Patent decision

BL number

O/313/14

Concerning rights in

Patent applications GB1004556.5 and GB1004558.1

Hearing Officer

Dr J E Porter

Decision date

16 July 2014

Person(s) or Company(s) involved

General Electric Company

Provisions discussed

Patents Act 1977 section 14(3)

Keywords

Sufficiency

Related Decisions

None

Summary

The inventions concerned use of pulsating heat pipes (PHPs) to cool a superconducting magnet assembly. PHPs comprise tubing partially filled with a liquid cryogen which is transported by thermally induced, self-excited oscillations. The examiner had objected that it was a well-known aim to use a cryogenic PHP for superconducting magnet cooling, but that it was not straightforward to achieve and that the specifications did not disclose sufficiently how the skilled person could use a cryogenic PHP to achieve this aim. The arguments focussed on a number of academic papers dated after the priority date.

The Hearing Officer agreed that none of the material appeared to show that a cryogenic PHP had, as yet, actually been used to cool a superconducting magnet, although it showed construction of working cryogenic PHPs and testing and optimisation of their characteristics. But he concluded there was considerable doubt as to the reason(s) for non-connection of a cryogenic PHP to a superconducting magnet at this stage, and whether that step had not been taken because of the need to characterise further and test PHP properties or because of a desire to optimise performance before going ahead further, or for reasons concerned with potential commercialisation and the wider research programme, or for other reasons. He was also of the view that there was considerable doubt as to whether the testing, optimisation and characterisation that had taken place could have been said, at the priority date, to amount to something more than routine trials and development.

Since these were all questions of fact not law, on which a court would benefit from expert evidence, the applicant was entitled to the benefit of the doubt. The Hearing Officer did not think it right to conclude that the specifications would not have enabled the skilled person to use a cryogenic PHP to cool a superconducting magnet assembly - at least non-optimally. On this basis, he concluded that the examiner’s objection to insufficiency on the basis of this material should not be maintained.