McNeill-PPC,Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

McNeil-PPC, Inc. [2011] APO 15

Patent Application: 2009202931

Title:Warming and nonirritating anhydrous lubricant compositions

Patent Applicant: McNeil-PPC, Inc.

Delegate: Dr S.D.Barker

Decision Date: 11 March 2011

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

Representation: Patent applicant: Shelston IP

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009202931

Title:Warming and nonirritating anhydrous lubricant compositions

Patent Applicant: McNeil-PPC, Inc.

Date of Decision: 11 March 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009202931 was filed by McNeil-PPC, Inc. as a divisional of application 2003241338 on 21 July 2009. An examination report issued on 17 November 2010, raising objections 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:

"Objections 2 and 5 of my report are based on the same grounds objected to in the examination of patent application 2003241338. 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 17 November 2010 raised an objection(s) equivalent to that 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 one (1) month from the date of this letter to file any submissions you wish. Your submissions should address the ground(s) 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 or direct amendment.
Alternatively, if you file amendments overcoming the objection(s) within this period, the Commissioner will not proceed with the hearing. However, if the amendments do not fully overcome the objection(s), you will be advised of this fact and the hearing may continue as above."

The applicant has not provided any submissions.

The objection

The objections raised by the examiner are that various claims lack novelty and inventive step in the light of a number of citations. Objection 2 refers to US 6060077 (referred to as D1) and objection 5 refers to WO 1998/018448 (referred to as D10). Claim 1 is directed to a lubricant characterised by being substantially anhydrous and comprising at least one polyhydric alcohol and a gelling agent. Both citations disclose compositions for use in medicine in which a polyethylene glycol compound is used in conjunction with a gelling agent (in the first case a hydroxypropylcellulose and in the second a lactic acid). 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

McNeil-PPC, Inc. sought a patent for warming and nonirritating anhydrous lubricant compositions. The application, 2009202931, was filed as a divisional of application 2003241338. The application was examined by Dr. S.D. Barker, a Delegate of the Commissioner of Patents. An examination report was issued on 17 November 2010, raising objections of lack of novelty and lack of inventive step. The objections were based on prior art citations, including US 6060077 and WO 1998/018448. The applicant was given two months to respond to the report but failed to do so. Consequently, a hearing notice was issued, allowing one month for written submissions. The applicant did not provide any submissions.

The legal issues that the court had to decide were whether the patent application met the requirements of novelty and inventive step as per the Patents Act. The applicant's failure to respond to the examination report and subsequent hearing notice meant that they had not disputed the objections. The court had to determine whether the objections raised by the examiner were valid and if the application could be refused based on the lack of a response.

Dr. Barker agreed with the examiner's objections that the patent lacked novelty and inventive step in light of the prior art citations. The applicant had not provided any submissions or amendments to overcome the objections. In these circumstances, the court found that there were no reasonable prospects of the applicant overcoming the objections. The application was refused as there was no response from the applicant, and the objections raised by the examiner were valid.

The final orders were that the patent application 2009202931 was refused. The applicant had failed to respond to the examination report and hearing notice, and as such, the application did not meet the requirements of novelty and inventive step. The court's decision was based on the lack of response from the applicant and the validity of the objections raised by the examiner.

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