Aspirating IP Limited v Vision Systems Limited

[2008] APO 32

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 689484 in the name of Aspirating IP Limited

Title:          Smoke Detection System

Action:          Final determination of an opposition under section 59 by Vision Systems Limited

Decision:          Issued 10 December 2008 .

Abstract

By decision made on 2 March 2005, a Delegate of the Commissioner found that claims 1 and 3 of patent application 689484 lack inventive step, and that claim 5 was not in accordance with section 40 of the Act.  The applicant filed a notice of appeal in the Federal Court in relation to that decision.

The specification was amended, but claims 1 and 3 are in the same form that the Delegate found to lack inventive step.

Patent application number 689484 together with each and every one of claims 1 to 20 is refused.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 689484 by Aspirating IP Limited, and the final determination of an opposition under section 59 by Vision Systems Limited

DECISION

1. By decision made on 2 March 2005, a Delegate of the Commissioner found that claims 1 and 3 of patent application 689484 lack inventive step, and that claim 5 was not in accordance with section 40 of the Act (Airsense Technology Ltd v Vision Systems Ltd (2005) 65 IPR 120). The applicant has filed a notice of appeal in the Federal Court in relation to that decision (SAD 59 of 2005).

2. The Delegate allowed the applicant 60 days from the date of the decision to make suitable amendments.  Amendments were proposed by the applicant, and allowance was advertised in the Official Journal on 26 October 2006.

3. I note that the specification in its amended form has 20 claims.  Claims 1 and 3 are in the same form that the Delegate found to lack inventive step.

4. The parties have agreed that they do not wish to be heard in the final determination.

5. I am unable to reconsider the decision already made regarding claims 1 and 3.  Matters which have already been decided by the Commissioner cannot be reconsidered (R v Smith;Ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340). Despite the amendments to the claims, the continuing existence of claims 1 and 3 in the same form as before the Delegate requires that the application must be refused.

6. The parties have agreed that it is not necessary to consider whether there are any objections to the remaining claims 2 and 4 – 20.

7. I therefore make a final determination that patent application number 689484 together with each and every one of claims 1 to 20 is refused.

8. I make no award of costs in relation to this final determination.

   Dr S.D.Barker
   Delegate of the Commissioner of Patents

   10 December 2008

   Patent attorneys for the applicant       :          Lesicar Perrin

   Solicitors for the applicant              :          Griffith Hack

   Patent attorneys for the opponent       :          Davies Collison Cave

   Solicitors for the opponent              :          Davies Collison Cave