Pacvac Pty Ltd. v Gavin Adams - [2003] APO 5

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 719709 in the name of Pacvac Pty Ltd.

Title: Vacuum Cleaner

Action: Opposition under S59 by Gavin Adams.

Decision: Issued .
Abstract

This invention relates to vacuum cleaners and the efficient collection of dust matter whilst maintaining air flow to the motor and thereby preventing the motor from overheating.
The opponent pursued the grounds of lack of novelty, lack of inventive step, and lack of fair basis.
The claimed invention was found novel over the submitted prior art. A feature considered essential to preventing the motor from overheating was not present in the submitted art.
The claimed vacuum cleaner was found to lack an inventive step in the light of a known back-pack type vacuum cleaner assembly and what is considered common general knowledge in the art prior to the priority date of the claimed invention.
The claimed invention was found to lack fair basis on the matter described. In particular there was no real and reasonably clear disclosure of the functional requirements of various integers, namely "the snorkel effect" as described in the specification.
As the defects in the opposed specification could be overcome by suitable amendments the applicant was granted sixty days from the date of this decision to file suitable amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 719709 by Pacvac Pty Ltd and opposition thereto by Gavin Adams under s59 of the Patents Act 1990.

BACKGROUND

Patent application 86165/98 was filed under the Patent Cooperation Treaty as International Patent Application PCT/AU98/00598 in the name of Mario Pezzaniti on 29 July 1998 and claimed priority from an Australian Provisional PO 8309 filed 31 July 1997.
The application was subsequently amended to proceed in the name of Fantovac Industries Pty Ltd on 6 December 1999 and was advertised as accepted application 719709 on 18 May 2000.
Gavin Adams (Adams) filed a notice of opposition to patent application 719709 on 18 August 2000. The statement of grounds was served 20 November 2000 and subsequently amended on 19 July 2002. After various extensions of time allowed to both parties, evidence in support was completed 19 June 2001, evidence in answer was completed 19 January 2002 and finally, evidence in reply completed 9 May 2002.
A Request to Amend a Patent Request or any Other Filed Documents under s104 was filed 4 June 2002 requesting the application proceed in the name of Pacvac Pty Ltd, (Pacvac) and subsequently allowed on 12 June 2002.
The substantive opposition was set down for a hearing in Perth on 25 September 2002. Mr Matthew English, assisted by Mr Paul Fong both of Watermark represented the opponent (Adams), whilst Mr Kelvin Lord, assisted by Mr Barry Newman, both of Lord & Company represented the applicant (Pacvac) at the hearing.
GROUNDS OF OPPOSITION
The grounds for opposition alleged by the opponent were that the claimed invention lack novelty and inventiveness, and…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2003] APO 5
Decision Date: 12 February 2003

CaseChat Overview and Summary

The decision of Pacvac Pty Ltd. v Gavin Adams dealt with an opposition to a patent application filed by Pacvac for a vacuum cleaner apparatus. Gavin Adams opposed the patent on the grounds of lack of novelty, lack of inventive step, and lack of fair basis. The court found that the claimed invention was novel over the submitted prior art as it lacked an essential feature, a membrane located between a perforated spacing means and a vacuum motor. However, the court found that the claimed invention lacked an inventive step in the light of a known back-pack type vacuum cleaner assembly and what is considered common general knowledge in the art prior to the priority date of the claimed invention. The court also found that the claimed invention lacked fair basis as the term "spacer" in the claims was not limited to the functional requirements needed of the spacer in order to perform the invention. Despite these faults, the court believed there was sufficient material in the specification to readily overcome the defects and granted the applicant sixty days from the date of this decision to file suitable amendments.

Orders