BHP Billiton Iron Ore Pty Ltd

[2014] APO 32

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

BHP Billiton Iron Ore Pty Ltd [2014] APO 32

Patent Application:                   2007203396

Title:Deformable/inflatable wear liner

Applicant:  BHP Billiton Iron Ore Pty Ltd

Delegate:  Dr N. R. Madsen

Decision Date:  27 May 2014

Hearing Date:  Written submissions were due by 8 May 2014, but were not filed

Catchwords:  PATENTS – re-examination – lack of novelty and inventive step – application refused

Representation:  Patent applicant:  Freehills Patent Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2007203396

Title:Deformable/inflatable wear liner

Applicant:  BHP Billiton Iron Ore Pty Ltd

Date of Decision:  27 May 2014

DECISION

I refuse patent application 2007203396.

REASONS FOR DECISION

1. The application was filed on 20 July 2007 by Alcan International Limited and has an earliest priority date of 19 July 2007.  Alcan International Limited requested examination on 15 March 2011 after which time the application was subject to one examination report before being accepted on 16 August 2012.  A Notice of Opposition was filed on 30 November 2012 by BHP Billiton Iron Ore Pty Ltd, followed by a Statement of Grounds and Particulars on 28 February 2013.  No evidence was filed by the opponent and the opposition was withdrawn on 21 August 2013.

2. On 22 August 2013 a request for the recording of an assignment was filed, accompanied by a copy of an assignment document.  The assignment was processed and the application now proceeds in the name of BHP Billiton Iron Ore Pty Ltd.

3. After withdrawal of the opposition, an examiner reviewed the Statement of Grounds and Particulars and discovered prior art that in his opinion gave cause for re-examination under Section 97(1).  The examiner subsequently issued a re-examination report containing objections under novelty and inventive step.  Three prior art documents were raised as depriving the claims of novelty and/or inventive step.  There were CA 1185546 (D2), GB 688698 (D3), and JP 7-109013 (D4).

4. The report indicated that the applicant had two months to respond, otherwise proceedings for refusal may be initiated.  As no response was filed, a senior examiner informed the applicant that a hearing would be conducted based on written submissions, and the applicant was allowed one month to file submissions or propose amendments.  No submissions or amendments were received.

   Novelty

5. The re-examination report discusses the disclosure of each of the documents and indicates that claims 1-3, 8, 9, 14, 15 and 17-19 lack novelty in view of documents D2 and D3, while claims 1-3, 8, 14, 15 and 17-19 lack novelty in view of document D4.  I have reviewed the examiner's report, and I agree that the novelty objections are appropriately raised.

6. Thus claims 1-3, 8, 9, 14, 15 and 17-19 lack novelty.

   Inventive step

7. The re-examination report discusses that the claims also lack an inventive step.  I note that the report does not discuss whether the documents would have been ascertained, understood and regarded as relevant.  As each of the documents is a patent document dealing with the same technical issues as the claimed invention I am satisfied that they would prima facie have been ascertained by a person skilled in the art.  Similarly I see no reason why the skilled addressee would not have understood and regarded the documents as relevant.

8. Thus claims 1-3, 8, 9, 14, 15 and 17-19 lack an inventive step by way of disclosure as discussed above in regard to novelty.

9. The re-examination report discusses that remaining claims found novel in view of D2, D3 and D4 lack an inventive step as they contain features that could be found by routine trial and error.  I have reviewed the examiner's report, and I agree that the inventive step objections are appropriately raised.

10. Thus claims 1-19 lack an inventive step in view of each of D2, D3 and D4.

    Conclusion

11. The claims lack novelty and/or inventive step in the light of each of three prior art documents.  The applicant has not proposed any amendments, and has not provided any submissions for consideration.  I conclude that the applicant has lost interest in the application.  Consequently there are no reasonable prospects that amendments would be filed, so I do not consider it necessary to consider whether to direct amendments.  I will refuse the application.

    Dr N. R. Madsen
    Delegate of the Commissioner of Patents