  

The applicant referred to The General Tire & Rubber Company Limited and Others v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457, beginning at 482:

[I]t is to a skilled addressee - a skilled man reasonable well versed in the art - that the specification is deemed to be addressed, and it is by the standards of the common general knowledge of such a man that one tests whether the invention was obvious or not...

The common general knowledge imputed to such an addressee must, of course, be carefully distinguished from what in patent law is regarded as public knowledge. This distinction is well explained in Halsbury’s Laws of England, Vol. 29, para. 63. As regards patent specifications it is the somewhat artificial (see per Lord Reid in the Technograph case [1971] F.S.R. 188 at 193) concept of patent law that each and every specification, of the last 50 years, however unlikely to be looked at and in whatever language written, is part of the relevant public knowledge if it is resting anywhere in the shelves of the Patent Office. On the other hand, common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee - the sort of man, good at his job, that could be found in real life.

The parties referred to the test for obviousness as set out by Oliver J in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 at 73-74:

There are, we think, four steps, which require to be taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention. Finally the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.

The applicant noted that in Lucas v Peterson Portable Sawing Systems Ltd [2003] 3 NZLR 361; (2003) 57 IPR 305, Fisher J, confirmed that the starting point for determining obviousness is the four-stage analysis set out in Windsurfing. The Judge then outlined, at paragraph 69, a series of supplementary principles which might assist in determining the question of obviousness, as follows:

(a) Where the invention is the combination of features all of which were individually known, the Court must avoid the danger of concentrating on the integers rather than the whole concept: Wood v Gowshall [1937] 54 RPC 37; Smale, supra, at p 43; Sabaf SpA v Meneghetti SpA [2002] EWCA Civ 976; [2003] RPC 264, 278 at para 40.

(b) The Court must also avoid the danger of falling into ex post facto analysis. It must put out of its mind developments since the invention and view the question of obviousness from the perspective of persons skilled in the art immediately before the priority date: Non-drip Measure Co Ltd v Strangers Ltd [1943] 60 RPC 135, 142; Technograph Printed Circuits Ltd v Mills and Rockley (Electronics) Ltd [1972] RPC 346, 362. The warning against being wise after the event is of special importance in a field, such as the present one, where it is easy to imagine that one is skilled in the art after a relatively brief period looking at a few drawings: Fichera & Anor v Flogates Ltd & Anor [1983] FSR 198.

(c) There is no inventive step if a known article is applied to a new and analogous purpose: Morgan & Co v Windover & Co (1890) 7 RPC 131, 134 (HL); Smale v North Sails, supra, at 43.

(d) Similarly, there is no inventive step if known features are brought together into a single whole in which the component parts continue to “do their own thing”: International Paint Co Ltd’s Application [1982] RPC 247 at 275. Thus there is no invention if “however juxtaposed to the other ingredients of the mixture or parts of the article, each part performs its own function and would do so even in the absence of the other parts.”(ibid). The converse is true if the collocation of features produces a new or improved function by virtue of the novel relationship established between the known features.

(e) Obviousness relates to the technical subject matter claimed to be inventive, and not to its commercial worth; Windsurfing, supra, at 72.

(f) The mere fact that the claim is merely to an improvement to a product already on the market does not preclude an inventive step: Hickman v Andrews [1983] RPC 147 at 189.

(g) In the end, it is impossible to avoid the conclusion that the distinction between novelty and obviousness is a question of degree rather than classification, at least in a case of the present kind.

Although the decision of Fisher J was ultimately successfully appealed to the Supreme Court, the above test for obviousness was confirmed by the Supreme Court, in Peterson Portable Sawing Systems & Anor v Rex Cameron Lucas & Anor [2005] NZSC 20, at paragraph 54.

The Windsurfing approach was summarised by the opponent as:

1. Identify the inventive concept embodied in the patent in suit.
   
2. Thereafter, the Court/Commissioner assumes the mantle of the normally skilled but unimaginative addressee at the priority date and imputes to him what was, at that date, the common general knowledge in the art.
   
3. Identify what, if any, differences exist between the matter as being known or used and the alleged invention.
   
4. Viewed without any knowledge of the alleged invention, decide whether those differences constitute steps which would have been obvious to the skilled addressee or whether they require a degree of invention?
   

The test was said by the opponent to be objective, not subjective, and is essentially a jury question. The question is generally whether any inventive step was obvious to the normally qualified skilled addressee - not the inventor nor the inventor’s rival (General Tire, above, at 498).

The opponent drew the following from the relevant cases in this area (Beecham Group Ltd v Bristol-Myers Co (No 2) [1980] 1 NZLR 192; Ancare New Zealand v Cyanamid of NZ Ltd case):

• The notional addressee is required to have numerous attributes; he is a skilled technician, knowledgeable in the relevant literature including patent specifications, but incapable of a ‘scintilla of invention’.
  
• The relevant literature includes patent specifications and such material as would be discovered on making a diligent search.
  
• The Court must consider the whole field of research and the whole field of documents reasonably discoverable or generally known.
  
• The Commissioner is not confined to looking at the particular prior documents individually. It is permissible to make a mosaic out of the relevant documents provided the documents would be put together by an unimaginative man with no inventive capacity.
  
• The proper question that the Commissioner must answer is what the relevant documents convey to those in the art as at the relevant priority date.
  
• The obviousness test is objective rather than subjective and therefore the evidence of what the parties did should be regarded with caution.
  
• Primary evidence should be led from properly qualified expert witnesses who will say whether or not, in their opinion, the difference between what is claimed and what is gone before, would have been obvious to a skilled man having regard to the state of the art as at the priority date.
  
• The relevant question is whether to the notional skilled addressee the alleged inventive step would be clearly obvious and would be recognised, without bringing to bear any inventiveness, as something that could be done or is at least worth trying.
  

The inventive concept

The opponent says that the inventive concept is that the silica source is predominantly formed through a sedimentary process in a marine or estuarine (brackish water) environment and is chosen from the group sea mud, greywacke or combinations thereof.

The applicant submits that the inventive concept is the discovery that silica formed through a sedimentary process in a marine or estuarine environment, and in particular sea mud and greywacke, have an ability not present in other known types of silica to turn sunlight to electricity and, when combined with a source of iron (for example magnetite), work with the sources of paramagnetic activity in the soil to ‘kick start’ the soil’s electrical system, unlocking the full range of elements necessary for plant growth in the appropriate balance and making them plant available.

As I see it the approach to inventive step is to be found in the main claim. Thus, the inventive concept for the purposes of this decision is:

• a fertiliser composition, which includes
  
• a silica source and an iron source, and
  
• the silica source is predominantly formed through a sedimentary process in a marine or estuarine (brackish water) environment and is chosen from the group consisting of sea mud, greywacke and combinations thereof.
  

This composition is said to have special properties as described above and in the specification.

The common general knowledge in the art

The opponent submits that the skilled addressee would be a team that includes a geologist; that the skilled addressee is a person likely to have a practical interest in the invention as per Minnesota Mining & Manufacturing Co v Ati Atlas Ltd [2001] FSR 31; that such a person would employ a geologist in their team; and that the notional skilled addressee is a person working, or knowledgeable, in the formulation and use of naturally derived fertilisers.

The opponent submits that the following form part of or are indicative of the common general knowledge as set out in Morris (1), paragraph 93:

1. that fertilisers are applied to imperfect soil.
   
2. that fertilisers are used with growing plants, crops, grasses, etc.
   
3. that the function of fertilisers is to supply nutrients and elements that are missing or deficient in the soil.
   
4. that fertilisers enhance germination, plant growth and plant strength.
   
5. that determining soil health requires analysis of the soil to determine the additives required, preparing the additives, and finally applying the additives as a fertiliser to the soil.
   
6. that the use of ground up rocks can be used to remineralise soil deficient in certain elements.
   
7. that rocks used to remineralise soil are comprised of such components as silica, iron and calcium, and have paramagnetic properties.
   
8. that rock dust formed from at least basalt has paramagnetic properties.
   
9. that rock dust is mixed with water to form a slurry and sprayed onto the soil to be treated.
   
10. that both lime and marine shell contain calcium.
    
11. that iron sand, lodestone, magnetite and Fe₂O₃ contain iron.
    
12. that chromium ore contains chromium.
    
13. that basalt is a fine-grained volcanic rock, comprising iron, silica and calcium, and that it is commonly found both in the sea, or is formed in the sea and pushed upwards due to geological processes.
    
14. that many rock formations now found above sea level were at some time in the sea, or formed in the sea and pushed upwards due to geological processes.
    

The applicant did not disagree that the foregoing points formed part of the common general knowledge as it was before the priority date.

The applicant denies that a further part of the common general knowledge, as set out in Morris (1), at item 93.9 of that affirmation, is part of that common general knowledge. I have omitted the item from the list above. This item reads:

that the use of fertilisers having paramagnetic properties enhances the electrical flow in the soil to which the fertiliser has been added.

I accept that it was not part of the common general knowledge. There appears to be no incontrovertible evidence for me to be able to accept this point.

From Black (1), paragraph 10, another relevant piece of common general knowledge would appear to be:

sea mud is a clay mineral-rich fine-grained sediment that has been deposited in a marine or estuarine (brackish water) environment

Similarly Black (1), by defining greywacke at paragraphs 15 and 16, establishes that it was well known at the priority date.

The opponent submits that deponent John Morris has the attributes of the notional skilled addressee.

The applicant submits, as to what was the common general knowledge of the skilled addressee:

• From D1-D5 [the documents cited in support of the ground, see below] the skilled addressee would have been aware of the general principles of remineralisation. He or she would also have been aware that rock dust was suitable for application as a fertiliser and that volcanic rocks such as basalt were particularly suited to such application. Finally he or she would be aware of the phrase “paramagnetism” (through D2 and D4), although not necessarily what it means.
  

Obviousness by prior publication

The documents in support of this limb of the ground of opposition:

D1 ‘Soil Remineralisation’ by Philip Charles Madeley, BSc dissertation, Manchester Metropolitan University, Department of Environmental and Geographical Sciences, 1999

This document was said to be available from <http://www.geocities.com/HotSprings/Sauna/1432/SoilRemineralisation1.htm> website which was archived by the Internet Archive\Wayback\Machine on 21 October 2001. The Madeley affirmation states that the document was available at the geocities.com site from 1999 when he placed it there.

The main aim of the document was to give an overview of the topic of soil remineralisation whereby finely ground rock dust was applied to soil. Experiments were conducted to establish the effectiveness of a ‘mixed volcanic rock dust’ on lettuce and cress. Rock is artificially ground down to accelerate the natural process of breakdown to produce the dust. At pages 10 to 11 the ideal rocks used to make rock dust are described. In short, the document states that igneous rocks, with the most researched being basalts, appear to give the best results in soil. The document states that the reasons basalt rocks are the best choice are two-fold. Firstly, they are rich in minerals from deep within the earth’s core and, secondly, they weather fairly quickly as they are low in silica, having approximately 45% silica. Analysis shows that the dust has an iron content.

I can see no mention of sea mud or greywacke in the document, and none has been pointed out to me. There is no mention of the added iron source.

D2 Standard Information Pack, Agrissentials Limited, ‘ROK Solid - Full Spectrum Fertiliser’ article

No evidence has been provided as to the availability of this article. The document was said to be part of the standard information pack released by Agrissentials Limited since at least 1999.

This article describes ROK Solid as being made up of volcanic rock ground to a fine dust. The article states that volcanic rock contains over 60 minerals and is especially selected for it’s natural energy. Analysis shows that ROK Solid has an iron content. The silica content is said to be high, at 43%.

I see no mention of sea mud or greywacke in the article. There is no mention of the added iron source.

D3 ‘Tighter Environmental Laws To Change Fertiliser Industry’ by John Morris

The opponent says that it is no longer relying on this article.

No evidence has been provided as to the availability of this article. All that was said was that it was from the New Zealand magazine Coast & Country.

The article relates to the need for farmers to make a determined and positive effort to increase organic matter in soil. The only section pertinent to the present technology is the statement: ‘[t]o re-establish and or increase the humus levels in soil you need to increase the microbial activity and introduce good quality rock dust, for the microbes to convert to humus.’

There is no mention of sea mud or greywacke in the article. There is no mention of the added iron source.

D4 Organic 100 Ltd, Advertisement in Healthy Options - ‘Organic Rock Dust Fertiliser’

No evidence has been provided as to the availability of this article. It was said to be in a magazine, Healthy Options, in July 2001.

For the purposes of this hearing, the advertisement merely states that the rock dust in rock dust fertiliser is made from basalt rocks which are high in paramagnetic energy and contain 43% silica; and that added to this [rock dust] is the company’s liquid fish and seaweed concentrate said to be teeming with microbial activity necessary for the release of minerals from the rock dust on demand from the plant.

There is no mention of sea mud or greywacke in the article. There is no mention of the added iron source.

D5 ‘PRP - Powerful Rock Powders’ by John Morris, printed under the title ‘Hope for a Healthy World’ in Coast & Country

No evidence has been provided as to the availability of this article. It was said to have been published in Coast & Country in 2001.

The document teaches the use of rock dust as a fertiliser, the rock dust releasing its up to 63 minerals to the plants ‘upon request’. It’s paramagnetic properties are also mentioned. The applicant drew attention to the article ending: ‘Gianni Cento’. This appears to the applicant to be the name of the author, and he questioned why in that case John Morris was alleging he was the author. The opponent questioned whether this was indeed a name.

There is no mention of sea mud or greywacke in the article, or the added iron source.

The differences between the published matter and the claimed invention

The differences between the prior art, when viewed in the light of the common general knowledge, is the combination of silica predominantly formed through a sedimentary process in a marine or estuarine (brackish water) environment and chosen from the group sea mud, greywacke or combination thereof, together with an added source of iron, and its use as a fertiliser in soil.

The differences - obvious or inventive?

The applicant describes the key differences, as it sees them, as being:

1. the knowledge that certain types of silica formed through a sedimentary process in a marine or estuarine environment have an ability to turn light into energy [electrical effect] not present in other forms of silica; and
   
2. the realisation that combining these forms of silica with an iron source, and adding them as fertiliser, will facilitate the ‘kick starting’ of this electrical effect in the soil
   

The applicant further says that:

• there is no suggestion that either of these factors would have been obvious to the skilled addressee, or that it would have been obvious to the skilled addressee that combining them would result in a fertiliser which had a synergistic effect in kick starting the electrical effect in the soil.
  
• the use of sea mud and greywacke is counterintuitive to the prevailing dogma that igneous rocks were best suited for remineralisation/paramagnetic application.
  
• I am to be particularly reminded of Justice Fisher’s supplementary principles regarding obviousness in Lucas v Peterson (above) of which the following would seem to be directly applicable in the present circumstances:
  
  • where the invention is a combination of features all of which were individually known, the Court must avoid the danger of concentrating on the integers rather than the whole concept;
    
  • there is an inventive step if the collocation of features produces a new or improved function by virtue of the novel relationship established between the known features; and
    
  • the mere fact that the claim is to an improvement to a product already on the market does not preclude an inventive step.
    

The opponent submits that claim 1 merely claims an alternative source of silica from that already known and used before any priority date of the opposed application, and wherein the alternative source of silica was already known to contain silica. Thus, it claims that it is obvious, when choosing an alternative source of silica, to choose a source already known to contain silica.

I accept the applicant’s submission that the use of sea mud and greywacke is counterintuitive to the prevailing dogma that igneous rocks were best suited for remineralisation/paramagnetic application. In teaching the use of igneous rocks in fertilisers the cited documents are teaching away from the use of other forms of silica, including sea mud and greywacke. The documents especially teach away from the use of sea mud and greywacke when viewed from the standpoint of the unimaginative addressee in the art. That such teaching results in a ‘teaching away’ is well understood in patent opposition proceedings. I do not accept the opponent’s submission that in order to teach away from the use of sea mud or greywacke the documents would have to say something that would discourage the use of these sources.

The Harlow affirmation merely refers to rock dust and paramagnetism, and hence teaches away from sea mud and greywacke or a mixture of the two, and especially when they are combined with an iron source.

The Morris (1) affirmation states that the writer pioneered and developed rock dust fertilisers. I note that this affirmation was executed while the claims were unamended. At paragraph 106.3 the affirmation states that, given the fact (from Black (1)) that sea mud and sedimentary rock are rich in silica, the applicant, it seems, has merely selected a well known alternative source of silica to that currently used for the purpose (ie rock dust).

The Pritchard affirmation states that the writer spread ROK Solid fertiliser on the soil at his property between 1995 and 1999 and added ROK Solid fertiliser to compost in an attempt to market a new product. The affirmation teaches away from sea mud and greywacke or a mixture of the two, especially when combined with an iron source.

The Black (1) affirmation states that sea mud has 50 to 65% silica content and greywacke has 55 to 70% silica content. The reason that Professor Black refers to sea mud and greywacke is because she was asked questions relating to these specific products on behalf of the opponent. It is not as if Professor Black was asked about the addition of silica to soil in general terms and, without prompting, voluntarily suggested sea mud and greywacke as possibilities.

The Madeley, Harlow, Morris (1), Pritchard, and Black (1) affirmations were sworn when the claims were in their form as at acceptance.

Sea mud and greywacke differ from rock dust in having greater silica content. The present specification and claims specify a preference for a greater silica content than is present in rock dust.
The Campbell declaration describes, from paragraph 5 to paragraph 24, the steps Mr Campbell took in order to develop the notion of a fertiliser utilising sea mud or greywacke, or a mixture thereof, together with an iron source:

• the deponent became interested in balancing his soil for beef production, but conventional fertilisers failed to deliver because there was no focus on overall balance in the soil (paragraph 5);
  
• he identified the need to develop a fertiliser to restore the complex balance of the soil (paragraph 6);
  
• he conducted trials with various types of fertiliser and these trials showed that the best results might be obtained with calcium based fertilisers for his type of farming (paragraphs 7, 8);
  
• he investigated paramagnetism, and heard about some volcanic rocks being paramagnetic and about silica in soil promoting stronger plant growth (paragraphs 9, 10);
  
• he worked on his soil’s fertility for several years following the teachings of a course he attended run by Brookside Laboratories, and he heard about John Morris and the good results he was getting with rock dust products applied to soil (paragraph 11);
  
• he heard from Mr Morris, and read elsewhere, about paramagnetics and remineralisation using rock dust (paragraphs 12, 13);
  
• he mentions that there are fundamental differences between the rock dust product and the product of his invention (paragraph 14);
  
• he trialed slag from a steel mill, which contained calcium, magnesium, manganese, iron and many elements, with high success (paragraph 15);
  
• he carried out further tests on different soil areas with poor results, except in one area to which had been applied silica sand; and he qualified from the Brookside Training School (paragraphs 16, 17);
  
• he found out that silica was used in solar panels and he deduced that the presence of silica sand in soil would enhance its electrical activity (paragraph 18);
  
• he sought a suitable source of silica to add to his soil. Silica he sourced from a mine in Ashburton Gorge gave varying results (paragraph 19);
  
• he noticed vigorous plant growth and healthy bird life around, and healthy fish in, a lake separated from the sea by a small strip of land, and he was informed that some people took sediment from the lake to grow tomatoes. He experimented with this product as a fertiliser, getting what he says were great results (paragraph 20);
  
• he measured electrical flow in soil around his farm and discovered the right conditions under which electrical flow will travel along flux lines produced by magnetite (the magnetite being present in his soil from his earlier use of basic slag which had large quantities of magnetite) (paragraph 21);
  
• he deduced that silica from a marine or estuarine (brackish water) environment, with an added iron source, would assist any paramagnetism in the soil, the iron source (such as magnetite) re-facilitating the flux lines he’d observed in the soil at his farm, and that, where the paramagnetism was low, it would be best to include a paramagnetic source such as rock dust from volcanic rocks (paragraph 22);
  
• these combinations showed excellent results, and he drew on other sources of silica from a marine/estuarine sedimentary environment and identified a suitable papa quarry as a source (paragraphs 23, 24).
  

The disclosure of the invention in the complete specification begins with reference to silica from any source, but from thereon focuses on sea mud and greywacke and combinations of the two. The description of the invention in the complete specification continues with its focus on these two sources, together with an added iron source. At page 25, where the best modes of carrying out the invention are described, the reference is still to the use of sea mud and/or greywacke.

As far as I can see there is nothing in the evidence that shows why the unimaginative skilled addressee would think of substituting the well known igneous based rock dust in a fertiliser with sea mud or greywacke or a combination of the two, and that it would be clearly obvious to the unimaginative addressee to want to do this or to trial it. It would seem to be even less obvious, to further include, with the sea mud and/or greywacke, an added source of iron. The journey the applicant took to establish the invention appears quite involved. There must at least be a doubt as to obviousness with regard to the matter published.

This limb of the ground is not made out.

Obviousness by prior use

The applicant noted the IPONZ practice note, published in Journal No 1287 in July 1986, page 714, which sets out what the opponent must do to prove prior use:

To succeed on this ground, an opponent must first establish that the alleged instance(s) of prior use was (were) not secret use(s) of the invention, as claimed. See the decision of the House of Lords in Bristol-Myers (Johnson’s) Application [1975] RPC 127, at 157, for a discussion on what constitutes public use, as opposed to secret use. The opponent must also establish, by evidence,

(a) what was used
(b) where it was used
(c) by whom it was used
(d) the date it was used
(e) where apparatus still extant may be inspected.

It appears the contents of the note equally applies to any prior use that is relied upon in support of this limb of obviousness.

The applicant drew attention to Seiller’s Application [1970] RPC 103, at 106, where Graham J confirmed that the standard of proof required to establish prior use is high:

In my judgement it is necessary that proof of prior user in opposition cases should be very clear.

The opponent’s product ROK Solid utilises volcanic rock so cannot establish prior use. In addition there is no added iron source. This use has been discussed above under the first limb.

The taking of sediment from the lake by people to grow tomatoes, mentioned at paragraph 20 of the Campbell declaration (and above in this decision), was not proven to have taken place, or, further, to have been effective if it had been taken. In addition, it was all hearsay evidence. Further, had sediment been taken, there is no evidence there was any iron source added to it before any use.

There is no clear and unambiguous prior use of the applicant’s claimed invention.

For the reasons given above under the first limb of this ground, none of the uses of rock dust based on the prior publications, if they had been the basis of any actual use in New Zealand, could make the present claimed invention obvious by way of prior use.

This limb of the ground is not made out.

The ground is not made out.

NOT AN INVENTION - section 21(1)(f)

Section 21(1)(f) states:

That the subject of any claim of the complete specification is not an invention within the meaning of this Act

The definition of invention, Section 2(1), reads:

“Invention” means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies and any new method or process of testing applicable to the improvement or control of manufacture; and includes an alleged invention

The applicant states that the issue of invention was considered in L’Oreal’s Application [1970] RPC 565 at 569 and 570:

In cases relating to the objection that the subject of a claim is not “a manner of new manufacture” the case of Compagnies Reunies des Glaces et Verres (1931) 48 RPC 185 shows that two basic questions are involved. Is there a manufacture and, if so, is it new? ...

...

This clearly involves inter alia an examination to see whether the specification discloses something which is or can be alleged to be an invention or manner of new manufacture within section 101. Whilst, as stated, if there is doubt it should be resolved in the applicant’s favour, the corollary is also necessarily true and, if the Comptroller is satisfied that there is no invention or manner of new manufacture disclosed in the specification, it is his duty to refuse it. The question whether there is a “manner of new manufacture” the subject of letters patent and grant of privilege disclosed, in our judgment, imposes upon the Comptroller at the application stage the duty of considering whether there is present such consideration as can possibly support a grant. There will be no such possibility if the subject of the claim under review has for example clearly been previously disclosed or is quite plainly obvious in the light of the prior available knowledge. There will, in view of the presumption in favour of the applicant at this stage, be very few cases where the Comptroller should take the extreme step of refusal, but in a proper case he is bound to do so. If he is wrong his decision can be reversed on appeal by the Appeal Tribunal, which itself is subject to review by certiorari.

Mere collocation

The opponent submitted that in at least claim 1 the invention is no more than a mere collocation of known steps that a person skilled in the art would undertake when formulating a fertiliser using an alternative source of silica to that used before any priority date of the claims. This is really a repeat of the obviousness objection. As I have already found above that the claims are not obvious, then, the present ground cannot be made out by way of a mere collocation argument.

Selection invention

The opponent continued the objection under this ground by claiming the opposed application was in its way a selection invention, and that it does not meet the criteria for selection.

The matter of selection was considered in I G Farbenindustrie AG’s Patents (1930) 47 RPC 289, and the following criteria for a valid ‘selection’ patent were laid down at pages 322 to 323 of that decision:

(i) the selection must be based on some substantial advantage gained or some substantial disadvantage avoided;

(ii) the whole of the selected members (bar a few exceptions) must possess the advantage in question; and

(iii) the selection must be in respect of a quality of a special character which may fairly be said to be peculiar to the selected group.

The applicant adds that the quality must not be one that would be obvious to an expert.

In the first place, the applicant disputes whether the present invention is actually a selection invention. The applicant has not described the invention as a selection invention. It is the opponent who is arguing that the invention is a selection invention, that the invention fails to meet the criteria for a selection invention, and that the application should therefore be rejected.

The applicant drew on Terrell on the Law of Patents, paragraph 7.50, that a selection patent is one in which the inventive step resides in the discovery that one or more members of a class have some special advantage.

The British Manual of Office Practice (Patents), at paragraph 14,144, states that selection arises when a prior publication discloses a wide field covering a number of alternatives, one or more of which constitutes the applicant’s invention. The latter alternative or alternatives must not have been described before otherwise the application would fail for lack of novelty.

It appears to me that the invention, as it is to be claimed, does not fall into the category of selection, as selection is to be understood by way of the British Manual. The invention relates to a combination. There appears to be no cited document which includes within its scope a discussion of combinations that would lead to the possibility of the selection of a combination of sea mud or greywacke, or a mixture of the two, alone, or together with an iron source. The opponent’s argument fails at this point, I think.

The applicant, having submitted that the present invention is not an actual selection invention, goes on further to consider the invention claimed as if it were a selection, from the point of view of the criteria set forth in I G Farbenindustrie:

(1) the advantage conferred by the selection of sea mud or greywacke or a combination thereof is the enhanced electrical effect which results from its combination with an iron source when applied as a fertiliser composition which in turn renders the fertiliser composition more efficacious;

(2) the evidence of Mr Campbell is that all of the selected members (sea mud and greywacke) possess the required advantage; and

(3) the evidence of Mr Campbell is that this ability to convert sunlight into electricity ‘is a quality of a special character’ which is peculiar to the selected group. There is no suggestion that the identification of these sources of silica as having that property would have been obvious to an expert.

The applicant points to the conflict of views on the ability of silica to conduct electricity between the Gao affirmation and the Nam declaration and the caution in Merck & Co Inc v Arrow Pharmaceutical’s (NZ) Ltd (Harrison J, High Court Wellington, CIV-2006-485-817, 29 September 2006) against the possible prejudice to the applicant in being deprived of the right to defend its invention in properly constituted revocation proceedings. As to the evidence here, I much prefer the evidence in the Goa affirmation, as being from a highly qualified person, whereas the Nam declaration relies on sources from the Internet of unknown provenance and standing. However, my preference at this point does not detract from the right of the applicant to defend the invention in properly constituted revocation proceedings, nor does it affect any other aspect of my decision.

The opponent drew on Commerce Commission v Probitas Limited and Ewan Malcolm Campbell (J R Callander J, District Court Tauranga, CRN: 05079500275-82, 26 March 2007). This case is about a product (Probitas) within the scope of the present claims and the promotion of the product to the farming community. Of relevance to the present case is the finding that the scientific reason given by the applicant for the way the product worked was found to be unacceptable to the Court, there being no scientific support for the idea that the addition of silica to soil enhances electrolysis in that soil in the manner described. At paragraph 44 of the decision the expert witness, Dr Edmeades, states:

There is no scientific basis for the claim that adding silica or [sic] any sort can capture the sun’s rays and, by electrolysis, stimulate otherwise unavailable soil nutrients.

The Judge accepted this.

An inventor may have a theory as to how an invention works, and, later, it may turn out that the reason was incorrect. The invention may work for a different reason. The fact that an inventor has identified the wrong method by which the invention works is not, in itself, fatal to an application for patent rights. I note that at paragraph 45 of the Commerce Commission decision the expert says that

...the “ratio theory” once thought by some scientists to be valid, is no longer accepted by soil scientists.

The ‘ratio theory’ appears at paragraph 39 of the Commerce Commission decision and in claims made by the inventor, the present applicant, in promotional material for the product Probitas. The ‘ratio theory’ does not directly relate to the present proceedings, but does show that theories may be held by some experts, but not necessarily by all experts in the same field of expertise, and that theories held at some stage may be later found to be invalid or otherwise defective.

For the purposes of the present decision it does not matter that the inventor may have wrongly identified the process by which the invention works. The present application cannot fall, in the circumstances of these proceedings, on the issue of the applicant wrongly identifying how the invention produced its results.

The matter of the product, Probitas, according to the present invention working or not working is the next point to consider from the Commerce Commission decision. The expert witness in that case did not independently examine or test the product with field trials in order to reach his conclusion that the product did not in fact work. He thought examination or testing unnecessary because Probitas was ‘palpably devoid of any scientific merit’. [Paragraph 63 of the Commerce Commission decision].

The Judge accepted that the expert witness did not need to conduct independent field trials or other tests, and noted that the inventor Mr Campbell had not conducted field trials or other tests [paragraph 78 of the decision]. Mr Campbell did not testify as to the efficacy of the product. The Court found that claims made about the product in promoting the product were misleading as to what the product could or would do.

From the point of view of these proceedings, the Commerce Commission decision is that the claims made about the product in promotional materials were misleading and that the product did not work as claimed based on scientific reasoning [paragraph 112 of the decision]. What this means from the viewpoint of these proceedings is that, at worst, the claimed invention does not work. This is, to my mind, an objection of inutility against the claims. The ground of inutility cannot be considered by the Commissioner of Patents, being a ground that can only be considered by a Court under section 41 of the Patents Act 1953.

From the point of view that the invention claimed may work only to the extent that would be expected of a mixture of sea mud and/or greywacke with an iron source, there would be no invention to claim, the mixture in such an instance possessing only the aggregate of the known properties of the ingredients. This would warrant the refusal of the application on the ground of there not being any invention. However, there is no evidence in these proceedings as to what is the effect produced by the combination claimed.

Also to be considered is the extent to which the combination may work in some synergistic way, but that does not meet the claims made for the product Probitas in promotional material, if there is such a synergistic effect.

No-one has produced evidence as to the results that are to be achieved by applying a product of the invention claimed as a fertiliser. In the present proceedings before myself, the applicant has to be given the benefit of any doubt as to the efficacy of the claimed invention so that the applicant has the opportunity to defend the invention in full proceedings before a court.

The ground is not made out.

NOT SUFFICIENTLY AND FAIRLY DESCRIBED - section 21(1)(g)

Section 21(1)(g) states:

That the complete specification does not sufficiently and fairly describe the invention or the method by which it is to be performed

The opponent drew on Blanc White in Patents for Inventions, 3rd edition, at page 158, in support of the test for sufficiency being whether the complete specification as a whole contains such instructions as will enable all those to whom the specification is addressed to produce something within each claim by following the directions of the specification without any new invention or additions of their own.

The opponent submits the notionally skilled addressee for sufficiency does not include a geologist, but that the addressee is a person who wishes to manufacture a naturally derived fertiliser. Hence, submits the opponent, the skilled addressee would not be able to determine if the silica source was formed through a sedimentary process in a marine or estuarine (brackish water) environment.

The applicant accepts that a patent application with broad, ambiguous and/or speculative claims will be susceptible to an objection of insufficiency.

The applicant drew on the general principles by which the sufficiency of the specification should be determined as stated by Lindley LJ in Edison and Swan Electric Light Co v Holland (1889) 6 RPC 243 at 280:

...in describing in what manner the invention is to be performed, the Patentee does all that is necessary, if he makes it plain to persons having reasonable skill in doing such things as have to be done in order to work the patent, what they are to do in order to perform his invention. If...they are to do something the like of which has never been done before, he must tell them how to do it, if a reasonably competent workman would not himself see how to do it on reading the Specification...

The claims have been limited during this opposition action to using sea mud or greywacke or combinations thereof as the effective silica source. Black (1), at paragraphs 10 to 12, as I see, gives what would be a working description of ‘sea mud’, and paragraphs 15 and 16 of the same affirmation appear to me to give a working description of ‘greywacke’. Black (2) gives additional support to the term ‘sea mud’ as being well known. The terms are in my view well known, even if there might be some impreciseness at the limits of the definitions.

There is no evidence from the notional skilled addressee that they would not be able to perform the invention claimed from the description of the invention in the specification. Having read the specification, I believe the skilled addressee would be able to perform the invention from the description. In its simplest terms, the specification describes the mixing of sea mud and/or greywacke and an iron source and the application of the mixture to soil as a fertiliser. I also draw on the decision of Davison CJ in Noton New Zealand Limited v Alister Bevin Limited (1979) 1 NZIPR 236 at 238 where he quoted the following passage from the Assistant Commissioner in Alister Bevin Limited’s Patent 164293 (Decisions of the Commissioner, P08/1978, 14 August 1978), at pages 5-6, defining the scope of the ground of insufficiency:

An allegation of insufficiency is an allegation that the addressee of the complete specification will be unable to produce the subject of the principal or broadest claim by following the directions of the specification without further invention on the part of the addressee.

All that is required for sufficiency is that the addressee of the complete specification will be able to produce the subject of the principal or broadest claim by following the directions of the specification without further invention on the part of the addressee. This requirement is met.

The ground is not made out.

DECISION

I find that none of the grounds has been made out. The amendments are to be made, and suitably amended pages have already been received. I dismiss the opposition, and I direct that the patent be sealed once the amended pages are inserted in the specification.

COSTS

As is usual in circumstances where an opponent has not been successful in establishing its grounds of opposition, but, nevertheless, the opposition has resulted in amendment to the invention claimed, each party is to meet its own costs.

Dated this 5th day of June 2007

____________________________
A Hazlewood
Assistant Commissioner of Patents

James & Wells for the Applicant
A J Park for the Opponent