Sorting Mined Ore Not A Mere Scheme: And Other Lessons In Patentable Subject Matter

• Published date: 05 May 2020
• Author: Mr Sam Mickan and Lily Brennan-Xie
• Law Firm: Davies Collison Cave

The Federal Court of Australia has allowed an appeal in favour of patent applicant and appellant Technological Resources Pty Ltd (a subsidiary of Rio Tinto) by dismissing an opposition decision of a Delegate of the Commissioner of Patents.

This case is of particular interest as it flies in the face of recent cases invalidating patents on the basis that they did not relate to patentable subject matter. Justice Jagot, accepting all of Technological Resources' submissions on this issue, found that the series of physical steps involved in its invention produced a 'physical and tangible result'. Therefore, they could not be described as a mere scheme, mere working directions, or a mere collocation of parts with no functional interdependence ' none of which are patentable. The claimed invention was, contrary to the finding of the Delegate, a manner of manufacture and therefore a patentable invention under s 18(1)(a) of the Patents Act.

Curiously, the respondent did not initially raise lack of patentable subject matter as a ground of opposition in the proceeding before the Delegate of the Commissioner. Rather, the Delegate exercised his power under s 60(3) of the Patents Act to take into account a ground of opposition not relied on by the opponent.¹

The invention

Claim 1 of Technological Resources' patent application (2011261171) was for a method of mining that included the following steps (with references in brackets to the Figure below):

1. mining ore;
2. reducing the size of the mined ore in a crushing step and producing a crushed ore having a primary crushed ore particle size (in high grade primary crusher circuit 3);
3. assessing the grade of successive segments of the crushed ore by direct assessment of grade as the crushed ore is transported along a pathway (at grade assessment assembly 5);
4. separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segment (at sorter 7 in the form of a splitter system); and
5. processing separated segments in a downstream processing plant and producing upgraded material.

Other claims related to an apparatus for separating a mined ore that carries out steps similar to (b)-(e).

Federal Court Appeal

Tom Cordiner QC and Clare Cunliffe, on behalf of Tettman (who is a registered patent attorney and is presumably acting as a straw man opponent on behalf of an anonymous third party)...