Scope of the Claims and Enablement – Has the Bar Been Raised too High?
Cytec Industries Inc. v Nalco Company  APO 4
In an opposition decision handed down on 16 January 2018, the Patent Office refused to allow a claim amendment that proposed to narrow the scope of a composition feature in a process claim by replacing a generic chemical structure with a list of more specific compounds, including compounds of formula LXVI and LXVII.
While the Delegate held: (i) the specification contained at least implicit disclosure of compounds of formula LXVI and LXVII, and (ii) the proposed amendment would fall within the scope of the claims as accepted, he refused the amendment on the basis it would result in a claim to matter that extends beyond that disclosed in the specification.
In taking that position the Delegate noted the scope of the claim embraced using only one compound of formula LXVI and LXVII in the composition, whereas the specification only disclosed using a mixture of compounds and provided no guidance on how to isolate LXVI or LXVII from that mixture. Despite the invention not in anyway being reliant on using a single compound (i.e. mixtures would suffice), the Delegate concluded the claim was not enabled across its full scope.
In this instance it seems the Patent Office has taken a strict and arguably over-meticulous approach to assessing whether a claim is enabled across its full scope. The decision raises concern in that its underlying rationale could extend to a situation whereby patent applicants find it extremely difficult, if not practically impossible, to satisfy enablement requirements across the full scope of the claims.
During opposition proceedings of Australian application 2012220990 initiated by Cytec Industries Inc., the applicant (Nalco Company) sought to amend claim 1 as accepted by deleting reference to a generic molecular structure and replacing it with individual structures derived from the subject matter in claims 4 to 13 as accepted and compounds (LXVI) and (LXVII) that were not previously claimed. That amendment was allowed.
The current opposition (again initiated by Cytec Industries Inc.) turned on the question of whether or not the addition of compounds (LXVI) and (LXVII) to claim 1 is an allowable amendment.
Before the proposed amendment, and as accepted, claim 1 was directed to:
A method for the reduction of aluminosilicate containing scale in a Bayer process comprising the steps of …… adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule … according to general formula:
Claim 1 as proposed to be amended read:
A method for the reduction of aluminosilicate containing scale in a Bayer process comprising the steps of … adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule, wherein the small molecule is selected from the group consisting of compounds (I) through (XIII), (XV) through (XXX), (XXXII) through (LVIII) and (LX) through (LXVII)…
Cytec Industries Inc. opposed the amendment on the grounds that, inter alia, as the result of the amendment, namely the introduction of compounds (LXVI) and (LXVII) to claim 1, the complete specification would fail to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
In assessing allowability of the amendment the Delegate considered whether compounds LXVI and LXVII were adequately disclosed in the specification as filed and held there was at least implicit disclosure of those compounds in the examples, albeit only as part of the complex mixtures in which they were produced.
The Delegate also acknowledged compounds LXVI and LXVII fell within the scope of claim 1 as accepted.
The key issue in the opposition turned on whether, as the result of the amendment, the complete specification would disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
Relevant to that point, the Delegate noted the scale inhibiting composition in question is only described in the specification as being prepared by reacting three components designated A, G and E. That reaction is said to provide for a product mixture that would include compounds (LXVI) or (LXVII).
The applicant argued that the claims related to an industrial process. Industrial grade products used in the process are rarely pure and it is commonplace to identify such industrial grade mixtures by reference to a single chemical name and/or structure. The claimed process and many similar industrial processes simply do not require the use of pure reagents.
Despite accepting that position, the Delegate held that: (i) as a result of the amendment the claim would embrace within its scope using a scale inhibiting composition containing only one of (LXVI) or (LXVII), and (ii) the specification only refers to isolating the product mixture, and that there is no worked example or disclosure for separating the individual component molecules, such as compounds (LXVI) or (LXVII), generated in the mixture.
The Delegate consequently refused the amendment on the basis it would result in a claim that was not enabled across its full scope.
Comments on the Decision
While consideration of enablement in the current decision is in the context of a proposed claim amendment, it will be interesting to see if and how the matter of enablement is addressed in the primary opposition (i.e. the claims as accepted also inherently embrace using a scale inhibiting composition containing only one compound).
More importantly, the decision raises concern that general application by the Office of the enablement principles enunciated here could result in patent applicants finding it extremely difficult, if not practically impossible, to satisfy enablement requirements across the full scope of their claims.
For example, it is commonplace for patent applicants to claim products and processes that comprise or use compounds X, Y and/or Z. Such claims would inherently embrace within their scope compounds X, Y and Z alone or in combination, with each of X, Y and Z being of up to 100% purity. Where applicable, such claims would also inherently embrace within their scope all isomeric forms of compounds X, Y and Z.
Applying the enablement assessment criteria adopted in the current decision, even if each of compounds X, Y and Z were exemplified in the specification alone and in combination, such claims would arguably still not satisfy enablement requirements across the full scope of the claim unless each and every other facet of the compounds (e.g. purity ranges, isomeric forms etc.) were exemplified or adequately disclosed. That outcome would be the same irrespective of whether the claimed invention had nothing to do with, for example, the purity or isomeric forms of compounds X, Y and Z. It will be appreciated patent applicants will typically not be in a position to exemplify/disclose a claimed invention in such exhaustive detail.
While Raising the Bar provisions (introduced in 2013) were intended to improve the standard of patentability of Australian patent applications, those provisions should nevertheless be applied pragmatically. The Delegate’s threshold for satisfying the enablement requirement in this decision seems in our opinion too high and far from being pragmatic.
Australian Courts have historically warned against adopting an over meticulous verbal analysis of claimed subject matter and favoured a purposive construction of the claimed invention having regard not only to the specification as a whole but also the art in which the invention resides. The current decision seems to have lost sight of those fundamental principles and it remains to be seen if the Patent Office has now raised the bar on enablement too high.