- BL number
- O/227/17
- Concerning rights in
- GB1021915.2
- Hearing Officer
- Dr J Houlihan
- Decision date
- 12 May 2017
- Person(s) or Company(s) involved
- Cordek Limited
- Provisions discussed
- Sections 1(1)(b), 14(5
- Keywords
- Clarity, Inventive step, Support
- Related Decisions
- None
Summary
The issues were whether a product-by-process claim was allowable and whether the claimed inventions involve an inventive step.
The invention relates to shuttering for use in casting slabs or beams, particularly floor slabs, over a substrate in the construction industry. The shuttering is characterised by hexagonally (honeycomb) shaped cells which are created by moulding expanded plastics such as polystyrene. The application claims that the hexagonal structure provides an advantage over rectangular structures in accommodating upward ground heave.
The examiner objected that claim 1 was unclear and not supported because it related to a product characterised by the process of making it as per Kirin Amgen Inc v Hoechst Marion Roussel (2005] RPC 9. The hearing officer found that it was valid for the claim to be partly defined by a process as the moulding process described was critical to forming the hexagonal shuttering array.
In relation to the issue of inventive step, applying the Windsurfer/Pozzoli test, the examiner cited several prior art documents which he said collectively illustrated that hexagonal arrays were common general knowledge in the art. The examiner’s view was that the invention was obvious when a state of the art document which described heave shuttering with rectangular arrays of moulded plastic was considered in light of the common general knowledge. The hearing officer agreed with the examiner on the issue of common general knowledge but in light of the differences required between moulding hexagonal plastic arrays and rectangular plastic arrays he found that the claimed inventions were not obvious. He remitted the application to the examiner for further processing.