McNeil-PPC, Inc.

[2011] APO 8

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

McNeil-PPC, Inc. [2011] APO 08

Patent Application:                   2009202927

Title:Warming and nonirritating lubricant antifungal gel compositions

Patent Applicant:  McNeil-PPC, Inc.

Delegate:  Dr S.D.Barker

Decision Date:  7 February 2011

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

Representation:  Patent applicant:  Shelston IP

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2009202927

Title:Warming and nonirritating lubricant antifungal gel compositions

Patent Applicant:  McNeil-PPC, Inc.

Date of Decision:  7 February 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009202927 was filed by McNeil-PPC, Inc. as a divisional of application 2003234311 on 21 July 2009.  An examination report issued on 8 November 2010, raising objections of lack of novelty and lack of inventive step against various claims.  In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objection(s) 1-10 of my report is based on the same grounds objected to in the examination of patent application 2003234311.  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:

"The examination report of 8 November 2010 raised objections equivalent to those in the parent application.  In line with our approach to case management of divisionals, you were given two months to respond to that report.  As no response has been received, the matter will now be set for hearing.

I believe that it is possible to hear this matter on the basis of written submissions, so I allow you two (2) weeks from the date of this letter to file any submissions you wish.  Your submissions should address the grounds of objection identified in the examination report.  Once your submissions have been received, or alternatively if no submissions are received, the matter will be passed to a hearing officer to issue a written decision.  Please note that it is possible for the Commissioner to refuse the application."

The applicant has not provided any submissions.

The objection

The objections raised by the examiner are that all of the claims are lacking in either novelty or inventive step (or both) in the light of six identified documents.  The claimed invention is an antifungal gel composition comprising three specified components.  The citations relate to antifungal compositions that are clearly relevant.  I agree that the objections are appropriately raised.

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

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