SHELL INTERNATIONALE RESEARCH MAATSCHAPPIJ B.V.
[1985] APO 1
•21 January 1985
In the Matter of the Patents Act 1952
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In the Matter of Application No. 60386/80 for Letters Patent by SHELL INTERNATIONALE RESEARCH MAATSCHAPPIJ B.V.
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In the Matter of Examiner's Objections thereto.
DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Patent application 60386/80 was lodged on 14 July, 1980 and claims priority based on an earlier application made in Great Britain on 16 July, 1979. The application is in respect of an invention entitled "BIOCIDE DISPENSER AND METHOD OF APPLYING BIOCIDE TO A SURFACE".
Following a request for examination, the Examiner issued a first adverse report on 19 April, 1983. Following the lodgement of a statement of proposed amendments by the applicant on 21 May, 1984, several further adverse reports were issued by the Examiner maintaining an objection of novelty to the invention claimed. Submissions in rebuttal of the objection have been filed at various stages of examination. On 11 January, 1985, the applicant through its patent attorneys Spruson & Ferguson lodged under regulation 19D a request for the exercise of the Commissioner's discretionary powers and waived its right to be heard. The period for acceptance of the application as provided by section 54(1B) of the Act expires on Monday, 21 January, 1985.
As proposed to be amended the specification commences as follows:
"This invention relates to a dispenser for the direct applic‑
ation of insecticides onto a specific surface area.
Many methods are known and practised for the application of insecticides in a domestic environment, notably the use of aerosol sprays or of formulations which release the insect‑
icide slowly and continuously into the atmosphere. The former method has the disadvantage that its effect is relatively short‑lived and thus requires repeated frequent use, whilst the latter has the disadvantage of reduced efficacy in conditions where rapid changes of atmosphere occur, for example when the windows of a room are wide open. However, the Applicants have noted that insects are not normally uniformly distributed throughout a given space but tend to make frequent contact with certain surfaces (such as windows), and have therefore devised the concept of using a localizing dispenser to apply the insecticide selectively to, or closely adjacent to, such surfaces."
Then follows a consistory statement in terms identical to proposed amended claim 1. It is convenient to set out proposed claim 1 at this stage, and it reads as follows:
"1.A dispenser adapted to provide insecticidal protection on a surface, which comprises a reservoir containing a liquid or semi‑liquid formulation of a pyrethroid insecticide, the reservoir having an outlet orifice closed by a plug such that, in use, when the plug is drawn across a surface in frictional contact therewith, a line of the formulation is deposited on the surface."
The specification refers to the nature of reservoir and plug used in the dispenser. In relation to the plug it states at page 3:
"The plug may be such as to permit controlled emission of the insecticide on the application of external pressure, and may be realised in a variety of embodiments. In one embodiment, the plug may be formed from any porous material which permits the restricted, controlled flow of insecticide formulation out of the reservoir and onto the surface to be coated, such as natural or synthetic felt, porous elastomer, etc. Alter‑
natively, the plug may comprise a spring‑loaded valve which opens under pressure to permit flow of the insecticide formulation, or a movable ball as in "roll‑on" deodorant dispensers."
The specification also mentions that a
"particularly convenient and preferred form of the dispenser can be simply envisaged as analogous to a felt marker pen in which the ink fluid is replaced by the insecticide formulation."
Continuing, the specification refers to the insecticide formulations to be used in the dispenser. It mentions that the dispenser can be used in a method of controlling insects and specifically states:
"an effective control of flies can easily be obtained by using the applicants' dispenser to apply insecticide to window sills, or to the window itself. The pyrethroid insecticide used is a contact insecticide, e.g. permethrin, cypermethrin or fenvalerate. It will be appreciated that a contact insecticide can also be very effective for control of crawling insects (e.g. cockroaches) and ants) if the dispenser is used to apply the insecticide .........
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Although alternative methods of applying an insecticide to a surface are available, for example by means of an insecticide‑ containing semi‑solid formulation projecting from a holder (analogous to lipstick) or from a vessel containing a liquid insecticide formulation, suitably by means of a brush attached to the vessel cap (as with vehicle touch‑up paints), but the use of the dispenser of this invention affords certain advantages of practicality and convenience." (Underlining added)
At this stage it is worth noting that the specification as lodged did not limit the invention to a dispenser for only insecticides but "to a dispenser for the direct application of biocidal materials, especially insect‑
icides and/or fungicides, onto a specific surface area". Consequently, in the corresponding passage of the specification as lodged to that immediately quoted above, the underlined words "insecticide" instead read "biocide". In addition, the same paragraph of the original description included a statement that "the practical application of this dispenser is not limited solely to insecticides, since many other uses will be apparent to those skilled in the art", and also discussed specifically using "Applicants' dispenser" to apply fungicide formulations. Apart from a reference to "biocide" in Example 1, that word and "fungicide" do not appear elsewhere in the proposed amended specification.
The description of the invention concludes with reference to a number of Examples which describe a particular form of dispenser of pen‑form, illustrate certain pyrethroid insecticide formulations, and tabulate certain trial results for those formulations evaluated against houseflies where the formulations had been applied by the dispenser pen particularly by "drawing a continuous line with the pen horizontally across the glass panel" of a test chamber.
There are 10 claims in all in the specification as proposed to be amended. Claim 1 has been previously quoted. The remaining claims are as follows:"2.A dispenser as claimed in claim 1, wherein the plug is composed of a porous material which permits the restricted, controlled flow of formulation.
3.A dispenser as claimed in claim 2, which comprises an elongated, hollow, substantially cylindrical container holding the formulation, and provided at one end with a fibrous plug which in use permits capillary flow of formulation out from the container.
4.A dispenser as claimed in either claim 2 or claim 3, wherein the plug is felt.
5.A dispenser as claimed in claim 1, wherein the plug is a spring‑loaded valve or a movable ball.
6.A dispenser as claimed in any one of claims 1 to 5, wherein the formulation is absorbed in a cellular filling contained within the reservoir.
7.A dispenser as claimed in claim 6, wherein the cellular filling is formed from cellulose or cellulose acetate.
8.A dispenser as claimed in claim 1, substantially as described in any one of the Examples herein.
9.A method for the control of insects, which comprises applying a line of a formulation of a pyrethroid insecticide to a surface subjected to contact by insects by means of a dispenser as claimed in any one of claims 1 to 8.
10.A method as claimed in claim 9, wherein the surface is the inner surface of a window or a window frame."
Claim 1 is directed to a dispenser which is defined structurally as comprising a reservoir having an outlet orifice closed by a plug. The dispenser and plug are further qualified as being such that, in use of the dispenser when the plug is drawn across a surface in frictional contact there‑
with, formulation contained in the reservoir is deposited in a line on such surface. In the context of the specification, I interpret the expression "a line of the formulation" to include not only a pencil line‑like width of deposit but one which could be band‑like of noticeable width.
Consequently the dispenser has a construction which in use, via contact of the plug with a surface, facilitates either a transfer or release of a formulation from the reservoir to the surface. It is apparent that the definition of claim 1 encompasses various constructions of dispenser to enable such transfer or release, including some where the deposit on the surface is effected via transfer through the plug material itself, and others where frictional contact of the plug on the surface opens a dispensing aperture at the outlet orifice to allow formulation to flow directly on to the surface ‑ such constructions are in fact envisaged by the description as reference to the passage quoted earlier from page 3 reveals. While the dispenser by its construction must enable "a line of formulation to be deposited" when "the plug is drawn across a surface", it is not limited by its construction to only achieve such an effect and could alternatively provide a spot‑type deposit on a surface when in use the plug is merely brought into point contact with the surface. However, in order to deposit "a line of formulation", the construction of the dispenser must also be such as to enable a desired length of line to be deposited thus requiring a continuous transfer or flow of fluid to the surface from the reservoir.
The definition of claim 1 further qualifies the dispenser as being "adapted to provide insecticidal protection on a surface". I interpret this to mean that the dispenser must be such as to enable it to perform the task specified, i.e. to transfer or release any insecticide contained in the reservoir to a treatment surface thus providing insecticidal protection on that surface. In relation to the present claims, as a pyrethroid insecticide in a liquid or semi‑liquid formulation is specifically contained in the dispenser reservoir, the device must be able to dispense such formulation.
The Examiner has maintained objection to the application on the ground that the claimed invention lacks novelty. The applicant through its patent attorneys has provided lengthy submissions on this issue following the second and third official reports. Applicant's submissions include references to prior art cited in relation to corresponding patent applications to this application before the Canadian, European and Austrian Patent Offices, and such prior art (if published) has been considered in assessing the novelty of the present application.
As defined, the device of claim 1 in one form has a construction not unlike the well‑known felt‑tip pen but containing pyrethroid insecticide not ink. In the prior art before me I note that felt pens per se are disclosed in US Patents 3032802 (1962) and 3355239 (1967) and that devices analagous to a felt‑tip pen are disclosed in US Patent 3369543 (a medicinal applicator) and US Patent 2659918 (a weed destroying device). In my view if any novelty is to reside in the dispenser defined in claim 1 in view of such prior devices, it must be shown that the dispenser has by its construction a special ability enabling it to dispense pyrethroid insecticide formulation, since novelty cannot be bestowed on the dispenser merely because its reservoir contains an insecticide formulation.
In further considering whether a particular form of dispenser is required to dispense insecticide formulation, I refer again to the description in the specification. Firstly it is noted that the specification as lodged envisaged dispensing biocides (including insecticides and fungicides) but no mention is made of the need to modify or adapt different dispensers to dispense different biocides. If anything, the specification suggests designing the formulation so as to permit efficient usage in the particular dispenser used. It should be noted that the description discloses a number of different embodiments of dispenser in accordance with the invention. Secondly, it is clear that the use of a dispenser of the construction defined is merely an alternative method for applying insecticide to a surface, the use of which "affords certain advantages of practicality and convenience". There is no mention that any special dispenser had to be developed or that known dispensers (such as the felt‑wick type) or any other dispenser falling within the definition of claim 1 had to be specially adapted to meet the purpose of achieving insecticidal protection on a surface by dispensing pyrethroid insecticide; i.e. there is no indication that any inventive ingenuity was needed in adapting a dispenser of clearly known construction to dispense insecticide liquid formulation. Consequently on this consideration, in my view the dispenser of claim 1 does not exhibit any novelty. Moreover since claims 2‑7 characterize features of the dispenser common to dispensers of the general type defined (e.g. felt pen type dispenser), these claims with claim 8 are also not novel along with claim 1.
There is also the consideration of the novelty of claim 1 when considered against UK Patent specification 898669 (published 1962). This specification discloses a device primarily for applying weedicides to kill undesired weeds and has a reservoir for holding chemicals and a sponge plug‑
like element at one end of the reservoir to enable transfer of chemical to the surface of a weed contacted by the sponge. It is clear that depending on the weed to be treated either spot application or line application of chemical would be possible. Moreover apart from its use in treating weeds the specific‑
ation states:"The device according to the invention may be used for a number of other purposes, for example for spraying tree stumps and so called poison cutting, where chemicals are placed into axe cuttings around a tree trunk.
Furthermore, the device may be used in connection with treatment of plants grown indoors or greenhouse plants with insecticides and/or fungicides."
Consequently the citation contemplates not only the treatment of the surface of plants but other surfaces as well. The only difference of note between present claim 1 and this disclosure concerns the specific reference to pyrethroid insecticide formulations in claim 1. But the insecticidal properties of pyrethroids have been widely known prior to the priority date of the present application (see for example the Kirk‑Othmer 'Encyclopedia of Chemical Technology', 1966 edition Volume II at page 684), and hence I consider this difference is unable to confer novelty to claim 1 over the disclosure of UK 898669.
The specification also includes two method claims, claim 9 reading as follows:
"9.A method for the control of insects, which comprises applying a line of a formulation of a pyrethroid insecticide to a surface subjected to contact by insects by means of a dispenser as claimed in any one of claims 1 to 8."
In view of my finding that the dispenser of claims 1 to 8 is not novel I am unable to accept that the mere use of such a dispenser to deposit pyrethroid insecticide formulation on a surface, which is the essence of the method according to claim 9, involves any novelty. However, that is not to say that any method which may possibly be defined, being a ,etjpd fairly based on the description, would necessarily lack novelty. If different method claims were proposed then any such question of novelty would need to be considered on its merits and clearly I am unable to comment further on that point at this stage.
I have decided that the proposed amended claims are not novel. Consequently I am satisfied that a lawful ground of objection exists to the application and complete specification in its presently proposed form. As the specification may contain novel subject matter, rather than refuse outright the application at this stage, I afford the applicant an opportunity to propose further amendments in the time remaining for acceptance with a view to over‑
coming the lawful ground of objection and gaining acceptance.
(T.R. BRUHN)
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