Renton Dawson Newbury v Peter George Sutherland

[1993] APO 38

official notice

decision of a delegate of the commissioner of patents

Petty patent       :    No. 607116 in the name of RENTON DAWSON NEWBURY

Title             :    Method and Apparatus for Treating Jaw   Muscle Imbalance

Action: Application under s.69 for an extension of term of the petty patent; notice by PETER GEORGE SUTHERLAND under s.28.

Decision:    Issued            .  Petty patent not invalid.  Extension of term granted.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent No. 607116 by RENTON DAWSON NEWBURY, application under section 69 of the Patents Act 1990 for an extension of term of the petty patent, and notice by PETER GEORGE SUTHERLAND under section 28 regarding the petty patent.

background

Petty patent no 607116 in the name of RENTON DAWSON NEWBURY  
(Dr Newbury) was granted on application no 52571/90, which was filed as a divisional application from standard patent application no 602930 (formerly no 80202/87) pursuant to section 51 of the Patents Act 1952. Application no 602930 was advertised accepted on 1 November 1990 and is subject to opposition action prior to grant.

The petty patent application was filed on 4 April 1990 and on 25 November 1991 Dr Newbury applied for an extension of the term. PETER GEORGE SUTHERLAND (Dr Sutherland) notified the Commissioner of Patents (the Commissioner) of matters pursuant to section 28 of the Patents Act 1990 on 22 November 1991. Dr Sutherland was also the opponent in respect of application no 602930.

The reasons required by section 28(1) were filed with the section 28 notice together with statutory declarations by Peter George Sutherland and Peter Clarence Reade and accompanying Exhibits. Statutory declarations by Ronald Barry Martin, Karinne Ann Ludlow and Michael Peter Squires were also filed for consideration with the Sutherland and Reade declarations. Evidence-in-answer comprising statutory declarations by Renton Dawson Newbury and Anthony Robert Moffatt and accompanying Exhibits was filed on 17 June 1992.

A hearing was set down in Canberra on 2 December 1992.  This hearing was deferred by agreement of both parties.  I therefore heard the matter in Melbourne on 18 February 1993.  The hearing was held jointly with the hearing concerning the opposition to application no 602930.

Mr Greg Munt, patent attorney of Griffith Hack & Co, represented Dr Newbury at the hearing.  Mr Paul Jones, patent attorney of Phillips Ormonde & Fitzpatrick, represented Dr Sutherland.

Petty patent no 607116 was sealed on 24 December 1990 under the 1952 Act. The Patents Act 1990, which commenced on 30 April 1991, by section 230 repealed the 1952 Act. Dr Newbury applied for an extension of term of the petty patent on 25 November 1991 and hence the application has to be considered under the 1990 Act.

section 28 notice

By notice under section 28 a person (the informant) can assert that a petty patent is invalid on various grounds. The provisions of the Act are such that if the Commissioner is satisfied that a ground mentioned in subsecton 28(1) of the Act is made out, the Commissioner may refuse to grant an extension of the term of the petty patent. If not so satisfied, the Commissioner must grant an extension of the term (see section 69 and regulation 6.6).

The informant notice asserts the petty patent is invalid on the following grounds:

a)That the patentee was not entitled to be granted the petty patent;

b)That the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b);

c)That the specification does not comply with sub-section 40(2) or (3).

SPECIFICATION

The specification commences by indicating that the invention relates to the treatment of muscle imbalance with the object of alleviating pain caused by certain conditions.  There follows a consistory statement corresponding to the claim which indicates that the invention provides a splint for the lower jaw of a patient.  The term "preferred path during mastication" is then defined.

The specification indicates at pages 3-4 that the invention is based on "...the realization that the pain associated with many conditions is caused by a muscle imbalance that can be traced to the masticatory muscles controlling the lower jaw."  the subsequent pages describe the effect of this muscle imbalance on other muscle groups and the physical consequences of this.  Pages 7-9 detail the invention with particular reference to two drawings.  The remainder of the specification deals with preferable effects to be achieved through use of the splint, especially as a means to unlock malocclusive interdigitation of the teeth.

The specification ends with one claim as follows:

1. A splint for the lower jaw of a patient to prevent interlocking interdigitation of the molar teeth thereby allowing the muscles supporting the jaws to move the lower jaw in a preferred path during mastication, said splint comprising two arms and a bridge interconnecting the arms each arm being generally U-shaped in transverse section with a central section separating two sides, the central section adapted to overlie the molar teeth and the second premolar teeth and not the first premolar teeth, the incisor teeth and the canine teeth of the lower jaw, the central section having a thickness to provide a selected spacing between the molar teeth of the upper and lower jaws, and the central section comprising a dome-shaped surface formed so that there is point contact between each pre-molar and molar tooth of the upper jaw and the dome-shaped surface.

evidence

The evidence is substantially the same as that filed in relation to the opposition to application no 602930 and therefore I shall not discuss it in any detail here. The reasons as required by section 28(1) are supported by statutory declarations from Dr Sutherland and Prof Reade, which correspond to the declarations filed as evidence-in-support in relation to application no 602930 save that the latter part of each declaration refers specifically to the petty patent rather than to the parent. The evidence-in-answer comprises a statutory declaration from Dr Newbury, which is substantially the same as that filed as evidence-in-answer to application no 602930, and a statutory declaration from Dr Moffatt who agrees with the comments in the Newbury declaration.

submissions

The submissions from Mr Jones and Mr Munt made in relation to the opposition on application no 602930 were submitted by each party to be applicable also to the petty patent.  In Mr Jones' submission the petty patent claim included a number of the features of claim 1 and the dependent claims of the parent and this was not disputed by Mr Munt.

The issue of the standing of Dr Sutherland is not relevant in this case since section 28 merely requires that a "person" can file a notice under that section.

decision

Section 40

The claim of the petty patent requires that there be point contact between each pre-molar and molar tooth of the upper jaw and the dome-shaped contact surface of the splint.  Dr Newbury's evidence shows that the term "point contact" has a specific meaning which is not explicitly stated in the specification.

In my decision concerning the opposition to application no 602930 I found that Dr Newbury's definition of "point contact" was the inevitable result when the contact surface was dome shaped.  Since the claim of the petty patent requires the contact surface to be dome shaped, I believe the claim is fairly based and defines the invention.  I consider it would have been desirable to include the description of "point contact" Dr Newbury has given in his evidence in the specification to avoid any possible confusion as to the meaning of this term.  However I do not believe it is essential to amend the specification to include such a description.

Therefore I find that the claim of the petty patent is fairly based and that the specification adequately describes the invention.

Novelty

In my decision on application no 602930 I found that only Exhibit PCR-5 was relevant for the purposes of anticipation, and then only with respect to claim 1.  The claim of the petty patent is much narrower than claim 1 of the parent, including a number of extra features such as the dome shaped contact surface and the splint covering only some of the teeth.  Such features are not disclosed in Exhibit PCR-5 and therefore I find that the claim of the petty patent is novel.

Obviousness

For the reasons given in my decision on application no 602930, I do not believe the claim of the petty patent is obvious.

conclusion

I am satisfied that no ground mentioned in subsection 28(1) has been made out with respect to petty patent no 607116.  Pursuant to subsection 69(2) and regulation 6.6(3), I grant an extension of the term of petty patent no 607116.  I direct that the Register of Patents be noted accordingly forthwith.

costs

Section 210 gives the Commissioner power to award costs against a party to proceedings before the Commissioner. Action under section 69 which involves a person who gives a notice to the Commissioner under section 28 is, in my view, one such proceeding before the Commissioner.

Both parties agreed that costs should follow the event.  As I have found that Dr Newbury has been successful in his extension of term action, I award costs against Dr Sutherland.

JANET WERNER
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack & Co, Melbourne

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick, Melbourne