Silvano D'Ambrosio v SDI Limited - [2023] APO 65

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Silvano D’Ambrosio v SDI Limited [2023] APO 65

Patent Application: 2019217656

Title:Silver fluoride solutions for dental compositions

Patent Applicant: SDI Limited

Opponent: Silvano D’Ambrosio

Delegate: Leslie. F. McCaffery

Decision Date: 14 December 2023

Hearing Date: 5 October 2023 by videoconference

Catchwords: PATENTS – opposition to the grant of a patent under section 59 – novelty – “whole of contents” novelty – inventive step – evidence in relation to sales and public disclosure – evidence adduced does not establish what was conveyed to the public – clear enough and complete enough disclosure – none of the grounds have been made out – opposition unsuccessful – costs awarded against the opponent.

Representation: Patent attorney for the applicant: Daniel Beck, Zhi Ling Zeng and Gary Cox of Wrays.
Silvano D’Ambrosio was self-represented at the hearing.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2019217656

Title:Silver fluoride solutions for dental compositions

Patent Applicant: SDI Limited

Date of Decision: 14 December 2023

DECISION

The opposition is unsuccessful.

The claims are novel and inventive in view of the evidence provided in the opposition.

The specification provides a clear enough and complete enough disclosure for the invention to be performed by a person skilled in the relevant art.

Subject to an appeal, I direct that the application proceed to grant.

Costs are awarded against the opponent, Silvano D’Ambrosio.

REASONS FOR DECISION

1. Australian application 2019217656 (the application) was filed on 7 February 2019 by SDI Limited (the applicant). The application claims an earlier priority date of 12 February 2018. Examination was requested on 22 September 2020, and the application was advertised as accepted on 19 August 2021.

2. On 18 November 2021, a notice of opposition was filed by Dr Silvano D’Ambrosio. A statement of grounds and particulars (SGP) was filed on 18 February 2022. The SGP was filed without a Schedule and/or any mentioned documents. An amended SGP was filed on 18 March 2022, but a delegate determined that this amendment incorporated additional grounds of manner of manufacture, usefulness (utility), support and clarity, new prior art for the grounds of novelty and inventive step, and expanded particulars under novelty, inventive step and sufficiency (section 40(2)(a)) and was not allowable. A third SGP was filed on 13 May 2022. A direction was made that the opposition proceed on the basis of this SGP. Later requests to amend the SGP on 27 January 2023 and 27 March 2023 were refused by a delegate on 24 April 2023 and 9 May 2023 respectively.

3. On 27 September 2022, following completion of the EIS, the applicant proposed amendments to the specification and claims. Allowance of the amendments was advertised on 16 February 2023.

4. After completion of the evidence, the matter was set for hearing on 5 October 2023. The opponent provided a written summary of submissions (OS) on 21 September 2023. The applicant noted that these were filed outside the due time (20 September 2023), as well…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Silvano D'Ambrosio v SDI Limited and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2023] APO 65
Decision Date: 14 December 2023

CaseChat Overview and Summary

The Australian Patent Office considered an opposition to the grant of a patent by Silvano D'Ambrosio against SDI Limited's application for an invention relating to silver fluoride solutions for dental compositions. The opponent argued that the claims were not novel, did not involve an inventive step, and were not sufficiently disclosed. The Delegate found that the claims were novel and inventive, and that the specification provided a clear enough and complete enough disclosure for the invention to be performed by a person skilled in the relevant art. The Delegate awarded costs against the opponent.

The Delegate rejected the opponent's submissions that the claims were not novel based on the evidence provided in the opposition. The Delegate found that the evidence did not establish what was conveyed to the public through sales and lectures prior to the priority date of the present claims. The Delegate also rejected the opponent's submissions that the claims did not involve an inventive step based on the evidence of prior art and the lack of detail about what was disclosed to the public.

The Delegate found that the specification provided a clear enough and complete enough disclosure for the invention to be performed by a person skilled in the relevant art. The Delegate rejected the opponent's submissions that the specification was insufficient because it did not specify the quantity of silver fluoride, the type of acid, and other experimental details. The Delegate found that the skilled person would not require an undue burden to work the invention across the full scope of the claims based on the evidence before the Delegate.

The Delegate directed that the application proceed to grant subject to an appeal, and awarded costs against the opponent.

Orders