IMPERIAL CHEMICAL INDUSTRIES PLC

[1991] APO 1

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent applications No. 71196/87, 71355/87, 70986/87 by IMPERIAL CHEMICAL INDUSTRIES PLC.  Examiner's objections.

Background

Application 70986/87 relating to acrylic acid derivatives useful as fungicides was lodged on 2 April 1987.  It derives priority from GB basic applications 8609457 and 8701395 filed on 17 April 1986 and 22 January 1987 respectively.

Application 71196/87 relating to acrylic acid derivatives useful as fungicides, plant growth regulators, insecticides and nematicides was lodged on 8 April 1987.  It derives priority from GB basic applications 8609454 and 8630825 filed on 17 April 1986 and 22 December 1986 respectively.

Application 71355/87 relating to acrylic acid derivatives also useful as fungicides, plant growth regulators, insecticides and nematicides was lodged on 9 April 1987.  It derives priority from GB basic applications 8609456 and 8701627 filed on 17 April 1986 and 26 January 1987 respectively.

Following requests for examination, the examiner's first report for each application issued on 7 April 1989.  The final date for acceptance is 7 January 1991.  The applicant proposed amendments to each specification.  The examiner maintained objections to the clarity and fair basis of each set of claims and an impasse was reached.  The applicant asked for a hearing and requested an extension of the period of acceptance from 7 January 1991 to 7 March 1991 under section 160.  The Commissioner's delegate did not grant the request.

The hearing took place in Canberra on 28 December 1990; the applicant, Imperial Chemical Industries PLC (ICI) was represented by Ms Elizabeth Eadie, solicitor, of Phillips, Ormonde and Fitzpatrick, Melbourne.

Examiner's objections

The major remaining examiner's objection against application 71196/87 (similar for each other application) is as follows:

"The terms "optionally substituted", "substituted", "acyl", "heteroatoms", "heterocyclic rings" and "heterocyclyl" are broad and indeterminate in scope.

The terms "optionally substituted" and "substituted" cover a vast class of substituents which include every conceivable atom or radical that may replace one or more of the hydrogen atoms of the particular groups.  The terms include simple substituents, such as halogen, alkoxy and phenyl radicles, as well as complex substituents, such as, heterocyclic radicals and fused ring systems.  The substituents may also be derived from a compound which possesses phytopharmaceutical activity.  In the case of the more complex substituents the moiety which is substituted may be unrecognisable.

As the terms are open ended, the range of substituents included in the claim is infinite.  The claims are clearly two widely drawn.  The applicant is entitled to frame his claim in such a way that what is claimed does not go beyond the limits of a "sound prediction".  To say that a group may be substituted by any substituent is surely not sound.

The use of the term "substituted" was considered in Herchel Smith Applications, AOJP, Vol. 38, No. 11, page 774. In this case, the Deputy Commissioner held that the term "substituted" is too widely drawn and cannot stand for the reasons made clear in Shell Development's Application (1947) 64 RPC 151.

Similarly the terms "acyl", "heteroatoms", "heterocyclic rings" and "heterocyclyl" are broad and indeterminate in scope.

Although the "optional substituents" have been limited to those which "do not affect the fungicidal activity of the compound", this functional limitation does not make the claim any the less speculative.  There would still be an infinite number of compounds that fall within the scope of the claim.  The claim should be limited to those substituents which are supported by the description."

Conclusion

I find the terms "optionally substituted", "substituted", "acyl", "heteroatoms", "heterocyclic rings" and "heterocyclyl", to be allowable.  They are, in my opinion, clear and understandable to the skilled person. 

The claims are certainly of broad scope.  It seems to me, however, that a skilled addressee wishing to avoid infringement would not as a practical matter have difficulty in deciding whether he infringed any one of the claims.

The claims are, in general, fairly based and adequately supported by the description.  However, exceptions to this are listed below.

Applications 70986/87 and 71196/87

Unsubstituted alkynyl, unsubstituted cycloalkyl and unsubstituted cycloalkylalkyl are adequately illustrated.  The terms substituted alkynyl and substituted cycloalkyl or substituted cycloalkylalkyl are not illustrated in either description.

Application 71355/87

Similarly I can not find support for "substituted alkynyl" in the description of 71355/87.

The terms substituted alkynyl and substituted cycloalkyl or substituted cycloalkylalkyl are therefore not fairly based. 

Following the hearing the applicant submitted proposed amendments to illustrate the term "substituted alkynyl" and "substituted alkoxy".  I find the proposed amendment to illustrate substituted alkynyl to be not allowable under section 49 (4) of the Act as the claim would claim matter not in substance disclosed in the specification as lodged.

The imminence of the final date for acceptance for these applications (7 January 1991) has not allowed me elaborate on the reasons for my decision.  This will be done in a further written decision to issue later.

Bob Sawyer
Supervising Examiner of Patents

3/1/91

Patent Attorneys for the applicant: Phillips, Ormonde and Fitzpatrick