Schering Corporation

[2011] APO 10

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Schering Corporation [2011] APO 10

Patent Application:                   2009200539

Title:Human receptor proteins; related reagents and methods

Patent Applicant:  Schering Corporation

Delegate:  Dr S.D.Barker

Decision Date:  7 February 2011

Catchwords:  PATENTS – examiner objection – lack of unity – case management of divisional applications – no response by applicant – application refused

Representation:  Patent applicant:  Griffith Hack

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2009200539

Title:Human receptor proteins; related reagents and methods

Patent Applicant:  Schering Corporation

Date of Decision:  7 February 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009200539 was filed by Schering Corporation as a divisional of application 2006222684 (which itself is a divisional of application 2001264889) on 12 February 2009.  An examination report issued on 4 November 2010, raising an objection that the claims do not relate to one invention only, and reserving comment on other issues.  In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objection 2 of my report is based on the same grounds objected to in the examination of patent applications 2001264889 and 2006222684.  Please note that if a response overcoming those 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 above.  "

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 4 November 2010 raised an objection equivalent to that in the parent application.  In line with our approach to case management of divisionals, you were given two months to respond to that report.  As no response has been received, the matter will now be set for hearing.

I believe that it is possible to hear this matter on the basis of written submissions, so I allow you two (2) weeks from the date of this letter to file any submissions you wish.  Your submissions should address the ground of objection identified in the examination report.  Once your submissions have been received, or alternatively if no submissions are received, the matter will be passed to a hearing officer to issue a written decision.  Please note that it is possible for the Commissioner to refuse the application."

The applicant has not provided any submissions.

The objection

The objection raised by the examiner is that the claims do not relate to one invention only.  The examination report identifies nine different inventions, based on nine different proteins designated DTLR2 – DTLR10.  I agree that in the absence of an overarching special technical feature, the different proteins are prima facie directed to different inventions.  I agree that the objection is appropriately raised.

The applicant has chosen not to defend the application.  They have provided no submissions disputing the objection, and have not proposed any amendment to attempt to overcome the objection.  In these circumstances there are no reasonable prospects of the applicant overcoming the objection.  The application should be refused.

Dr S.D.Barker
Delegate of the Commissioner of Patents