John Crampton

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

John Crampton [2011] APO 12

Patent Application: 2008203473

Title:Improved Method and Apparatus for Spreading Aggregate and Road Building Materials

Patent Applicant: John Crampton

Delegate: Dr S.D.Barker

Decision Date: 25 February 2011

Catchwords: PATENTS – examiner objection – lack of novelty – lack of inventive step – case management of divisional applications – no response by applicant – application refused

Representation: Patent applicant: Walsh & Associates

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2008203473

Title:Improved Method and Apparatus for Spreading Aggregate and Road Building Materials

Patent Applicant: John Crampton

Date of Decision: 25 February 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2008203473 was filed by John Crampton as a divisional of application 2002317628 on 1 August 2008. An examination report issued on 7 October 2010, raising an objection of lack of novelty and lack of inventive step. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objection 1 of my report is based on the same grounds objected to in the examination of patent application 2002317628.
Please note that if a response overcoming those objections 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:

"I refer to the Examiner's report of 7 October 2010. The Examiner noted at point 2 that a response should be filed within 2 months, otherwise the Commissioner would consider setting the matter for hearing with a view to either refusing or directing amendments.
I consider that it is appropriate to now set this matter for hearing. I also consider that it is possible to fully deal with the issues by way of written submissions. Noting the time of year, I will allow you two (2) months from the date of this letter to file any submissions you wish. The file will then be passed to a hearing officer for determination. If you do not file any submissions the application may be refused."

The applicant has not provided any submissions.

The objection

The objection raised by the examiner is that claims 1 – 26 lack novelty and inventive step in the light of documents that had been raised in the International Search Report relating to the parent application (the International Search Report lists ten patent documents). The citations relate to spreader assemblies on vehicles. The spreaders dispense materials by the use of gates/valves and hoppers, and the rate of dispensing is linked to the forward speed of the vehicle. I agree that the objection is appropriately raised.

The applicant has chosen not to defend the application. The applicant has provided no submissions disputing the objection, and has not proposed any amendment to attempt to overcome the objection. In these circumstances there are no reasonable prospects of the applicant overcoming the objection. The application should be refused.

Dr S.D.Barker
Delegate of the Commissioner of Patents

CaseChat Overview and Summary

John Crampton's patent application 2008203473, a divisional application of 2002317628, was examined by the Australian Patent Office, resulting in objections of lack of novelty and inventive step. The application, concerning an improved method and apparatus for spreading aggregate and road building materials, was filed on 1 August 2008. An examination report issued on 7 October 2010 raised these objections based on prior art cited in the International Search Report of the parent application. The report detailed that if no response was filed within two months, the Commissioner would proceed to refuse the application or direct amendments. Despite a subsequent hearing notice providing an additional two months for submissions, the applicant did not respond, leading to the application's refusal. The applicant's lack of engagement in defending the application resulted in a clear decision by the Commissioner, Dr. S.D. Barker, to refuse the application on 25 February 2011.

The primary legal issues the court had to address involved whether the claims in the patent application 2008203473 were novel and involved an inventive step in light of the prior art. The objections were based on ten patent documents cited in the International Search Report, which detailed spreader assemblies on vehicles, similar to the invention claimed in the application. The court had to consider whether the claimed invention was sufficiently distinct from the prior art to be considered novel and whether it involved an inventive step that was non-obvious to a person skilled in the art. Given that the applicant did not provide any submissions or proposed amendments to overcome these objections, the court concluded that there were no reasonable prospects of the applicant overcoming the objections.

The court, represented by Delegate Dr. S.D. Barker, determined that the objections of lack of novelty and inventive step were valid. The court found that the claims in the patent application did not sufficiently distinguish themselves from the prior art, making them non-novel and lacking in inventive step. The applicant's failure to respond to the examination report and subsequent hearing notice was noted, and the court concluded that, in the absence of any defense or proposed amendments, the application should be refused. This decision aligns with the Commissioner's approach to case management of divisional applications, which emphasizes the importance of timely and substantive responses to overcome objections.

The final orders of the court were to refuse the patent application 2008203473. The refusal was based on the applicant's failure to respond to the objections raised in the examination report and hearing notice, resulting in no reasonable prospects of overcoming the objections of lack of novelty and inventive step. The court's decision was clear and decisive, reflecting the Commissioner's approach to managing such applications and the necessity for applicants to actively defend their patent applications against objections.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established