Asturiana De Zinc S.A. v OUTOKUMPU Oy

[1986] APO 16

In the Matter of the Patents Act 1952

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In the Matter of Application No. 483655 in the Name of ASTURIANA DE ZINC S.A.

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In the Matter of Opposition thereto by OUTOKUMPU OY.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         A notice of opposition to the grant of a patent on this application was lodged by Outokumpu on 6 December, 1977, and the matter was heard on 27‑29 July, 1982.  In the time between lodgement of the notice of opposition and the hearing, Asturiana lodged a request to amend the complete specification under the provisions of section 77, and the amendments were subsequently allowed.  The opposition was maintained with respect to the amended specification.
         The matter was heard in the form of a cross‑opposition since Asturiana had opposed Outokumpu's application 495156.  Asturiana's opposition was unsuccessful and Outokumpu's application was sealed on 21 August, 1985.
         The grounds of opposition relied upon at the hearing were those of prior publication, obviousness, novelty, non‑compliance with section 40 and prior claiming.  The opponent had further argued that the application should not be accorded the Convention priority date, and that the claims of the accepted complete specification claimed matter not in substance disclosed in the specification as lodged as a result of amendments made to the specification.
         In a decision dated 7 July, 1983, I found that the specification did not comply with the requirements of section 40 and that the invention as

claimed was prior published and prior claimed.  I allowed the applicant a period of 60 days from the above date within which to lodge a statement of amendments in response to the decision.
         On 3 August, 1983 an appeal against that decision was filed by Asturiana in the Supreme Court of NSW, and subsequently a cross‑appeal was filed by Outokumpu Oy.  All Supreme Court proceedings on the application were, however, terminated by 10 December, 1985.
         The applicant was then afforded a further 60 days from 24 December, 1985 to lodge a statement of proposed amendments.  A letter from Messrs. Griffith, Hassel and Frazer, patent attorneys for the applicant, dated 27 February, 1986, stated that the applicant did not wish to proceed further with the application.
Conclusion
         As no amendments were received within the time allowed, I accordingly refuse the application on the grounds that the specification does not comply with section 40 and the invention as claimed is prior published and prior claimed.
         I award any costs that have arisen since issuance of my decision of 7 July, 1983 against the applicant.

(J.L. ROVETA)