Kabushiki Kaisha Universal v Ainsworth Nominees Pty Ltd Summary

official notice

decision of a delegate of the commissioner of patents

Application : No. 630989 in the name of KABUSHIKI KAISHA UNIVERSAL

Title: Game Machine

Action: Opposition by AINSWORTH NOMINEES PTY LTD. Final decision.

Decision: Issued .
Abstract

Opposition ground of non-compliance with section 40 overcome via amendment. Application to proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent application No. 630989 by Kabushiki Kaisha Universal and opposition thereto by Ainsworth Nominees Pty Ltd under s59 of the Patents Act 1952

background

In my decision of 20 March 1996 in relation to an opposition by Ainsworth Nominees Pty Ltd to the granting of a patent on patent application 630989 in the name of Kabushiki Kaisha Universal, I found that the ground of non-compliance of the specification with section 40 had been established. I allowed the applicant an opportunity to amend the specification to overcome this ground.

The applicant filed amendments which were unopposed and which were allowed on 21 May 1997.

Neither the opponent nor the applicant wished to be heard in relation to the final determination of this matter.

DECISION

In my earlier decision, I found that claim 1 was not fairly based on the specification because there was no real and reasonably clear disclosure in the specification of the second or inner series of symbols being “at the location of the blank symbol”.

Amended claim 1 now defines the second series of symbols as being displayed through the blank symbol. I am satisfied that this changed wording overcomes the earlier defect in the claim.

I note that the allowed amendments also include another independent claim, claim 15. In this new claim, the second series of symbols is defined such that a stationary symbol of the second series is displayed in the blank symbol. I believe that this definition of the location of the second series of symbols has a real and reasonably clear disclosure in the specification.

Since the opposition ground of non-compliance with section 40 has been overcome, I direct that the application proceed to sealing.

R Hallett

Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Shelston Waters, Sydney

Patent attorneys for the opponent : F B Rice & Co, Sydney

CaseChat Overview and Summary

The case of Kabushiki Kaisha Universal v Ainsworth Nominees Pty Ltd involves a patent application (No. 630989) by Kabushiki Kaisha Universal and an opposition by Ainsworth Nominees Pty Ltd under section 59 of the Patents Act 1990. The dispute centred on whether the patent application complied with the requirements of section 40 of the Act, specifically concerning the specification of the invention. The opposition was initially upheld by the delegate of the Commissioner of Patents, leading to the applicant being granted an opportunity to amend the specification to address the non-compliance.

The primary legal issue before the court was whether the amended specification met the statutory requirements and sufficiently disclosed the invention. Specifically, the court had to determine if the changes made to claim 1 and the introduction of claim 15 adequately overcame the previously identified deficiencies. The court needed to ascertain whether the amended claims provided a real and reasonably clear disclosure of the invention as mandated by section 40.

The delegate of the Commissioner of Patents found that the amendments to the specification effectively addressed the earlier identified issues. The revised claim 1 now clearly defined the location of the second series of symbols, ensuring they were displayed through the blank symbol. Additionally, the new claim 15 provided a clear definition of a stationary symbol of the second series being displayed within the blank symbol. These changes satisfied the requirements of section 40, as they provided a real and reasonably clear disclosure of the invention. Consequently, the opposition ground of non-compliance was overcome, and the delegate directed that the application proceed to sealing.

The final order was that the patent application, now amended, would proceed to sealing, effectively resolving the opposition raised by Ainsworth Nominees Pty Ltd.

Kabushiki Kaisha Universal v Ainsworth Nominees Pty Ltd

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established