Cadbury Schweppes PLC v Effem Foods Pty Ltd
[2002] APO 38
•30 September 2002
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 706901 in the name of Cadbury Schweppes PLC
Title: Process for the Manufacture of Reduced Fat Chocolate
Action: Opposition under section 59 of the Patents Act 1990 by Effem Foods Pty Ltd
Decision: Issued .
Abstract
The invention relates to a method for making reduced fat chocolate wherein no water is added to the composition during the size reduction step to dissolve unwanted ultrafine particles.
Claims 1 to 10 are novel as no cited art discloses both the absence of the water addition step and prepares a fat reduced chocolate.
Claims 1 to 10 are obvious in light of "Particle Size Distribution Effects in Chocolate Processing" by A.D. Darley, University of Bradford, 1987, which assesses the same issues as addressed in the current application and teaches the exclusion of a water addition step from full fat chocolate manufacture. The delegate concluded that the application of this technique to reduced fat chocolate manufacture would be obvious to try.
The claims were found to be clear, fairly based and directed to a manner of manufacture.
The application was refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 706901 by Cadbury Schweppes PLC and opposition under section 59 of the Patents Act 1990 by Effem Foods Pty Ltd.
BACKGROUND
Patent application no. 706901 was filed under the Patent Cooperation Treaty on 21 December 1995 under International Application Number PCT/GB95/03010. The application claimed priority from British Application 9426078 dated 23 December 1994. The application was advertised accepted on 1 July 1999. Notice of opposition was filed on 1 October 1999 by Effem Foods Pty Ltd ("the opponent ") and the evidentiary stages completed by 12 November 2001.
The opposition was heard in Canberra on 19 February 2002. Cadbury Schweppes was represented by Mr David Clark assisted by Mr Rohan Wallace, both of whom are patent attorneys of Griffith Hack Patent and Trademark Attorneys, Sydney. Effem Foods Pty Ltd was represented by Ms Katherine Leviton and Mr Christian Schieber, both patent attorneys of Watermark Patent and Trademark Attorneys, Sydney.
THE GROUNDS OF OPPOSITION
The grounds of opposition identified in the statement of grounds and particulars, are that the invention as claimed:
is not novel in the light of published documents or acts done in Australia
is obvious and does not involve an inventive step
is not a manner of manufacture
does not comply with the requirements of section 40 in respect of the fair basis and clarity of the claims.
THE EVIDENCE
The evidence in support consists of:
(a)statutory declarations by:
· Cornelius Versteeg, Group Manager, Food Engineering at Food Science Australia, dated 4 October 2000 and Exhibits CV-1 to CV-4 ("Versteeg 1").
· Katherine Margaret Leviton, Patent Attorney of Watermark Patent and Trademark Attorneys, dated , dated 4 October 2000 and Exhibit KML-1 ("Leviton 1").
(b)Documents D1 to D21.
The evidence in answer consists of statutory declarations by :
Andrew Keogh, Research and Development Manager for Cadbury Schweppes Pty Ltd, dated 2 August 2001 and Exhibits AK-1 to AK-7.
Steven Lee, dated 1 August 2001 and Exhibits SL-1 to SL-3.
The evidence in reply consists of statutory declarations by:
Cornelius Versteeg, Group Manager, Food Engineering at Food Science Australia, dated 2 November 2001 ("Versteeg 2").
Katherine Margaret Leviton, Patent Attorney of Watermark Patent and Trademark Attorneys, dated , dated 5 November 2001 and Annexure KML-1 to Annexure KML-4 ("Leviton 2").
FURTHER EVIDENCE
At the hearing it became apparent that one of the key documents served and filed in evidence, “Particle Size Distribution Effects in Chocolate Processing” by AD. Barley, University of Bradford (D10), was missing pages 131 to 192. The opponent did not realise this until the hearing and requested leave to serve these missing pages as further evidence under regulation 5.10(4).
The applicant objected to the request arguing that the material could be dealt with in a "bar-to-sealing" action (or, after 1 April 2002, re-examination) and that the admission of the evidence would set up an undesirable precedent of allowing the piecemeal filing of evidence.
In my view the material is clearly relevant and was referred to in the declaratory evidence on file. The opponent inadvertently missed filing the material and while the applicant was apparently aware of the problem before the hearing, it did not bring it to the Patent Office's attention. Furthermore the Patent Office is not bound by the rules of evidence and has an inquisitorial role. I also consider that this is a more appropriate forum to consider this material than a "bar-to-sealing" or re-examination action and that the circumstances here are highly unusual and unlikely to serve as precedent for later cases.
10. To refuse the admission of this evidence would clearly be promoting "form over substance". In accordance with the the principles in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213, I consider that the request is allowable and, at the hearing, granted the applicant one month to respond in relation to the additional material.
THE SPECIFICATION
11. The specification relates to a process for the manufacture of reduced fat chocolate.
Chocolate, including low-fat chocolate, is made by mixing particles of solid chocolate making ingredients (including: nutritive carbohydrate sweeteners or other suitable sweeteners; non-fat cocoa solids, cocoa powder, cocoa liquor, milk solids and/or emulsifier) with a liquid fat component comprising cocoa butter, milk fat and/or other suitable fats
12. In the chocolate manufacturing process the particles of solid ingredients are coated with the liquid fat. The amount of liquid fat in the composition is critical to achieving a good quality chocolate. If there is insufficient fat in a chocolate composition, the particles are not coated sufficiently and the chocolate composition is too viscous to be worked. This results in undesirable properties in the product i.e. a decrease in the flavour developed during the conching phase and inferior mouthfeel.
13. The amount of fat required to produce a good quality chocolate depends on the particle size distribution (PSD) of the solid ingredients. Larger particles require less fat to coat them. However, the inclusion of too many large particles (e.g. over about 30 mm) gives chocolate with a coarse mouthfeel. Consequently milling of these solid ingredients is carried out to reduce the particle size and produce a smoother chocolate composition. A variety of milling techniques are known and practised for this purpose using such equipment as ball mills and air classifier mills (ACMs). To date, however, operation of these mills has produced ultrafine particles (e.g. less than 2mm) which require additional fat for processing. In reduced fat chocolate, this is a problem because the aim is to achieve a good quality chocolate without the addition of large amounts of fat. For some time this meant that a reduction in fat content required a higher proportion of coarse particles, making the products unacceptable in confectionery.
14. One prior art method (US Patent 5080923) to overcome this problem involved removing the ultrafine particles by dissolving them in water and then drying and recrystallising the composition. The disadvantage of this technique is that some of the resulting particle agglomerates then exceed the upper limit for particle size required to produce an acceptable mouthfeel in the resulting chocolate. In a development of this technique an emulsifier was added with the water to prevent agglomeration, but the resulting compositions are difficult to dry.
15. The solution in the current specification is to control the milling of the solid ingredients to produce particles of a specific PSD in which the proportion of ultrafines is kept to a level such that the addition of water is not required.
Embodiments of the process are exemplified wherein the milling is carried out using an air classification mill (ACM).
16. The specification ends with ten claims, one of which is independent (Claim 1), eight are dependant on Claim 1, and one is an omnibus claim. The following is Claim 1:
A process for the manufacture of a chocolate composition having a total fat content of 18 to 24.9 wt%, comprising the steps of:-
(l) intimately mixing (a) particles of solid chocolate-making ingredients comprising
(i) at least one solid chocolate-making ingredient selected from the group consisting of nutritive carbohydrate sweeteners, sugar substitutes, bulking agents and intense sweeteners and (ii) at least one other solid chocolate-making ingredient selected from the group consisting of non-fat cocoa solids, cocoa powder, cocoa liquor, milk solids and emulsifier, with (b) at least one fat selected from the group consisting of cocoa butter, cocoa butter equivalents, butterfat, milk fat and non-metabolisable fat;(2) reducing the size of said particles so that said particles have a particle size distribution, as measured by a Malvern Mastersizer, such that (a) not more than 1 wt% of said particles exceed 60 mm, and (b) not more than 15 wt% of the particles are less than 2 mm and/or not more than 20 wt% of the particles are less than 3 mm, without the addition of water to dissolve ultrafine particles;
(3) subjecting said mixture of solid chocolate-making ingredients and said at least one fat to a flavour development step to produce a flavour-developed mixture; and
(4) further processing said flavour-developed mixture to produce a final chocolate composition having a total fat content of 18 to 24.9 wt%."
DECISION
17. The key issue in this decision is whether controlling the size of particles in a chocolate making composition to achieve desired properties in a fat reduced chocolate is novel and inventive in the light of the preceding art and common general knowledge in the field.
18. The applicant argues that the prior art neither teaches nor suggests that the desired properties could be achieved by simply restricting the particle size characteristics to those specified in the application. It further contends that the prior art teaches that it is necessary to use a narrower particle size distribution than that taught in the present application and teaches that the achievement of this distribution requires the use of water to dissolve ultrafine particles.
19. The opponent argues that the desired characteristics were already well known in the art and the mere enunciation of specific parameters that define these characteristics and their achievement using techniques well known in the art does not constitute a novel invention. It further argues that omitting the aqueous dissolution of the ultrafine particles is not an essential feature of the invention because the step is rendered unnecessary once the particle size is achieved.
Novelty
20. The closest art relied on by the opponent was a PhD thesis entitled "Particle Size Distribution Effects in Chocolate Processing" by A.D. Darley, University of Bradford, 1987 (D10).
21. The applicant challenged the admissibility of this document on the grounds that the opponent had not provided an exact publication date. However, the first page of the document indicates that it was submitted in February 1987. A PhD thesis, once submitted, is published by the university within a few months at worst. The cover sheet from the British Library Document Supply Centre carries a hand written date of 1987. This suggests that the thesis was publicly available well before the priority date of the application in dispute. Furthermore, there is no evidence that the date of 1987, printed on the cover sheet, is other than the date that the thesis was added to the library collection. On the balance of probabilities D10 was published before the earliest priority date of the claims.
22. This document is a study of the effects of water on the viscosity of chocolate compositions and discloses a process for making a chocolate composition in which the dry ingredients are ground using an air classification mill (ACM). The opponent referred to Table 4.15 (page 192) which had a range of particle sizes falling within the PSD specified in the claims of the present application. In addition, as pointed out at paragraph 42 of Versteeg 2, the citation indicates in Table 4.15, that the product of the ACM process has less fines than a non-water treated sample, showing the effectiveness of the ACM in reducing fines as an alternative to the use of water. The document does not disclose, however, the use of this process in the manufacture of reduced fat chocolate compositions.
23. The applicant argued that the PSD indicated in Table 4.15 of the citation was not exactly the same as that recited in Claim 1 and consequently could not deprive Claim 1 of novelty. For the citation to deprive the claim of novelty it is necessary that it contain clear and unmistakable directions to prepare a chocolate composition by a process falling within the scope of the claim. It is not a requirement that the scope of the disclosure be co-terminus with the scope of the claim. The PSD recited in the citation is within the range specified in the claims and is encompassed by Claim 1. Therefore it is not a basis on which to distinguish the citation for the purposes of novelty.
24. The real difference between D10 and the claims is that D10 does not specify that the chocolate composition produced is reduced fat. Rather, it indicates a normal fat composition, specifying a fat content of 28.8% to 30.1%, which is well outside the range specified in the claims. In my view this is clearly an essential feature because the problem to which the invention is directed lies in the manufacture of a reduced fat chocolate composition rather than a composition of normal fat content.
25. It is well established that the general test for anticipation is the reverse infringement test as enunciated by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235, wherein the relevant question is "whether the alleged anticipation would, if the patent were valid, constitute an infringement".
26. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at page 517; 16 IPR 545 at page 549).
In the present case, D10 omits an essential feature of the claims and thus does not deprive them of novelty.
27. The other documents relied on were the following:
D2: US 5080923 - Hershey Foods Corporation, 14 January 1992
D1: PCT/US93/10135 (WO94/09649) - Hershey Foods Corporation, published 11 May 1994
D7: GB 2177283 - Verengigde Co-Operative Melkindustrie, 21 January 1987
28. Documents D1 and D2 disclose processes for the manufacture of a reduced fat chocolate, however they each describe a process wherein the ultrafine particles are dissolved in water. The more recent of these documents (D1) modifies the process by adding an emulsifier to the water to prevent agglomeration of the resulting particles. D1 and D2 thus differ from the claims because they explicitly teach that water be added to dissolve the ultrafines.
29. The opponent argued that the explicit exclusion of the addition of water to dissolve the ultrafine particles was an arbitrary restriction and not an essential feature of the invention. However, the advance in the art in the current specification was to remove the ultrafines without the addition of water as this overcame certain processing difficulties. This clearly makes the exclusion of water an essential feature and its absence from the citations means that the citations cannot deprive the claims of novelty.
30. Document D7 discloses a process for the production of milk powder by spray drying and its application in the manufacture of milk chocolate. In this document the invention lies in the production of milk powder of specific particle size and porosity. The document does not apply the teaching to a reduced fat chocolate, does not address the problem of the presence of ultrafines and does not teach the avoidance of particles of ultrafine size, as specified in the claims of the present application. I consider that the claims are novel in the light of this disclosure.
31. In conclusion, none of the claims lack novelty in light if the citations raised by the opponent.
Inventive step
32. The opponents argued that the claims of the application are obvious in the light of the common general knowledge (CGK) alone or in combination with documents D1, D2 or D10.
33. In my view the difference between the identified prior art and the claimed invention is the recognition that by using known milling equipment, such as air classifier mills, a suitable PSD could be achieved and consequently the addition of water could be avoided. The question is whether the person skilled in the art (PSA), armed with the CGK or the CGK plus any one of the cited documents, would have considered it obvious to apply these techniques to the specific problem in the prior art.
34. The opponent suggested that it was well known that the addition of water had undesirable effects on chocolate processing. The prior art shows, however, that in the manufacture of reduced fat chocolate, these undesirable effects were outweighed by the need to rid the chocolate composition of ultrafine particles. Consequently, while the use of water might be generally regarded as undesirable, its use in the manufacture of reduced fat chocolate was seen as a necessary evil.
35. Thus the problem faced by the PSA was to produce a reduced fat chocolate while avoiding the undesirable effects associated with the addition of water. The opponent suggested that since the prior art taught that the presence of either large or ultrafine particles had undesirable effects on the resulting composition, the person skilled in the art would be motivated to try to better control the PSD in the milling step. The opponent also argued that since ACMs were known, the PSA would be led to at least try adjusting the parameters of an ACM to achieve a PSD that had the desired characteristics.
36. The prior art suggests that in the chocolate making art, new techniques were developed step-wise, building incrementally on past advances rather than questioning underlying assumptions. Thus techniques and approaches to specific problems became well established and even entrenched as accepted wisdom. The prior art documents indicate that it was thought for some time that fat concentrations of 25% or lower were not achievable in good quality chocolate due to the resulting viscosity increase. The addition of water to chocolate compositions was apparently not pursued because it was established wisdom that moisture should be minimised in chocolate compositions. It was only when this paradigm was questioned by dissolving the ultrafines in water that the art accepted that good quality reduced fat chocolate could be produced.
37. In a similar way past attempts to address the undesirable effects of water addition in reduced fat chocolate preparation have apparently concentrated on altering the composition by adding to or replacing the water with another additive. The proven technique of dissolving the ultrafines was not questioned. Furthermore, I have no evidence of the elimination of water from any full fat chocolate compositions by adjusting other processing steps. Certainly there is no evidence that ACMs had been specifically used to replace any dissolution or water addition step. In short, there is nothing in the evidence to suggest that the PSA would have thought further than seeking to ameliorate the undesirable effects of water addition, and would have recognised that the water addition step could be omitted completely. In my view such a recognition would have required a paradigm shift in the mind of the PSA and such a shift goes beyond routine experimentation. Moreover, while the use of ACMs in chocolate manufacture has been known since the 1930s, and despite the increasing popularity of low fat confectionery products, no evidence has been presented that anyone has attempted to control the PSD as suggested. While on the face of the art, the advance described in the present specification may seem obvious, in my view this conclusion is only achieved by ex post facto analysis. I consider that the opponent has failed to make out its case, and that the claimed invention is not obvious in the light of the CGK alone.
38. Turning to the cited documents, both D1 and D2 teach away from the solution provided in the claims because each of them teach the addition of water to dissolve the ultrafine particles. Consequently I do not consider that they render the claimed invention obvious.
39. In assessing D10 for the purposes of obviousness, Section 7(3) of the Patents Act requires me to consider whether the document could have been ascertained, understood and considered relevant by the PSA. Considering the issue of whether a document could have been ascertained, the delegate in Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited (1997 APO 40), took the approach that "a document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art."
40. In this case the document is a PhD thesis, publicly available through the British Library. At paragraph 23 of his declaration, Keogh comments in respect of D10 that:
"Documents …D10…were not, at the earliest priority date, documents which formed part of my stock knowledge in the art. Documents…D10…were documents which I did not have in my possession nor would I have expected any of my peers to have in their possession."
41. It appears from this statement that Dr Keogh may be commenting purely on the status of D10 as CGK. In any event, the question is not whether he or his peers had D10 in their possession but whether, in terms of its manner of publication, the PSA could reasonably have been expected to have found it. I note that in recent decisions, such as E.I. DuPont de Nemours & Co v Imperial Chemical Industries PLC 54 IPR 304, the courts have interpreted the term "could" narrowly, requiring a high degree of confidence.
42. In this case, the document was held at the British Library and carries a title of direct relevance to the problem to be solved. I am of the view that a person skilled in the art seeking to solve the problem in the prior art and searching using relevant keywords in readily available online databases, such as those accessible through DIALOG, could be reasonably expected to have found D10.
The content of the thesis is clearly related to chocolate making technology and is expressed in terms that are consistent with works that a PSA would be capable of understanding.
43. In terms of the content of the document, I recognise that D10 is a lengthy document and the specific disclosure of this process does not occur until pages 184 to 192. D10 does, however, clearly provide teaching directly pertaining to the problem that the PSA faces and presents to the reader as early as page 3, a potential solution:
"Finally, an alternative processing method was investigated using air classification of the solid ingredients. This was found to give comparable results to a water treated chocolate, and improved results when compared to a non-water treated material."
44. In the light of this I consider that the PSA would have recognised the relevance of this document to the problem in reduced fat chocolate.
45. In the light of the above, I consider that D10 would have been ascertained, understood and considered relevant.
46. The difference between D10 and the claims in suit is that D10 teaches the use of an air classification mill (ACM) to control the proportion of ultrafines in normal fat chocolate so that the addition of water is not required. This is particularly evident from Table 4.15 (page 192), to which the opponent referred, which specified a fat content of 29.0%. This is well above the range required by the claims. The claims in suit encompass the use of this technique but are limited to the manufacture of reduced fat chocolate.
47. The question is whether the PSA, armed with the CGK identified above, would have considered it "obvious to try" applying this teaching in relation to full fat chocolate to the current problem, relating to reduced fat chocolate.
48. At paragraph 24 of Keogh's declaration he describes as a "false assumption", the suggestion that "known techniques practised in the manufacture of 'normal' chocolate would ordinarily have also been applicable to reduced fat chocolate". In relation to the water addition step described in D1 and D2, he comments that "the recognised techniques in the manufacture of reduced fat chocolate were different and in some cases completely contrary to the known practices in producing 'normal' chocolate". Keogh does not comment with respect to the remaining manufacturing processes.
49. Although I recognise that the addition of water as described in D1 and D2 was a departure from the teaching to minimise moisture in chocolate making generally, it is the presence of water in the composition that is integral to the process difficulties that the applicant was seeking to overcome. Consequently the PSA would be led to seriously consider the teaching of any document that discussed these difficulties. D10 not only discusses these difficulties but suggests an alternative. Furthermore, I can see nothing in the evidence before me that suggests that the remaining processing steps in reduced fat chocolate manufacture differed markedly from those in full fat chocolate manufacture and I have no direct declaratory evidence on this point. While there is a greater emphasis placed on minimising the proportion of added fat, the processing steps themselves appear to be directly comparable. Moreover, in paragraph 86 of Versteeg's first declaration he notes that a "low fat chocolate crumb" was used in the process described in the citation. Thus, even though there is no explicit reference to the production of chocolate with a fat content in the range specified in the claims, D10 does suggest in describing the process, that its use in relation to low fat ingredients is contemplated.
50. From my study of the evidence, therefore, I consider that the manufacturing techniques and considerations applied in preparing reduced fat chocolate are very similar to those used in the preparation of normal fat chocolate, aside from the water addition step which is the very point at issue. Consequently, I do not consider that the PSA would have discounted the teaching of D10 as inapplicable on the grounds that it related to full fat chocolate production. Furthermore I have no evidence that the techniques involved in the manufacture of reduced fat chocolate would have precluded the use of an ACM, as suggested in D10, and the applicant did not challenge the opponent's assertion that the use of ACMs was generally well known in the chocolate making industry.
51. In my view D10 is directed to the same problem in a closely related variant of the same technology that the PSA would have recognised as having the clear potential to be applied to reduced fat chocolate. I consider that the PSA would have regarded the teaching of D10 as "obvious to try" in overcoming the problems associated with water addition in reduced fat chocolate.
52. The applicant also suggested that the identification of the specific PSD would have required inventive ingenuity and the opponent counter argued that the PSD was not inventive, but an exercise in “parameteritis” as discussed in Raychem Corp’s Patents (1998) RPC 31. However, in my view both these arguments are irrelevant because the PSD described Table 4.15 of D10, falls squarely within the range required by Claim 1.
53. Consequently I conclude that Claim 1 is obvious in the light of D10.
54. The appended claims and the omnibus claim add a variety of additional features to the base process in Claim 1. In all cases, however, these appear to be routine techniques in the art and do not in themselves provide an inventive step.
55. I therefore consider that all the claims of the specification are obvious in the light of D10.
Section 40
56. There were several Section 40 matters raised by the opponent in relation to clarity and fair basis. The majority were minor matters that I do not consider affect the validity of the patent and I have resolved them in favour of the applicant. The following items, however, were more substantial and require comment.
Fair Basis
The limitation of Claim 1 to processes excluding the addition of water is not fairly based.
57. The opponent argued that because the disclosure at page 4 only states that the PSD "can be achieved" without the need to use water to dissolve the ultrafine particles rather than must be achieved, the exclusion is a consequence of the PSD and is not a step that can fairly be imported into the claim. The test for fair basis, however, is whether there is a "real and reasonably clear disclosure" of the feature in the specification (CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481, (1994) AIPC 91-079). Whether a feature is optional or essential does not dictate whether that feature is fairly based. In this case the opponent has accepted that the statement at page 4 is a disclosure of the process of the invention in which water is not added. Consequently I consider that Claim 1 is fairly based with respect to the inclusion of this feature.
There is no "real and reasonably clear disclosure" of the relevance of the recited PSD and the examples do not support the claims in this respect.
58. The opponents argument on this point was that the disclosure, particularly in the examples, did not refer to the recited PSD as part of the process described but merely presented these values in the following paragraph that preceded the examples:
"The invention will now be described in further detail in the following Examples wherein, in all cases, the specified particle size distribution is that not more than 1 wt% of said particles exceed 60 mm, and not more than 15 wt% of the particles are less than 2 mm and/or not more than 20 wt% of the particles are less than 3 mm."
59. The examples themselves only referred to the PSD in terms of their median particle size (D50) and D90. In respect of this point Dr Veersteeg states, at paragraph 28 of his first declaration, that he "cannot see how the desired particle size distribution of 'not more than 1 wt% of said particles exceed 60 mm, and not more than 15 wt% of the particles are less than 2 mm and/or not more than 20 wt% of the particles are less than 3 mm' could have been derived from the median particle size and D90's." At the hearing, the opponent suggested that since there were no particle size measurements in the examples that related to the specifics of the recited PSD, the examples did not provide clear support for the claims.
60. In my view, however, the preamble to the examples clearly states that "in all cases" the PSD's of the examples fall within the PSD required by the invention. Although this style of drafting is unusual, there is nothing in law to preclude the applicant from adopting it. Furthermore, there is nothing in any of the examples to contradict the clear meaning conveyed in the preamble or to suggest that the PSD required by the invention was not achieved. Each example indicates that an ACM was used to achieve the PSD and specifies the parameters of its operation. Moreover, I consider that the specification as a whole repeatedly and consistently asserts that the invention requires adherence to the recited PSD and hence attests to its relevance. Consequently I consider that there is a real and reasonably clear disclosure of the PSD and that the claims are fairly based with respect to this feature.
Clarity
The opponent argued that the term "further processing" was unclear in Step (4) of Claim 1.
61. Step (4) of Claim 1 recites “further processing said flavour developed mixture to produce a final chocolate composition having a total fat content of 18 to 24.9 wt%.” The opponent argued that the term “further processing” is unclear to the extent that the expert witnesses in the field could not agree as to its meaning and it cannot therefore be an essential feature of the invention.
62. It is clear from the evidence that there is some ambiguity in the term. Two meanings are identified for "further processing": (a) any processes necessary to produce a chocolate product including forming operations such as extruding, coating and the like, and (b) processes required to produce a chocolate composition, excluding such forming operations.
63. Applying the principles of construction in Décor Corporation Pty Ltd and Another v Dart Industries Inc 13 IPR 385, it is appropriate to refer to the specification to aid in resolving this ambiguity.
64. At page 8 of the specification there is some discussion of the steps envisaged following flavour development and milling. These steps include the pasting of the milled base ingredients with fat, emulsifiers and other ingredients to give the desired chocolate composition. Although these steps are not formally stated to be the definition of “further processing”, they correspond in the process to that part identified as step (4). The examples recite the steps indicated at page 8 amongst the final steps taken to produce the chocolate composition in each case, but add the processes of tempering and moulding. Nowhere in the specification is there any discussion of forming operations.
65. In my view the invention is clearly directed to a chocolate composition with a specific fat content. The preparation of a chocolate composition does not require the forming operations necessary to produce a saleable retail product and the specification makes no reference to such operations. Thus, although a chocolate product may be prepared using the composition of the invention, I do not consider this step is essential to the invention. I consider that the term “further processing” is limited to those essential processing steps required to produce a chocolate composition but does not include forming processes such as extrusion or coating.
The opponents also argued that the term "ultrafine particles" is not defined in the specification and hence unclear, rendering the claims unclear by its inclusion.
66. It is evident from a review of the prior art that the meaning of "ultrafine" is understood in terms of its effect on chocolate processing, but the precise particle sizes delimiting the term are not consistently agreed upon. In Claim 1 the term is used to exclude from the process claimed "the addition of water to dissolve ultrafine particles". The presence of the term in the claims is thus only associated with the motivation for the addition of water. In construing the claims, however, the question is not why water might be added to the composition but whether it is added. If water is added during the size reduction step, then some ultrafine particles will dissolve, whatever their precise dimensions. The fact that this was not the intent is irrelevant, and so, therefore, is the precise particle sizes that delimit the term "ultrafine". Consequently I consider that, while the term "ultrafine" is imprecise, the claim is clear and its scope readily discernible to the PSA.
The opponent also argued that Claim 7 is unclear in that it relates to the initial preparation of a full fat chocolate and then its subsequent fat reduction and cryogenic milling, while it purports to be appended to Claims 1 and 2, which are directed to the ab initio production of a reduced fat chocolate.
67. If this claim is read in the light of Claims 1 or 2, it is evident that the full fat chocolate composition, once subjected to solvent extraction to reduce the fat content, is the raw material, which in Claim 1 is provided by step (1). This composition of chocolate making ingredients is then subjected to cryogenic milling to achieve the required PSD as set out in step (2) and then the remaining steps (3) and (4). While I recognise that the claim, particularly in regard to its appendency, is not well drafted, I consider that a PSA would be capable of construing this claim.
Manner of Manufacture
68. The opponent further submitted that the claims failed the so-called " threshold test" of patentability (see NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449) in that there was no invention on the face of the specification.
69. I have already dealt with this matter when I considered inventive step and have found that the claims are inventive in the light of the CGK alone. For the same reason I consider that the claims are directed to a patentable invention on the face of the specification and I am therefore satisfied that they are directed to a manner of manufacture.
CONCLUSION
70. Claims 1 to 10 are novel in the light of the cited prior art.
71. Claims 1 to 10 are obvious in the light of document D10.
72. The opponent did not prove its case in regard to section 40 matters. I consider the claims to be clear in scope, fairly based and directed to a manner of manufacture.
73. In the light of the disclosure in D10 I am unable to determine any patentable subject matter. I therefore refuse the application.
COSTS
74. The approach generally taken in awarding costs is that they should follow the event. I see no reason to depart from this principle. I therefore award cost against the applicant.
Leigh R. Tristram
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Griffith Hack Patent and Trademark Attorneys
Patent attorneys for the opponent: Watermark Patent and Trademark Attorneys
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