The description of the invention, and the clarity of the claims, was found to be adequate. The claimed invention was also found to be novel, have an inventive step and was for a manner of manufacture on the available evidence.

The opposition failed on all counts.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 757438 by Ceebron Pty Ltd and opposition under Section 59 of the Patents Act 1990 by Exago Pty Ltd.

BACKGROUND

Patent application 757438 in the name of Ceebron Pty Ltd (hereinafter referred to as Ceebron) was filed on 1 November 1999 by Donald George Richardson. The patent derives priority from provisional application PP6863, which was filed on 30 October 1998. The patent application was advertised accepted on 20 February 2003, and assigned to Ceebron on 20 August 2004.

Exago Pty Ltd (hereinafter referred to as Exago) filed notice of opposition on 19 May 2003, followed by a Statement of Grounds and Particulars on 19 August 2003. Exago’s evidence in support was filed on 19 November 2003, and after several unopposed extensions of time, evidence in answer was filed by Ceebron on 16 July 2004. The opponent advised in a letter dated 12 August 2004 that they did not intend to file any evidence in reply.

The statement of grounds and particulars lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990: paragraph 18(1)(a) (non-patentable invention), paragraph 18(1)(b) (novelty and inventive step) and section 40.

The matter was set down for a hearing on 14 December 2004. The applicant was represented by Mr Peter Heathcote, patent attorney of the firm Shelston IP, and assisted by Mr Matthew Ward, also of that firm. The opponent was represented by Mr Daryl Mischlewski, patent attorney of the firm IP Strategies.

THE SPECIFICATION

The invention relates to a method and apparatus for monitoring a consignment of goods as it moves along a distribution or supply chain. As background art, the specification refers to the use of reusable data loggers that are placed in perishable product consignments by the food and pharmaceutical industries. These data loggers are expensive and need to be returned to the shipper on consignment completion. Additionally, the data is not accessible until the data logger is read and this may be after a product recall or hold should have been triggered.

According to the specification on page 3, lines 13 to 16, the invention “will provide the advantages of being able to…

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.

Continue reading Ceebron Pty Ltd v Exago Pty Ltd

Details

AGLC: Ceebron Pty Ltd v Exago Pty Ltd [2005] APO 10
Case: [2005] APO 10
Decision Date: 11 March 2005

CaseChat Overview and Summary

In the case of Ceebron Pty Ltd v Exago Pty Ltd, the delegate of the Commissioner of Patents considered an opposition by Exago Pty Ltd against the patent application No. 757438 by Ceebron Pty Ltd. The invention related to a method and apparatus for monitoring a consignment of goods as it moved along a distribution or supply chain. The opposition was based on non-compliance with sections 18(1)(a), 18(1)(b), and 40 of the Patents Act 1990. The delegate of the Commissioner of Patents found that the description of the invention and the claims were clear and the invention was novel, had an inventive step, and was for a manner of manufacture.

The delegate first addressed the construction of the claims, finding that the terms "consignment", "disposable", "transmitting", and "maintaining" should be interpreted in their ordinary meaning. The term "maintaining" was not restricted to real-time updating of the database, as the specification indicated that the measurement of parameters could be continuous or at predetermined intervals. The delegate then rejected the contention that the specification failed to fully describe the invention, finding that the specification provided sufficient detail for a person skilled in the art to perform the invention.

As for novelty, the delegate found that none of the cited documents disclosed all essential features of the claimed invention, and the opponent's argument that the documents should be considered together failed. The delegate also rejected the opponent's argument of prior use, finding that the evidence was insufficient to prove that the claimed invention was publicly available before the priority date.

In considering the inventive step, the delegate found that the opponent had not provided sufficient evidence to show that the claimed invention would have been obvious to a person skilled in the art. Although the individual features of the invention were known, the opponent had not demonstrated that it would have been obvious to combine these features into the claimed method or apparatus.

Lastly, the delegate found that the claimed invention was for a manner of manufacture and was not merely a collocation of known integers. The invention involved a combination of features that were functionally dependent on one another, and there was no evidence presented to suggest that the claimed invention lacked a working interrelation between the integers.

In conclusion, the delegate of the Commissioner of Patents found that Exago's opposition failed on all counts, and the patent application No. 757438 by Ceebron Pty Ltd should be granted. Costs were awarded against the opponent, Exago Pty Ltd.

Orders