Patent Agent Exam 2010 - Marking Guide B - (1 of 2)

Patent Agent Exam 2010 - Marking Guide B (PDF - 67 KB - 12 pages)

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Part A

In order for full marks to be awarded, markers are to assess whether:

  • The candidate has dealt correctly with all key issues
  • The response was very clear
  • The response was very well organized
  • Case law was cited with precision

Question 1 - Test for anticipation

(2.0 Marks)

1.0 Mark

The test for anticipation ("Sanofi Test") was outlined in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, as comprising two steps: determining whether the reference provides disclosure and enablement of all essential elements.

  • 0.5 Mark

    Disclosure: Prior disclosure means that the prior patent must disclose subject matter which, if performed, would necessarily result in infringement of that patent. No trial and error experimentation is permitted.

  • 0.5 Mark
    Enablement: If a clear disclosure is found, whether the working of the invention was also enabled by that disclosure. Routine trials are acceptable but inventive steps are not permitted.

Question 2 - Test for obviousness

(2.5 Marks)

The test for obviousness ("Sanofi Test") was outlined in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, as comprising the following steps:

  1. 0.5 Mark
    Identify the notional person skilled in the art

  2. 0.5 Mark
    Identify the relevant common general knowledge of that person

  3. 0.5 Mark
    Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it

  4. 0.5 Mark
    Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed

  5. 0.5 Mark
    Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require a degree of inventiveness?

Question 3 - Factors for essential element analysis

(3.0 Marks)

Determining whether an element in a claim is essential or not is made according to the following five factors:

  • 0.5 Mark
    The allocation is to be made on the basis of the common knowledge of the worker skilled in the art to which the patent relates.

  • 1.0 Mark
    What constitutes an essential element is to be interpreted in light of the knowledge of the art [0.5 marks] at the date of the publication [0.5 marks] of the patent specification.

  • 0.5 Mark
    Regard is to be had to whether it was obvious at the time the patent was published that substitution of a different variant would not make a difference to the way in which the invention works.

  • 0.5 Mark
    The allocation is to be made according to the intent of the inventor expressed or inferred from the claims of the patent.

  • 0.5 Mark
    The allocation is to be made based on the based on the patent specification itself without resort to extrinsic evidence.

Question 4 - Claim construction - claim 1

(7.0 Marks)

  • "press plate"
    • 0.5 Mark
      element 50 or 650, part of presser unit 12 or 612

    • 0.5 Mark
      used to press against garlic clove

    • 0.5 Mark
      may be attached to a pivoting plunger 52 or directly to presser unit 612

  • "garlic basket"
    • 0.5 Mark
      element 60; part of bearing unit 14 or 614

    • 0.5 Mark
      to hold clove (during the pressing operation)

  • "pivot means"
    • 0.5 Mark
      combination of lugs and pivot pins on ends of presser and bearing units

    • 0.5 Mark
      to permit the units to freely pivot without separation

  • "grater plate comprising first and second generally planar surfaces"
    • 0.5 Mark
      element 62, forms bottom of basket

    • 0.5 Mark
      for supporting clove during pressing and perforated

  • "plurality of drain holes"
    • 0.5 Mark
      element 68

    • 0.5 Mark
      provided in grater plate; preferably, but not exclusively frustoconical in shape

  • "spaced from one another, extending through the plate from the first surface to the second surface"
    • 0.5 Mark
      drain holes extend completely through grater plate to allow pulp to pass through

    • 0.5 Mark
      not explicitly defined in specification, although this element can be construed to require holes spaced across entire surface of grater plate (as shown in figures) to act as a sieve, this may be too limiting

    • 0.5 Mark
      "purposive construction" would require any spaced apart arrangement of the holes so long as drainage of pulp is achieved

Question 5 - Anticipation analysis - claim 1

(10.5 Marks)

  1. 2.5 Mark

    • discloses and enables presser unit ("plunger 16") and bearing unit ("barrel 12").
    • does not explicitly disclose a basket but a bounded structure is defined to contain cloves.
    • discloses and enables a grater plate ("grinding plate 24").
    • discloses and enables plurality of drain holes ("holes 26").
    • discloses and enables drain holes spaced apart and extending through grater plate.
    • but, no disclosure of pivot means

    0.5 Mark

    • No anticipation
  2. 2.5 Mark

    • teaches and enables presser unit and bearing unit ("arms 12 and 14", respectively).
    • teaches and enables a garlic basket ("receptacle 26"; "interior compartment 28").
    • teaches and enables a pivot means (formed by "knuckles 34 and 58" and "pintle 64").
    • teaches and enables plurality of drain holes ("apertures 32").
    • teaches and enables drain holes spaced apart and extending through grater plate.

    0.5 Mark

    • Does anticipate claim 1.
  3. 1.0 Mark

    • publication date is after priority date (but before filing date)
    • reference is not citable under 28.2(1)(b) of the Act.

    0.5 Mark

    • No anticipation
  4. 2.5 Mark

    • discloses and enables presser unit and bearing unit ("lever 8" and "base 4", respectively).
    • discloses and enables a garlic basket ("clove container 6").
    • discloses and enables a grater plate ("sieve 28").
    • discloses and enables a pivot means ("fulcrum 10").
    • discloses and enables plurality of drain holes ("drain holes 56").
    • discloses and enables drain holes spaced apart and extending through grater plate.

    0.5 Mark

    • Does anticipate claim 1.

Question 6 - Claim construction - claim 5

(4.0 Marks)

  • "plurality of conical projections on the first surface intermediate and spaced apart from the drain holes"
    • 0.5 Mark
      projections 74, in the shape of cones, located adjacent drain holes.

    • 0.5 Mark
      on surface of grater plate and directed towards press plate.

    • 1.0 Mark
      in combination with recesses on press plate, projections serve to maximize compression of cloves to extract pulp.

  • "a plurality of conical recesses therein, each recess positioned to receive one of the conical projections when the press is closed"
    • 0.5 Mark
      recesses (not identified in Figs 1-5) are provided on grater plate to receive projections 74.

    • 0.5 Mark
      recesses work with projections to maximize pulp extraction.

    • 0.5 Mark
      recesses are slightly larger than projections to accommodate them.

    • 0.5 Mark
      may conclude that projections on grater plate and recesses on press plate are essential in order to allow drainage of pulp.

Question 7 - Obviousness analysis - claim 5

(18.0 Marks)

  1. 1.0 Mark
    Define POSITA

    • A mechanical/design designer or engineer (not a chef or kitchen worker).
  2. 1.0 Mark
    Identify common general knowledge of the POSITA

    • POSITA would be familiar with simple mechanical devices such as levers and presses etc.
  3. 3.0 Mark
    Define inventive concept

    • Identifying inventive concept should be "readily done" from claim itself, but, in this case, would need to construe it based on disclosure.
    • For claim 5, the inventive concept is the ability to "maximize the degree to which the garlic clove is converted to pulp".
    • Some candidates will note that the projections/recesses serve to "puncture the clove … to facilitate removal of the pulp"
  4. 3.0 Mark
    State differences between inventive concept and state of the art

    • The difference over known art lies in the grater plate having a plurality of conical projections and the press plate having a corresponding conical recesses (i.e. to receive the projections). These serve to maximize crushing of the cloves.
  5. 10.0 Mark
    Obviousness analysis

    • Reference D3 is not citable.
    • Only references D2, D4 and D5 teach "presser unit", "bearing unit", "garlic basket", "grater plate", and "press plate". D1 does not.
    • No references teach projections on grater plate. Some candidates may mistake D1 as showing such projections but reference clearly describes these as holes and not projections.
    • Reference D5 teaches projections but only on press plate.
    • No references teach recesses to receive projections.
    • Candidates should conclude that none of D1 to D5 obviates claim 5 when taken individually.
    • Should also conclude that no combination of D1 to D5 on its face shows conical projections on grater plate and respective recesses on press plate.
    • D2 and D4 are the closest prior art. Even if projections of D5 were incorporated into D2 and D4, it still would not result in projections on grater plate and recesses in press plate.
    • But would it be "obvious to try"? D5 arguably shows conical projections but on the press plate. Therefore, should consider whether it would be obvious to change D5 to move projections from press plate to grater plate. Should conclude NO since POSITA will consider projections of D5 as serving to clear holes in the grater plate during the pressing operation. None of D1 to D5 teach adapting projections to maximize conversion of clove to pulp.

Question 8 - Validity analysis - claim 6

(7.0 Marks)

  1. 2.0 Mark
    Construe "frusto-conical"

    • Candidate should note that the term "frusto-conical" needs to be construed and, using the plain meaning of the term, conclude that it refers to a structure having a truncated conical shape.
    • Claim should not be restricted to orientation of frusto-conical shape.
  2. 5.0 Mark

    • Should note as before that reference D3 is not citable. D1 shows frusto-conical drain holes but does not include other structural features of claim 1 or 5.
    • Candidates should note that claim 6 depends from both claim 1 and claim 5 and should indicate that, insofar as it depends from claim 5, it is not anticipated or obvious (in view of the finding of non-obviousness of claim 5).
    • The only difference between claim 6 and claim 1 is that the shape of the drain holes is characterized as being frusto-conical. Candidates should note that D2 and D4 teach frusto-conical holes. Since claim 1 was found anticipated by the same references, claim 6 should also be found anticipated by D2 and D4 when dependent on claim 1.

Question 9 - Validity analysis - claim 7

(7.0 Marks)

  1. 2.0 Mark
    Construe claim limitation

    • Should note that claim 7 depends from claim 6 and further characterizes frusto-conical shape of drain holes by defining that "upper" portion of holes have a smaller opening than "bottom" portion.
    • Limitation is easily discernable from claim; description indicates that such shape "minimizes clogging of the holes".
  2. 5.0 Mark

    • As with claim 6, primary references are D2 and D4.
    • Claim 7 depends on claim 6, which was found not anticipated or obvious when dependent on claim 5. This finding would therefore extend to claim 7.
    • Claim 6, when dependent on claim 1, was found anticipated by D2 and D4. But, these references show frusto-conical drain holes that are oriented in opposite direction to that stipulated in claim 7. Therefore, claim 7 is not anticipated.
    • But, can drain holes of D2 and D4 be reversed in shape? D2 and D4 are silent on this point and same is the case with D1 (which also shows frusto-conical holes). Thus, candidates may conclude that claim 7 is not obvious over D2 and D4.
    • Obvious to try? Arguably, reversing the shape of the drain holes taught in D2 or D4 would be "obvious to try" when solving the problem of clogging. That is, reversing the holes would facilitate passage of material there-through. There is nothing explicitly mentioned in D2 and D4 that teaches away from this. In fact, D1 specifically teaches that the holes are wider on top to assist expulsion of garlic. Thus, some candidates may conclude that claim 7 would be obvious in view of D2 or D4 when combined with common general knowledge of a POSITA.

Question 10 - Other validity issues

(5.0 Marks)

  1. 2.5 Mark
    As it seems that Clean was purposely not named, the patent may be deemed void for a material misrepresentation in the Petition if it can be established that this was done for the purpose of misleading [1.5 marks]. Section 53(1) of the Act; Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153 or other relevant case, 671905 Alberta Inc. v. Q'max Solutions Inc. 2003 FCA 241 or other relevant case [1 mark].

  2. 2.5 Mark
    If, in a response to an examiner's requisition, the applicant mischaracterized the prior art by failing to disclose D5, this could be found to be lack of good faith in the response, then the application may have been deemed abandoned pursuant to s. 73(1)(a) of the Act [1.5 marks]; Lundbeck Canada Inc. v. Ratiopharm Inc., 2009 FC 1102 [1 mark]. Furthermore, the Lundbeck decision suggests that it would have been preferable to make full disclosure to the Patent Office of D5.

Question 11 - Ownership issues

(5.0 Marks)

  1. 2.5 Mark
    Clean was co-inventor and, and presumably invention was not part of his employment duties, so Clean was not obligated to assign [1 mark]. Therefore he could be deemed co-owner by application to Fed Court [1 mark]. S. 52 of the Act [0.5 marks].

  2. 2.5 Mark
    Clean could license or assign his rights to Oliver [1 mark] so no infringement [1 mark]. Forget v. Specialty Tools of Canada Inc. (1995), 62 C.P.R. (3d) 537 (B.C.C. of A.) [0.5 marks]

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