Senomyx, Inc.

[2011] APO 5

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Senomyx, Inc. [2011] APO 05

Patent Application:                   2008200999

Title:Use of specific T2R taste receptors to identify compounds that block bitter taste

Patent Applicant:  Senomyx, Inc.

Delegate:  Dr S.D.Barker

Decision Date:  2 February 2011

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

Representation:  Patent applicant:  Davies Collison Cave

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2008200999

Title:Use of specific T2R taste receptors to identify compounds that block bitter taste

Patent Applicant:  Senomyx, Inc.

Date of Decision:  2 February 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2008200999 was filed by Senomyx, Inc. as a divisional of application 2002318229 on 3 March 2008.  An examination report issued on 5 October 2010, raising one objection (lack of unity) and withholding comment on other matters until this issue is resolved.  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 2002318229.  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.  Please see the Manual of Office Practice and Procedure at part 2.10.11 for more information."

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

"The examination report of 5 October 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 objection identifies three inventions:  a)  identifying compounds that modulate hT2R4;  b)  identifying compounds that modulate hT2R61;  c)  identifying compounds that modulate hT2R44.  The objection notes that methods of identifying compounds that modulate T2R taste receptors are known in the art, so this cannot be the special technical feature.  Prima facie there are three inventions based on the three different receptors.  I agree that the objection is 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