Michele Caboni - [2021] APO 15

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Michele Caboni [2021] APO 15
Patent Application: 2012389957

Title:Connector with projections of conical or semi-conical section

Patent Applicant: Michele Caboni

Delegate:Xavier Gisz

Decision Date: 24 March 2021

Hearing Date: The Applicant did not request to be heard. This decision is based on the Applicant’s response filed on 27 April 2020 and 30 March 2020 and also considering the earlier responses.

Catchwords: PATENTS – examiner objection – modular elements used to construct a building – the specification relating to the presently claimed invention does not comply with section 40(2)(a) - sub-regulation 13.4 (1)(g) applied to provide applicant with three months to obtain acceptance of application.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2012389957

Title:Connector with projections of conical or semi-conical section

Patent Applicant: Michele Caboni
Date of Decision: 24 March 2021
DECISION

The specification relating to the presently claimed invention does not comply with section 40(2)(a).
The applicant is given the opportunity to overcome this deficiency.
Pursuant to sub-regulation 13.4(1)(g), the final date for acceptance is three (3) months from the date of this decision.
REASONS FOR DECISION

Background

Australian patent application 2012389957 (the application) in the name of Michele Caboni (the Applicant) is the national phase entry of PCT/IT2012/000407 (with publication number WO2014/041572) which was filed on 31 December 2012 which claims priority from Italian patent application TO2011A001250 with a priority date of 31 December 2011. Examination was requested on 19 March 2016.
A first adverse report was issued on 28 March 2017. A response to the first adverse report was received on 8 February 2018 with proposed amendments.
A second adverse report was issued on 8 March 2018. A response to the second adverse report was received on 24 March 2018 with proposed amendments.
A third adverse report was issued on 26 March 2018. A response to the third adverse report was received on 27 March 2018.
A fourth adverse report was issued on 28 March 2018.
The Applicant was advised on 11 April 2018 that the application had lapsed for failing to gain acceptance within the prescribed period.
A first request for an extension of time was filed on 20 April 2018. A delegate of the Commissioner sent a letter requesting further information on 30 April 2018. Further information was provided on 18 May 2018. An extension of 3 months to gain acceptance (from 28 March 2018 to 28 June 2018) was allowed.
A response to the fourth adverse report was filed on 20 April 2018.
A fifth adverse report was issued on 14 June 2018. A response to the fifth report with proposed amendments was received on 26 June 2018. The examiner sent an email to the applicant stating that there was insufficient time for an adverse report to be sent before the final date of acceptance.
The Applicant was advised on 11 July 2018 that the application had lapsed for failing to gain acceptance within the extended prescribed period.
Another response to the fifth adverse report with proposed amendments was received on 7 September 2018 together with a second request for an extension of time. An extension of time of 7 months (from 28 June 2018 to 28 January 2019) was advertised for potential opposition on 27 September 2018. There was no opposition to the extension of time and the Applicant was advised on 10 December 2018 that the extension of time was allowed.
A sixth adverse report was issued on 21 December 2018. A response to the sixth adverse report with proposed amendments was received on 27 January 2019. The examiner sent an email on 29 January 2019 to advise the Applicant that there was insufficient time to consider the response before the final date for acceptance.
On 5 February 2019 the Applicant requested a third extension of time to gain acceptance. An extension of 3 months (from 28 January 2019 to 28 April 2019) was granted on 22 February 2019.
A seventh adverse report was sent on 2 April 2019. A response to the adverse report with proposed amendments was received on 22 April 2019. On 29 April 2019 the examiner advised the Applicant that there was insufficient time to consider the application before the final date of acceptance. On 29 April 2019 the Applicant requested a fourth extension of time to gain acceptance. The extension of time of 3 months (from 28 April 2019 to 28 July 2019) was granted on 16 May 2019.
An eighth adverse report was issued on 7 June 2019. A response to the adverse report with proposed amendments was received on 18 July 2019.
A ninth adverse report was issued on 29 July 2019.
A fifth request for extension of time was filed on 7 August 2019. The request for extension of time was published for opposition on 12 December 2019. The extension of time (from 28 July 2019 to 28 March 2020) was granted on 20 February 2020.
A response to the ninth adverse report with proposed amendments was received on 19 March 2020.
A tenth adverse report was issued on 27 March 2020. A response to the adverse report with proposed amendments was received on 30 March 2020.
On 3 April 2020 a delegate of the Commissioner sent a letter to the Applicant stating that the application would be referred to a hearing officer to consider whether to accept or refuse the application under s49 or to direct amendment under s107 and that the applicant could, if he wishes, request to be heard on this matter.
On 8 April 2020 a letter was sent to the Applicant advising that the application had lapsed.
On 27 April 2020 the Applicant requested a sixth extension of time to gain acceptance together with another response to the tenth adverse report.
On 5 June 2020 a delegate of the Commissioner sent a letter to the Applicant stating:
“I refer to the request for an extension of time to gain acceptance.
I draw your attention to our letter of 3 April 2020 in response to your response of 30 March 2020. In our letter it was noted that your case was going to be considered by a hearing officer and a decision issued. When a decision is issued by a hearing officer, the final date for acceptance is altered to be at least three months from the date of the decision. For example, if a hearing officer’s decision is dated 3 July 2020, the final date for acceptance would be changed to 3 October 2020.
As such, given the present circumstances of your application, it is not necessary to process your request for an extension of time at this point in time. Allowing your request would only move the final date for acceptance to 28 June 2020, while the final date for acceptance following a decision will move the date to one much later. Therefore, I intend to postpone consideration of your extension pending a decision in relation to your application being made by a hearing officer.
In the circumstances, your application should not have lapsed. I will endeavour to have this corrected in our systems.”
The status of the application has since been changed from ‘lapsed’ to ‘filed’ (active).
Claims
On 27 April 2020 the Applicant has proposed the amendment of claim 1 to be as follows:
An anti-seismic building structure (12) comprising:
at least one modular element with a series of passages to create a vacuum;
an insulating panel joined to the modular element with a ribbed outer surface of the insulating panel making the modular element suitable to be mounted with a corrugated outer surface of the insulating panel which placed horizontally serves as the snap engagement of additional modular elements wherein the insulated panel can be positioned in overlapping manner on a concrete cover of 25 millimetres to create a slab characterized by significant thermal mass and heat reflecting capacity;
a first construction base (30) forming base of said building structure (12);
a second construction base (32) is connected with the first construction base (30) a first construction wall (34) is attached over the first construction base (30) through the plurality of dovetail male and female members;
a second construction wall (36) is attached over the second construction base (32) through the plurality of dovetail male and female members;
a construction cover (38) is attached above the first construction wall (34) and the second construction wall (36) through the plurality of dovetail male and female members; and
a third construction wall (40) is attached above said construction cover (38) through the plurality of dovetail male and female members,;
wherein, the first construction wall (40) and the second construction wall comprises a plurality of panels with a plurality of cavity, wherein the plurality of cavity provides a slotting attachment of a plurality of connector.
The invention
The specification is quite difficult to understand. There are relatively minor problems such as the specification referring to things such as “cutlery” and “conical sections” which have no basis in the described invention. There are also more significant problems such as the specification omitting explanation of apparently crucial aspects of the invention.
Despite these errors and deficiencies in the specification, with some effort many aspects of the invention can be deduced.
The benefits of the invention are described at page 1 line 12 to page 2 line 5:
“In particular, the building structure is made as decorative cornice insulation. The modular structure with variable geometry object of the present invention is particularly designed for the realization of: foundations for supporting earthquakes made integral in capsules, for anti-seismic, heat-insulating, monolithic walls; mono-directional acoustically-insulating roofs and floors with variable geometry, bi-directional acoustically insulating roofs and floors with variable geometry; external thermal insulation composite systems coats, with monolithic longitudinal and reticular structural concrete core for seismic reinforcement to existing building structures to be rehabilitated, also thermally and acoustically; external ventilated thermal insulation composite systems coats; thermo-acoustic·ventilated roofs in extrados in metal alloys; thermo-reflective and thermoacoustic floors with extrados surfaces made of aluminum film, metal alloys, plastic-composite thermoplastic, polystyrene and/or polypropylene, with exclusive breathable characteristics and with thermal and acoustic insulation.”
My understanding of the invention is as follows. The connector is a steel bar that is bent to form at least one V shaped depression. The connectors are placed on a vertical member. The vertical member has protrusions thereon which support the ends of the connectors as shown in figure 27:
The connector is used with bars as shown in figures 16-18:
The bars and connectors are joined with brackets (3). The brackets support reinforcing iron bars. The description states at page 8 lines 3 to 5:
“In particular, the inventive connector 1 is equipped with at least one (but preferably two) seat 3 for accommodating at least one reinforcing iron 5.”
The connectors, bars, brackets and reinforcing iron bars together make a structure as shown in figure 25:
The structure is the formwork which is embedded or coated in concrete. When set, the concrete and embedded formwork form a slab. The slab is joined to an outer panel to form a modular element.
The surface of the modular element is described as at page 4 line 20 to page 5 line 2:
“The outer surfaces of the modular element with variable geometry have a series of grooves and the ribs, preferably shaped dovetail rib the undercut or circular, which allow to join two or more elements to each other; these modular elements of variable geometry may also be combined head of using different types of pegs male and female or rib to rib horizontal female or male, arranged in correspondence of the passages, thus ensuring the reversibility of the element.”
A modular element is shown in figure 8 and two modular elements joined together is shown in figure 9:
The joining of modular elements (with what I assume to be pegs or ribs which fit into grooves) is shown in figure 3:
The examiner objection
The examiner objection in the eighth report was as follows:
“I have carefully and thoroughly considered all the response and amendments submitted by the applicant so far. Unfortunately the claims are still not clear with regard to the scope of the invention and how the claimed invention works.
As raised repeatedly in the previous examination reports, Claim 1 appears to include two completely separate and unrelated parts, i.e., a building structure (which is effectively a formwork to my best understanding) formed by bases and walls through dovetail configuration, and a plurality of connectors which seems to be a number of bars that are folded or bent in different ways. Although Claim 1 further defines that each of the connectors is coupled to a snap-type bayonet coupling and is somehow linked to a bracket, it is unclear how the connector works together with or in the building structure. In other words, there is no clearly defined working inter-relationship between the connectors and the building structure. The embodiment described in the specification also does not provide any further information as to how these two completely separate parts work with each other. Are these connectors used for assembling the building structures? What are the functions of these connectors and how are they structurally or functionally interacting with other parts of the building structure? There is nowhere in the specification that provides clear explanation as to these questions and which are crucial to understand how the claimed invention works.
Even just considering the connector itself, it is also unclear how the connector is coupled to the snap-type bayonet or how it is linked to the bracket. Note that the description does not disclose any useful information as to what the snap-type bayonet coupling actually is. What is it looking like? What structure does it have? How is it coupled to the connector given the connector is simply a bar folded in different way? Furthermore, noting that the term "bracket" in this claim is rather extremely broad and it could be any brackets but not limited to the brackets as described in the description or shown in the figures, how is the connector linked to the bracket?
While the applicant has put lots of time and effort to their response to attempt to address the issues raised in the previous examination report, the response provided by the applicant does not provide any clarification in regard to the issues raised above. Note that most of the figures (e.g., Figs. 1-13, 25, and 28) as currently presented in the application are in very poor quality and couldn't provide any useful information to help understand how the claimed invention works. In other words, there are lots of assumptions or guesswork that need to be taken in looking at the drawings and even so, it is still unclear how the connector shown in e.g., Fig. 30 interacts with the building structure shown in e.g., Fig. 1.
It also follows that the specification does not provide a clear enough and complete enough disclosure of the claimed invention because it fails to provide sufficient information to enable the person skilled in the art to perform the invention over the whole scope of the claims without undue burden or the need for further invention. As mentioned above there are lots of gaps that need to be filled to even guess how the claimed invention works, let alone to clearly and fully understand how the claimed invention works. In other words, the person skilled in the art would need a lot more information on top of what the applicant has provided in the application to actually make the claimed invention work and to eventually arrive at the invention.
Given all the necessary and essential information is missing from the whole specification (including the description, drawings, and the claims), it is simply impossible for me to determine the scope of Claim 1 (and its dependent claims) and therefore I can only provide my opinions (including conducting another full search pending the applicant's response) on the novelty and inventiveness of the claims after this issue is resolved by the applicant.
This also means that any attempts to add in the missing information will very likely not be allowable as this will introduce new subject matter that has not been fully disclosed in the original specification.
With regard to the amendments proposed to the description, it seems that the applicant has added a large portion of their response into the description (e.g., Paras. [0002]-[0004]) and this is just repeating what the applicant did in the response but not provide any extra information to explain how the claimed invention works.
The applicant's attention is also drawn to the issues raised in all the previous examination reports as those issues still remain relevant and need to be fully addressed before the application can progress any further. Given the nature of the complexity of the issues, the applicant is strongly recommended for his own best interest to consider using the professional services of a Patent Attorney. Otherwise I see very little chance that this application can get accepted within the set deadline. Also note that applicant has been given a significant extension of time to resolve the issues and to get the application ready for acceptance. However, the application is still nowhere close to be ready for acceptance.”
The examiner objection in the ninth report was as follows:
“I have carefully and thoroughly considered your submission and the proposed amendments including the most submission on 25th and 26th July. Unfortunately, the proposed claims are still not clear in regard to the scope of the invention and how the claimed invention works.
In particular, there is no substantial difference between the amended claim 1 and the claim as previously presented except that you has moved some features to the beginning of this claim and added some purpose statement about the connectors. However, it is still not apparent as the inter-working relationship between the connectors, dovetail male and female, the wall/base element, and the bayonet fitting (please see my objection 23 as raised in the previous examination report for detailed discussion).
I note that you have redrafted Claim 14 based on the previous claim 14 to a method claim and further added Claims 15-32 to be appended to this method claim. However, it is not clear how the base elements, the wall elements and the cover element as defined in this claim are joined.
Note that your submissions didn't provide extra information or explanation as to how the claimed invention works except some simple statements.
As to the drawings you submitted, these drawings look no different from the drawings as originally filed and as such these drawings are so vague and unclear that they do not provide any useful information to help understand how the claimed invention works.
It follows that the specification does not provide a clear enough and complete enough disclosure of the claimed invention because it fails to provide sufficient information to enable the person skilled in the art to perform the invention over the whole scope of the claims without undue burden or the need for further invention. As all the necessary and essential information is missing from the whole specification, it is simply impossible for me to determine the scope of the claims and therefore I will have to reserve my opinions and search on the novelty and inventiveness of the claims.
This also means that any attempts to add in the missing information will very likely not be allowable as this will introduce new subject matter that has not been fully disclosed in the original specification. In other words, I see very little change [sic] that the application can get accepted no matter how much you likes [sic] to progress this application further.”

The examiner objection in the tenth report was as follows:
“The proposed amendment is not allowable under section 102(1) because, as a result of your amendments filed on 19th March, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification as filed, together with the prescribed documents (if any).
Under the Australian Patents Act you are not able to add material into your specification that was not in the filed specification. By filed specification I mean your PCT specification that you used to enter the Australian national phase.
Claim 1 as you have proposed to have amended defines a plurality of construction elements (base, walls, and covers) joined to one another through a plurality of dovetail male and female members. The claim also defined the construction walls comprising a plurality of cavities wherein the plurality of cavities provides a slotting attachment for a plurality of connectors.
The description and drawings that made up your filed specification did not include any detail of construction elements joined together through a plurality of dovetail male and female members. I recognise you have provided in your submission a number of good quality figures that may show a dovetail connection. However, there is no such detail in your original figures and neither is there any such detail disclosed in the description as originally filed that would indicate to the reader the various construction elements are joined using dovetailed members. Consequently, I am not able to accept these amendments and hence I’m not able to examine them any further.
Notwithstanding the fact that the amendments are not allowable, the addition of the dovetail members and slotting attachment using a plurality of connectors does not overcome previous objections regarding support and enablement. In particular, the connector interacting with the grooves does not sufficiently describe the interworking relationship between all the components such a person skilled in the art can perform the invention over the whole width of the claims without undue burden.
Since the amendments are not allowable, I refer the applicant to the previous examination report, maintain the section 40 objections and reserve all further search and examination on the claims.
This is the tenth examination report and there have been a large number of proposed amendments and submissions. Having reviewed the entire case file in detail with my supervising examiner I am unsure as to what your invention is or how it would work. I am not confident there is material in the specification as filed that would serve as a patentable claim. I see very little opportunity for the application to be accepted no matter how much you may like to progress this application further.”
Full disclosure – s 40(2)(a)
Section 40(2)(a) states:
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;
In order to comply with sec 40(2)(a), the complete specification must provide sufficient information to enable the skilled person to perform the invention over the whole width of the claims, without undue burden or the need for further invention. (The Explanatory Memorandum and Biogen Inc. v Medeva PLC [1996] UKHL 18; [1997] RPC 1 at 48).
Consideration of full disclosure
The invention defined in claim 1 is only directed to the external features of the modular elements and not to the internal features (such as the connectors and reinforcing bars). More specifically, the invention claimed is essentially the invention shown in figure 3 and figures 8-13.
Figures 3, 8 and 9 have already been reproduced above. Figures 10 to 12 are reproduced below. I have reproduced a slightly edited version of figure 13; I have rotated Figure 13 (and rotated item numbers) for ease of legibility.
Dovetail joint
The inventive concept appears to be that two slabs can be connected in a perpendicular arrangement, each slab having a plurality of complementary dovetail joints.
There is essentially no information about these dovetail joints, such as the size, angles etc. The figures are too small to discern any details. Although dovetail joints are well known in the field of woodwork, it is unclear how the pieces would be assembled at the scale for constructing a building.
The difficulty in understanding the specification as filed is compounded by the illustrations provided in the proposed amendments of 27 April 2020. For example, in the proposed amendments of 27 April 2020, the Applicant provides figure 3 and figures 8-13 as follows (I note I have rotated figure 13 for legibility):
In the amended figures it is not clear which joints are dovetailed. This is because there does not appear to be any taper or flare in either of the joints. The specification does little more than discuss the idea of using dovetails and leaves it to the reader to work out which joints or aspects of the claimed invention should utilise dovetails and how to do this. There is insufficient detail in the specification as filed for a person skilled in the art to perform the invention presently defined in the independent claim (claim 1). Consequently, I find that the parts of the specification relating to the claimed invention do not comply with section 40(2)(a).
Should the applicant be given a further opportunity to amend?
I have found that the parts of the specification relating to the presently claimed invention do not comply with section 40(2)(a). Further, I do not consider that the description can be amended to overcome this objection.
Despite finding that the objection is properly raised, I will not refuse the application. The drawings include articles that are not directly addressed in this decision (for instance, figures 16, 17, 18 and 27). These figures appear to be sufficiently precise that it may be possible to draft claims that would comply with section 40(2)(a). However, as the description is poorly drafted and lacking in enabling details it is likely that any amended claims would raise objections in relation to utility (at least), if not also novelty and inventive step objections. Also, given the prosecution history of this application it seems unlikely that the applicant is interested in pressing these aspects of the specification.
The applicant has the opportunity to propose amendments in line with this decision. However, the applicant should carefully consider obtaining independent legal advice to ensure that any amendments support his business interests and would otherwise be valid. Pursuant to section 107 I direct that any amendments must be directed to an invention different from the subject of the present claims.
Conclusion
The specification relating to the presently claimed invention do not comply with section 40(2)(a).
It might be possible to amend the claims such that they define an invention that has been fully described. It is appropriate to allow the applicant the opportunity to try to amend the specification in line with this decision.
Pursuant to sub-regulation 13.4(1)(g), the final date for acceptance is three (3) months from the date of this decision.
Xavier Gisz
Delegate of the Commissioner of Patents