Ora Vax Inc v CSL Limited

[1998] APO 18

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 675938 in the name of OraVax Inc

Title:          Oral Treatment of Helicobacter Infection

Action:          Opposition under section 59 by CSL Limited Request Application for dismissal under Regulation 5.5 by OraVax Inc

Decision:          Issued            .

Abstract

Request for dismissal refused. Particulars relating to novelty, obviousness, manner of manufacture and S40 were found to be adequate.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 675938 by OraVax Inc and Opposition under section 59 by CSL Limited and a Request for dismissal under Regulation 5.5 by OraVax Inc

background

Patent application 675938 was advertised accepted on 27 February 1997 and a notice of opposition was filed on 27 May 1997 by CSL Limited. On 27 August 1997, the opponent filed a statement of grounds and particulars in support of their opposition. On 29 September 1997 the applicant filed an application for dismissal of the opposition. On the 3 December 1997, the delegate proposed a direction be given that the opponent must file further and better particulars for grounds 1 to 3 to the opposition. On the 17 December 1997, the opponent made a written submission on the application for dismissal and the proposed direction. Subsequently on the 7 January 1998, the delegate decided not to give the proposed direction in the light of the opponent’s submissions. A hearing was set down for 20 March 1998. Neither party attended and each requested that the Delegate take into account their respective written submissions.

The Statement of Grounds and Particulars

The Grounds of Opposition on which the Opponent relies are that the alleged invention of Application No. 675938 is not novel, is obvious and does not involve an inventive step and is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies and that the complete specification of Application No. 675938 does not comply with Section 40(2) or (3) of the Act.

Under the joint particular of novelty, inventive step and manner of manufacture, 13 documents were listed. Each document listed had a one sentence explanation of its relevance. A typical example is as follows:

“Document A: Czinn, S.J. and Carr, H.S. (1989). Pediatr. Res., 25:176A. this document discloses production of a gastrointestinal immune response following oral  immunization with Campylobacter (now Helicobacter) pylori.”

The particulars also contain; a statement that the invention is a mere collocation of known integers, a description of the common general knowledge in the art, 10 particularisations of S40 matters, and a statement contesting the priority date of the application.

Request for dismissal

General Submissions
The applicant in their letter of 29 September 1997 referred to a number prior decisions of the Patents Office:- DuPont v DowElanco (1994) AIPC 91-067, Commonwealth Scientific and Industrial Research Organisation v Cem Corporation (1994) 29 IPR 72 and Mobay Corporation v The Dow Chemical Company 24 IPR 379 - as authority for the proposition that if the applicant cannot determine the case it is required to defend then it is “unclear whether a serious opposition has been foreshadowed.”

And in their summary, the applicant stated:

“  the patent applicant does not know the complete case that it has to answer in the opposition....Accordingly, we submit that none of the grounds relied on by the Opponent is sufficiently particularised and therefore the grounds relied on are not supported. Consequently the opposition should be dismissed.”

In support of this, the applicant also referred to Diamond Scientific Co v CSL Limited (1992) AIPC 09-927 for the proposition that “the applicant has the right to know at the time the Statement of Grounds and Particulars is filed, the complete case that it has to answer in the opposition”.

Opponent’s response

On the 17 December 1997, the opponent provided submissions on the request for dismissal and the proposed direction for further and better particulars.

In their response the opponent referred to the principles enunciated in General Steel Industiles Inc. v. Commissioner for Railways (New South Wales) & Ors. (1964), 112 CLR 125 and concluded that:

“In the present case, it is submitted that there is no basis for a conclusion in relation to any of the grounds set out in the Statement of Grounds and Particulars that the opposition on that ground could not possibly succeed”.

The opponent commented on the proposed direction and “argues on the facts of the case that there is no undue burden on the applicant”. Their submission (in full ) on this point is as follows:

“In relation to the proposed direction, however, we wish to point out that whilst it has been accepted that where a Statement of Grounds and Particulars includes more than 7 to 10 documents particularised by number only in respect of any one ground, this may place an unreasonable burden upon the applicant in determining the case against it, and accordingly that a provisional of further and better particulars may be appropriate.  The question of what might be regarded as a "long list" of, for example 7 to 10 documents will very much depend on the circumstances in each case (see Cotterill v. Trenton Pty. Ltd. (1994) 28 IPR 689 and ICI v. Irenco & Ors. 26 IPR 154). We would therefore submit that the Particulars are not defective merely because they provide a list of 7 to 10 documents or more without any indication of relevance or directions to which parts of the documents are to be relied on. Thus, in the present case, we point out that six of the documents listed for grounds 1 to 3 are in fact abstracts of one page or less in length (documents A, E, H, J, L and M), and of these abstracts three are abstracts in the names of one or more of the inventors named in Application No. 675938 (documents A, E and J).In addition, one of the documents (document D) is a paper published by the inventors named in Application No. 675938, whilst two further documents (documents C and G) are documents referred to by the applicants themselves on page 3 of Application No. 675938.  Thus, of the 13 documents listed in the Statement of Grounds and Particulars in this matter, 9 of these documents are either abstracts and / or publications of the inventors, or are referred to in Application No. 675938.  Bearing these circumstances in mind, it is respectfully submitted that the total list of 13 documents is not so extensive as to place an undue burden on the applicant in preparing its case (ICI v. Irenco & Ors. 26 IPR 154).”

I note that patent application 675938 lists on pages 20 to 24 some 33 references, 2 of which are referred to by the opponent (erroneously at page 3 ).

Decision

Dismissal of the whole of the opposition

The grounds for dismissing an opposition are similar to the grounds for summary dismissal which are described in General Steel IndustriesInc v Commissioner for Railways (N.S.W.) and others (1964), 112 CLR 125:

“It is sufficient for me to say that these cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his cause of action - if that be the ground on which the court is invited .. to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; "so obviously untenable that it cannot possibly succeed"; "manifestly groundless"; "so manifestly faulty that it does not admit of argument"; "discloses a case which the court is satisfied cannot succeed"; "under no possibility can there be a good cause of action"; "be manifest that to allow them (the pleadings) to stand would involve useless expense.”

“At times the test has been put as high as saying that the case must be so plain and obvious that the court can say at once that the statement of claim, even if proved, cannot succeed; or "so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument"; "so to speak apparent at a glance.”

It is also established that argument in support of dismissal of the opposition should not argue the substantive issues of the opposition; it must establish the opposition as a whole cannot possibly succeed without going into the details of the opposition. See L'Air Liquide, SA pour L'Etude et L'Exploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd 24 IPR 77; (1992) AIPC 90-872.

Turning to the applicant’s general submissions, I do not see how a failure to sufficiently particularise any or all of the grounds of opposition leads to a conclusion that no serious opposition has been foreshadowed. The test to be applied in not one of whether the particulars are adequate, but rather whether it can be clearly demonstrated that the opposition as a whole could not succeed. The case of Assmann v PYK Pty Ltd and Spinville Pty Ltd (1 October 1992, unreported Patent Office decision on 618695) is an illustration of this principle as the opposition was dismissed because no statement of grounds or particulars had been filed.

Reading through the statement of grounds and particulars I cannot say that they are “so obviously untenable”. For example, “at a glance” I can see that under the ground of lack of novelty, 13 documents are particularised. Therefore there is at least one ground that is not “so manifestly faulty that it does not admit of argument”. As the delegate stated in L’Air Liquid (supra);

“so long as at least one ground has at least one adequate particularization, the opposition should not be dismissed in its entirety”

On this basis, I reject the applicant’s submissions that the opposition as a whole should be dismissed.

The applicant has also raised a number of specific issues regarding dismissal of individual grounds. I will deal with these issues under the relevant ground in my decision.

Dismissal of individual grounds of opposition and considerations of whether directions for further and better particulars should issue

It is established that the Commissioner may dismiss a particular ground of opposition where it is unsupported by any of the particulars in the statement of particulars. See L'Air Liquide (supra). But the Commissioner should not dismiss a ground of opposition merely because it is not supported by some of the particulars. See Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd 24 IPR 368; (1992) AIPC 90-912.

The case of Genelabs Technologies Inc v Murex Diagnostics Australia Pty 36 IPR 54 summarises the issues for dismissal and distinguishes the request for dismissal from a direction to issue further and better particulars. In quoting from B.C. Cairns in Australian Civil procedure 3 rd Ed. (1992) at pages 120-122, the delegate stated:

“A party is entitled to know every material fact on which the opponent relies.  The nature and character of the charge must be known with such precision that the party can prepare a brief, and not be taken by surprise.”

“Two situations must, however, be distinguished.  One is that a pleading may allege albeit inadequately all the material facts.  In that case, it is proper for it to be supplemented by the separate delivery of particulars.  The second situation is that of a pleading that does not allege the material facts at all.  Where that occurs, the deficiency may not be cured by the delivery of particulars.  Such pleadings, or at least the defective allegations, should be struck out.  This is, it is submitted, the correct position in law, but a good deal of latitude is allowed by the courts in applying it.”

This was applied to decisions of the Commissioner in dismissal actions as follows:

“Whether further and better particulars are appropriate will involve considering the circumstances surrounding the request.

There may be circumstances where the particulars do not provide any material facts.  In these circumstances further and better particulars are inappropriate and the Commissioner may direct that the ground is to be dismissed, if there are no remaining particulars, or that the particular is not to be relied on at the substantive opposition hearing.

There may be circumstances where the particulars do provide material facts but do not clearly or adequately describe the case to be defended.  In these circumstances further and better particulars are required.

There may be circumstances where the particulars do not clearly or adequately describe the case to be defended and they refer to unusually large numbers of complex documents. In these circumstances further and better particulars are required.”

This case establishes the principle that there can be no basis for the dismissal of a ground merely because the particulars are inadequate. Therefore the submission of the applicant to that effect is rejected.

I will now turn to specific grounds and particulars.

Lack of Novelty
The particular in support of the ground of lack of novelty reads as follows:

“The alleged invention as claimed in any one of the claims of Application No. 675938 is not novel having regard to any of the following prior art information whether taken alone or in combination.”(a list of 13 documents follows).

From my understanding of the applicant’s submission, the fundamental reason underlying the request for dismissal is that:

“the opponent appears to be relying upon 13 documents, yet there has not been one instance where page and line references have been provided to direct the applicant to the specific part of the document relied upon.”

From this basis, the applicant argues that the opponent has not sufficiently particularised the grounds to the extent that the applicant will know the case against them. And therefore, the applicant argues, this ground should be dismissed. Although I have already rejected this line of argument, I still need to consider whether the particulars provide material facts and whether they are adequate.

In their argument, the applicant referred to the decisions of the delegate in Cotterill v Trenton (1994) 28 IPR 689, Alvern Norway A/s v Trans Global Concepts Pty Ltd 38 IPR 158, Genelabs Technologies Inc v Murex Diagnostics Australia Pty (supra) and to Chapter 11.2.3 of the Australian Patent Office: Manual of Practice and Procedure Volume 3 as authority for dismissal of the opposition upon the proposition that the particulars are defective “ since there are no indications in the Statement of Grounds and Particulars as to which part of the disclosure of each of the documents is relied on by the Opponent”.

In the Cotterill v Trenton (supra) the delegate in considering the issue of 47 documents (by number only) cited against novelty, obviousness and prior claiming determined that further and better particulars would be ordered so as to identify which documents were relied upon to support each ground. Further the delegate ordered that if the number of documents with respect to a particular ground exceeded 10 documents then further particularisation was required. In referring to ICI v Irenco (supra) the delegate quotes:

“The further particulars should briefly and generally identify what information in each of the documents is relied upon in relation to the particular ground of opposition. Any more than that would unduly fetter the opponents case and tend towards the arguing of evidence.”

In Alvern Norway A/s v Trans Global Concepts Pty Ltd (supra), the particulars complained of were of a differing character (not being patent documents) to those particulars presented here. The applicant quotes from the decision.

“The applicant can not appreciate the case it has to meet if it is required to guess which one or combination of a perhaps long list of inadequate particulars it needs to take seriously.”

It is perhaps worthwhile to consider other instances in which the issue of the number of documents cited against a ground was important. In Dominion Mining v Technological Resources 31 IPR 609 the citing of 16 documents (categorised by technical content combined with an assessment of their relevance) did not place an undue burden on the applicant. The delegate held:

“The decisions in ICI v Irenco (supra) and DuPont v DowElanco (supra) state that a large number of documents provide no particulars at all and that more than 10 documents may be too many unless specific page and line references are given.  However I do not believe that we can set down any rigid numerical limit.  Each case must be treated on its merits taking all relevant factors into account.  The overriding consideration must be whether the applicant can reasonably be expected to understand the case presented.  Just because there are more than 10 documents does not necessarily mean that the applicant will be unable to understand the case against them.  What it means is that there may be a need for further particularisation and this must be considered in the light of the specific facts of the case.  Further, it would be only in very unusual circumstances that citing more than 20 documents could be adequate without further particularisation."

In ICI v Irenco 26 IPR 154, further particulars were requested on 36 documents; the direction for further and better particulars stated that the opponent was to “briefly and generally identify what information in each of the documents is relied upon in relation to the particular ground of opposition”. In Bally Gaming International  v Aristocrat Leisure Industries Pty Ltd 36 IPR 54, 11 documents were cited in the particulars. In that decision the delegate took “the liberty of considering the claimed invention” and did “not believe that such technology would require extensive examination of related documents”. In Genentech Inc v Celtrix Inc 26 IPR 629, 28 documents were cited against novelty (some documents had long titles) and 12 articles (cross-referenced in the specification) against the ground of obviousness. The delegate had no difficulty in concluding that the level of particularisation was sufficient. In Mackenzie v UwatecAust 30 IPR 575, 5 patent documents (by number only) were cited against novelty and obviousness. This was sufficient particularisation. In Genelabs v Murex Diagnostics (supra), 89 articles were particularised in the ground of lack of inventive step. The level of particularisation included some titles. The was no need for further particularisation of these documents.

As the delegate stated in Alvern Norway A/s v Trans Global Concepts Pty Ltd  (supra):

“What constitutes adequate particularisation of a particular ground of opposition within these general guidelines has been the subject of numerous Patent Office decisions, for example Mobay Corp. V Dow Chemical Co. 24 IPR 379, E.I. Dupont de Nemours and Company v DowElanco (1994) AIPC 91-067 and ICI v Irenco Inc & Ors 26 IPR 154. However while I believe these decisions are instructive it is also evident that they should not be taken to set out prescriptive requirements and that what constitutes adequate particularisation will depend very much on the circumstances surrounding each particular case (Genelabs v Murex Diagnostics 36 IPR 54, ICI v Irenco Inc & Ors, supra). This is to say no more than that the Commissioner has a broad discretion under Regulation 5.10(5) that any direction made should be "appropriate in all the circumstances." (See Ferocem v The Commissioner of Patents (1994) AIPC 91-057)”

This is consistent with patent prosecution practice. As the delegate stated in Paladin Hybrids v Plant Genetic Systems N.V. (5 December 1996 unreported Australian Patent Office decision on 655574).

“I believe the list of eight documents is not so extensive so as to place an undue burden on the applicant in preparing their case, ICI v Irenco Inc and Others 26 IPR 154. Indeed assessment of the documents against the current set of claims would be something that a patent attorney would routinely be able to carry out in order to provide advice in relation to these particular grounds.”

And what amounts to a undue burden also includes a judgment of the burden placed upon the opponent. I am reminded of the words of the delegate in Bally Gaming International v Aristocrat Leisure Industries Pty Ltd (supra) in quoting the words of Cotton LJ. in Holliday v Heppenstall (1889) 6 RPC 320 at 327 as a warning about overburdening the opponent by insisting on too precise particulars;

“I do not think it would be right to bind them to state what the particular pages are of the books on which they rely as regards the anticipations. That might throw a burden on them, and prevent possibly their case being properly brought forward before the Court, if by some accident they had not properly specified, or had omitted a page on which they intended to rely as regards anticipation.”

As the ground of lack of novelty has been particularised by 13 documents, there are clearly material facts upon which the opposition can rest. Therefore this ground cannot be dismissed. Given that each document is particularised and given that some of the documents are abstracts, some are articles written by inventor and some were referred to in the specification , I do not believe that it would place an undue burden on the applicant in considering the 13 documents uncharacterised by page and line references. Therefore the particulars are adequate.

Furthermore it seems to me that if the applicant quotes 33 documents as relevant prior art, which can be seen as an indication of amount of information that the applicant considers necessary to put the invention in its proper perspective, then a mere 13 documents cited by the opponent should cause no undue burden.

Therefore the submissions as put by the applicant cannot be agreed with. Accordingly I refuse to dismiss this ground of opposition. As each document is adequately particularised and there is no undue burden, the issue of directing further and better particulars does not arise.

As the applicant’s submissions on lack of novelty are also raised against the other grounds and since I have already decided upon these matters, I do not need to specifically address these issues again.

Obviousness or lack of Inventive Step
The opponent’s particulars in relation to the ground of lack of inventive step are as follows:

“The alleged invention as claimed in any one of the claims of Application No. 675938 is obvious and does not involve an inventive step having regard to the common general knowledge in Australia whether taken alone or in combination with any of the following prior art information” (the same list of 13 documents follows).

And the common general knowledge is identified as follows:

“The common general knowledge is that existing amongst those skilled in the vaccine art in Australia at the priority date of the claim under consideration, and includes:
(i) knowledge of the distinction between prophylactic vaccines and therapeutic vaccines;
(ii) knowledge of the production, formulation and use of prophylactic vaccines in prevention of infection in animals, including humans;
(iii) knowledge of the use of small animal models in research and development relating to prophylactic vaccines and the use thereof in prevention of infection in animals, including humans.”

In their submission the applicant states that:

“the Opponent has not provided an appropriate description of the alleged common general knowledge of the relevant person skilled in the art, nor for that matter provided an identification of the relevant person skilled in the art.”

In relation to the ground of obviousness, the applicant disputes the opponent’s assertions of common general knowledge. As these arguments are clearly going to substantive matters of evidence they are not appropriate matters to be taken into account in the exercise of the Commissioner’s discretion: L'Air Liquide (supra).

The applicant argues that that it is unclear whether;

“the person “skilled in the vaccine art” is skilled in the vaccine art directed to eliciting an immune response from a mammalian or non-mammalian host. Further, there are important relevant differences in the type of knowledge required for immunologists working in the different vaccine arts in relation to mammals or birds for example, and consequently, the description of the skilled addressee in not nearly sufficient.”

These statements indicate to me that common general knowledge and the identity of a person skilled in the art will be disputed issues. As this type of debate is more appropriate for the substantive hearing where expert evidence may be presented, it is not a relevant factor to be taken into account when considering dismissal of a ground; See L'Air Liquide (supra). Furthermore, the decision in Paladin Hybrids v Plant Genetic Systems N.V. (supra) suggests that the identity of the skilled person is not always required to be explicitly stated as this can be “fairly self-evident from the nature of the claimed invention.” See also the decision in Bally Gaming International v Aristocrat Leisure Industries Pty Ltd (supra). Rather what is required is that the technological nature of the common general knowledge is clearly identified; See Genelabs v Murex Diagnostics (supra), and Instant Foundations (Aust) Pty Ltd v Steel Foundations Limited (20 March 1996, unreported Australian Patent Office decision on 658252).

The applicant further argues that “no particulars have been provided as to which portions of the documents listed the Opponent proposes to rely on to support such an assertion” and supports their contention with reference to Instant Foundations (Aust) Pty Ltd v Steel Foundations Limited (supra), where the delegate commented:

“...I also accept that the particulars should clearly state the case against inventive step rather than rely on the lack of novelty statements and the cited documents alone. The extra information I would expect to see in the particulars are brief material facts regarding the relevance of the common general knowledge and the supporting documents to the case against inventive step. In line with E.I. Dupont decision (cited earlier) an elaboration of the common general knowledge requires the particulars to include a brief description of the alleged common general knowledge and identification of the person skilled in the art...”

However, I do not believe that the delegate’s words infer a general obligation to particularise to the extend argued. On the facts in this case, I consider that the description of common general knowledge, the identification of the skilled person in the art, and the details of the material facts as provided by the particularised documents are sufficient. See DuPont v DowElanco (supra).

Accordingly, I believe that this ground is adequately particularised and thus the opposition on this ground is not “manifestly groundless” and so dismissal is not warranted. As a consequence of the grounds been adequately particularised, there is no need to consider whether directions for further and better particulars should be given.

Manner of Manufacture
In their written submission, the applicant stated that as a result of the decision in Philips v Mirabella (1985) 32 IPR 449 there is a distinction between allegation of lack of inventive step and failure to satisfy the requirement of “quality of inventiveness”. From this, the applicant infers an onus on the opponent:

“...it is incumbent on an opponent to set out under the ground of manner manufacture particulars that relate to that ground only, to make it clear to the patent applicant by reference to alleged material facts, why the opponent considers the claims of the opposed application do not define a manner of new manufacture and to make it clear how its particulars under that ground differ from its particulars under any of the other grounds relied upon.”

I do not know of any authority that suggests that the onus on an opponent is of this order. That is not to say that such action is unavailable to opponents or that on some factual situations this degree of particularisation is appropriate, but rather that the test for adequate particularisation is whether on the facts of the case the applicant can determine the case it has to answer. The test is not a prescriptive one and will depend upon the facts of the case.

As support for their position, the applicant referred to the case of Instant Foundations (Aust.) Pty Ltd v Steel Foundations Limited (supra). In that case, the delegate found that:

“The particulars simply amount to an ambit statement of the type of manner of manufacture that is allegedly lacking. There are no details to support the assertion that the invention is a mere collocation of known integers and no details to establish a prima facie case.”

In that case, the particulars “state that the invention as claimed is directed to a mere collocation of known integers”. The opponent in that case had not provided any description of what integers were known nor details of prior art or common general knowledge. The applicant had merely identified the type of manner of manufacture that was in issue. That is not the case here. I don’t believe that the degree of particularisation required in this case is to identify the features themselves. Such an action is appropriate for the substantive hearing. I have come to this conclusion based upon the particularisation of the relevance of each document and also in view of the nature of the claims in which the number of integers to be considered is small. This is a case in which the details of material fact are supplied by the listed documents and it is therefore not incumbent on the opponent to identify these features. The case of E.I. Dupont de Nemours and Company v DowElanco (supra) is in point on the adequacy of a particular for the ground of lack on manner of manufacture:

“For manner of manufacture, e.g. a mere collocation of known integers, together with a brief details of material facts to establish a prima facie case.”

Therefore this ground will not be dismissed. On the facts of the present case, I do not believe, given my previous comments on this issue, that considering the 13 documents would place an undue burden on the applicant. As I have found the particulars adequate, any further particularisation of this ground is not required.

Section 40 matters
In relation to S40 matters, the applicant states that the onus on the opponent is heavier because the examiner has already considered compliance with S40:

“..the opponent must show special reason why these grounds are relevant to its Opposition.’

“With regard to the allegations of lack of clarity under this ground, we submit that in order to establish a primae facie case of non-compliance with the requirements of s40 it is not enough merely to assert that certain expressions in the claims are unclear: we submit that it is incumbent on the Opponent to provide more than one credible meaning for the expressions referred to.”

“The Opponent has not sufficiently justified why questions of compliance with s40 should be reconsidered by the Patent Office [at the substantive hearing].”

italics: mine

This matter has been previously considered and I am in agreement with the delegates in L'Air Liquide, Borden Inc v Elkem, Instant Foundations (Aust.) Pty Ltd v Steel Foundations Limited and Paladin Hybrids v Plant Genetic Systems N.V. (supra) that this is not a relevant matter for consideration in a dismissal action.

The applicant comments:

“Certain of the particulars allege lack of clarity in language which is commonly employed in patent claims in similar contexts and which, we submit, is clear in the present context. The opponent has provided no particulars which make out a primae facie case that the language used is unclear in the present context. For none of the particulars alleging lack of clarity has the Opponent provided sufficient particularisation to suggest that a person skilled in the art would find the claims unclear.”

“In summary, we submit that the particulars under ss40(2) and (3) are deficient and speculative.”

These are comments that are more directed to the evidence rather than to the facts themselves. As such this submission is a proper matter for the substantive hearing. Furthermore, I consider that the opponent has gone beyond “mere enumeration” of the requirements of the ground to be a sufficient statement of particulars. See L'Air Liquide (supra).

The applicant further states that in respect of insufficiency;

“...absolutely no particulars are provided in support of the assertion that the specification does not describe the best method of performing the invention known to the Applicant.” ...” the Opponent has not made out a prima facie case that a person skilled in the art would be unable to “eradicate or suppress an existing infection.”

“All that Opponent alleges is that certain information is not included in the description. This allegation is not enough to make out a prima facie case that the description is insufficient because the Opponent has not provided particulars which would show that a person skilled in the relevant art could not from his or her common general knowledge provided any details which are not included in the description, and the Opponent has not provided any particulars which would show that the alleged missing details are in fact necessary to practice the invention.”

Upon reviewing these arguments, it seems to me that they are either matters of law or evidence. These are not matters to be included in the particulars: Mobay Corp v Dow Chemical, Cotterill v Trenton (supra). Therefore, this ground will not be dismissed. Nor am I of the view that there is any argument that a direction for further and better particulars should be given as the particulars are prima facie adequate.

Conclusion

Taking into account the nature of the discretion contained in Regulation 5.5 and on the facts as determined above, I am of the view that I should not exercise the discretion to dismiss the opposition. I take this view because the applicant has not demonstrated to me that the opponent’s case is obviously or manifestly groundless or untenable. I am also of the view for the reasons stated that none of the grounds of the opposition should be dismissed and that a direction for further and better particulars is not appropriate.

Accordingly I refuse the request for dismissal.

Consequently, pursuant to regulation 5.8(1)(iii) the time for serving evidence in support commences from the date of this decision.

G.M.Cox
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney

Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne