Patent decision

BL number

O/354/19

Concerning rights in

GB1811529.5

Hearing Officer

Mr B Micklewright

Decision date

25 June 2019

Person(s) or Company(s) involved

California Institute of Technology and Thermo Fischer Scientific (Bremen) GmbH

Provisions discussed

Patents Act 1977 section 5(2)

Keywords

Priority date

Related Decisions

None

Summary

The invention related to a method for determining the isotropic composition of an analyte using a combination of two mass spectrometers, one a multi-collector low resolution spectrometer and the other a single-collector high resolution spectrometer. The examiner argued that two elements of the invention claimed in claim 1 were not entitled to their priority date (this was relevant because of a potentially relevant prior art document published between the declared priority date and the filing date.) The first of these elements related to a lower resolution limit for the high resolution spectrometer and the hearing officer found that this element was not clearly disclosed in the priority document. The second element related to whether there was an enabling disclosure of the final step of the claim which related to determining a molecular position of at least one isotope in an analyte isotopologue comprised in the analyte. The hearing officer found, based on evidence presented at the hearing and further evidence in written submissions provided after the hearing, that the question was finally balanced and therefore, given that this was a question of fact, gave the benefit of the doubt to the applicant on this point. His conclusion was, however, that the claim as a whole is not entitled to its priority date. At the hearing the applicant indicated a desire to make amendments to the claims and therefore the hearing officer referred the application back to the examiner for consideration of inventive step in the light of his decision on the question of priority.

Full decision O/354/19 292Kb