Kennametal Inc v Sandvik Aktiebolag

[1993] APO 28

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 587141 in the name of KENNAMETAL INC.

Title:    Hard Tip Bit, Middle Section Concave Surface

Action:    Opposition by SANDVIK AKTIEBOLAG. Final Decision.

Decision:    Issued            .  Application directed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 587141 by KENNAMETAL INC., and opposition thereto by SANDVIK AKTIEBOLAG.

background

The opposition in this matter was heard in Melbourne on 17 February 1992, and I issued my decision on 7 May 1992. In that decision, I found:

"I conclude that, to the extent that the claims are directed to a continuously concave surface of revolution, the invention claimed is not prior published, and is novel. 

However I found the term 'continuous concave surface of revolution' did not necessarily mean a continuously concave surface, and as a result the claims do not comply with the requirements of section 40 as they are not fairly based. 

Both parties argued the opposition on the basis that the claims defined a surface that was continuously concave. I have not considered in detail the relevance of the citation to the claims as presently defined - that is, having a surface which is overall concave, but which may (for example) include a frustroconical section - but I express here my opinion that in this event my findings on prior publication and novelty would be different.

Although (for reasons given above) I have not considered the specification of AU 570230 in this decision I note here that, provided the claims are directed to a continuously concave surface, I do not believe there to be a bar-to-sealing based on the `A'-level publication of that document."

and I gave the applicant 60 days to amend the specification.

On 3 June 1992, the applicant filed amendments under s104. The opponent was given an opportunity to comment on those amendments [pursuant to regulation 10.2(6)]. The amendments were advertised on 24 September 1992, and allowed on 18 January 1993.

A particular issue in the opposition was the Australian specification no. 570230. In the evidence, the opponent provided a copy of the accepted AU-B specification (which was published after the priority date of the present application), and not the AU-A specification (which was OPI before the priority date).

On 7 July 1992, the attorney for the opponent wrote asking the Commissioner to invoke regulation 5.11 in respect of the disclosures of the AU-A specification, and providing submissions in support of an argument that the claimed invention was not novel in the light of the AU-A specification. In response:

-the opponent was advised that the application of regulation 5.11 was inappropriate [and was referred to the decision in Leonardis v StAlban 24 IPR 351, (1992) AIPC 90-929]

-the opponent's attention was drawn to the CONCLUSION in the decision, wherein I stated:

"Although (for reasons given above) I have not considered the specification of AU 570230 in this decision I note here that, provided the claims are directed to a continuously concave surface, I do not believe there to be a bar-to-sealing based on the `A'-level publication of that document. "

On 3 March 1993, the opponent again argued that there was a 'bar-to-sealing', and acknowledged that they had no right to be directly involved in a bar-to-sealing action.

On 26 March, both parties were advised that the amendments had been allowed, and were requested to advise whether they wished to be heard prior to the application proceeding to sealing. They were also advised that it was not open to reargue matters determined in the decision of the opposition.

Decision

I am satisfied that the amendments made overcome the deficiencies identified in my earlier decision.

On the matter of whether or not there is a bar-to-sealing based on the disclosures in the AU-A specification of 570238, I observe that my earlier decision dealt with the matter. Consequently I am estopped from finding otherwise (see Ex parte MoleEngineering 147 CLR 340).

However, even if I was not estopped, I note that the attorney's arguments (based on figure 4 of the citation and corresponding description) fail to take into account that the surface illustrated in figure 4 has TWO non-curved portions (although only one is described). In this respect, the portions of the description relied upon in the opponent's submissions only infer that one of these non-curved portions is optional. That is, irrespective of the portions of text referred to by the opponent, figure 4 does not illustrate a continuously concave surface of revolution.

Consequently, I am satisfied there is no reason why the application should not proceed to sealing.

Conclusion

I direct the application proceed to sealing.

D Herald
Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick, Melbourne

Patent attorneys for the opponent   :  Griffith Hack & Co, Melbourne