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The benefit of a hearing in intellectual property prosecution

Date: 20 November 2019
Author: Charles Berman
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In a recent hearing FB Rice succeeded in getting an Examiner’s objections to acceptance of a patent application overturned on behalf of its client, Aqseptence Group Pty Ltd.

The objection

The Examiner had objected to the claimed invention, asserting that it lacked novelty and an inventive step.  However, the Delegate who heard the case disagreed and held that the claimed invention was novel and inventive over the prior art relied on by the Examiner. 

After a fourth examination report issued in the case and an impasse had clearly been reached, Charles Berman of FB Rice requested a hearing.

During prosecution, in respect of the lack of inventive step objection, the Examiner had asserted common general knowledge without providing any evidentiary basis for what constituted common general knowledge despite being requested by the Applicant to provide such evidence.

In the fourth report, the Examiner provided no indication at all as to why the invention as claimed in claim 1 allegedly lacked inventive step over the cited art.  

The hearing

At the hearing, the Applicant was therefore compelled to respond to the Examiner’s lack of inventive step assertions as contained in the third examination report.  The Examiner had also not raised any lack of novelty objection in the third report but, despite no amendments to the claims, a lack of novelty objection was again raised in the fourth report.  In the third report, the Examiner had asserted that: –

This combination of features is considered a matter of design choice or common general knowledge for the person skilled in the art, and therefore claim 1 cannot be considered involving an inventive step in light of the disclosure of D1.

At the hearing, we argued that the Examiner had not provided any reasons as to why the assertions made by the Applicant in response to the third report were incorrect and that the Examiner had provided no evidence as to why D1, the asserted prior art, in combination with the supposed common general knowledge provided the benefits afforded by the present invention as claimed.

The Delegate held that the Examiner had made no attempt to establish that any of the essential features of claim 1 constituted matters of common general knowledge or were otherwise obvious.  As such, the Delegate indicated that he had no basis for finding that the invention of claim 1 did not involve an inventive step.  

The outcome

The Delegate therefore concluded that the invention as claimed was novel and involved an inventive step and directed the Examiner to accept the patent application.  

Thus, if an acceptance deadline is close and the Examiner maintains a lack of inventive step objection on the basis of common general knowledge but provides no evidentiary support for what constitutes common general knowledge, a hearing may be a positive alternative to attempting further prosecution by way of filing a divisional application.

Tags:  Patent application hearing, IP hearing, intellectual property hearing

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