PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:		Patent applications No. 71196/87, 71355/87, 70986/87 by IMPERIAL CHEMICAL INDUSTRIES PLC.  Examiner's objections.

Background

This decision provides reasons for a decision issued on 3 January 1991 without reasons because of the imminent final date for acceptance on 7 January 1991.

Application 70986/87 relating to acrylic acid derivatives useful as fungicides was lodged on 2 April 1987.  It derives priority from GB basic applications 8609457 and 8701395 filed on 17 April 1986 and 22 January 1987 respectively.

Application 71196/87 relating to acrylic acid derivatives useful as fungicides, plant growth regulators, insecticides and nematicides was lodged on 8 April 1987.  It derives priority from GB basic applications 8609454 and 8630825 filed on 17 April 1986 and 22 December 1986 respectively.

Application 71355/87 relating to acrylic acid derivatives also useful as fungicides, plant growth regulators, insecticides and nematicides was lodged on 9 April 1987.  It derives priority from GB basic applications 8609456 and 8701627 filed on 17 April 1986 and 26 January 1987 respectively.

Following requests for examination, the examiner's first report for each application issued on 7 April 1989.  The final date for acceptance is 7 January 1991.  The applicant proposed amendments to each specification.  The examiner maintained objections to the clarity and fair basis of each set of claims and an impasse was reached.  The applicant asked for a hearing and requested an extension of the period of acceptance from 7 January 1991 to 7 March 1991 under section 160.  The Commissioner's delegate did not grant the request. 

The hearing took place in Canberra on 28 December 1990 after an unsuccessful informal request by the applicant for a delay in proceedings to gain more time to gather evidence; the applicant, Imperial Chemical Industries PLC (ICI) was represented by Ms Elizabeth Eadie, solicitor, of Phillips, Ormonde and Fitzpatrick, Melbourne.

Examiner's objections

The major remaining examiner's objection against application 71196/87 (similar for each other application) is as follows:

	"The terms "optionally substituted", "substituted", "acyl", "heteroatoms", "heterocyclic rings" and "heterocyclyl" are broad and indeterminate in scope.

	The terms "optionally substituted" and "substituted" cover a vast class of substituents which include every conceivable atom or radical that may replace one or more of the hydrogen atoms of the particular groups.  The terms include simple substituents, such as halogen, alkoxy and phenyl radicles, as well as complex substituents, such as, heterocyclic radicals and fused ring systems.  The substituents may also be derived from a compound which possesses phytopharmaceutical activity.  In the case of the more complex substituents the moiety which is substituted may be unrecognisable.

	As the terms are open ended, the range of substituents included in the claim is infinite.  The claims are clearly two widely drawn.  The applicant is entitled to frame his claim in such a way that what is claimed does not go beyond the limits of a "sound prediction".  To say that a group may be substituted by any substituent is surely not sound.

	The use of the term "substituted" was considered in Herchel Smith Applications, AOJP, Vol. 38, No. 11, page 774.  In this case, the Deputy Commissioner held that the term "substituted" is too widely drawn and cannot stand for the reasons made clear in Shell Development's Application (1947) 64 RPC 151.

	Similarly the terms "acyl", "heteroatoms", "heterocyclic rings" and "heterocyclyl" are broad and indeterminate in scope.

	Although the "optional substituents" have been limited to those which "do not affect the fungicidal activity of the compound", this functional limitation does not make the claim any the less speculative.  There would still be an infinite number of compounds that fall within the scope of the claim.  The claim should be limited to those substituents which are supported by the description."

The specifications

Claim 1 of 71355/87, as proposed to be amended, is for:

	A fungicidal compound having the general formula (1):

					.	
			D			   E
				.		.                    (1)
			B			   W
						
				.		.
			A
					N

	and stereoisomers thereof, wherein W is R1O2C-C=H-ZR2, wherein R1 and R2 are methyl groups, and Z is either an oxygen or sulphur atom; A, B, D and E, which are the same or different, are hydrogen or halogen atoms, or hydroxy, optionally substituted alkyl, optionally substituted alkoxy, optionally substituted aralkyl, optionally substituted arylalkoxy, optionally substituted alkenyl, optionally substituted alkynyl, optionally substituted aryl, optionally substituted aryloxy, optionally substituted arylthio, optionally substituted heteroaryloxy, optionally substituted heteroarylthio, optionally substituted acyloxy, optionally substituted amino, optionally substituted arylazo, optionally substituted acylamino, nitro, cyano, -CO2R3, -CONR3R4, -COR3, -CR3=NR4, -N=CR3R4 or -S(O)nR3 groups; any two of the groups A, B, D and E when they are in adjacent positions on the ring, optionally join to form fused ring, either aromatic or aliphatic, optionally containing one or more heteroatoms; n is 0, 1 or 2; and R3 and R4, which are the same or different, are hydrogen atoms or alkyl, cycloalkyl, cycloalkylalkyl, alkenyl, alkynyl, optionally substituted aryl, or optionally substituted aralkyl groups; and metal complexes thereof, provided that the optional substituents do not adversely affect the fungicidal activity of the compound.

Claim 1 of 70986/87, as proposed to be amended, is for:

	A fungicidal compound having the general formula (1):

		W	
			A
	X				CO2R1
			.     	

		.		.- C = CH
	Y	         
          	        OR2
		.		.
		Z	
			.

	and stereoisomers thereof, wherein W is an unsubstituted pyridyl or unsubstituted pyrimidinyl group linked to A by any one of its ring carbon atoms, A is either an oxygen atom or S(O)n wherein n is 0, 1 or 2; X, Y and Z, which are the same or different, are hydrogen or halogen atoms, or hydroxy, optionally substituted alkyl, optionally substituted alkenyl, optionally substituted alkynyl, optionally substituted alkoxy, optionally substituted aryl, optionally substituted aryloxy, optionally substituted aralkyl, optionally substituted arylalkoxy, optionally substituted acyloxy, optionally substituted amino, optionally substituted acylamino, nitro, cyano, -CO2R3, -CONR4R5, -COR6 or -S(O)nR7 (wherein n is 0, 1 or 2) groups or any two of the groups X, Y, and Z when they are in adjacent positions on the ring, optionally join to form fused ring, either aromatic or aliphatic, optionally containing one or more heteroatoms, provided that when A is oxygen, X is hydrogen, and R1 and R2 are both methyl, Y and Z are not both hydrogen, Y is not F, Cl, methyl, nitro, 5-CF3, 5-SCH3 or 4-(CH3)2N if Z is hydrogen and Y and Z together are not 3-nitro- 5-chloro, 3,5-dinitro, 4,5-dimethoxy or 4,5-dimethylenedioxy; R1 and R2, which are the same or different, are optionally substituted alkyl groups; and R3, R4, R5, R6 and R7, which are the same or different, are hydrogen atoms or optionally substituted alkyl, optionally substituted cycloalkyl, optionally substituted cycloalkylalkyl, optionally substituted alkenyl, optionally substituted alkynyl, optionally substituted aryl, or optionally substituted aralkyl groups; and metal complexes thereof, provided that the optional substituents do not adversely affect the fungicidal activity of the compound.

Claim 1 of 71196/87, as proposed to be amended, is for:

	A fungicidal compound having the general formula (1):

		W	
			A
	X				CO2R1
			.     	

		.		.- C = CH
	Y	         
          	        OR2
		.		.
		Z	
			.

	and stereoisomers thereof, wherein W is a substituted pyridyl or substituted pyrimidinyl group linked to A by any one of its ring carbon atoms, A is either an oxygen atom or S(O)n wherein n is 0, 1 or 2; X, Y and Z, which are the same or different, are hydrogen or halogen atoms, or hydroxy, optionally substituted alkyl, optionally substituted alkenyl, optionally substituted aryl, optionally substituted alkynyl, optionally substituted alkoxy, optionally substituted alkylthio, optionally substituted aryloxy, optionally substituted arylalkoxy, optionally substituted acyloxy, optionally substituted amino, optionally substituted acylamino, nitro, cyano, -CO2R3, -CONR4R5, -COR6 or -S(O)nR7 (wherein n is 0, 1 or 2) groups or any two of the groups X, Y, and Z when they are in adjacent positions on the ring, optionally join to form fused ring, either aromatic or aliphatic, optionally containing one or more heteroatoms; R1 and R2, which are the same or different, are optionally substituted alkyl groups; provided that when W is 5-trifluoromethylpyridin-2-yl, provided that when A is oxygen, X is hydrogen, and R1 and R2 are both methyl, Y and Z are not both hydrogen, Y is not F, Cl, methyl, nitro, 5-CF3, 5-SCH3 or 4-(CH3)2N if Z is hydrogen and Y and Z together are not 3-nitro- 5-chloro, 3,5-dinitro, 4,5-dimethoxy or 4,5-dimethylenedioxy; and R3, R4, R5, R6 and R7, which are the same or different, are hydrogen atoms or optionally substituted alkyl, optionally substituted cycloalkyl, optionally substituted cycloalkylalkyl, optionally substituted alkenyl, optionally substituted alkynyl, optionally substituted aryl, or optionally substituted aralkyl groups; and metal complexes thereof, provided that the optional substituents do not adversely affect the fungicidal activity of the compound.

As each specification discloses similar examples of the terms in question, I will limit my comments to application 71196/87 as this application contains all the objectionable terms.

The substituents for any optionally substituted aryl or heteroaryl moiety include one or more of the following; halogen, hydroxy, C1-4 alkyl (especially methyl and ethyl), C1-4 alkoxy (especially methoxy), halo (C1-4) alkyl (especially trifluoromethyl), halo (C1-4) alkylthio (especially methylthio), (C1-4) alkoxy(C1-4) alkyl, C3-6 cycloalkyl, C3-6 cycloalkyl(C1-4) alkyl, aryl (especially phenyl), aryloxy (especially phenoxy), aryl(C1-4) alkyl (especially benzyl, phenylethyl, phenyl n-propyl), aryl C1-4 alkoxy (especially benzyloxy), aryloxy (C1-4) alkyl (especially phenoxymethyl), acyloxy (especially acetyloxy and benzoyloxy), cyano, thiocyanato, nitro, -NR'R", -NHCOR', -NHCON'R", -CONR'R", -COOR',,-OSO2R', -SO2R', -COR', -OCOR', -CR'=NR", -N=CR'R" in which R' and R' are independently hydrogen, C1-4 alkyl, C1-4 alkoxy, (C1-4) alkylthio, C3-6 cycloalkyl, C3-6 cycloalkyl(C1-4) alkyl, phenyl or, the phenyl or benzyl groups being optionally substituted with halogen, C1-4 alkyl or C1-4 alkoxy.

Other substituents are illustrated as follows:

Substituent Group				Illustrated by

optionally substituted alkyl	-	haloalkyl, in particular fluoroalkyl, hydroxyalkyl, alkoxyalkyl, optionally substituted aralkyl, especially, optionally substituted phenylalkyl, and optionally substituted aryloxyalkyl, especially optionally substituted phenoxyalkyl.

optionally substituted alkenyl -	optionally substituted phenyl ethenyl, especially optionally substituted phenylethenyl

optionally substituted aryl	 -	see below

optionally substituted alkynyl -	not illustrated

optionally substituted alkoxy  -	optional substituents for optionally substituted alkylthio	alkoxy and alkylthio include
							those described above for alkyl.

optionally substituted aryloxy  -	also optionally substituted phenoxy

optionally substituted arylalkoxy - also optionally substituted
					           benzyloxy

optionally substituted acyloxy  -	-OCOR' where R' is as defined for optionally substituted aryl or heterocyclic moieties.

optionally substituted amino	  -	-NR'R" where R' and R" are as defined for optionally substituted aryl or heterocyclic moieties.

optionally substituted acylamino -	-NHCOR' where R' is as defined for optionally substituted aryl or heterocyclic moieties.

optionally substituted cycloalkyl - not illustrated.

optionally substituted cycloalkylalkyl - not illustrated.

substituted pyridinyl -			includes a variety of 
or pyrimidinyl					substituents  similar to those given for the aryl and heteroaryl moieties above.

heterocyclic rings   -			2-, 3-, or 4- optionally 
e.g. heterocyclyl				substituted pyridines or 2-, 4-, or 5-, optionally substituted pyrimidines

Table I, Table II and Table III of application 71196/87 contain 319 examples of the compounds of the invention wherein R1 and R2 are methyl groups and X, Y and Z are mainly hydrogen and a small number of simple substituents, such as, halogen, methyl and methoxy groups and W a variety of substituted pyridinyl and substituted pyrimidinyl groups.

Examples 1 to 9 illustrate the preparation of compounds No. 14 of Table I, 127 of Table I, 133 of Table I, 61 of Table I, 15 of Table II, 141 of Table I, 184 of Table I and 45 of Table I.

Evidence

The evidence, submitted at the hearing, consisted of 3 statutory declarations together with some exhibits.

The first by John Melvin Swan, chartered chemist, of Melbourne, Victoria was accompanied by 3 exhibits which comprised copies of each of the patent applications under examination as proposed to be amended.

He declares that:

"1.	I commenced employment as an industrial chemist with I.C.I.A.N.Z. Ltd. (now I.C.I. Australia) in 1941, and after 4 years of part time study, obtained a diploma of Applied Chemistry from the then Royal Melbourne Technical College.  I subsequently graduated from the University of Melbourne in 1947 with the degree of Bachelor of Science, majoring in chemistry.  In 1949 I obtained the degree of Doctor of Philosophy at the University of London and in 1965 I received the further degree of Science from the University of Melbourne.

2.	From 1959 to 1965 I was employed as a research scientist by the Commonwealth Scientific and Industrial Research Organisation.  In January, 1966 I was appointed Professor of Organic Chemistry at Monash University, and in January, 1971, I became Pro-Vice-Chancellor for a 5-year term.

3.	From January, 1976 to August 1984 I was Dean of the Faculty of Science at Monash University and continuously from 1971 to 1984 retained a small research unit within the chemistry department.  I lectured extensively in the field of organic chemistry at undergraduate and at post graduate level and have lectured in polymer chemistry at the undergraduate level.  In 1965 I was awarded (jointly) the H.G. Smith Medal of the Royal Australian Chemical Institute and also (jointly) the Syme Prize for Research from the University of Melbourne.  I am a fellow of the Royal Australian Chemical Institute and a Fellow of the Australian Academy of Science.

4.	From 1950 to 1960 my research interests were mainly in the field of peptide and protein chemistry.  From 1961 onwards they have been in the design and synthesis of biologically-active molecules especially anti-cancer drugs, analgesics, anthelminitics (sic), and insecticides, and in organo-metallic and organo-phosphorus chemistry.

5.	Except for short periods of overseas study and research I have been resident and have spent my working life in the field of chemistry in Australia.  I have published extensively in the field of chemistry, both in overseas academic and technical journals and in the Australian Journal of Chemistry and I have extensive research experience in the field of organic chemistry."

7.	I first note that despite my extensive and continued reading of chemical literature and my detailed knowledge of herbicides and fungicides I have never seen a structure which looks anything like the fungicides claimed in the above (sic) specifications.  Accordingly I recognise that these Patent Applications are pioneering inventions in the area of fungicides.

10.	I have been requested to state what the terms "acyl" and "heteroatom" mean to me.  Acyl means an RC=O group wherein R is aliphatic, aromatic, heterocyclic or hydrogen.  I do not have any difficulty in understanding the meaning and scope of the term "acyl".

11.	"Heteroatom" means any atom other than carbon or hydrogen.  In the context of the claim one of the carbon atoms constituting a fused ring system is being replaced by another atom.  I do not see anything ambiguous or not being able to be interpreted about the term "heteroatom".  I do not have any difficulty in defining the meaning and scope of the term "heteroatom".  The term "heteroatom" usually includes nitrogen, sulphur, oxygen or phosphorus. However, it may also refer to elements such as selenium which may provide a useful alternative to the heteroatoms above.  Hence the term heteroatom is not restricted to nitrogen, sulphur, oxygen and phosphorus but may include other elements in certain circumstances.

14.	I understand the term "heterocyclic ring" to mean a stable organic structure containing at least one carbon atom and also containing one or more non-carbon atoms such as oxygen, nitrogen, sulphur or phosphorus and which may have any number of atoms in the ring which forms a ring structure, commonly 3 to 10 atoms and where such rings often behave like the corresponding alkyl or aryl analogues.  Although the term "heterocyclic ring" encompasses a large class of compounds I have no difficulty in understanding the meaning or scope of that term.  Again although a large class of compounds is encompassed by the term "heterocyclic ring" it is not a significantly larger class than for example "aryl" or "alkyl" which are terms used in claim 2 of the specification (71196/87).  As a chemist I have no difficulty understanding the meaning and scope of the term "heterocyclic ring".

15.	I understand the term "heterocyclyl" to mean either a heteroaryl compound or a heterocycloalkyl compound.  "Heterocyclyl" is a term which is clear to chemists.  It is common nomenclature in the organic chemistry art.  I have no difficulty in understanding what is meant by and the scope of the term "heterocyclyl".  Again, although the term "heterocyclyl" may encompass a large class of compounds it is no broader than fo example the size of class of compound encompassed by the terms "aryl" or "alkyl".

21.	The term "optionally substituted" when used by me or any other organic chemist means replacing a hydrogen atom from the backbone of a compound with a different atom or group of atoms.  This is the classic meaning according to an organic chemist.  I do not have any difficulty in understanding the scope and meaning of the term "optionally substituted".

23.	I understand that it may be argued that the skilled addressee will not know whether he or she is infringing the above claims. .....

26.	....I believe that each of the claims outlined above is clear and would be clear to any skilled organic chemist and I would have no difficulty in determining whether a compound fell within the scope of the claims. ..."

In paragraphs 9, 12 and 16 of his declaration Professor Swan presents claim 1 of applications 71355/87, 71196/97 and 70986/878 as they were proposed to be amended.  In paragraphs 23 and 24 he rewrites the structural formula of claim 1 of each application in simplified form and discusses how he would analyse each claim to determine whether a compound would fall within its scope.  He determines the simplified formulae by using hydrogen rather than an optional substituent where the option exists.

The second declaration is by Malcolm John Houghton, Chartered Patent Agent, of Wokingham, Berkshire, England.

He declares:

2.	THAT I am familiar with Australian Patent Applications 70986/87, 71196/87 and 71355/87, and have been involved in the drafting of the specifications and the prosecution of these applications in Australia and the corresponding applications in other countries.

3.	THAT the above applications lie in a new field of fungicides.  Prior to the priority date of the above applications there was no publication of the fungicidal use of beta-alkoxyacrylates of the type claimed in the above applications.

The third declaration is by Elizabeth Eadie, patent attorney, employed by Phillips Ormonde and Fitzpatrick, of Melbourne, Victoria. 

Ms Eadie presents 2 exhibits which are a number of Abridgements of Australian patents.  She declares:

"2.	THAT shown to me and attached hereto as Exhibit EE1 are Patent Abridgements of Australian Patents 588254, 571960, 533709 and 528939.  I am aware that during the prosecution of each one of these applications the examiner raised an objection to the term "substituted" appearing in the claims.  I am aware that in each case the objection was overcome by argument and the claims of each one proceeded to grant with the term "substituted" or "optionally substituted" in the claims." 

Submissions and decision

Ms Eadie presented a number of submissions, supported by relevant case law, about why the claims, as proposed to be amended, met the requirements of section 40.  I propose to consider only the argument relevant to the issues raised in the examiner's objection.

The matter at hand in my opinion is whether:

.	the claims are fully described, including a best method of performance;

.	the claims are fairly based on the matter described in the specification; and 

.	the terminology used is clear and can be understood by the skilled addressee.

I construe the claims as proposed to be amended to be limited to compounds with fungicidal properties having the particular chemical formulae appropriate to each patent application.  

The inventive concept appears to me to reside with fungicidal compounds having Professor Swan's simplified formula.  The broad terminology has been used to provide broad protection for this inventive concept.

There is no suggestion that the claims are anticipated.  In particular there is no suggestion, in the present instance, that the structural formula, in simplified form, of claim 1 in each application is anticipated.  I determine the simplified formulae in the same manner as Professor Swan, that is, by using hydrogen rather than an optional substituent where the option exists.

Ms Eadie argued that the terminology used in the present claims can be understood by the skilled addressee.  She based her argument on the evidence of Professor Swan and cited the judgement in Edison and Swan Electric Light Co v Holland 6 RPC 243 as an authority.

Ms Eadie also cited a statement on page 515 of The General Tyre and Rubber Company v The Firestone Tyre and Rubber Company Limited (1972) RPC 457 at page 515 in which the Court concludes:

	"It is clear in our judgement that the question whether the patentee has sufficiently defined the scope of his claims is to be considered in relation to the facts of each case, that allowance is to be made for any difficulties to which circumstances give rise, and that all that is required of the patentee is to give as clear a definition as the subject matter admit of.  It is also clear in our judgement that while the court is to have regard to all the relevant facts, the issue of definition is to be considered as a practical matter and little weight is to be given to puzzles set out at the edge of the claim which would not as a practical matter cause any difficulty to the manufacturer wishing to satisfy himself that he is or is not infringing the patent."

I accept this argument and although I agree with the examiner that the terms are broad and include a vast number of possibilities, only a few of which have been illustrated, I do not agree that the scope of the terms is unclear or indeterminate to a skilled organic chemist (the skilled addressee in this instance).  

I accept Professor Swan's evidence and find that a skilled person, in this case a skilled chemist, could understand the meaning and scope of the terms used.  In my opinion, he or she would not find the claims unclear or of indeterminate scope.

In submitting that the claims were fairly based Ms Eadie argued that the present application fulfilled the rules from the Mond Nickel Company Ltd's Application (1956) RPC 189 at page 194 and that the objection must be one of speculative claiming as found in Esau's Application (1932) 49 RPC 85.  The examiner is wrong in applying this law to this case, she said, as the third requirement of this judgement, that is that the field be largely unexplored, has been omitted from consideration.  The present claims, she said, have been limited to substituents not adversely affecting fungicidal activity.

Ms eadie also cited the judgement of Graham, J. in Olin Mathieson v Biorex, (1970) RPC 157, where at page 193 he states:

	"If it is possible for a patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so.  Of course, in doing so he takes the risk that a defendant may be able to show that his prediction is unsound or that some bodies falling within the words he has used have no utility or are old or obvious or that some promise he has made in his specification is false in a material respect; but if, when attacked, he survives this risk successfully, then his claim does not go beyond the consideration given by his disclosure, his claim is fairly based on such disclosure in these respects, and is valid."

I accept this.  It seems to me that the terms in question are in most cases fairly based on the description and have been fully described and exemplified in the description.  

This is not the case, however, with the terms "substituted alkynyl", "substituted cycloalkyl" and "substituted cycloalkylalkyl" which have not been fully described or exemplified.  The only disclosure in the description is that of the words themselves.  The mere use of the words in the description without further description or exemplification does not in my opinion constitute a full description or the best method of performance of these aspects of the invention.

In my opinion, they fail the first Mond Nickel Rule (Mond Nickel Company Ltd's Application (1956) RPC 189 at 194) in that "the alleged invention as claimed" in this instance "is not broadly described in the specification".

In summary it seems to me that the meaning of terminology such as "substituted", "optionally substituted", "acyl", "heteroatoms", "heterocyclic rings" and "heterocyclyl" is clear to a skilled addressee.

Such terminology is acceptable in a claim provided:

.	the claims are not anticipated.  

	In the present instance the structural formula of claim 1 of each application in simplified form (the inventive concept) is not anticipated.  I determine the simplified formulae in the same manner as Professor Swan, that is, by using hydrogen rather than an optional substituent where the option exists.  

.	each use of such terminology in a claim has been fully described and a best manner of performance included. That is, the terms should be illustrated with examples of appropriate chemical moieties.  

	Further, in the present case, specific examples of substituted alkynyl, substituted cycloalkyl and substituted cycloalkylalkyl groups or specific compounds containing examples of these groups, should have been included in the description for the claims to have been fairly based;

.	the skilled addressee wishing to avoid infringement would not as a practical matter have difficulty in deciding whether he or she infringed the claim.

.	it is possible for a patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound.  An examiner is limited in the manner in which he or she may be able to show that a prediction is unsound.  In the present applications it seems to me that the applicant is able to make a sound prediction on the basis of fungicidal activity and is entitled to claim all compounds within the structural formulae that have fungicidal properties.

	However, if the claims have been anticipated it seems to me that Graham, J. in Olin Mathieson v Biorex, (1970) RPC 157, is saying that the use of such broad terminology in the claims is not fairly based on the disclosure in these respects and the prediction is unsound.

Ms Eadie argued that in holding the hearing on 28 December 1990 the Patent Office had, in the face of a request from the applicant that the hearing be held on either 2nd, 3rd or 4th January 1991 to provide more time to gather evidence, withheld natural justice and had acted ultra vires.  The applicant first approached the Patent Office for a hearing on 18 December 1990.

In my opinion there was a clear need, in the present circumstances, to achieve a balance between applicant's need to prepare their case, the hearing officer's need to give due consideration to the evidence and submissions in reaching a decision and the need for a response by the applicant to overcome remaining objections (if they still exist) before the expiry of the final date for acceptance.

Taking these things into account, it is my view that the applicant has not been unfairly treated.  

Conclusion

I find the terms "optionally substituted", "substituted", "acyl", "heteroatoms", "heterocyclic rings" and "heterocyclyl", to be allowable.  They are, in my opinion, clear and understandable to the skilled person.  

The claims are certainly of broad scope.  It seems to me, however, that a skilled addressee wishing to avoid infringement would not as a practical matter have difficulty in deciding whether he infringed any one of the claims.

The claims are, in general, fairly based and adequately supported by the description.  However, exceptions to this are listed below.

Applications 70986/87 and 71196/87

Unsubstituted alkynyl, unsubstituted cycloalkyl and unsubstituted cycloalkylalkyl are adequately illustrated.  The terms substituted alkynyl and substituted cycloalkyl or substituted cycloalkylalkyl are not illustrated in either description.

Application 71355/87

Similarly I can not find support for "substituted alkynyl" in the description of 71355/87.

The terms substituted alkynyl and substituted cycloalkyl or substituted cycloalkylalkyl are therefore not fairly based.  

Following the hearing the applicant submitted proposed amendments to illustrate the term "substituted alkynyl", "substituted alkoxy", "substituted cycloalkyl" and "substituted cycloalkylalkyl".

I find the proposed amendment to illustrate "substituted alkynyl", "substituted cycloalkyl" and "substituted cycloalkylalkyl" to be not allowable under section 49 (4) of the Act as the claim would claim matter not in substance disclosed in the specification as lodged.  The basis for this is in Roussel-Uclaf v Herchel Smith, (1974) AOJP 1549 and  Monsanto Co's Application 6 January 1966 AOJP 3362.

All three applications were accepted after the applicant proposed appropriate amendments.

Bob Sawyer
Supervising Examiner of Patents

Patent Attorneys for the applicant: Phillips, Ormonde and Fitzpatrick