Breezway Australia (Holdings) Pty Ltd - [2012] APO 90

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Breezway Australia (Holdings) Pty Ltd [2012] APO 90
Patent Application: 2010246569

Title:An Automated Window System

Patent Applicant:  Breezway Australia (Holdings) Pty Ltd
Delegate:  Ed Knock
Decision Date:  9 August 2012
Hearing Date:  6 June 2012
Catchwords:  PATENTS – examiner objection – inventive step – whether prior art could be ascertained – whether PSA would search patent documents – whether patents of a different technology would be searched – prior art held not ascertainable – inventive step objection not sustained – amendments allowed – application accepted

Representation: Patent applicant: Regan Gourley, Cullens, Brisbane

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010246569

Title:An Automated Window System

Patent Applicant: Breezway Australia (Holdings) Pty Ltd
Date of Decision: 9 August 2012
DECISION
The invention defined by claims 1 to 17 is novel and involves an inventive step and thus meets the requirements of subparagraph 18(1)(b) of the Patents Act 1990.
Furthermore I am unaware of any grounds upon which this application should be refused under subsection 49(2).
Under subsection 49(1) I accept the application.
REASONS FOR DECISION
This matter concerns examiner’s objections and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.
Background

Application 2010246569 was filed on 1 December 2010. It was filed as a divisional application of Australian patent application 2005312339. This parent application was filed under the provisions of the Patent Cooperation Treaty on 1 December 2005 as application PCT/AU2005/001811. It entered the national phase in Australia on 25 June 2007 and has proceeded to grant. It claimed priority from two Australian provisional applications dated 2 December 2004 and 20 April 2005, respectively. Parent application 2005312339 also begat one other divisional application, 2010246567 (which is thus a sibling application of the application in suit). Application 2010246567 has been accepted, and is currently under opposition.
The first of a total of six examination reports on this application issued on 15 February 2011, and thus the final date for acceptance of this application is 15 November 2012. This first report raised a single citation US 5413161 A (Corazzini) 9 May 1995 (D1), and the issues it raised were confined to novelty and inventive step. In response to the first report the applicant only filed some submissions, and did not propose any amendments to its application.
A second examination report was then issued, which once again was confined to novelty and inventive step, but which introduced a second citation GB 2396657 A (WILKINS) 30 June 2004 (D2). D1 continued to be a citation, but only for inventive step and only when combined with D2. As well, in the second report objection was taken to the novelty and inventive step of some claims on the basis of D2 on its own, and although these claims were amended slightly in the course of the examination procedure leading up to the hearing, an obvious problem persisted with these claims as they stood at the hearing. At the hearing Mr Gourley gave an…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Breezway Australia (Holdings) Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2012] APO 90
Decision Date: 9 August 2012

CaseChat Overview and Summary

The case involves Breezway Australia (Holdings) Pty Ltd, the patent applicant, and IP Australia, the Australian Patent Office. The dispute centers on the patentability of an automated window system invented by Breezway. The key issue is whether the invention claimed in the patent application meets the statutory requirements for novelty and inventive step as per the Patents Act 1990. Specifically, the application faced objections from the examiner regarding the inventive step based on prior art documents. The applicant argued that these prior art documents could not reasonably be expected to have been ascertained by a person skilled in the art (PSA), thereby negating the inventive step objection.

The court examined the submissions and statutory declarations provided by the applicant, which argued that the PSA would not conduct searches of patent documents and that even if they did, they would not find the cited prior art relevant. The court found that while the PSA is generally presumed to search patent literature, this presumption can be rebutted under certain circumstances. The court accepted that the PSA would not have considered the cited prior art relevant to the present invention, as it was outside the field of window systems and more related to window furnishings. Consequently, the court ruled that the cited prior art could not be reasonably expected to have been ascertained, and therefore, the inventive step objection was not sustained. The application was accepted based on the amended claims, which were found to be novel and to involve an inventive step.

Orders