E.I. Du Pont De Nemours and Company
[2011] APO 11
•16 February 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
E.I. Du Pont De Nemours and Company [2011] APO 11
Patent Application: 2008203222
Title:B-12 dependent dehydratases with improved reaction kinetics
Patent Applicant: E.I. Du Pont De Nemours and Company
Delegate: Dr S.D.Barker
Decision Date: 16 February 2011
Catchwords: PATENTS – examiner objection – lack of unity – case management of divisional applications – applicant indicated no interest in pursuing protection – application refused
Representation: Patent applicant: Houlihan2
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008203222
Title:B-12 dependent dehydratases with improved reaction kinetics
Patent Applicant: E.I. Du Pont De Nemours and Company
Date of Decision: 16 February 2011
DECISION
I refuse the application.
REASONS FOR DECISION
Patent application 2008203222 was filed by E.I. Du Pont De Nemours and Company as a divisional of application 2003301068 on 18 July 2008. An examination report issued on 30 November 2010, raising objections of lack of unity, manner of manufacture and lack of novelty. In line with the Commissioner's approach to case management of divisionals, the report included the following note:
"NOTE: Objection 1 of my report is based on the same grounds objected to in the examination of patent application AU 2003301068. Please note that if a response overcoming this objection is not filed within two months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If intending to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above."
As no reply was received, the Commissioner issued a hearing notice in the following terms:
"The examination report of 30 November 2010 raised an objection(s) equivalent to that in the parent application. In line with our approach to case management of divisionals, you were given two months to respond to that report. As no response has been received, the matter will now be set for hearing.
I believe that it is possible to hear this matter on the basis of written submissions, so I allow you one (1) month from the date of this letter to file any submissions you wish. Your submissions should address the ground(s) of objection identified in the examination report. Once your submissions have been received, or alternatively if no submissions are received, the matter will be passed to a hearing officer to issue a written decision. Please note that it is possible for the Commissioner to refuse the application or direct amendment.
Alternatively, if you file amendments overcoming the objection(s) within this period, the Commissioner will not proceed with the hearing. However, if the amendments do not fully overcome the objection(s), you will be advised of this fact and the hearing may continue as above."
The applicant responded by stating
"We advise that our client is no longer interested in pursuing protection for this case."
The objection
The objections raised by the examiner are that the claims do not relate to one invention only, claims 1-5 and 7-8 do not relate to a manner of manufacture and claims 1-5 and 7-8 are not novel in the light of AU 2003216403. Objection 1 was the focus of the note in the examination report, so I will focus on this objection - whether the claims are for one invention only. The objection identified 82 inventions. Inventions 1-81 are based on 81 different B12-dependent mutant dehydratase sequences. The objection notes that mutant B12-dependent dehydratases per se are known in the art, so the general concept cannot constitute a special technical feature. Invention 82 is a method of creating dehydratase mutants generally, which is not linked to any specific dehydratase sequence. I agree that the objection is appropriately raised.
The applicant has indicated that they do not intend further prosecuting the application. In these circumstances there are no reasonable prospects of the applicant overcoming the objections. The application should be refused.
Dr S.D.Barker
Delegate of the Commissioner of Patents
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