Case: E I Dupont de Nemours &amp; Co v Imperial Chemical Industries PLC (2002) 54 IPR 304; (2002) AIPC 97 788 [2002] FCA 230
Outcome: discussed
12 March 2002 Branson J delivered reasons for judgment in two proceedings: N1248 of 1999, which related to Patent Application No 658005 and N1249 of 1999, which related to Patent Application No 654176. Each was an 'appeal' against a decision of a delegate of the Commissioner of Patents. Du Pont was the 'appellant' in each case and ICI was the respondent in each case, ICI being the applicant for each patent and Du Pont the unsuccessful opponent in each case. Two 'appeals' were heard together and decided at the same time in the same set of reasons ( E I Dupont de Nemours &amp; Co v Imperial Chemical Industries PLC (2002) 54 IPR 304; (2002) AIPC 97 788; [2002] FCA 230). The description of the invention in the complete specification commences: 'The present invention relates generally to working fluid compositions contained in heat transfer devices which comprise the lubricant and a heat transfer fluid.' Branson J dealt with the claims as follows (at [22]): 'All of the claims defining the invention are concerned with a "working fluid composition". Claim 1 is the only independent claim . It is expressed as follows: "A working fluid composition comprising: (A) a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and (B) a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula: O | | R(O-C-R 1 ) n | | wherein R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol, or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol; each R 1 is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R 1 group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; and n is an integer." ' [emphasis added] On 19 December 2002 an examination report issued on the Divisional Application raising the following objection: '1. The invention defined by the claims lacks novelty in the light of:- AU 54480/90 (638710) to The Lubrizol Corporation This citation was ruled in the Federal Court judgment as rendering the parent of the current application not novel. It is noted that the specification of the current application is identical to the parent document. See E I DuPont de Nemours &amp; Co v Imperial Chemical Industries PLC [2002] FCA 230 in particular paragraphs 38 to 71. Note: In the light of the above the Commissioner is considering refusing this application under s. 49(2). You will be contacted early in the new year to arrange a date for a hearing into the matter.'