EIS GmbH v Novoluto GmbH - [2022] APO 29

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
EIS GmbH v Novoluto GmbH [2022] APO 29

Patent Application: 2018203659
Title:Stimulation device having an appendage

Patent Applicant:                   Novoluto GmbH
Opponent:  EIS GmbH
Delegate:  R Subbarayan
Decision Date:  28 April 2022
Hearing Date:  Written submissions filed 18 February 2022

Catchwords: PATENTS - section 59 – final determination – amendments overcome deficiencies identified in previous decision – application to proceed to grant

Representation: Patent attorney for the applicant: Spruson & Ferguson
Patent attorney for the opponent: Pizzeys Patent and Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018203659

Title:Stimulation device having an appendage

Patent Applicant: Novoluto GmbH
Date of Decision: 28 April 2022
DECISION
The amendments to the specification overcome the deficiencies identified in the first decision in this s59 opposition and do not introduce new deficiencies.
Subject to any appeal, I direct the application proceed to grant.
REASONS FOR DECISION
Background

The matter relates to patent application 2018203659 in the name of Novoluto GmbH (the Applicant).
Following an opposition by EIS GmbH (the Opponent), a decision EIS GmbH v Novoluto GmbH [2021] APO 1 was issued on 5 January 2021 (the first decision). In the first decision I found that claims 1-4, 6-13, 15-20, 22-27, and 29-30 are not supported by matter disclosed in the specification and gave the Applicant two months to propose suitable amendments to overcome this adverse finding.
The Applicant filed proposed amendments to the specification on 5 March 2021. The Opponent filed comments on 23 March 2021 submitting that the proposed amendments are not allowable.
On 3 June 2021, the Applicant withdrew the earlier amendment request and filed a new set of proposed amendments to the specification. The Opponent filed comments on 25 June 2021 submitting that the proposed amendments are not allowable.
An examination report was issued on 31 August 2021 with a finding that the proposed amendments are not allowable as they would not comply with s102(2)(b) of the Act. Following a telephone conversation with the applicant, the Office issued a correspondence on 17 September 2021 stating that there had been a change of mind and that the proposed amendments are allowable. The amendments were advertised for opposition purposes in the Official Journal of 25 November 2021. As the amendments were not opposed, the parties were advised on 4 February 2022 that the amendments have been allowed.
On 9 February 2022, the Office advised the parties that the opposition is due for final determination and whether they wish to be heard in this matter.
On 18 February 2022, the Opponent advised that they do not wish to be heard but resubmitted their comments of 25 June 2021 as to why the amendments are not allowable.
The Applicant advised that they did not wish to be heard.
Applicable Law
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision. Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the previous decision and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification. That is, pre-existing deficiencies are excluded (Iluka Midwest Ltd v Technological Resources Pty Ltd [2002] FCA 1233 at [34]).
The First Decision
In the first decision, I found that the only ground of opposition that had been made out was the ground of lack of support. My finding in relation to this ground is as follows:
131.In my view, the technical contribution to the art as disclosed in the specification is a pressure field generator with two chambers that is able to provide modulated negative and positive pressures to a body part. The dual chamber is central to the invention. The scope of each of the independent claims clearly includes an arrangement that may only have the first chamber without any second chamber in fluid communication with the first chamber. There is no enabling disclosure of a single chamber pressure field generator. I am therefore of the view that all of the independent claims exceed the technical contribution provided by the disclosure of the specification. These claims are therefore not supported. Furthermore, apart from dependent claims 5, 14, 21 and 28, none of the other dependent claims also include this limitation. I therefore find that claims 1-4, 6-13, 15-20, 22-27, and 29-30 do not comply with s40(3) of the Act as these claims are not supported by matter disclosed in the specification.
The Amendments
As noted by the Applicant, the amendments basically delete former dependent claims 5, 14, 21 and 28 and their features incorporated into former independent claims 1, 12, 17 and 26. This is clear from the marked up copy of the relevant claims filed by the Applicant and that is reproduced below where deletions are denoted by strikethroughs and additions by underlining.
1. A stimulation device, comprising: a chamber having a flexible wall portion; a second chamber;
adrive unit in physical communication with the flexible wall portion so as to cause deflections of the flexible wall portion in opposing directions, thereby resulting in a changing volume of the chamber,
thechanging volume of the chamber resulting in modulated positive and negative pressures with respect to a reference pressure;
an opening for applying the modulated positive and negative pressures to a body part; a control device for controlling the drive unit; and
an appendage, wherein the appendage is a dildo configured to be inserted into a vagina.
~~5. The stimulation device as recited in claim 1, further comprising a second~~
~~chamber.~~
112. A method comprising:
causing deflections of a flexible wall portion of a chamber of a stimulation device in opposing directions, thereby resulting in a changing volume of the chamber,
the changing volume of the chamber resulting in modulated positive and negative pressures with respect to a reference pressure, wherein the changing volume of the chamber results in the modulated positive and negative pressures in a second chamber; and
applying the modulated positive and negative pressures to a body part through an opening, wherein the stimulation device is positioned by a user for applying the modulated positive and negative pressures using an appendage of the stimulation device, wherein the appendage is a dildo configured to be inserted into a vagina.
~~14. The method as recited in claim 12, wherein the changing volume of the chamber~~
~~results in the modulated positive and negative pressures in a second chamber.~~
157. A stimulation device, comprising:
a pressure field generator having a flexible wall portion, wherein the pressure field
generator comprises a first chamber and a second chamber;
a drive unit in physical communication with the flexible wall portion so as to
cause deflections of the flexible wall portion in opposing directions, thereby
resulting in a changing volume of the pressure field generator,
the changing volume of the pressure field generator resulting in modulated
positive and negative pressures with respect to a reference pressure;
an opening for applying the modulated positive and negative pressures to a body
part;
a control device for controlling the drive unit; and
an appendage, wherein the appendage is a dildo configured to be inserted into a
vagina.
~~21. The stimulation device as recited in claim 17, wherein the pressure field generator~~
~~comprises a first chamber and a second chamber.~~
236. A method comprising:
causingdeflections of a flexible wall portion of a pressure field generator of a stimulation device in opposing directions, thereby resulting in a changing volume of the pressure field generator,
thechanging volume of the pressure field generator resulting in modulated positive and negative pressures with respect to a reference pressure, wherein causing deflections in a flexible wall portion of a pressure field generator in opposing directions comprises:
causing deflections in the flexible wall portion of a first chamber of the pressure field generator, thereby resulting in the modulated positive and negative pressures in a second chamber of the pressure field generator; and
applyingthe modulated positive and negative pressures to a body part through an opening, wherein the stimulation device is positioned by a user for applying the modulated positive and negative pressures using an appendage of the stimulation
device, wherein the appendage is a dildo configured to be inserted into a vagina.
~~28. The method as recited in claim 26, wherein causing deflections in a flexible wall~~
~~portion of a pressure field generator in opposing directions comprises:~~
~~causingdeflections in the flexible wall portion of a first chamber of the pressure field~~ ~~generator, thereby resulting in the modulated positive and negative pressures in a~~
~~second chamber of the pressure field generator.~~
Do the Amendments overcome the deficiencies identified in the first decision?
In the first decision, I found that claims 1-4, 6-13, 15-20, 22-27, and 29-30 lack support but dependent claims 5, 14, 21 and 28 are supported as they include the feature of a second chamber.
The Opponent has submitted in their letter of 18 February 2022 that each of the independent claims continues to lack support as they do not define or recite the feature of “at least one connection element that connects the first chamber to the second chamber” and that the requirement for the connection element is also inherent in my findings in first decision.
I am not convinced by this argument. As noted in the first decision at [131], the technical contribution to the art as disclosed in the specification is a pressure field generator with two chambers and on that basis, I found that dependent claims 5, 14, 21 and 28, which define a second chamber, were supported. This is also in line with the Opponent’s submissions for the original hearing at paragraph [116] where they did not object to dependent claims 5, 14, 21 and 28 as lacking in support[1]. All that the present amendments have done is to delete these dependent claims and add the additional features of these claims to their respective independent claims or in other words these dependent claims have been rewritten as independent claims to replace the former independent claims. It follows that these new independent claims would also be supported. To find otherwise I would need to revisit findings already made in the first decision and that is clearly not open to me in the light of the authorities I have mentioned earlier.
[1] First decision at [123]
I am satisfied that the amendments overcome the adverse findings in the first decision.
Other Issues
The Opponent’s submissions on the allowability of the claims also included a number of comments alleging lack of clarity of the amended independent claims. Given that the amended independent claims are no more than dependent claims 5, 14, 21 and 28 written as independent claims and that I found no lack of clarity of these dependent claims, it follows that the amended independent claims also do not lack clarity.
CONCLUSION
The amendments to the claims overcome the lack of support findings in the first decision and do not introduce any new deficiencies. Subject to any appeal, I direct that the application proceeds to grant.
R Subbarayan
Delegate of the Commissioner of Patents