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Gazmick Pty Ltd

Gazmick Pty Ltd

Case [2014] APO 27 19 May 2014

Patent Re-examination

Novelty

Inventive Step

Common General Knowledge

Claim Construction

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gazmick Pty Ltd [2014] APO 27
Patent:2001246246

Title:Rock bolt and method of manufacture and installation

Patentee:  Gazmick Pty Ltd
Delegate:  Ed Knock
Decision Date:  19 May 2014
Hearing Date:  28 March 2014, in Melbourne
Catchwords:  PATENTS - third party request for post-grant re-examination – one patent document and six non-patent documents cited - four adverse re-examination reports – two statements of proposed amendments – leave to amend granted – claim construction – some claims found not novel – citations not ascertainable – limited evidence of common general knowledge - claims found to involve an inventive step – opportunity to amend.

Representation: Barry Hess of counsel, assisted by Dr Louise Duncan of counsel
and Richard Smoorenburg and Dr Carolyn Rolls of the firm Smoorenburg Patent & Trade Mark Attorneys, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2001246246

Title:Rock bolt and method of manufacture and installation

Patentee:  Gazmick Pty Ltd
Date of Decision:                   19 May 2014
DECISION
The amendments proposed on 22 November 2012 and 18 March 2013 to Patent No. 2001246246 are allowable, and leave is granted for those amendments to be made. All claims involve an inventive step. The inventions defined by claims 1 to 16, 20, 27, 28, 30 and 31 are not novel in light of the prior art cited in the re-examination request. Under section 106 I direct the patentee to file amendments overcoming this ground of objection within 60 days of the date of this decision otherwise I will revoke the patent.
REASONS FOR DECISION
Background
1.   Patent application 2001246246 was filed as a PCT application (PCT/AU2001/000391) on 6 April 2001 and claims priority from Australian provisional patent applications PQ6797 and PR3746 filed on 10 April 2000 and 15 March 2001, respectively. Following entry to the national phase a request for examination was made on 9 February 2004, and examination was carried out. Even though the examination did not raise any significant invalidity issues, the applicant made extensive amendments for the express purpose of reducing the excess claim fees. The application was accepted on 26 October 2006 and a patent was subsequently granted on 22 February 2007.
2.   On 1 June 2012, Greg Gurr of the patent attorney firm Spruson & Ferguson, Sydney, filed a request to the Commissioner on behalf of DYWIDAG-Systems International Pty Limited [DIS] to re-examine the patent. The request cited seven published documents (hereafter referred to as D1 etc. up to D7), in light of which it was said that all 32 claims of the patent lacked novelty and an inventive step. A re-examination report was issued on 3 October 2012, in which it was found that various ones of the 32 claims were lacking in novelty and/or inventive step in light of various ones of D1 to D6, with the overall outcome being that no claim was found to be both novel and to involve an inventive step. Thereafter, a further three (adverse) re-examination reports were issued, although by the fourth report D5 and D6 were no…

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

AGLC: Gazmick Pty Ltd [2014] APO 27
Case: [2014] APO 27
Decision Date: 19 May 2014

CaseChat Overview and Summary

The Australian Patent Office has considered a third-party request to re-examine Patent No. 2001246246, titled "Rock bolt and method of manufacture and installation" held by Gazmick Pty Ltd. The decision, handed down on 19 May 2014, addressed two main issues: the allowability of proposed amendments to the patent, and whether the amended claims lacked novelty and/or inventive step. The court found that the proposed amendments were allowable and granted leave for the amendments to be made. It was determined that while certain claims lacked novelty, the remaining claims still involved an inventive step, thus maintaining the validity of the patent.

The court began by examining the proposed amendments under Section 102 of the Patents Act 1990. The proposed amendments were deemed allowable as they did not result in claims beyond the substance of the original specification, did not alter the scope of the original claims, and did not cause non-compliance with the relevant sections of the Act. The court then proceeded to interpret the amended claims, focusing on claim 1, and found that certain features of the claims did not impose any actual limitation on their scope. The court's construction of the claims was essential for determining their novelty and inventive step.

Regarding novelty, the court found that claims 1 to 16, 20, 27, 28, 30 and 31 were not novel in light of the prior art cited in the re-examination request, specifically German Patent Publication No. 17 59 561 3 C3 (D1), the British Standard Code of Practice for Ground Anchorages, 1989 (D2), and DSI Report Anchor Systems, F.T. Herbst et al (D4). The court held that these claims lacked novelty because the prior art disclosed all the features of the claims, including the pre-grouting step, which was found to be common general knowledge. However, claims 11 to 13, 17 to 19, 21 to 26 and 29 were found to be novel in light of the prior art.

Finally, the court assessed the inventive step of the remaining novel claims in light of the common general knowledge at the priority date. The court found that there was insufficient evidence to show that the invention did not involve an inventive step. It was determined that the pre-grouting step, which allowed the use of more functional but expensive resin as grouting, was not common general knowledge and provided a practical advantage. This unexpected result demonstrated the non-obviousness of the invention and led the court to conclude that the amended claims involved an inventive step.

In conclusion, the court granted leave for the proposed amendments to be made, found that certain claims were not novel, but the remaining claims still involved an inventive step. Consequently, the court directed the patentee to file amendments overcoming the ground of objection within 60 days of the decision date, or else the patent would be revoked.

Orders