Sheiman Ultrasonic Research Foundation Pty Limited v Novapharm Research (Australia) Pty Ltd
[2008] APO 2
•22 January 2008
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 753817 in the name of SHEIMAN ULTRASONIC RESEARCH FOUNDATION PTY LIMITED
Title: A sterilisation apparatus
Action: Final determination in an opposition under section 59 by NOVAPHARM RESEARCH (AUSTRALIA) PTY LTD.
Decision: Issued 22 January 2008.
Abstract
Final determination.
In a decision issued on 26 September 2005 certain claims of application 753817 were found to lack fair basis on the specification and lack novelty in the light of two US patent specifications and, on a whole of contents basis, an application by the opponent.
The applicant subsequently proposed amendments to attempt to overcome the above deficiencies. These amendments have been found to overcome the deficiencies.
The application is in order for sealing.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 753817 by SHEIMAN ULTRASONIC RESEARCH FOUNDATION PTY LIMITED, and the final determination of an opposition thereto by NOVAPHARM RESEARCH (AUSTRALIA) PTY LTD.
BACKGROUND
A decision on the opposition to patent application 753817 was issued on 26 September 2005
(Novapharm Research (Australia) Pty Ltd. v Sheiman Ultrasonic Research Foundation Pty Limited [2005] APO 40). The decision found that independent claims 1 and 12 are not fairly based on the specification, and lack novelty on the basis of US specifications 3481689 and 4366125, and that claim 12 is not novel (whole of contents) based on the opponent’s application 2002302109 and related provisional application PP4273. However, in so finding the delegate of the Commissioner expressed the view that these deficiencies could be readily overcome, and allowed the applicant 60 days in which to file amendments capable of overcoming the deficiencies. He further stated:
“With regard to the nature of these amendments, I note that the opponent has strongly asserted that the applicant should positively exclude the presence of a fan. However, there is a clear difference of impact between being able to avoid the use of a fan and expressly excluding a fan. As I read the specification, the invention relies upon a form of nebuliser which avoids the need for a fan to circulate the aerosol. And while one way to define this avoidance is to expressly exclude a fan, it is in my view quite likely that the applicant may be able to define this aspect of the invention without such express exclusion – by specifying relevant constructional details of the nebuliser, such as in the corresponding US and EP patents.”
The applicant subsequently proposed amendments to attempt to overcome the above deficiencies. In so doing it did choose the path of specifying the constructional details of the nebuliser. However, it did not stipulate these in quite the same terms as had been done in the corresponding US and EP patents. In essence, the constructional details it chose to specify were:
“the generator including an ultrasonic transducer being operatively coupled to or forming part of a reservoir which is adapted to contain the sterilizing agent, a tube positioned adjacent the reservoir such that a fountain of the sterilising agent as produced by the ultrasonic generator spouts into the tube…….. the kinetic energy of the fountain inducing a pressure drop along the tube to propel the aerosol through the tube to produce the recirculatory flow”.
The opponent Novapharm Research (Australia) Pty Ltd. unsuccessfully opposed the allowance of the proposed amendments (Novapharm Research (Australia) Pty Ltd. v Sheiman Ultrasonic Research Foundation Pty Limited [2007] APO 32) under section 102 of the Patents Act. In tandem with its action under section 104 the opponent also asserted that the amendments had not remedied the deficiencies in the application which the decision on the substantive opposition had identified, as a consequence of which, it was said, the claimed invention still lacked fair basis and novelty. Subsequently, however, the opponent chose not to be heard, or to file any further written submissions, in respect to the final determination of this (substantive) opposition, and likewise for the applicant.
According to the opponent, the amendments made by the applicant do not go far enough in differentiating the claimed invention over the prior art. In the view of the opponent, the words of the claims as amended do not limit the claims to a device that would be able to avoid the use of a fan to produce a recirculatory flow. The opponent contends therefore that the words “which alone is sufficient”, or the suchlike, need to be used to characterise the degree of pressure drop required along the tube to propel the aerosol through the tube to produce the recirculatory flow.
DECISION
I have carefully considered the amendments made to the specification in the light of the findings made in the decision on the substantive opposition to the application in suit. In my view, all of the adverse findings made by the delegate of the Commissioner have been adequately addressed. The only significant issue raised by the opponent – that of whether the degree of pressure drop along the tube has been adequately defined – seems to me to be readily resolvable the applicant’s way. In considering the phrase “a pressure drop along the tube to propel the aerosol through the tube to produce the recirculatory flow” the opponent seems to have overlooked the words “to produce the recirculatory flow”. These words make it unambiguously implicit that the recirculatory flow results directly from the pressure drop and that thus the pressure drop is alone sufficient to result in a recirculatory flow. What is involved here is “defining by result” (No-Fume Ltd v Frank Pitchford and Co. Ltd. (1935) 52 RPC 231), and it is implicit in that form of claim drafting that the result which is defined in the claim has to be achievable by the associated means (and that means alone) which is defined in the claim.
Accordingly I find that the invention as now claimed is fairly based and novel.
The amendments overcome the deficiencies that were raised in the earlier decision on the substantive opposition and overcome any other ground of opposition on the available evidence. I direct the application proceed to sealing.
E J Knock
Delegate of the Commissioner of Patents
22 January 2008
Patent Attorneys for the applicant: Blake Dawson Waldron, Sydney
Patent Attorneys for the opponent: Shelston IP, Sydney
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