Diamond Scientific Company v CSL Limited

[1993] APO 8

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 614735 in the name of DIAMOND SCIENTIFIC COMPANY

Title             :    CANINE DISTEMPER VIRUS

Action:    Opposition to grant by CSL Limited. Request to amend the statement of Grounds and Particulars. Allowability of substitute statement filed following a previous decision.

Decision:    Issued            .  Certain amendments not allowable; further opportunity to file a new statement consistent with the decision.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 614735 by DIAMOND SCIENTIFIC COMPANY, opposition thereto by CSL Limited, and a request to amend the statement of Grounds and Particulars.

background

On 29 September 1992 I issued a decision in the matter of a request to amend a statement of grounds and particulars in this opposition. In that decision I gave the opponent 21 days to supply a statement of grounds and particulars consistent with that decision.

Events since that time are as follows:

1. 19 Oct 1992, the opponent filed a substitute statement of grounds and particulars.

1. 21 Oct. 1992, the applicant wrote to the opponent, with copy to the Commissioner, asserting that "we consider that the additional amendments included in paragraphs 1, 2 and 3(new) extend beyond the terms of that decision and amount to the addition of new particulars..."

1. 4 Dec. 1992 the opponent filed a further substitute statement of grounds and particulars, together with submissions.

1. 17 Dec. 1992, the applicant submitted that certain of the amendments included in the latest statement extend beyond the terms of the decision, and beyond the reasons initially stated for amending the document. They submitted that those amendments should not be allowed, and stated that they did not wish to be heard in the matter.

5,22 Dec. 1992, the Patent Office wrote to the opponent and advised, inter alia:

"The delegate notes that the issues disputed by the applicant were not prima facie present in the statements considered by the delegate in his decision.

The delegate notes that by his decision of 29 September 1992 he gave the opponent 21 days to supply a new statement consistent with that decision.

The delegate therefore requests that the opponent provide a new statement of grounds and particulars that is strictly consistent with the delegate's decision, with any further amendments being the subject of a new request to amend the statement, such statement to be provided by 18 January.

In the alternative, if the opponent wishes to pursue the presently proposed statement of grounds and particulars, they may make submissions, or seek to be heard in the matter, by 18 January 1993."

1. 18 January 1993, the opponent filed submissions, and stated that they did not wish to be heard in the matter.

I am satisfied that, apart from the two matters raised by the applicant on 17 Dec. 1992, the amended statement of grounds and particulars filed on 4 Dec. 1992 is allowable. Thus the matter to be determined is the allowability of the two matters, raised by the applicant, in the amended statement.

statement of grounds and particulars

The relevant parts of the statement of grounds and particulars are as follows:

Statement as originally filed

GROUNDS

The invention as defined in claims 1 to 23 is not a patentable invention .....

c.The invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim.

PARTICULARS

1. the invention as defined in any one of claims 1 to 3 is not a patentable invention because:

a.The invention insofar as it relates to inactivation of canine distemper virus by binary ethyleneimine is not novel, or lacks an inventive step, having regard to the following publications which fully disclose inactivation of viruses by binary ethyleneimine: ...

Statement as proposed on 4 Dec 1992

GROUNDS

The invention as defined in claims 1 to 8, 15 and 19 to 23 is not a patentable invention .....

c. (paragraph c is unchanged)

PARTICULARS

1. The invention as defined in any one of claims 1 to 8, 15 and 19 to 23 is not a patentable invention because:

a.the invention insofar as it relates to inactivation of canine distemper virus by binary ethyleneimine is not novel, or lacks an inventive step, having regard to the following publications, which fully disclose inactivation of viruses by binary ethyleneimine: ...

1. The invention as defined in claims 1 to 8, 15 and 19 to 23 is obvious, and does not involve an inventive step, having regard to what was known or used in Australia on or before the priority date.

(NOTE:Changes from the original particulars are highlighted; item 3 in the amended statement is a newly inserted item.)

Submissions

The submissions of the applicant are, in essence:

a.with respect to item 2 of the proposed statement:

-the original statement referred to claims 1 to 3; as amended it refers to claims 1 to 8, 15 and 19 to 23. There is nothing in the original statement to suggest that the prior art listed were relied on as supporting any of the grounds asserted against any claims other than claims 1 to 3. Nor is it the correction of an "obvious clerical error", and neither is it an amendment required to comply with the decision.

b.with respect to item 3 of the proposed statement:

-there were no particulars as originally lodged of what was known or used in Australia on or before the priority date. Also, it is not an amendment required to comply with the decision

The submissions of the opponent are, in essence:

a.with respect to item 2 of the proposed statement:

-item 2(a) of the original statement makes it clear that the present opposition is directed only to claims relating to the inactivation of canine distemper virus by binary ethyleneimime;

-the original request to amend the statement indicated that "it was desired to oppose only some of the claims"; at the hearing the attorneys for the applicant, in responding to a comment that this intention was not apparent from the amended statement, commented that this represented an obvious mistake and would be corrected;

b.with respect to item 3 of the proposed statement:

-Item 2(c) of the statement of grounds recites section 59(1)(g) of the 1952 Act

-Item 3 merely makes explicit the allegation that was already present in the statement - that is, that claims relating to the inactivation of canine distemper virus by binary ethyleneimime are opposed as being obvious having regard to what was known or used in Australia at the priority date.

The opponent also made submissions based on Borden Inc v Elkem A/S 24 IPR 146, (1992) AIPC 90-893, to the effect that the opponent is not required to provide particulars of common general knowledge for the ground of lack of inventive step.

Decision

With respect to item 2 of the statement, I note that the mere fact that the claims identified in the particular are greater in number than that before demonstrates that the scope of the particular has been considerably enlarged; consequently the applicant is prima facie prejudiced by the amendment.

The opponent has asserted that this amendment is consistent with the statement accompanying the original request to amend, that it was now "desired to oppose only some of the claims". However I note that this assertion was made in the context of the grounds of opposition (and not the statement of particulars), and that the statement of grounds in the amended statement includes a restriction on the claims being objected to. Furthermore, even if that statement was considered to refer to item 2 of the particulars, it clearly implies a narrowing of the scope - not an enlargement which is effected by the amendment.

In my earlier decision, I stated (in respect of a different amendment):

"However, in my view this amendment properly falls in the category of an amendment that arises consequential upon the preparation of the case - in that in preparing the case the significance of the absence of the words `generally regarded as' would become readily apparent. Consequently, if the amendment had been sought at the earliest reasonable opportunity, I would not consider that it would unduly prejudice the applicant. However there is nothing that indicates to me that the opponent has sought the amendment at the earliest reasonable opportunity. As a result, (and for this reason alone) I consider the applicant to be unduly prejudiced by this amendment. Therefore I refuse to allow it."

In my view, this statement equally applies to an amendment of the list of claims to which a particular is directed. In particular, whilst the amendment was sought soon after the decision, there is nothing that indicates to me that the opponent has sought the amendment at the earliest reasonable opportunity during the opposition as a whole. I therefore consider this amendment to be not allowable.

With respect to item 3, I note that the reference to inventive step is in addition to that specified in item 2 - that is, item 2 refers to (inter alia) lack of inventive step based on a number of documents, whereas item 3 is a general assertion making no reference to any specific item of knowledge.

As item 2 makes reference to inventive step, it seems to me that there has always been a particular for para (c) of the statement of grounds in the opposition. Therefore (and without agreeing or conceding that one can imply a particular from a stated ground), there is no basis for implying a particular in the form of item 3 merely on the existence of that ground of opposition.

In my view, the general assertion of common general knowledge in item 3 can only be considered as an enlargement of the particulars, as it must refer to knowledge not particularised in item 2 - otherwise there would be no need for item 3. As a consequence, and for the same reasons as for item 2 above, I consider this amendment to be not allowable.

There is a further reason why I consider item 3 to be not allowable. The opponent submitted that (in effect) it was not necessary to particularise common general knowledge for inventive step. I was referred to Borden Inc v Elkem A/S 24 IPR 146, (1992) AIPC 90-893, where it was said:

I note that the gathering of evidence to establish common general knowledge may be a time consuming endeavour.  Hence to have the expectation that a Statement of Particulars should contain anything more than rudimentary details of the common general knowledge to be produced in the opposition would seem both unrealistic and unreasonable.

- a statement with which I agree. However, this does not entitle an opponent to provide no particulars of the common general knowledge being relied upon (as is the case with item 3) - to do so would be to make an ambit claim without stating the case that has to be answered.

In this context, the delegate of the Commissioner issued a decision on 21 Dec 1992, in the matter of The Boots Company Plc v Hamilton Laboratories Pty Ltd (application no 614998, unreported), in which it was stated:

"It is appropriate in the present case for me to say a word about amendments which would cause the particulars to become inadequate for their purpose.  This situation would arise if an inadequately particularised fact was inserted into the statement of grounds and particulars.  Such an amendment not only changes the case to be answered, it does not properly reveal the new case to be answered.  I believe this would be unduly prejudicial to the applicant."

In my view, in the absence of some identification of relevant common general knowledge (albeit rudimentary), item 3 inadequately particularises the relevant ground of opposition, and thus cannot be allowed.

conclusion

I have found that the two items disputed by the applicant in the proposed statement of grounds and particulars filed on 4 Dec. 1992 would unduly prejudice the applicant and should not be allowed.

Where an opponent amends a statement of grounds and particulars by substitution, I do not believe I have the power to delete part of that document when allowing that amendment. As therefore I cannot allow the amended statement insofar as it does not prejudice the applicant, I allow the opponent 21 days to provide a new statement consistent with this decision.

Finally, I note that any substitute statement filed will be the third statement filed since my decision of 29 September 1992; I therefore foreshadow that, should the opponent seek to include further amendments to the statement over and above those dealt with in this and the previous decision and valid objections arise as a result thereof, I will have to consider whether the request should be refused in its entirety.

(D Herald)
Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Griffith Hack & Co, Melbourne