Are your claims supported
by your technical
contribution to the art?
The Federal Court of Australia in Cytec v Nalco 1 overturned a decision
by the Commissioner of Patents and confirmed that the Australian support
provisions require:
> an assessment of the technical contribution to the art disclosed
by the specification; and
> that the monopoly claimed be justified by that technical contribution.

The technology in issue related
to scale formation in alumina
factories. The ‘Bayer’ process is the
primary process by which alumina
is extracted from bauxite ore, and
is used to produce nearly all of the
world’s alumina supply. A major
problem during the process is
formation of sodium aluminosilicate
scale in process pipes, vessels, and
equipment. The patent application
was directed to methods for
reducing scale during the Bayer
process, involving use of certain
silane based small molecules.

Claim 1 recites:
“A method for the reduction of
aluminosilicate containing scale
in a Bayer process comprising the
step of: adding to the Bayer process
stream an aluminosilicate scale
inhibiting amount of a composition
comprising at least one small
molecule selected from…..”
The judge construed the claim,
owing to use of the term “at least
one”, as covering methods where
a composition comprising one or
a mixture of two or more silane
based small molecules is used
to reduce scale in the Bayer
process. In particular, the claims
covered use of a single silane
based small molecule.

The technical contribution
and lack of support
It was argued that the technical
contribution to the art disclosed by
the specification was the synthesis
of a reaction product mixture
by reacting an amine, an amine-
reactive silane compound and an
amine reactive hydrophobe to form
a mixture of silane-based small
molecules for reducing scale in the
Bayer process.

The judge considered that the
technical contribution did not extend
to use of a composition comprising
a single silane based small molecule –
there was no supporting disclosure of
the synthesis of any such composition
or any supporting disclosure of
isolating a single small molecule
from the complex reaction product
mixtures. And as such, the claims
were considered to lack support.

Impact for the patentee
It is not uncommon when seeking
patent protection to try and obtain
coverage for not only your lead
product, but variations of it so that
you have broad scope to continue
to develop your product or to keep
competitors out of the field.

However, it is becoming increasingly
difficult in Australia to claim such
variations, and the inclusion of
experimental data in the specification
is becoming more important to
support broad product protection.

It is important that the application
include data demonstrating that all
products claimed have the same
surprising, advantageous effect
or function that forms the essential
crux of any technical contribution
argument. At the very least, the
data should make it plausible
that the effect is shared across
the products claimed. Further,
the disclosure should teach the
skilled addressee how to obtain
all of the products claimed.

It is not uncommon
when seeking patent
protection to try and
obtain coverage for not
only your lead product,
but variations of it...

1 C ytec Industries Inc. v Nalco
Company [2021] FCA 970
Inspire December 2021
Background 3
Dr Danielle Burns | Principal
BSc(Hons) Phd MIPLaw
danielle.burns@pof.com.au