official notice
decision of a delegate of the commissioner of patents

Application	:	No. 646569 in the name of Dominion Mining Limited

Title	:	Nickel Processing

Action	:	Opposition under section 59 of the Patents Act 1990 by Technological Resources Pty Ltd

Decision	:	Issued             .

Abstract
The opposition fails on all grounds.  On the evidence, the published prior art and the common general knowledge are insufficient to support the grounds of opposition of lack of novelty, lack of inventive step and not a manner of manufacture.

patents act 1990
decision of a delegate of the commissioner of patents

Re:	Patent Application No. 646569 by Dominion Mining Limited and opposition thereto by Technological Resources Pty Ltd under section 59 of the Patents Act 1990
background
Australian Patent Application number 17346/92 was filed on 29 May 1992 and associated with provisional applications PK6571, filed 7 June 1991, and PL1312, filed 13 March 1992 by Dominion Mining Limited.  The application was advertised accepted on 24 February 1994.  On 24 May 1994 Technological Resources Pty Ltd filed a notice of opposition, followed by a statement of grounds and particulars on 24 August 1994.
On 23 September 1994, the applicant filed a request for dismissal in part of the opposition and a request for directions. I refused the request for dismissal and directed that certain particulars be not available to be argued at this hearing, and that further and better particulars be provided for some of the grounds.  Further and better particulars were filed, and allowed on 1 May 1995.  The applicant filed amendments on 13 August 1995, these were advertised on 18 April 1996 and allowed, unopposed, on 9 August 1996.
The matter was set down for hearing in Melbourne on 13 August 1996.  Mr Bruce Caine of counsel assisted by Mr Greg Bartlett, patent attorney, of Wray & Associates, Perth appeared for the applicant, Dominion Mining Limited; and Mr B.J.Hess of counsel assisted by Mr Greg Munt, patent attorney, of Griffith Hack and Co, Melbourne appeared for the opponent, Technological Resources Pty Ltd

STATEMENT OF GROUNDS AND PARTICULARS
In summary, the statement of grounds and particulars states the following:
.	The invention is not a patentable invention because it does not comply with Section 18(1)(a) of the Patents Act 1990, in that the invention claimed is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies because the complete specification does not disclose an inventive idea or step having regard to any one or more of the disclosure of the specification and the common general knowledge in Australia before the earliest priority date of each claim, as referred to in the particulars of ground 3.
.	The invention is not a patentable invention because it does not comply with Section 18(1)(b)(i) of the Patents Act 1990 in that the invention claimed is not a patentable invention because the invention is not novel when compared with the prior art base as it existed before the earliest priority date of each claim of the specification.  The particulars refer to a number of prior art documents.

.	The invention is not a patentable invention because it does not comply with Section 18(1)(b)(ii) of the Patents Act 1990 in that the invention does not involve an inventive step when compared with the prior art base as it existed before the earliest priority date of each claim.  The opponent relies on the common general knowledge as it existed in Australia before the earliest priority date of each claim of the specification.  The common general knowledge relied on is:
	
•	flash smelting is sensitive to magnesia and other contaminants in nickel concentrates;
•	acid leaching of magnesia from nickel concentrates is one method of removing magnesia from nickel concentrates; and
•	acid leaching of zinc concentrates to reduce magnesia levels is an exact parallel to acid leaching of nickel concentrates to reduce magnesia levels.  In both cases, the zinc and nickel sulphides in the concentrates are substantially insoluble in the acid leaching conditions that are required to leach magnesia from the concentrates.
EVIDENCE
The opponent’s evidence in support consists of a declaration by Donald Richard Temple Hall, supporting declarations confirming publication dates in Australia, and accompanying exhibits, including prior art documents:

DRH-2	US,B, 3,991,159, Amax Inc (inventor: P B Queneau), “High Temperature Neutralisation of Laterite Leach Slurry”, (published 10 June 1977)
DRH-3	US,B, 3,804,613, American Metal Climax Inc (inventors: W P Zundel et al), “Ore Conditioning Process for the Efficient Recovery of Nickel from Relatively High Magnesium Containing Oxidic Nickel Ores”, (published 5 March 1975)
DRH-4 	EP, 475,308, Nisshin Steel Co Limited, (inventors: R. Nagabayashi et al), “Method of Treating Nickel Magnesium Silicate Ores”, (published 26 May 1992)
DRH-5	EP, 434503 Nisshin Steel Co Limited, (inventors: R. Nagabayashi et al), “Process for the Treatment of Nickel Magnesium Silicate Ores” (published 23 July 1991)
DRH-6	R Hirasawa & H Horita, Dissolution of Nickel and Magnesium from Garnierite Ore in an Acid Solution,” International Journal of Mineral Processing, 19 (1987) 273-284 (published 30 June 1987)
DRH-7	US,B, 4,118458, Robinson, “Separating Magnesium and Calcium from Mineral Mixtures Containing Zinc Sulphides” (published 28 November 1978)
DRH-8	J E Gorman, R F Pagel and E H Nenniger, “Pre-Leaching Zinc Concentrates at Amax’s Sauget Refinery”, Engineering and Mining Journal, 1976 (published 21 December 1976)
DRH-9	D O’Murchu, “Ore Processing at Tara”, Trans Inst Metal A94,(16 July 1985) A21-A28, January 1985 (published 3 June 1985)

The applicant’s evidence in answer consists of declarations by Gary Donald Johnson, Geoffrey Mayfield Motteram, Philip Clive Lockyer, Gary Thomas Lonsdale, Gavin Sidney Milroy Becker and accompanying exhibits.
The opponent’s evidence in reply consists of a declaration by Donald Richard Temple Hall 
THE SPECIFICATION
The specification is directed to the processing of nickel ores, in particular, “a method of processing intermediate nickel-bearing products to produce an upgraded nickel product having a reduced MgO and/or MgO/SiO2 content” to avoid difficulties in later processing of ores with initially high MgO and MgO/SiO2 levels, of which the normal beneficiation processes, such as flotation, provide inadequate reduction.  Excessively high levels result in cost increases during smelting.  The term “intermediate nickel-bearing products” refers to the various nickel bearing products that are produced at different stages within a nickel processing plant, in particular, nickel sulphide flotation concentrates and  nickel calcine, such as nickel iron oxide calcine produced during roasting of the sulphide concentrates.  The independent claims as amended by amendments allowed on 9 August 1996 are as follows:
.	A method of processing intermediate nickel bearing products derived from sulphide ores, said method comprising subjecting the intermediate nickel bearing products to an acid leach in order to dissolve substantially all acid soluble magnesium bearing minerals contained therein to provide an upgraded nickel bearing residue and a leach solution.
12.	A method of processing nickel sulphide concentrates, said method comprising extracting rock from a nickel ore body, subjecting the extracted rock to normal beneficiation processes, said beneficiation processes including crushing, grinding, flotation and thickening, to produce a nickel sulphide flotation concentrate, and subjecting the nickel sulphide flotation concentrate to an acid leach using sulphuric acid in order to dissolve substantially all of the acid soluble magnesium bearing minerals contained therein to provide an upgraded nickel concentrate residue and a leach solution.
13.	A method of processing nickel iron oxide calcine produced after roasting of an upgraded nickel concentrate residue, said method comprising subjecting the nickel iron oxide calcine to an acid leach with sulphuric acid, the upgraded calcine residue providing a calcine having a higher nickel concentration and a lower MgO/SiO2 concentration than the feed nickel iron oxide calcine.
SUBMISSIONS
Both Mr Hess and Mr Caine made lengthy submissions which I refer to, as appropriate, in the body of my decision.
DECISION
Priority dates
Mr Hess for the opponent questioned whether 7 June 1991 should be accepted as the earliest priority date for the claims.  The application is associated with provisional applications filed on 7 June 1991 and 13 March 1992.  I find the invention as claimed in the specification as amended is fairly based on these provisional applications and the invention as claimed in claims 1 to 6, 8 to 12, and 16 is entitled to an earliest priority date of 7 June 1991 and in claims 7, 13 to 15, and 17 to an earliest priority date of at least 13 March 1992.
Evidence not in reply or evidence falling outside the particulars
The applicant has submitted that certain matters raised in the opponent’s evidence are either outside the scope of the particulars or not properly in reply.  I have not decided whether or not these matters are admissible as relying on these matters would not change my decision.
The declarants
In this case the relevant technology field is processing nickel sulphide ores to make them suitable for smelting.  At the priority date the various declarants had all had considerable experience in nickel processing continuing up to the earliest priority date, except for Mr Lonsdale whose experience was all prior to 1981.  Mr Hall has qualifications in metallurgy and over 20 years experience in the nickel industry all with Western Mining Corporation (WMC) except for the years 1968-71 in which he worked in the nickel industry in Canada.  Messrs Johnson and Motteram have qualifications in metallurgy, Mr Lockyer in metallurgy and mining engineering, Mr Becker in metallurgy and mining, and Mr Lonsdale in mining.  Except for Mr Hall, their experience in the nickel industry in Australia includes but is not limited to experience in WMC.  Mr Lockyer has over 20 years experience in the nickel industry, primarily in mining.  He had several years of broader operational responsibilities with WMC leading up to 1991.  Messrs Becker and Motteram are co-inventors.
“The person skilled in the art”
The opponent has proposed that the technical personnel of WMC were “the persons skilled in the art” prior to 7 June 1991. While it could conceivably be true that, as a matter of fact, all the persons who happened to have the knowledge required of the hypothetical non-inventive person skilled in the art also happened to work for WMC, it is what they are expected to know, ie the common general knowledge in the relevant field and no more, that determines the requirements for the hypothetical person skilled in the art, not where that knowledge may have been acquired.
Although it is clear that WMC has both a significant position in the industry in Australia and substantial expertise, it was not, before the earliest priority date, the only party with current or past interests in mining nickel sulphide ore bodies.  This is clear from the work histories of the declarants and the substance of their declarations.  In addition, as discussed below,  some at least of the knowledge of the technical personnel of WMC is neither common general knowledge nor even publicly available.  Thus I cannot find as proposed by the applicant that the “technical personnel of WMC were the “persons skilled in the art” nor that the knowledge of those who work in nickel processing in WMC in Australia is thereby entitled to be considered as common general knowledge.
Section 40
There is a possible interpretation of the claims that the starting materials, ie the intermediate nickel bearing products derived from sulphide ores, are not limited to ones which include soluble magnesia contamination.  The results which define the process claimed are the dissolution of soluble magnesia to leave an upgraded nickel bearing residue.  This result would not be achieved by applying the process of the invention to a starting material which did not include soluble magnesia contaminants.  Consequently, in accordance with the principles of construction set out in Decor Corp v Dart Industries 13 IPR 385, I have construed the starting materials as necessarily including soluble magnesia contaminants.
Publicly available knowledge
The opponent has presented evidence of publicly available knowledge, forming part of the “prior art base” as required by S.18(1)(b) of the Patents Act 1990, ie. information publicly available either in a document or through the doing of an act, in the form of published documents and in the form of declarations made by Mr Hall.
Queneau, Zundel, Hirasawa, Robinson, Gorman and O’Murchu were published before the earliest priority date.  These documents are clearly publicly available. However, the two Nagabayashi documents were published after the earliest priority date of claims 1 to 6, 8 to 12, and 16, although one of them, DRH-5, the second Nagabayashi document, was published before 13  March 1992,  the earliest priority date of claims 7, 13 to 15, and 17.   I will not further consider the first Nagabayashi document.
The opponent’s case is further based on information, reported by Hall in paragraph 26 of his first declaration, which comes from the records of WMC and was contained “in a number of documents  that report the results of research work”: two inter-office letters from the USA reporting some related/relevant research work; two internal memos; a research project monthly report; and a report from the G K Williams Co-operative Research Centre.
The opponent has asserted that WMC personnel are members of the public and that information known to any member of the public constitutes publicly available knowledge irrespective of whether or not any fetter of confidence existed.  However the established precedent excludes from being publicly available, information which is subject to a fetter of confidence.  This was conveniently stated by Drummond J. in Stanway Oyster Cylinders v Marks (1996) AIPC 91-255 as follows: “The concept of information being “publicly available” involves, in addition to its being accessible to the public, that a person to whom the information is disclosed in that person’s capacity as a member of the public is free, in law and equity, to make use of the information.”  Megarry J. in Coco v A N Clark (Engineers) Ltd (1969) RPC 41 at 48 stated: “It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose on him the equitable obligation of confidence.”
There must be a strong presumption in the commercial environment of a large mining company that the information in these documents, which relates to research being carried out by and for the company, would be considered confidential in nature and that any employee who did have access to these documents would reasonably consider himself to be under at least an implied fetter of confidence.  The declarations of Johnson, Lockyer , Motteram , and Becker, who have all worked at WMC, support this presumption of confidentiality with regard to the treatment within WMC of documents of the kind reported by Hall in paragraph 26 of his declaration.  Hall has made no statement as to whether or not his or other employees’ knowledge of the documents was to be considered to be in confidence.  In fact the opponent has argued that such a fetter is irrelevant.  On balance, I find that there is insufficient evidence to find that the information contained in these documents, ie the documents described by Hall in paragraph 26 of his declaration, is publicly available; and consequently, it does not constitute part of the prior art base against which novelty and obviousness may be determined.
From Hall’s declarations as a whole it is clear that WMC considered some form of acid leaching process as a solution to the magnesia problems of the Mt Keith ore body, and carried out some test work in 1974, 1975, 1976, and 1990-91.  The work is described as research work.  Mr Hall has stated in his first declaration that this was well known in WMC, somewhat qualified in his second declaration by the statement that, “At the priority date of 7 June 1991 I worked in technical areas where knowledge of options for reducing magnesia contamination was relevant, and I was aware and I believe other technical persons employed by WMC were also aware that acid leaching was one option for removing acid soluble magnesium, such as magnesia, from nickel sulphide concentrates.“  He has not stated whether it was free of any fetter of confidence.
In addition, Mr Lockyer has stated that he did not know of it even though in 1990 he had responsibility “to consider the Leinster mine and its magnesia problems”(para 7).
I note that in the context of WMC’s knowledge of acid leaching, Mr Hess made reference to Section 119 of the Patents Act 1990, which deals with the issue of infringement exemptions and allows a prior user to continue to use the process after grant without infringing.  The existence of this section, however, merely confirms that a patent may validly be granted notwithstanding that there may have been prior use which not being public in nature did not otherwise prevent the grant of the patent.
I find that there is insufficient evidence to conclude that the knowledge gained within WMC of the possible use of acid leaching as a solution to the problem of excessive levels of magnesia in nickel sulphide ores was publicly available before the earliest priority date of the application.
Lack of novelty
The generally accepted test for novelty is the “reverse infringement test” as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) 137 CLR 228 at 235 where Aickin J. stated:
	“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
In Nicaro Holdings v Martin Engineering, 91 ALR 513 at 517, Lockhart J. approved this and further stated:
	“It is well established that the prior art must disclose all the 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 to practically 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.”
As discussed above, the only information shown by the evidence to be publicly available at the earliest priority date is that disclosed by the Queneau, Zundel and Hirasawa documents (treatment of nickel laterite ores), the Robinson, Gorman and O’Murchu documents (treatment of zinc sulphide ores) and the second Nagabayashi document for claims 7, 13 to 15, and 17.  Before amendment the claims encompassed the treatment of any nickel ore.  As now amended, they are limited to “processing of intermediate nickel bearing products derived from sulphide ores”.
The Queneau, Zundel and Hirasawa documents disclose a process in which both the magnesia contaminants and the desired nickel are leached into solution, from which the nickel is later separated.  The second Nagabayashi document also discloses a process in which both the magnesia contaminants and the desired nickel are leached into solution, from which the nickel is later separated.  Clearly, they do not disclose the essential feature of the invention of selective leaching of the magnesium bearing minerals leaving an upgraded nickel bearing residue.  They also do not envisage treatment of nickel sulphide ores.
The Robinson and Gorman documents disclose selective leaching of magnesium, inter alia, from physically pre-concentrated zinc sulphide ores with very little dissolution of zinc sulphides; and the O’Murchu document discloses selective leaching of magnesium and calcium from zinc sulphide concentrates.  These documents do not envisage application of this process to products derived from nickel sulphide ores and so do not disclose all the essential features of the invention claimed.
I find that the ground of non-compliance with Section 18(1)(b)(i) of the Patents Act 1990 has not been made out.
Common general knowledge
In Minnesota Mining & Manufacturing Co et al v Beiersdorf (Australia) Ltd 144 CLR 253 at 292, Aickin J. stated:
	“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements on old, and it must be treated as being used by individuals as a general body of knowledge.’

In the statement of grounds and particulars the opponent asserts that at the earliest priority date certain items of information were common general knowledge:
Flash smelting is sensitive to magnesia and other contaminants in nickel concentrates
All the declarants agree, either explicitly or implicitly, that it is well-known that high magnesia levels in nickel sulphide ores create problems in smelting.  Thus I find that this statement is common general knowledge.
Acid leaching of magnesia from nickel concentrates is one method of removing magnesia from nickel concentrates
Acid leaching of laterite ores was certainly known.  However, the nickel in laterite ores is dissolved together with the magnesia in the leaching process.  This is accepted by the declarants as quite a different process from the selective leaching of magnesia from intermediate nickel bearing products derived from nickel sulphide ores.
Hall has stated that before the earliest priority date it was “well-known to WMC technical personnel that acid leaching of soluble magnesium bearing minerals from nickel sulphide concentrates......was one of several options for minimising the problem of magnesium contamination.“  From the evidence it appears that this was known to some WMC technical personnel but the circumstances surrounding the acquisition within WMC of this information do not suggest that it was common general knowledge, or even widely known.
The possible use of acid leaching was the subject of a number of research projects.  Although the specific internal correspondence on the matter spans a long period (1974 to 1991), there is no evidence that these documents or their contents were freely available to personnel in the company. In their evidence, Lockyer, Johnson, and Motteram state that although they were aware of magnesia problems in some of WMC’s operations, they had no knowledge of acid leaching being a possible solution.  I note that these declarants were not all employed by WMC at the time the projects were taking place; and also Hall’s comments in his second declaration that Lockyer had “primarily a mining involvement” and that it was “quite understandable that he would not have had exposure to technical options at the development stage.”  However  Lockyer (see para 7 of his declaration) had responsibility in 1990 “to consider the Leinster mine and its magnesia problems”.  If such a possible solution was, in fact, common general knowledge it seems likely that Lockyer would at least have been made aware of it
In any case, even if the information had been available, there is no evidence that any of the technical personnel who might have had this information would have considered themselves free to make that information public, let alone that the information was part of the common general knowledge in the field.  As discussed above, the relevant correspondence would have been treated as confidential and thus not even publicly available
With respect to knowledge of the suitability, or possible suitability, of acid leaching outside WMC, Becker, Motteram and Lonsdale state that, to their knowledge, acid leaching was not considered in dealing with the problem of high magnesia content in a number of other nickel sulphide deposits.  The accepted approach was to modify the flotation process.  Becker states that feasibility studies at Dominion from 1989 to early 1991 were directed at traditional flotation technology using gangue suppressants and that “none of the consultants suggested that the use of an acid leach was a possible or preferred enhancement for the Yakabindie project.”  Even in 1990 and up to 22 April 1991, newspapers were reporting that the magnesia problems in the nickel sulphide deposits at the Mt Keith mine, then owned by Australian Consolidated Minerals and Outokumpu Oy, had not been solved.(Exhibit GSMB-1).
On the basis of the evidence presented I find that at the earliest priority date it was not common general knowledge in Australia that acid leaching was a suitable method for reducing the magnesia content of nickel sulphide concentrates.
Acid leaching of zinc concentrates to reduce magnesia levels is an exact parallel to acid leaching of nickel concentrates to reduce magnesia levels
In the evidence in support, Hall states that: “the use of acid leaching has been widely used in the mining industry for many years before the earliest priority date of 7 June 1991 as a means of dissolving acid soluble materials (including minerals) in ores and concentrates and other products of the mining industry.”  In particular, as disclosed in the Robinson, Gorman and O’Murchu documents, “The use of acid leaching to remove magnesium bearing minerals from zinc sulphide ores was known in Australia before the priority date of 7 June 1991.”  He also states that there are many similarities between zinc sulphide ores with magnesium impurities and nickel sulphide ores with magnesium impurities, the most pertinent similarities being that the zinc and nickel sulphides are “not acid soluble” and, in both cases, the “acid soluble magnesia is acid soluble”.  However he does not state when these similarities were first recognised, or by what means.
Johnson states that he, himself, had never looked to zinc processing for a solution, and believed that this would not be common practice in the nickel industry.  Lonsdale who had worked in the zinc industry and was well aware of acid leaching of magnesia from zinc sulphides, in which the magnesia was dolomitic and widely known to be soluble, states that he would not have considered acid leaching of magnesia from nickel sulphide ores.  (I note that his experience in nickel mining was all prior to 1981.)  Motteram would not have looked to these documents because they referred to soluble dolomite impurities in the zinc sulphide ores whereas he believed that the impurities in the nickel sulphide ores were insoluble silicates.
In addition, Johnson, Becker and Motteram all state that there are substantial and many dissimilarities between the types of deposits in which base metals are found, and particularly between the processes for recovering the base metals from the deposits.  They agree that this makes it difficult to draw parallels between the methods used for one base metal from one ore deposit and another base metal from another ore deposit and that only trials will show what will work and what will not.
From Hall’s declarations it is clear that WMC considered some form of acid leaching process as a solution to the magnesia problems of the Mt Keith ore body, and carried out some test work in 1974, 1975, 1976, 1990-91.  However the evidence does not show that this knowledge was publicly available, nor does it show that use of this process would have been obvious to a non-inventive skilled worker in the field.  The work is described as research work carried out by or for WMC.  This indicates that it was more than the routine trials that could be expected of a non-inventive skilled worker.
On the basis of this evidence I find that it was not common general knowledge that acid leaching of zinc concentrates to reduce magnesia levels is an exact parallel to acid leaching of nickel concentrates to reduce magnesia levels
Notwithstanding that the opponent’s particulars limit the common general knowledge relied on to these items, it is worth considering the process of acid leaching, in general.  From the evidence as a whole it appears that acid leaching, in general, is a process, or group of processes, with which many in the industry are familiar, at last in broad terms.  I will refer to this later.
Hall has also asserted in his evidence in support that “it was well known to WMC technical personnel that, unlike nickel oxides, nickel sulphides are generally not acid leachable at low acid strengths and therefore acid leaching of nickel sulphide concentrates would remove only small amounts of nickel.”  However, as discussed above, knowledge of WMC personnel is not necessarily common general knowledge and there is no evidence of this outside WMC.
Inventive step
The test for obviousness as stated by Aickin J. in Wellcome Foundation v V R Laboratories (Aust) Pty Ltd (1981) 148CLR 262 at 286 is:
	“ What is important is that the patent itself should involve an inventive step, whether or not it was consciously taken by the patentee and whether or not it appeared obvious to the patentee himself.  The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The Act requires that an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with information that the skilled person could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.  In the statement of grounds and particulars the opponent has limited its case to common general knowledge.
Thus I must consider whether the invention is obvious in the light of the common general knowledge in the art.  The only item so proposed which I have found to be common general knowledge is that “Flash smelting is sensitive to magnesia and other contaminants in nickel concentrates.”  It is a long step from this, in effect a statement of the problem, to the solution embodied in the invention claimed and, clearly,  the solution would not be merely a matter of routine for the non-inventive skilled worker in the art.  I find that the invention is not obvious in the light of this common general knowledge.
Notwithstanding that the opponent’s particulars for this ground are limited to specific items of common general knowledge, from the evidence as a whole it appears that acid leaching, in general, is a process, or group of processes, with which many in the industry are familiar, at last in broad terms.  It is worth considering whether it would be obvious to apply the general process of acid leaching to the reduction of magnesium contamination in concentrates from nickel sulphide ores; or even one of the particular forms of acid leaching disclosed in the published documents.
The Queneau, Zundel and Hirasawa documents disclose acid leaching of nickel laterite ores, which is quite a different process from that used for the sulphide ores.  None of the evidence suggests that it would have been obvious to apply this process to nickel sulphide ores.
The Robinson, Gorman and O’Murchu documents relate to acid leaching of acid soluble magnesium from zinc sulphide ores.  In his evidence in support Hall states that at the priority date, “successful acid leaching of magnesium bearing minerals from zinc sulphide ores and concentrates indicated to me that acid leaching of magnesium bearing minerals from nickel sulphide concentrates and other intermediate nickel-bearing products would also be successful.”
However, the declarants in the evidence in answer are consistent that they would not have considered the process disclosed by these documents as relevant to solving the problem of excessive magnesia contamination in nickel sulphide ores.  Johnson states: “From my own experience, it would not be common practice for a skilled person to specifically look at the zinc industry for a solution to a particular problem in the nickel industry.” and  “The downstream processing referred to in at least two of the documents is of the roast/leach/electrowin type which causes the acid leach to be conducted for various reasons.  However the downstream processing of the invention is smelting which causes different concerns.”
Motteram would not have considered such a process because his “earlier training indicated....that the MgO contamination in nickel sulphide concentrates stems from the host rocks being magnesium silicates which are insoluble under mild acid conditions.”  Johnson states that: “It would not have been obvious that the gangue minerals actually present in the particular mineral concentrates were readily soluble in acid.”
Becker states that in investigating the Yakabindie nickel deposit “which suffers from relatively high levels of magnesia contamination” none of the consultants suggested that “the use of an acid leach was a possible or preferred enhancement.”
Lonsdale who had worked in the zinc industry and was “aware of the useability of acid leaching in relation to zinc concentrates” states that it was not obvious to him to consider adopting this in nickel processing.
Thus even if the Robinson, Gorman and O’Murchu documents had been found, on the evidence, only Hall would have considered them relevant.  However Hall already had knowledge of testing carried out prior to this by WMC, knowledge which I have already found was not publicly available.  On balance I find that the person skilled in the art would not have considered these documents relevant.
As discussed above, although there may be similarities between ores from different sources, there are also significant and often many differences between them.  The evidence is insufficient to show that the person skilled in the nickel processing art would have considered that either acid leaching in general, or the processes disclosed in the published documents, would have been relevant to solving this particular processing problem of nickel ores.
If they had considered them relevant I would have to ask whether the non-inventive skilled person faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not. [ See Wellcome (supra).]
The opponent has submitted that the “only discovery is the composition of the ore body and that the invention is “merely a well-known process transferred without any difficulty from one mineral to another, only requiring the usual investigations to determine ore composition”.  In the evidence in reply, Hall states: “Before the priority date of 7 June 1991, (and now), it was a matter of routine as a part of the process of evaluating an ore body to determine the mineralogy, chemical and other characteristics of an ore body and to consider the processing options in relation to these characteristics.  Thus determining that the magnesia was present in an acid soluble form in nickel sulphide ore body and concentrates formed from that ore body would have been a matter of routine.”  Accepting that it is routine to test an ore body, the evidence does not make it clear that it would have been merely a matter of routine to test ore bodies of the particular type in question for the particular property of solubility of their magnesia component in acids which would cause minimal dissolution of the nickel sulphide component.  There has been no clear evidence presented as to what are the “usual investigations” in such a case.  There are many possible tests that may be used.  The properties of different ore bodies even when there are significant similarities may, and frequently do, also have many and significant dissimilarities.  There is insufficient evidence to show that it would have been obvious to test for these particular solubility effects.  Without the results of this testing, even had the acid leaching process as applied to zinc sulphides been suggested,  I find that the application of this process to nickel sulphide ores would not have been obvious.
I find that the ground of non-compliance with Section 18(1)(b)(ii) of the Patents Act 1990 has not been made out.
Manner of new manufacture
In Commissioner of Patents v Microcell 102 CLR 232 at 251 the court found:
	“We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purposes of which its known properties make the material suitable.  A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do.”
In their particulars for the ground that the invention as claimed is not a manner of manufacture because the specification does not disclose an inventive step, the opponent relies on the disclosure of the specification and the common general knowledge in Australia before the priority date of the claims.  The opponent has submitted that the claims are directed to no more than the working of a known process, namely ore treatment by acid leach, to produce a known result, namely residue plus dissolved product in the leach solution.
In discussing the prior art, the specification makes no mention of the use of acid leaching.  Consequently, I again find, in accord with my findings above under inventive step, that the invention would not have been obvious in the light of the proven  common general knowledge and the disclosures of the specification.
However, notwithstanding that the opponent’s particulars for this ground are limited to the disclosure of the specification and this common general knowledge, it is worth considering whether  the application of known acid leaching processes to the reduction of magnesium contamination in concentrates from nickel sulphide ores constitutes a manner of manufacture.  The decided cases show that “known” in this context is not limited to matter which is common general knowledge.  See Werner v Bailey (1989) 13 IPR 513, Grace v Asahi (1993) AIPC 90-974 and Philips V Mirabella 32 IPR 449.  The decision in Ramset Fasteners(Aust) Pty Ltd v Advanced Building Systems Pty Ltd  (1996) 34 IPR 256 indicates that knowledge which is merely publicly available may also, in some circumstances at least, be taken into account.
From the evidence as a whole it appears that acid leaching, in general, is a process, or group of processes, with which many in the industry are familiar, at least in broad terms.  Lonsdale knew of it and has confirmed that the use of selective acid leaching of magnesia from zinc sulphide ores, as disclosed in the Robinson, Gorman and O’Murchu documents, was known in the zinc industry.  Hall and perhaps some other WMC personnel also knew of it
The question is then whether or not there was nothing more than the use of a known process for a purpose for which its known characteristics make it suitable or whether there was an inventive step in applying the broadly known process of acid leaching to treating nickel sulphide ores, to achieve the particular result.  Lonsdale has declared that he was unaware of the solubility of the magnesia impurities in the nickel sulphide ores, that it did not occur to him that “an acid leach would be a suitable solution to the problem” and that he would not have considered it obvious to adopt the process of acid leaching of zinc sulphides to nickel sulphides.  Again I note that his experience in nickel processing was somewhat dated.  Hall already had knowledge of related testing carried out by WMC, knowledge which I have already found was not publicly available.  He was thus not in a position to conclude objectively whether or not the hypothetical skilled addressee would have considered this obvious.  On the evidence available I must find that it is not obvious that this particular form of acid leaching would be useful in dealing with this particular processing problem of nickel ores, and thus I find that the invention does involve an inventive step and is a manner of manufacture.
I find that the ground of non-compliance with Section 18(1)(a) of the Patents Act 1990 has not been made out.

CONCLUSION

I have found that none of the grounds of opposition have been made out and that the opposition fails.  I dismiss this opposition and I direct that the application proceed to sealing, subject to any appeal being filed against this decision.

COSTS

Both parties submitted that costs should follow the event, but if there were any special aspects requested an invitation to put submissions in writing.   I consider that there were no special aspects requiring  written submissions and have not requested any.  In actions before the Commissioner costs usually follow the event and I find no reason to vary that in this case.  I have found in favour of the applicant, Dominion Mining Limited on all grounds.  I therefore award costs against the opponent Technological Resources Pty Ltd.

W. Gunawardana
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :  Wray & Associates, Perth
Patent attorneys for the opponent   :  Griffith Hack and Co, Melbourne