FLSmidth A/S v Sepro Mineral Systems Corp - [2025] APO 16

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
FLSmidth A/S v Sepro Mineral Systems Corp. [2025] APO 16

Patent Application: 2021261058

Title:Particle separation by density

Patent Applicant:                   Sepro Mineral Systems Corp.
Requestor/Opponent:             FLSmidth A/S
Delegate:  Dr W.E. Guinea
Decision Date:  03 June 2025
Hearing Date:  11 November 2024, in Canberra, by videoconference, further submissions by the Applicant 14 February 2025

Catchwords: PATENTS – s59 – novelty – whole of contents novelty – some claims found to lack novelty – clarity – no claims found to lack clarity – s60(3)– support – Calix inconsistency between invention described and invention claimed – all claims found to lack support – opposition successful – costs – costs awarded against Applicant

Representation: Counsel for the Applicant: Clare Cunliffe
Patent Attorney for the Applicant: Mark Willams of Phillips Ormonde Fitzpatrick
Counsel for the Opponent: Ben Cameron
Patent attorney for the Opponent: Alistair McCowan of FPA Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2021261058
Title:Particle separation by density

Patent Applicant:                   Sepro Mineral Systems Corp.
Date of Decision:                   03 June 2025
DECISION
The opposition is successful. I am satisfied that claims 1, 2, 4, 5, 6, 8, 9, 11, 13, 14, 16, 19 and 20 lack novelty in view of D1 No other ground of opposition raised by the Opponent, FLSmidth A/S, has been upheld.
Pursuant to s60(3), I find that all of the claims lack support under s40(3).
I allow the Applicant two (2) months from the date of this decision to propose amendments overcoming the deficiencies identified in this decision. Noting that amendments have already been proposed, the Applicant should, within the two months indicated, advise the Commissioner whether it intends to rely upon the proposed amendments filed on 14 February 2025 or file further proposed amendments. If there is no response, the Commissioner will assume that the Applicant wishes to continue with the amendments proposed on 14 February 2025 and will proceed accordingly.
I award costs according to Schedule 8 of the Regulations against the Applicant, Sepro Mineral Systems Corp.
REASONS FOR DECISION
Background
1.   Patent application 2021261058 (the “application”) entered national phase on 28 March 2022 from PCT/CA2021/050528. PCT/CA2021/050528 was filed on 19 April 2021 in the name of Sepro Mineral Systems Corp (the “Applicant”). The application has an earliest priority date of 21 April 2020.
2.   On 6 July 2023 FLSmidth A/S (the “Opponent”) filed a notice of opposition to the application under s59 of the Patents Act 1990 (the “opposition”). The statement of grounds and particulars (“SGP”) for the opposition was filed on 6 October 2023.
3.   The filing of evidence in support (“EIS”) was completed on 21 December 2023. This consisted of:
·     a first declaration by Mr Michael John Fullam (“Fullam1”), dated 20 December 2023, with supporting annexures MJF-1 to MJF-5.

4. The filing of evidence in answer (“EIA”) was completed on 21 March 2024. This consisted of:
· a declaration by Mr Steven McAlister…

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.

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Details

Case: [2025] APO 16
Decision Date: 03 June 2025

CaseChat Overview and Summary

In the Australian Patent Office, FLSmidth A/S, the Opponent, opposed the patent application 2021261058, filed by Sepro Mineral Systems Corp, the Applicant, for a particle separation apparatus. The opposition was heard on 11 November 2024 and further submissions were received on 14 February 2025. The Delegate of the Commissioner of Patents, Dr W.E. Guinea, found that claims 1, 2, 4, 5, 6, 8, 9, 11, 13, 14, 16, 19, and 20 of the patent application lacked novelty in view of D1. The Applicant's arguments concerning clarity were rejected, and it was found that all claims lacked support under s60(3) of the Patents Act 1990. The Applicant was given two months to propose amendments to overcome the deficiencies identified, with the Commissioner proceeding with the proposed amendments if no response was received. Costs were awarded to the Opponent according to Schedule 8 of the Regulations.

Orders