William a. Newman v Solutions-IES, Inc
[2009] APO 14
•30 July 2009
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 782548 in the name of Solutions-IES, Inc
Title: Method for remediation of aquifers
Action: Final determination of an opposition by William A. Newman to the grant of a patent
Decision: Issued 30 July 2009.
Abstract
When considering a final determination, the earlier decision is final and determines all issues that were capable of determination at that time. R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; (1981) 147 CLR 340 applied.
Consequently, the only issue is to determine what decision was made in the earlier decision. The plain meaning of the words of the earlier decision is that only claims 8 and 28 were deficient. There is no suggestion in the decision that any other claims were deficient. Ordinarily this would be the end of the matter.
The opponent suggested that the decision is in error in not finding that claims 41 and 42 also lacked fair basis. The opponent speculated that the earlier decision found that the nature of the invention is the use of a microemulsion, and that the hearing officer should have found that claim 41 lacks fair basis as this feature is absent from that claim.
This approach to fair basis is quite different to the real and reasonably clear disclosure approach taken in the earlier decision. It follows that the opponent is asserting an error of law in the earlier decision, not just an oversight.
It is clear that there was no explicit or implicit finding that claims 41 and 42 lacked fair basis. It may be that the earlier decision was wrong in not finding these claims lacked fair basis, but that is the decision that was made, and that decision has not been appealed. In line with Ex parte Mole Engineering, there is no power to reconsider that decision. The applicant has overcome all of the deficiencies identified in the earlier decision.
Subject to appeal, the application directed to proceed to sealing.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 782548 by Solutions-IES, Inc, and an opposition by William A Newman to the grant of a patent
BACKGROUND
Patent application 782548 in the name of Solutions-IES, Inc was opposed by William A Newman. Following a hearing, I issued a decision upholding the opposition on 28 July 2008. That decision is reported as Newman v Solutions-IES, Inc [2008] APO 18, and the background to the matter is fully listed there. I will refer to that decision as the earlier decision.
The applicant amended the specification, and the opponent requested to be heard on the final determination of the opposition. Both parties filed written submissions.
Submissions by the parties
Mr David Tadgell filed submissions on behalf of the opponent. The essence of the submission is that the earlier decision should have found that claims 41 and 42 (now claims 39 and 40) were not fairly based or not clear.
Claims 41 and 42 at the time of the earlier decision were as follows:
41. A method for remediating a selected aquifer in a sediment have a mean pore size to reduce contaminants in the aquifer, comprising:
a) creating an emulsified mixture comprised of oil, water, and one or more emulsifiers, wherein said mixture has a mean droplet size less than the mean pore size of the sediment; and
b) injecting said mixture into the aquifer.42. The method according to claim 41, wherein the oil is an edible oil.
Dr Mary Turonek filed submissions on behalf of the applicant. The essence of her submissions was that the original decision was clear, and it is not appropriate to use a final determination to revisit issues that were fully considered in that decision.
DECISION
The parties are in agreement that the earlier decision is final, and determines all issues that were capable of determination at that time. In this regard, the words of Mason J in R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; (1981) 147 CLR 340 at 348 and 349 bear repeating:
“But clearly once a decision has been made under s. 60 the Commissioner cannot re-hear the proceeding and arrive at a different conclusion. If he could do so, an impossible situation would arise, with no statutory provision to indicate which of the two conflicting decisions was to prevail … the Commissioner had actually decided as much of the opposition proceedings as was susceptible of decision at the time and had decided it once and for all”
Consequently, the only issue is to determine what decision was made in the earlier decision. It is beyond my power to alter that decision. The argument of the opponent is subtle. Mr Tadgell argues there is an error in the earlier decision, but it is an error that can be corrected by the Commissioner:
“It is clearly not an issue that warranted appeal to the Federal Court or other jurisdiction. This is a matter that is best dealt with at Patent Office level and is consistent with the decision in Perkin-Elmer ... In the Perkin Elmer case, the Delegate considered the finding of Mole Engineering and confirmed that once a decision had been made, the matter cannot be re-heard. With this in mind, the Delegate went on to agree with the submission, ‘... so in the present instance what I have to do is to assess the November 1983 decision to see what it did, in fact, decide, and then compare its requirements with the specification as it now stands.’”
The parties argue two different views as to the nature of the earlier decision:
(i)the opponent contends that the decision was that the invention is the use of an oil microemulsion, and all relevant claims are defective
(ii)the applicant contends that claims 8 and 32 only are defective
The answer to this question must be found in the words of the earlier decision, which relevantly states:
109. I have found several deficiencies in the specification:
a) Claim 8 is not fairly based.
b) Claim 28 is unclear due to the presence of claim 32.
110. These matters can be easily overcome by amendment, and I allow the applicant 2 months from the date of this decision to file amendments.
10. The plain meaning of these words is that only claims 8 and 28 were deficient. There is no suggestion that any other claims were deficient. Ordinarily this would be the end of the matter. However, Mr Tadgell has suggested that the earlier decision was in error in not finding that claims 41 and 42 also lacked fair basis or lacked clarity:
“It follows that the Delegate should also have found that independent claim 41 (now claim 39) is also unclear, as it would also imply the use of emulsions that may be larger than one micron, or alternatively, not fairly based, as the specification does not teach of the use of emulsions other than microemulsions. It appears to be a point that has simply been missed by the Delegate ... although he didn’t specifically refer to claim 41 in his decision, this appears to be an oversight”
11. It is the practice of the Commissioner that a decision can be corrected if it is clear that the decision does not reflect the intention of the hearing officer.
“If it is clear that the final conclusions of a decision do not reflect the intentions of the Commissioner, as shown in the body of the decision, due to clerical, typographical, spelling or other accidental errors or omissions then it is possible to amend the decision.”
[para 3.33.3 of the Manual]
12. Mr Tadgell has not asked me to amend the earlier decision, but a similar logic applies. If the earlier decision contained an obvious error, then the final determination should give effect to the clear intention of the earlier decision. However, if a hearing officer did not consider an issue, the error is not with the way that the decision was expressed, but rather it lies with the failure to consider the issue. Such an error can be rectified by appeal of the decision. If the hearing officer did not consider a point, then speculation about what they might have decided had they turned their mind to a question cannot be elevated to the status of a decision.
13. My earlier decision approached fair basis by asking whether there was a real and reasonably clear disclosure of the invention as claimed (see paragraph [102] of the earlier decision). My conclusion at paragraph [102] was:
“My consideration of the claims and description indicated that there is a broad consistency between them, and thus the claims are fairly based.”
14. The approach to fair basis that Mr Tadgell is now advancing is quite different. Mr Tadgell has speculated that the earlier decision decided that “it is an essential part of the invention that the method required the use of a microemulsion”. As this feature is absent from claim 41, he argues that this claim must be lacking in fair basis. This essential features analysis is fundamentally different to the real and reasonably clear disclosure approach that I applied, and it follows that Mr Tadgell is asserting an error of law in the earlier decision, not just an oversight. Errors of law are remedied by appeal or review.
15. On the issue of clarity, Mr Tadgell’s argument is based on analogy with claim 28 (which was found to be unclear because appended claim 32 implied that the “microemulsion” had a droplet size larger than 1 micron; see paragraph [99] of the earlier decision). Claim 41 did not use the term “microemulsion”, so the relevance of the finding in relation to claim 28 is not apparent. Again, the problem complained of appears to be an alleged error of law rather than an oversight.
16. It is clear that there was no explicit or implicit finding that claims 41 and 42 lacked fair basis or clarity. It may be that I was wrong in not finding these claims lacked fair basis or lacked clarity, but that is the decision that was made, and that decision has not been appealed. In line with Ex parte Mole Engineering, I have no power to reconsider that decision.
17. The applicant has overcome all of the deficiencies identified in the earlier decision.
18. I wish to make it clear that I express no opinion on whether or not claims 41 and 42 should have been found to be lacking in fair basis or clarity. Nothing that I have said should be seen as either agreeing or disagreeing with Mr Tadgell’s opinion on this point.
Conclusion
19. Subject to appeal, I direct that the application now proceed to sealing.
Costs
20. In view of my decision, it is appropriate to award costs against the unsuccessful party. I award costs according to Schedule 8 against Mr Newman.
Dr S.D.Barker
Delegate of the Commissioner of Patents30 July 2009
Patent attorneys for the applicant : Griffith Hack, Perth
Patent attorneys for the opponent : Phillips Ormond Fitzpatrick, Melbourne
0