I’ll get by with a little support and sufficiency from my claims

Lack of support and sufficiency back under the microscope in a recent opposition appeal decision of the Federal Court of Australia.

In Issue

• Lack of support and lack of clear enough and complete enough disclosure (sufficiency) back under the microscope in a recent appeal decision of the Federal Court of Australia.

The background

On 7 February 2012, Nalco Company (Nalco) filed a patent application entitled “Reducing aluminosilicate scale in the Bayer process”¹ (application number 2012220990) (the Application). The Application was examined and accepted by the Commissioner of Patents (the Commissioner) on 21 May 2015. Shortly after, on 21 August 2015, Cytec Industries Inc (Cytec) filed a notice of opposition to grant, under s 59 of the Patent Act 1990 (Cth) (the Act).

Grounds of Opposition

Cytec opposed the Application on the basis that the claims:

1. rendered it impossible for the invention to be patentable per s 59(b) of the Act²; and
2. did not comply with the requirements of ss 40(2) and 40(3) of the Act³.

The APO Decision

The Opposition was heard by the Australian Patent Office in October 2018 and a decision handed down in January 2019. In short, the delegate for the Commissioner found that several of the claims a) lacked novelty⁴ and clarity⁵ and b) were not supported⁶, and that c) the description in the specification did not provide a clear and complete enough disclosure of the invention⁷. Other grounds of opposition, such as that the claims lacked an inventive step, were unsuccessful (collectively, the APO Decision).

Issues on appeal

Despite being largely successful, Cytec appealed the APO Decision to the Federal Court (the Court) on the following four grounds:

1. Lack of support per s 40(3) - the invention claimed was not “supported by the matter disclosed in the specification”;
2. Lack of clear and complete description per s 40(2)(a) - the complete specification did not “disclose the invention in a manner which [was] clear enough and complete enough for it to be performed by a person skilled in the relevant art”;
3. Failure to disclose the best method per s 40(2)(aa) - the complete specification did not “disclose the best method known to [Nalco]”; and
4. Lack of novelty per s 59(b) - the invention was not “novel” due to another patent owned by Nalco entitled “Reducing aluminosilicate scale in the Bayer process”.

Federal Court Decision

The Court ultimately found that Cytec was successful on the grounds of lack of support (issue 1) and lack of clear enough and complete enough disclosure (issue 2), but unsuccessful on the grounds of failure to disclose the best method (issue 3) and lack of novelty (issue 4). We address the two successful grounds below.

Issue 1: Lack of support

Subsection 40(3) requires that the claim(s) be clear and succinct and supported by matter disclosed in the specification. The approach to this is to look at whether the invention in the claim(s) is supported by the description, which further involves ascertaining the invention and then comparing that with the description in the specification. Ultimately, the Court held that the Application lacked “any technical contribution sufficient to encompass the full scope of the monopoly claimed”⁸ and as such, rendered the claim(s) lacking support.

Issue 2: Lack of clear and complete description

Subsection 40(2)(a) requires that complete specification disclose the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the relevant art. This question involves consideration of whether the invention can be performed across the full scope of the claims without undue experimentation. Cytec argued that the Application lacked sufficient description due to the presence of the words “at least one small molecule” in the first claim. As such, for the same reasons as Issue 1, the Court held that the disclosure of the specification was not sufficient to enable the invention claimed to be performed without undue experimentation where those claims included a product mixture made up of a single type of small molecule.

Implications

The decision is reminder of how the Courts will approach the meaning of general claim terms and highlights the need to ensure that the specification discloses enough information to allow a person skilled in the art to practice the full scope of the claimed invention and the claims correspond with the technical contribution provided by the specification.

Cytec Industries Inc. v Nalco Company [2021] FCA 970