Post-Final Action Prosecution: Belzberg Distinguished

CD1317 Balloon Catheter / Declath Systems (PAB & Comm'r of Patents)

In Belzberg 2009 FC 657 Simpson J held that “the defects identified in a final action are comprehensive rather than a mere selection” [43], or, as Hughes J put it in Bartley 2011 FC 873 (blogged here) “a ‘Final Action’ must be final” [71]. In both Belzberg and Bartley a Final Action report had been issued, a PAB hearing was convened and concluded that none of the defects identified in the report were substantiated. The Commissioner returned the application to the examiner for further prosecution, though without identifying any problems, after which the examiner issued a new report with new requisitions. In both cases the Federal Court held that this was improper, and the patent should be granted. In CD1317 Balloon Catheter / Declath Systems the applicant invoked Belzberg and Bartley to argue that the patent must be granted when the applicant had responded to all defects identified in the Final Action, even though in so doing new problems had been introduced. The PAB and Commissioner held, rightly in my view, that Belzberg and Bartley were distinguishable, and remanded for further prosecution.

In a Final Action the examiner had rejected the application for lack of novelty [6]. The applicant responded by amending the claims at issue to introduce a limitation which was supported by the description, but which was not previously present in any of the claims [7]. This overcome the anticipation point, but the examiner was of the view that these claims as amended raised issues of obviousness, which had not previously been considered because the limitations in question were not part of the claim. The applicant invoked Belzberg to argue that the application must be granted because the objections raised in the Final Action had been met. The PAB rejected this argument, and distinguished Belzberg on the basis that the issue of obviousness arose “because of amendments made by the Applicant in response to the Final Action” [22] (and see [28]). The PAB pointed out that because the amended claims were novel, the applicant’s interpretation meant that the Commissioner “would be required . . . to allow the application to grant without ever having fully considered the patentability of those claims” [31].

In my view this is an entirely persuasive distinction. As Simpson J pointed out in Belzberg, “[t]he PAB made no recommendations for further prosecution. This means there was no basis for returning the Patent Application to an Examiner for further prosecution” [23]. Thus the basis for the distinction advanced by the PAB in Balloon Catheter / Declath Systems is found in Belzberg itself. Moreover, when Simpson J held that “the defects identified in a final action are comprehensive rather than a mere selection” [43], presumably she meant that the defects are a comprehensive objection to the claims before the examiner; the defects raised by examiner could not possibly be a comprehensive assessment of claims that the examiner had never seen.