Nestec S.A.

[2013] APO 55

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Nestec S.A. [2013] APO 55

Patent Application:                   2013200741

Title:Scored savory dough

Patent Applicant:  Nestec S.A.

Delegate:  Dr S.D.Barker

Decision Date:  27 September 2013

Catchwords:  PATENTS – examiner objection – divisional application – amendment of the citation rather than the application – application refused

Representation:  Patent applicant:  Shelston IP

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2013200741   

Title:Scored savory dough

Patent Applicant:  Nestec S.A.

Date of Decision:  27 September 2013

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2013200741 was filed by Nestec S.A. as a divisional of application 2010212419 on 12 February 2013.  An examination report issued on 26 June 2013, raising objections of lack of manner of manufacture (against claims 24 and 25), lack of novelty (against claims 1 to 23 in the light of a document referred to as D1, and claims 1 to 25 in the light of documents referred to as D2 to D9) and lack of inventive step (against claims 1 to 25 in the light of documents D2 to D9).  The report included the following note:

"Objections 1 and 2 of this report are based on the same grounds objected to in the examination of parent patent application 2010212419.  Please note that if a response overcoming these 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 below."

A response was filed on 8 July 2013, asking whether the note was correct, as the attorney was of the understanding that the Commissioner had discontinued divisional case management.  The examiner issued a report on 12 July 2013, stating in part:

"While IP Australia has ceased such practices as a matter of routine, Divisional Case Management may be applied to Divisional cases against which significant issues remain outstanding, when those issues are substantially the same as those of the parent and grandparent applications.  As the previous examination report indicates, the objections taken therein were substantially the same as those taken against the parent and indeed the grandparent applications, and which were remaining outstanding upon their respective dates of lapse."

The applicant responded on 12 August 2013 as follows:

"Rather than respond to the second examination report, the Applicant has filed (on 12 August 2013) voluntary amendments to the 'D1' document (AU 2002340817), which is to the same Applicant, having a common inventor.  If D1 indeed inherently anticipates the present invention then by corollary, it must provide fair basis for the voluntary amendments the Applicant seeks to make."

The applicant also asked that the further processing of the present application be put on hold while the amendment of D1 is considered.  The Commissioner declined to defer processing of the present application, and on 22 August 2013 the applicant was advised that they had one month to either propose amendments or file submissions in relation to refusal.  The applicant did neither.

The objection

I have reviewed the examiner's report, and I agree that there are appropriately raised objections.  Indeed, the applicant has not disputed the validity of the novelty and inventive step objections, but has instead decided to amend the citation D1 to insert claims to the matter that is anticipated by D1.  If this is successful, then the subject matter of the present application will be claimed by D1, and it will not be necessary to maintain the present application.  I am aware that an examiner has granted leave to make that amendment.

It is apparent that the applicant has chosen not to defend the present application.  They have provided no submissions disputing the objections, and have not proposed any amendment to attempt to overcome the objections, and it is not apparent to me that any amendment is possible.  Rather, the applicant has adopted a different strategy to obtain patent protection for the subject matter of the application.  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