Agricultural Business Research Institute v Fallway Holdings Pty Limited
[2000] APO 25
•29 March 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 679329 in the name of AGRICULTURAL BUSINESS RESEARCH INSTITUTE
Title: Method and Feedstuff for the Production of Eggs
Action: Opposition under S. 59 of the Patents Act by
FALLWAY HOLDINGS PTY LIMITED
Decision: Issued
Abstract
Opposition unsuccessful on both grounds of opposition, Novelty and Inventive step, in their entirety.
The opponent has not brought forward any anticipatory document which discloses the essential features of the invention as set out in independent claims 1 and 12. The invention as defined by the claims in their entirety is novel.
The invention as defined by the claims involves an inventive step.
Application to proceed to sealing.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 679329 in the name Agricultural Research Business Institute, opposition under Section 59 by Fallway Holdings Pty Limited
BACKGROUND
Patent application number 16608/95 was filed under the provisions of the Patent Cooperation Treaty on 8 February 1995 claiming priority from provisional application PM3780 dated 9 February 1994. The application was originally in the name of University of New England and listed David J Farrell as the inventor. An assignment of the application to Agricultural Research Business Institute (hereafter referred to as ‘the applicant’) was registered on 8 October 1996. The application was advertised accepted on 26 June 1997.
Fallway Holdings Pty Limited (hereafter referred to as ‘the opponent’) filed a notice of opposition on 26 September 1997. A statement of grounds and particulars was served on 31 December 1997. Service of evidence in support of the opposition was completed 30 May 1998, evidence in answer on 24 September 1998 and evidence in reply 24 December 1998.
The matter was heard in Sydney on 18 October 1999. The applicant was represented by Mr Paul Kilborn, patent attorney of F B Rice & Co. The opponent was represented by Mr Gary Wilson, patent attorney of Wilson & Young.
THE OPPOSITION
The statement of grounds and particulars specifies two grounds of opposition:
Novelty - The invention so far as claimed was prior published by, or was otherwise not novel in the light of, particularised documents (a) to (m).
Inventive Step - The invention so far as claimed was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of each claim, particularising the same documents (a) to (m) as under the ground of novelty.
Evidence in support of the opposition consists of statutory declarations by Phillip Guy Gely dated 30th March 1998 with exhibits PG1-6 and by Gurcharn Singh Sidhu dated 29th May 1998 with exhibits GSS1-3. Mr Gely is the director of the opponent company Fallway Holdings Pty Ltd which trades under the name of Chanteclair Farms in the sale of eggs and related egg products. Dr Sidhu is a scientist with PhD in biochemistry and nutrition who previously held a Senior Principal Research Scientist position with the CSIRO Division of Food Science and Technology. As a consultant since 1992, he is familiar with the set up and operation of Chanteclair Farms, especially the development and production of omega-3 fatty acids and vitamin E enriched eggs.
Evidence in answer consists of a statutory declarations by David J. Farrell, the inventor of the current invention, dated 7th September 1998 with exhibits DJF1-3 and Paul A. Kilborn dated 24th September 1998 with exhibits PAK1 & 2. Professor Farrell is currently Associate Professor in the School of Land and Food at the University of Queensland and Director of the Queensland Poultry Research and Development Centre. Previously, until 1994, he was Professor of Nutrition at the University of New England, Armidale, NSW. Over the past 30 years he has worked as a research scientist, most recently concentrating on poultry science in the areas of nutrition and energy metabolism.
Evidence in reply consists of a further declaration by Dr Sidhu dated 24th December 1998 and new exhibits GSS1 & 2.
THE SPECIFICATION
Background
As a background to the invention, the specification indicates that it has been recognised for some time that there is excess fat in the diet of many humans, particularly in the western world. It has more recently been recognised that not only do we consume too much fat but that the type of fat we consume needs to be correctly balanced.
The specification also indicates that there has been considerable interest in the omega-3 long chain polyunsaturated fatty acids (referred to by various abbreviations: omega-3 PUFA, n-3 PUFA or omega-3 LCPUFA) in human health. The omega-3 PUFA are those having one of their double bonds three carbon atoms in from the terminal methyl group of the fatty acid chain. The most common omega-3 PUFA are alpha-linolenic acid (ALA), eicosopentaenoic acid (EPA) and docosohexanoic acid (DHA). A few vegetable oils such as linseed, rapeseed (aka canola) and soybean contain ALA while fish are the primary source of EPA and DHA.
Until recently it was thought that certain polyunsaturated fatty acids, particularly linoleic acid (an omega-6 long chain polyunsaturated fatty acid), were of central importance in human diets. It has now been realised that that approach totally overlooked the role of omega-3 PUFA and that, in fact, the crucial factor may be what is the optimum ratio of omega-6 PUFA to omega-3 PUFA in human nutrition.
It has also been known that the fatty acid profile of poultry eggs may be altered by feeding laying hens a diet high in a particular type of fatty acid, including omega-3 PUFA. The present inventor and others have previously produced eggs having an enhanced omega-3 PUFA content, however, there have been a number of problems with the production of such eggs. The eggs have been inconsistent as to their actual omega-3 PUFA content, there have been incidences of the development of “off-flavours” in the eggs, the storage quality of the eggs have been in some cases questionable and the ratio of omega-6 PUFA to omega-3 PUFA has been highly variable.
The Invention
The specification states that:
“The present invention relates to a method and feedstuffs for the production of eggs from poultry and more particularly to a method and feedstuff which will produce eggs having an enhanced Omega-3 fatty acid content.”
The current invention is directed to a feedstuff, feed supplement and method for the production of omega-3 PUFA enhanced eggs which ameliorates at least some, in preferred cases all, of the deficiencies of known omega-3 PUFA enhanced eggs.
The gist of the current invention resides in the use of a feedstuff with specific proportions of fish oils and linseed oil, which together provide the appropriate fatty acid content, in combination with an antioxidant. When the feedstuff (or feed containing the feed supplement of the invention) is fed to laying hens, the fatty acid of the eggs they produce is altered to provide an egg with an enhanced omega-3 fatty acid profile. The fish oils can be substituted by other oils having at least 20% by weight of their fatty acid content in the form of omega-3 PUFA.
The antioxidant preserves the oils from oxidative degradation, ie going rancid, at three stages:
i) in the feedstuff or feed supplement, eg during storage;
ii) in the chicken itself, during digestion and absorption of the feedstuff; and
iii) in the egg finally produced.
The Claims
The independent claims which define the feedstuff and feed supplement of the invention are:
1. A feedstuff for laying poultry suitable to induce poultry consuming the feedstuff to produce eggs having an increased omega-3 polyunsaturated fatty acid content (PUFA), the feedstuff containing
(a) from 1.5% to 2.5% by weight of a fish oil, or oils, having at least 20% by weight its, or their combined, fatty acids content in the form of omega-3 polyunsaturated acids,
(b) from 1% to 4% by weight of linseed oil,
(c) an effective amount of at least one feed acceptable antioxidant, and
(d) the balance of the feedstuff being a suitable commercial laying ration containing insignificant amounts of polyunsaturated fatty acids,
at least 25% of the total omega-3 polyunsaturated fatty acids present in the feedstuff being in a form other than alpha linolenic acid and the feedstuff having a total polyunsaturated fatty acid content of no more than 5.5% by weight.12. A feed supplement for addition to a suitable commercial laying ration containing no more than small amounts of polyunsaturated fatty acids, the feed supplement containing
(a) from 20% to 55% by weight of a fish oil, or oils, having at least 20% by weight of its, or their combined, fatty acids content in the form of omega-3 polyunsaturated acids,
(b) from 20% to 55% by weight of linseed oil, and
(c) an effective amount of at least one feed acceptable antioxidant.
Preferred Features
The preferred fish oil for use in the invention is mackerel oil, however, other suitable fish oils may be used with equal effect. The linseed oil is preferably introduced as pure oil however it is possible to introduce this oil in the form of flax seeds. The preferred antioxidant to preserve the oils during the period they are in the feedstuff or feed supplement is ethoxyquin, while Vitamin E is the preferred antioxidant for protecting the oils in-vivo and in-ovo, ie in ‘the chicken and the egg’.
Essential Features
Mr Wilson, for the opponent, submitted that the feedstuff of the invention is composed of four ingredients, namely a) to d) as specified in claim 1 above. Given that feature d) is a standard commercial laying ration, Mr Wilson asserted that the essential features of the invention were limited to the three ingredients a) to c).
Mr Wilson also submitted that the two features in the final paragraph of claim 1:
“at least 25% of the total omega-3 polyunsaturated fatty acids present in the feedstuff being in a form other than alpha linolenic acid”; and
“the feedstuff having a total polyunsaturated fatty acid content of no more than 5.5% by weight”
were not essential features of the invention. To support this contention he stated that these two features inevitably arise out of the use of the ingredients in the proportions specified in the claim itself.
Mr Kilborn, for the applicant, submitted that the features contained in the final paragraph of claim 1 are essential to the working of the invention and thus are essential features of the invention as is claimed, and that that was the situation for all of the features in the independent claims.
I must agree with Mr Kilborn. It is appropriate to adopt a prima facie position that the features of independent claims form the essential features of the invention, Catnic Components v Hill & Smith Ltd, (1982) RPC 183 at 227. Further, unless it can be shown that the features set out in the independent claims of the invention are not essential I know of no principle which would provide a basis for regarding the said features as inessential.
It is clear to me from a reading of the specification that the specific proportions of oils and percentages of fatty acids in the feedstuff and their percentage as a part of the feedstuff, as set out in claim 1, are essential to the working of the invention. There is absolutely nothing in the description to suggest otherwise. All of the features of claim 1 materially affect the way the invention, in the form of a feedstuff, works. The consistory clauses, preferred embodiments and examples all relate to a feedstuff as defined by claim 1. Similarly as for claim 1, it is clear from the specification that the features set out in claim 12 are essential features for the feed supplement of the invention, there is nothing in the specification nor for that matter in the arguments which have been advanced which would suggest otherwise.
Further in relation to claim 1, Mr Wilson’s asserted that the final two features of the claim are not essential because they inevitably arise out of the use of the ingredients in the proportions specified in the claim. He used the examples in the specification to show that the feedstuffs prepared using the percentages of oils within the ranges specified at (a) and (b) of claim 1 also fell within the ranges defined by the final two features of the claim. However, since the examples of the specification are those of the invention one would expected them to fall within the scope of the claims and the features specified therein. I do not believe Mr Wilson was able to show that the use of oils in the percentages defined at (a) and (b) of claim 1 would in all instances produce inevitable compliance with the two features in the final paragraph of the claim.
In conclusion, the features of claims 1 and 12 as set out earlier in this decision are the essential features of the two aspects of the invention. I will use these features for my considerations under novelty and inventive step below.
DECISION
Novelty
Mr Wilson, for the opponent, submitted that the current invention was prior published by the publications annexed to the declarations of Gely and Sidhu in support of the opposition. He submitted that as indicated by the evidence of Mr Gely there are no novel ingredients, or ingredients processed in any novel manner, which are used to prepare the feedstuff of current application.
More specifically, Mr Wilson submitted that work relating to the Farrell (current) application was published prior to filing the application by the author himself.
Of the documents (a) to (m) listed in the statement of grounds and particulars, two publications by Professor Farrell, the current inventor, are of key importance to the opponent’s case. The documents are particularised as follows:
(a)Farrell, D J and Gibson, R A (1991) “The enrichment of eggs with omega-3 fatty acids and their effects in humans”, Farrell, D J, [ed] Recent Advances of Animal Nutrition in Australia, New England University, Armidale, Australia 256-270.
(b)Farrell, D J (1991) “The Enrichment of hen’s eggs with omega-3 fatty acids and their increase in the plasma of humans eating these eggs”, Poultry Sci 70 (Suppl 1): 40.
I will refer to these documents as Farrell-1 & Farrell-2 respectively, and, I will consider each in turn below:
Farrell-1
This document is provided in the evidence-in-support of the opposition as the first part of exhibit PG4 to the declaration of Mr Gely. The document is a 1991 publication by Farrell and R. A. Gibson relating to the enrichment of hens eggs with omega-3 fatty acids and their effects in humans.
The document describes experiments wherein laying hens were offered diets with added oil content to change the lipid composition of eggs they produce. More specifically, the experiments which are reported involve the addition of cod liver, canola or linseed oil to the diets of laying hens. The summary of the document indicates that preliminary studies showed that maximum enrichment of egg lipid content with omega-3 LCPUFA occurred when cod liver oil, canola oil or linseed oil was added at 7% to layer diets for 12 weeks.
Of most relevance to the present matter is that the document relates to the use of cod liver, canola or linseed oil as alternative additives to the diet of laying hens. The document does not teach or suggest the use of cod liver oil (fish oil) in combination with either the canola or linseed oils.
Mr Wilson for the opponent pointed to the paragraph which spans pages 257 and 258 of the document which states:
“Fish in poultry diets may taint eggs and meat, but fish oil is currently the only important source of EPA and DHA. Their precursor is alpha linolenic acid found in some vegetable oils in various concentrations. If fowl could synthesize the omega-3 LCPUFA from alpha linolenic acid in adequate amounts and enrich the egg then fish oil would not then be the sole dietary source of EPA and DHA.”
In relation to the last sentence of the paragraph above Mr Wilson submitted: “Implicit in this observation is that there would be benefits in combining fish oil with other oils such as canola or linseed. In Gely’s view, for example, it follows from the discussion in this document that combining the various oils would be likely to produce desirable and expected results.”
In contrast, Mr Kilborn, for the applicant, stated: “We submit that without the benefit of hindsight, the quoted sentence, at most, suggests that alpha-linolenic acid could be used in place of fish oil provided the fowl could synthesise omega-3 LCPUFA in adequate amounts, not that they could be mixed together. None of the experiments given in this document use a combination of oils, let alone the specific combination . . .”
The test for determining whether an invention lacks novelty is the "reverse infringement test" as stated by Aiken J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
Infringement of a claim occurs where “each and every one of the essential integers” of that claim have been taken, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391.
In assessing the teaching or disclosure of the prior art, one has to consider what the skilled addressee is being taught and what they would have done on reading the citation, General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at 485, 486:
“To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.”
As indicated in General Tire & Rubber Co the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented.
“A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”
I must agree with Mr Kilborn for the applicant in relation to the disclosure of this document. The document does not contain clear and unmistakable directions, nor for that matter any explicit statement, to use a combination of fish oil and linseed oil as per the present invention in either a general or specific sense. The document is silent in relation to the use of mixtures of fish oil and linseed oil to produce omega-3 PUFA enhanced eggs. The document does not clearly and unmistakably contain directions to use a mixture of fish and linseed oils in a feedstuff as is essential to the present invention.
The statement referred to above, that if fowl could synthesize the omega-3 LCPUFA from alpha linolenic acid (found in vegetable oils and the precursor of EPA and DHA) then fish oil would not be the sole dietary source of EPA and DHA at best suggests the possible use of vegetable oils in the production of omega-3 PUFA enhanced eggs. In no way is it explicit that the statement discloses the use of mixtures of fish and vegetable oils. Using the terminology of General Tire & Rubber Co it cannot be said that the statement in any way plants the flag at the precise destination as the present invention.
The document does not disclose the essential features of the invention as set out in independent claims 1 and 12, and therefore, applying the reverse infringement test, does not deprive the invention of novelty.
The claims of the specification are novel when compared to this document. I will consider this document, and in particular the sentence which bridges pages 257 and 258, further under the heading of inventive step below.
Farrell-2
The second document (b) cited in the statement of grounds and particulars, which I have referred to as Farrell-2, is not provided in the evidence. What is provided, as referred to by Mr Gely in his declaration, “is a copy of an abstract relating to the second reference” (underlining added).
The second part of exhibit PG4 to the declaration of Phillip Gely is a copy of the abstract which allegedly relates to Farrell-2. This consists of a copy of a page from Chemical Abstracts18-Animal Nutrition Vol 124, No. 19, 1996 which contains abstract number 124: 259519v entitled “The fortification of hens’ eggs with w3 long chain fatty acids and their effect in humans”.
The chemical abstract itself is of no consequence to the novelty of the current invention since it was published in 1996, which is well after the priority date of the present application.
The abstract cites the article from which it has been drawn as:
Farrell D. J. (Department Agriculture, University Queensland, St Lucia, 4072 Australia). Egg Uses Process Technol. 1994, 386-401.
It is apposite to note that while the author is the same and the title of the article is similar, the year of publication and journal cited in the abstract are clearly different to those cited in the statement of grounds and particulars for Farrell-2. This leads me to believe that the article referred to in the abstract is not, nor is it directly related to, Farrell-2 as particularised. Further, from the title of the article referred to in the abstract and the content of the abstract, it appears to me, at least superficially, that the article may relate to, or in fact be, another publication by Farrell (Farrell-3) which I will deal with below.
Further in relation to the evidence adduced by the opponent in relation to Farrell-2, at best the article referred to in the abstract appears to have been published at some time in 1994. However, the opponent has not provided separate evidence establishing precisely when in 1994, which is critical given that the application has a priority date of 9 February 1994. Additionally, the article itself is not in evidence.
The opponent bears the onus to show that the documents it cites in relation to novelty were published before the priority date of the claims of the opposed specification and to provide those documents in evidence. Clearly the opponent has not discharged that onus in relation to the second document particularised as (b) in the statement of grounds and particulars (Farrell-2).
The abstract which purportedly relates to Farrell-2 and forms the last page of opponent’s exhibit PG4 does not relate to Farrell-2 as particularised and was not published before the priority date of the claims. The article referred to in the abstract has not been shown to be published before the priority date and is not in evidence.
In conclusion, I will have no regard to the document particularised as (b) in the statement of grounds and particulars (Farrell-2) as that document has not been provided in evidence. I will also have no regard to the abstract provided as the last page of opponent’s exhibit PG4 nor the article cited in that abstract.
Further Farrell document: Farrell-3
In his declaration in support of the opposition Dr Sidhu, at paragraph 4, states:
“Filing of this patent application came as a great surprise to me because it is based on two publications which were in the public domain long before the application for the patent was filed. The publications are as follows:
(a)Farrell, D J and Gibson, R A (1991) “The enrichment of eggs with omega-3 fatty acids and their effects in humans”, Farrell, D J, [ed] Recent Advances of Animal Nutrition in Australia, New England University, Armidale, Australia 256-270.
(b)Farrell, D J (1992) “The fortification of hen’s eggs with omega-3 long chain fatty acids and their effect in humans”, International Symposium on Non-Conventional Egg Uses and Newly Emerging Processing Technologies, Banff Springs Hotel, Banff, Alberta, Canada, April 22-25, 1992. . . .”
Document (a) referred to by Dr Sidhu is document Farrell-1 which I have considered above. Of more relevance is the second document, which I will refer to as Farrell-3. This document is a paper by Professor Farrell and is annexed to the first Sidhu declaration as GSS1, however, it is not a document which was cited in the statement of grounds and particulars. Notwithstanding the fact that this document was not particularised it has been raised in the opposition proceedings and both parties made representations in relation to the document. In order to fully deal with the matter before me, I will consider this document in my decision notwithstanding the fact that it was not cited in the statement of grounds and particulars.
Mr Wilson’s submissions for the opponent can be summarised as:
There is some dispute as to the publication of this document;
Farrell, at paragraph 18 of his declaration, stated that the document was presented in an abstract form as a poster at the symposium in Banff. But to those persons present at the symposium, the detailed paper as annexed to the Sidhu declaration was available on request from the author and was indeed obtained by Sidhu;
It was by no means a classified document before its appearance in printed form in 1994;
The document alone discloses the subject matter of the present application.
Mr Kilborn, for the applicant, indicated that this document was not in the statement of grounds and particulars but also made submissions in relation to the document and its relevance, in order to fully deal with the matter. The submissions of Mr Kilborn are summarised as follows:
The opponent’s evidence (paragraph 4 Sidhu) misrepresents exhibit GSS1 as a copy of a document that was published at the Symposium in Banff, Canada held 22-25 April 1992;
Farrell denies that he presented a paper in Banff;
Farrell does indicate that at the request of Dr Sidhu, he provided copies of the papers he had written, both published and unpublished;
Farrell declares that he believes that the paper which is exhibited as GSS1 is a copy of an unpublished paper he forwarded to Dr Sidhu;
Farrell further declares that it would be understood by a scientist that any unpublished work was not for public dissemination until it was actually published as a scientific paper;
Dr Sidhu does not indicate the date on which he obtained the paper;
While Dr Sidhu asserts that the paper was “by no means classified” he is silent in regard to Dr Farrell’s statement that a fellow scientist would understand that the unpublished paper was not for public dissemination, and there is nothing in the evidence of Dr Sidhu to suggest that he in fact had disclosed the unpublished paper to any third party before it was actually published;
The original document was provided to Dr Sidhu in circumstances that implied an obligation of confidence on Dr Sidhu;
The information contained in the original unpublished document provided to Dr Sidhu has not been shown by the opponent to have been placed in the public domain at the time it was provided to Dr Sidhu;
In any event Exhibit GSS1 does not teach or suggest the invention as presently defined.
Professor Farrell, in direct response to the statements of Dr Sidhu in the evidence in support which I have referred to above, indicates:
“Exhibit GSS1 is cited in the Sidhu declaration in such a way to suggest that it was actually published in Banff. Although I did attend the symposium in Banff in the period 22-25 April 1992, I did not present a paper. Rather I presented a poster. The paper was not published in the Proceedings of International Symposium on Non-Conventional Egg Uses and Newly Emerging Processing Technologies published until 1994.
Exhibit GSS1 is not a photocopy taken from the paper in the Proceedings of International Symposium on Non-Conventional Egg Uses and Newly Emerging Processing Technologies published in 1994. For one thing the abstract is different. To best of my knowledge and recollection, the poster I presented at the Banff Conference did not include at least Table 3. I recall that several years ago I received a request from Dr Sidhu to forward any papers that I had written (published and unpublished) on my research into omega-3 fatty acids. It may well be that GSS1 is a copy of one of the then unpublished papers I forwarded to Dr Sidhu at his request. At that time I was totally unaware of the motive behind the request for papers. It was then common practice for scientists to exchange information, however, it would be understood by scientists that any unpublished work was not for public dissemination until it was actually published as a scientific paper.”
Dr Sidhu, in his evidence in reply, states:
“Farrell in paragraph 18, page 7, of his aforementioned Statutory Declaration, has stated that a paper entitled ‘The fortification of hen’s eggs with omega-3 long chain fatty acids and their effect in humans’ at the ‘International Symposium on Non-Conventional Egg Uses and Newly Emerging Processing Technologies’, Banff Spring Hotel, Banff, Alberta, Canada, April 22-25, 1992 was presented in an abstract form as a poster. But to those persons present at the symposium, and to those who came to know about the symposium, the detailed paper as enclosed as Annexure ‘GSS1’ in my earlier Statutory Declaration dated 29 May 1998, was available on request from the author and was obtained by me. It was by no means a classified document before its appearance in printed form in 1994.”
The opponent has not provided any evidence as to any information which was allegedly made publicly available in poster form at the symposium in Banff in April 1992, so I can have no regard to that.
As indicated by both parties there is dispute as to the “publication” of the document in evidence. The opponent has not shown nor asserted that the paper which has been provided in evidence as opponent’s exhibit GSS1 to the first Sidhu declaration was presented nor made publicly available at the symposium in Banff. Nor has it been shown or asserted that the document is a copy of the paper as published in the proceedings of the symposium which occurred at some time in 1994.
From a consideration of the facts provided, the document in evidence appears to be a copy of a paper which, among other papers, was provided to Dr Sidhu by Professor Farrell at some point subsequent to the symposium in Banff, at Dr Sidhu’s request.
It is trite to state that for the document to be a anticipation it must be shown that it was in the public domain before the priority date of the present application and that the opponent bears the onus to establish that that was the case. More particularly, where there are special circumstances, as in the present case, surrounding the availability of a document the opponent needs to provide evidence to establish that on the balance of probabilities (ie more likely than not) the document was publicly available before the priority date.
The document as it is presented in the evidence is a paper by Professor Farrell which, prima facie, has had a copy of the cover of the Program from the International Symposium on Non-Conventional Egg uses and Newly emerging Processing Technologies; Banff Springs Hotel, Banff, Alberta Canada, April 22-25, 1992 superimposed (reproduced) on the first page. There is no other citation or verification of publication within or as part of the document itself. The opponent relies entirely on the statements of Dr Sidhu in relation to establishing the publication of the document.
Dr Sidhu does not explicitly, or specifically, state what date the paper was provided to him by Professor Farrell. Nor does he give any approximate or relative indication of when he requested and was given the document, eg shortly after the symposium, prior to 1994 or sometime during late 1993. What he does say is that he obtained the document subsequent to the symposium and that it was “in the public domain long before the application for the patent was filed.” Crucially in my opinion, Dr Sidhu refers to the document being available before ‘the application for the patent was filed’. Taking Dr Sidhu’s statement as it is presented I can only conclude that he means the paper was at least in his possession prior to the date of filing of the present application, ie 8 February 1995.
The present complete application is associated with, and claims priority from, provisional application PM3780, filed 9 February 1994, and hence provides the priority date of the present application. The opponent has not challenged the priority date. There is nothing before me that would indicate that Dr Sidhu was aware of the existence of the provisional application, between February 1994 and February 1995. Nor is there anything before me that indicates that the paper was in the possession of Dr Sidhu prior to the filing of the provisional application. On balance, I cannot, with any degree of certainty, determine that Dr Sidhu was in possession of the document prior to the priority date of the application, as opposed to date of filing the complete application.
From the facts before me, at best for the opponent, I can say with some degree of certainty that Dr Sidhu was in possession of the document prior to the filing of the present patent application in 1995. However, I cannot, determine that it was more likely than not that he was in possession of the document before the priority date of the present application, ie February 1994. I am not reasonably satisfied that the opponent has shown that Dr Sidhu was in possession of the paper prior to the priority date of the present application. I will not consider opponent exhibit GSS1 any further.
Other particularised documents
Of the particularised documents, other than those of Farrell, none relate to the use of fish oil in combination with plant oil in a feedstuff for laying hens. These documents relate to the use of either fish oils or plant oils independently of the each other as additives to feed for laying hens. For example, Oh and Gauglitz include references to the use of fish oils in the diets of hens to modify and enhance the omega-3 fatty acid content of eggs. While the use of various plant oils in feedstuffs is disclosed in Jiang and Cherian.
It is clearly apparent that none of the other documents particularised by the opponent discloses the use of fish oil in combination with linseed oil in a feedstuff for laying hens, let alone the specific proportions indicated in claims 1 and 12. As such, independent claims 1 or 12 are novel in light of the disclosures of these documents since none of them discloses the essential features of these claims. Similarly the remainder of the claims which are dependent on claims 1 or 12 are also novel.
In conclusion, the opponent has not brought forward any anticipatory document which discloses the essential features of the invention as set out in independent claims 1 and 12. The invention as defined by the claims in their entirety is novel.
Inventive Step
The assessment of whether an invention lacks an inventive step, ie whether it is obvious, can be made against the common general knowledge alone or the common general knowledge considered together with a document or act, provided the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant area by a person skilled in the art.
The general test to be applied in determining obviousness is stated in The Wellcome Foundation Limited v V. R. Laboratories (Aust) Pty Ltd (1980-1981) 148 CLR 262, specifically at 286:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The likelihood of success necessary to render a routine investigation obvious was considered in Beecham Group Ltd's (Amoxycillin) Application (1980) RPC 261 at 290:
“It is clearly established that, for a particular step or process to be obvious .... it is not necessary to establish that its success is clearly predictable: Johns-Manville Corporation's Patent [1967] RPC 479 at 494.
It will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile: Technograph Printed Circuits Ltd v. Mills & Rockley ( Electronics) Ltd [1972] RPC 346 per Lord Reid at 355 and 356; Johns- Manville, supra, per Lord Diplock LJ at 493 and 494; Tetra Molelectric Ltd v. Japan Imports Ltd [1976] RPC 541 at 581, 583-4.”
Courts have used the problem/solution approach to assist in making determinations under the heading of obviousness/inventive step in order to avoid the criticism of ex post facto analysis. I will use that approach here. The problem may be formulated from a reading of the specification in light of the surrounding facts.
It is a relatively straight forward matter to formulate the problem which the current invention seeks to address. At page 2 of the specification it is indicated that there are a number of problems with the production of omega-3 enhanced eggs from feedstuffs so far utilised for the purpose:
· eggs have been inconsistent as to their actual omega-3 PUFA content;
· there have been common incidences of off-flavours in the eggs;
· storage qualities of the eggs have, in some cases, been questionable; &
· the ratio of omega-6 PUFA:omega-3 PUFA has been highly variable.
It is then indicated that:
“The present invention is directed to a feedstuff and method for the production of omega-3 PUFA enhanced eggs which ameliorates at least some, and in preferred cases all, of the deficiencies of known omega-3 PUFA enhanced eggs.”
I will use this statement as the problem in the problem/solution approach.
As to the documents cited by the opponent. As I have indicated above under the heading of novelty, Farrell-1, is a document which discloses the use of cod liver, canola or linseed oil as alternative additives to the diet of laying hens. The document does not teach or suggest the use of cod liver oil (fish oil) in combination with either the canola or linseed oils.
Mr Wilson in support of the opponent’s allegation that the present invention lacked an inventive step referred specifically to the sentence from the document: “If fowl could synthesize the omega-3 LCPUFA from alpha linloenic acid in adequate amounts and enrich the egg then fish oil would not then be the sole dietary source of EPA and DHA.” Mr Wilson submitted, and it is asserted by Mr Gely for the opponent, that implicit in this observation is that there would be benefits in combining fish oil with other oils such as canola or linseed and that combining the various oils would be likely to produce desirable and expected results.
Professor Farrell in his declaration asserts that the position asserted by Mr Gely is a very strained interpretation of the disclosure in the document. Mr Kilborn submitted that without the benefit of hindsight, the quoted sentence, at most, suggests that alpha-linolenic acid could be used in place of fish oil provided fowl could synthesize omega-3 LCPUFA in adequate amounts, not that they (fish oil & vegetable oil) could be mixed together.
I must agree with submissions for the applicant. The sentence upon which Mr Wilson places so much emphasis appears to me to be one of a hypothetical nature. It postulates, that if fowl could synthesize the omega-3 LCPUFA from the alpha-linolenic acid in adequate amounts then fish oil would not be the sole source of dietary EPA and DHA.
The opponent has not adduced any evidence to show that at the time the article was published, nor prior to the priority date of the present application, that it was even known that fowl could synthesize omega-3 LCPUFA from alpha-linolenic acid. In the absence of any information that fowl could/can synthesize omega-3 LCPUFA from alpha-linolenic acid I cannot see how a person skilled in the art, in attempting to overcome the problem I have outlined above, would consider the use of vegetable oils in place of fish oils to produce omega-3 PUFA enhanced eggs to be obvious. I am not convinced that the person skilled in the art, having read the above article and the particular sentence, in the absence of hindsight and without knowledge as to whether fowl could synthesize omega-3 LCPUFA from the alpha-linolenic acid, would be inclined to think that feeding hens vegetable oils would be a step worth trying to produce omega-3 PUFA enhanced eggs.
Further, the present invention relates to the use of mixtures of fish and vegetable oils and in specified quantities. There is nothing in the sentence referred to, nor the article as a whole, which would suggest to me that the person skilled in the art would be likely to consider using mixtures of fish and vegetable oils to produce omega-3 PUFA enhanced eggs. I do not think that the hypothetical addressee faced with the problem of producing a feedstuff or method for the production of omega-3 PUFA enhanced eggs to ameliorate some or all of the deficiencies of known omega-3 PUFA enhanced eggs would have taken as a matter of routine steps from Farrell-1 to the present invention.
The disclosure in Farrell-1 does not render the present invention obvious.
As I have indicated above under the heading of novelty, no documents cited, other than those by Farrell, disclose the use of fish oils in combination with linseed oil either generally or in the specific proportions set out in the claims of the invention. Thus, there is no document among the other particularised documents that would render the current invention lacking an inventive step.
I will not consider documents Farrell-2 and Farrell-3 under the heading of inventive step as the opponent has not established that the documents were published prior to the priority date of the present application.
In conclusion, the opponent has not brought forward any document which would render the claimed invention obvious. The invention as defined by the claims involves an inventive step.
CONCLUSION
The opposition is unsuccessful on both grounds, novelty and inventive step, in their entirety.
I direct that the application proceed to sealing.
COSTS
In actions before the Commissioner costs normally follow the event and I see no reason to vary that practice in this matter. The opponent has been unsuccessful on both grounds of opposition, I award costs in accordance with Schedule 8 against the opponent, Fallway Holdings Pty Limited.
V. J. Portelli
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : F B Rice & Co.
Patent attorneys for the opponent : Wilson & Young
0
1
0