Scott Laboratories, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Scott Laboratories, Inc. [2011] APO 09

Patent Application: 2009213027

Title:Systems and methods for providing trend analysis in a sedation and analgesia system

Patent Applicant: Scott Laboratories, Inc.

Delegate: Dr S.D.Barker

Decision Date: 7 February 2011

Catchwords: PATENTS – examiner objection – lack of novelty and inventive step – case management of divisional applications – no response by applicant – application refused

Representation: Patent applicant: FB Rice & Co

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009213027

Title:Systems and methods for providing trend analysis in a sedation and analgesia system

Patent Applicant: Scott Laboratories, Inc.

Date of Decision: 7 February 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009213027 was filed by Scott Laboratories, Inc. as a divisional of application 2003275460 on 7 September 2009. An examination report issued on 29 October 2010, raising objections of lack of novelty and lack of inventive step against various claims. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objection 1 of my report is based on the same grounds objected to in the examination of patent application AU 2003275460. It is noted that previously, a prior art citation US 6328708 was discussed in relationship to the parent application AU 2003275460 as well.
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 29 October 2010 raised objections equivalent to those 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 grounds 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 objections raised by the examiner are that all of the claims are lacking in either novelty or inventive step (or both) in the light of six identified documents. The claimed invention is an antifungal gel composition comprising three specified components. The citations relate to antifungal compositions that are clearly relevant. I agree that the objections are appropriately raised.

The applicant has chosen not to defend the application. They have provided no submissions disputing the objections, and have not proposed any amendment to attempt to overcome the objections. 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

Scott Laboratories, Inc. filed a patent application in 2009 as a divisional of an earlier application, seeking to patent a systems and methods for providing trend analysis in a sedation and analgesia system. The application was examined, and objections were raised regarding the novelty and inventive step of the claims. These objections were based on the same grounds as those raised in the examination of the parent application. The applicant was given two months to respond to the examination report but did not provide any submissions or amendments to address the objections.

The legal issues before the court were whether the claims in the patent application were novel and inventive over the prior art. The examiner cited six documents that demonstrated the lack of novelty and inventive step in the claims. The applicant did not respond to the objections, nor did they propose any amendments to overcome them. The court had to determine if there were reasonable prospects of the applicant overcoming the objections and if the application should be refused.

The court found that the objections were appropriately raised, and the applicant had chosen not to defend the application. As the applicant provided no submissions disputing the objections and did not propose any amendments, there were no reasonable prospects of the applicant overcoming the objections. Consequently, the court upheld the objections and decided to refuse the application.

The final orders of the court were to refuse the patent application. The decision was based on the applicant's failure to respond to the objections and their lack of proposed amendments to overcome the objections. The court found that there were no reasonable prospects of the applicant overcoming the objections, and the application should be refused.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established