Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company
[2008] APO 20
•9 September 2008
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 772873 in the name of Wm. Wrigley Jr Company
Title: Comestible coating process using hydrogenated isomaltulose mixture
Action: Opposition under section 59 by Cadbury Schweppes Pty Ltd
Decision: Issued 09 September 2008.
Abstract
Opposition unsuccessful and application directed to sealing
The opponent has failed to establish any of their grounds of opposition and in my view, none of the claims are clearly invalid based on the material before me.
DA6 was covered by a confidentiality agreement between Cadbury and Palatinit and was therefore not publicly available prior to the priority date. It is therefore not part of the prior art base for either novelty or inventive step.
The closest prior art (DA3 and DA8) failed to disclose all the essential features of the invention and therefore do not deprive any of the claims of their novelty. As neither document is part of the prior art base for inventive step, neither citation can deprive the claims of their inventive step.
In addition, as Isomalt GS was not part of the common general knowledge in Australia, there was no motivation for the skilled worker to use this substance for hard-coating confectionary based on the common general knowledge alone.
The claims were also found to be a manner of manufacture and none of them have any section 40 problems which would clearly invalidate the claims.
.PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 772873 by Wm. Wrigley Jr Company and opposition under section 59 by Cadbury Schweppes Pty Ltd
BACKGROUND
1.Patent application 772873 was filed by Wm. Wrigley Jr. Company (“Wrigley”) on 20 May 2000 under the provisions of the PCT claiming priority from a US basic application (60/151500) filed on 30 August 1999. The Australian application was advertised accepted on 13 May 2004 and on 9 August 2004 a notice of opposition under section 59 was filed by Cadbury Schweppes Pty Ltd (“Cadbury”).
2.Evidence in support was served on 30 August 2005. On 28 November 2006, amendments were filed on the opposed specification and these were subsequently allowed on 26 June 2007. All evidence stages in the opposition were completed on 14 November 2007 and the matter was sent for hearing on 13 June 2008 in Canberra. The opponent was represented by Edward Heerey of counsel instructed by Jonathon Kelp of Mallesons Stephen Jaques, Melbourne. The applicant was represented by Christian Dimitriadis of counsel, instructed by John McCann and Gavin Adkins of Spruson & Ferguson, Sydney.
SPECIFICATION
3.The specification (as amended after acceptance) relates to a chewing gum product (or other comestible) with a hard-coating formed thereon using hydrogenated isomaltulose (hereafter “Isomalt”).
4.Isomalt was already known in the prior art to be useful as a sugar-free hard-coating. It is an artificially made substance derived from natural sugar (sucrose) and exists in two isomeric forms – alpha-D-glucopyranosido-1,6-sorbitol (GPS) and alpha-D-glucopyranosido-1,1-mannitol (GPM). As at the priority date, the only commercial supplier of Isomalt was a German Manufacturer, Palatinit GmbH (hereafter “Palatinit”). This company provided two types of Isomalt products containing different proportions of the two isomers:
(a)Isomalt ST containing an essentially equal amount of GPS and GPM (unenriched isomalt)..
(b)Isomalt GS having an enriched GPS component (80:20 mix of GPS/GPM).
5.There are a number of technical abbreviations which are used throughout the evidence and specification. For ease of reference, I have summarised these in the following table:
Term
Definition GPS alpha-D-glucopyranosido-1,6-sorbitol
GPM alpha-D-glucopyranosido-1,1-mannitol
Isomalt hydrogenated isomaltulose – a racemate containing GPS and GPM
Isomalt GS or Isomalt-S Commercial name of hydrogenated isomaltulose containing an enriched amount of GPS compared to GPM (80:20 mix of GPS/GPM).
Isomalt ST Commercial name of hydrogenated isomaltulose containing equal amount of GPS and GPM (unenriched isomalt).
Isomalt M medium particle form of Isomalt ST (>90% of particles in the range 0.5-3.5mm[1])
Isomalt F Fine particle form of Isomalt ST (>90% in the range 0.2-0.7mm[2])
Isomalt PF Powder fine form of Isomalt ST (>90% in the range < 0.1mm[3])
[1] EIS Andrzejeksi declaration of 29 August 2005 exhibit BMA-6 page 6
[2] EIS Andrzejeksi declaration of 29 August 2005 exhibit BMA-6 page 6
[3] EIS Andrzejeksi declaration of 29 August 2005 exhibit BMA-6 page 6
6.The specification notes that one of the difficulties of using Isomalt is that it takes a long time to apply and dry the multiple coats of liquid required to build a quality coating on the comestible (see for example page 1, line 22-23). During development of the invention, a number of different coating syrups were investigated. It was surprisingly found (page 4, lines 1-5) that a suspension syrup made from a solution of hydrogenated isomaltulose enriched in GPS and a powder forming a solid suspension in the syrup that was not enriched with GPS produced a better coating that a coating made with any different combination.
7.The specification ends with 60 claims of which only claims 1, 17 and 44 are independent. These are outlined below:
1. A method of coating comestibles comprising the steps of:
(a)Providing cores of comestible material to be coated;
(b)Applying a coating syrup to the cores;
(c)Applying a powder material comprising hydrogenated isomaltulose that is enriched in alpha-D-glucopyranosido-1,6-sorbitol (GPS) compared to alpha-D-glucanopyranosido-1,1-mannitol (GPM);
(d)Repeating steps (b) and (c) to build up a first layer of coating on said cores;
(e)Wherein the coating syrup is a suspension made from:
(i)a solution of hydrogenated isomaltulose that is enriched in containing an excess amount of alpha-D-glucopyranosido-1,6-sorbitol (GPS) compared to alpha-D-glucanopyranosido-1,1-mannitol (GPM) and
(ii)a powder forming a solid suspension in the syrup, the powder comprising hydrogenated isomaltulose that is not enriched in GPS compared to GPM
17. A method of coating comestibles comprising the steps of:
(a)Providing cores of comestible material to be coated;
(b)Applying a first coating syrup to the cores comprising a suspension of:
(i) a solution of hydrogenated isomaltulose that is enriched in containing an excess amount of alpha-D-glucopyranosido-1,6-sorbitol (GPS) compared to alpha-D-glucanopyranosido-1,1-mannitol (GPM); and
(ii) a powder of hydrogenated isomatulose that is not enriched in GPS compared to GPM, and
(c)evaporating water from the applied first coating syrup and
(d)Repeating steps (b) and (c) to build up a layer of a first coating on the cores of the comestible material; and
(e)Applying a finishing coating syrup comprising hydrogenated isomaltulose that is enriched in GPS compared to GPM over the first coating; and
(f)Repeating step (e) to build up a smooth finish layer
44. A method of coating comestibles comprising the steps of:
(a)Providing cores of comestible material to be coated;
(b)Applying a coating syrup to the cores, the said syrup comprising between about 0.5%wt% and about 10%wt% of a binding agent and a suspension of:
(i) an aqueous solution of hydrogenated isomaltulose that has both GPS and GPM, with a ratio of GPS:GPM of between about 99:1 and about 60:40 and
(ii) a powder of hydrogenated isomaltulose suspended in the solution, the powder having both GPS and GPM, with the amount of GPS not exceeding the amount of GPS compared to GPM;
(c)Applying a second powder material over the first coating syrup, the second powdered material comprising hydrogenated isomaltulose that is enriched in containing an excess amount of GPS compared to GPM;
(d)Repeating steps (b) and (c) to build up a first layer of coating on said cores;
(e)Applying the first coating syrup over the first layer of coating without applying the second powdered material between applications of coating syrup, and drying the coating syrup to form a second coating layer on the cores.
EVIDENCE
8.The two parties in the current dispute were both involved in a revocation-infringement action in the Federal Court on an earlier patent (612367) also owned by Wrigley [see the Federal Court decision in Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) 66 IPR 298]. This earlier patent has a priority date of 4 May 1987. Although it has different claims and is not directly related to the opposed application, it contains similar subject matter and hence some of the evidence in the current matter is the same as that filed in the revocation/infringement action. I’ll refer to this evidence and the Federal Court decision where relevant to the current opposition.
9.Evidence in support consisted of statutory declarations by:
(a)Colin Dudley dated 26 August 2005;
(b)Ursula Maria Wotjas dated 29 August 2005;
(c)Jőrg Kowalczyk dated 8 August 2005;
(d)Bernd Michael Andrzejeski dated 29 August 2005;
(e)Jeffrey Billington dated 27 April 2005;
(f)Tania Celeste dated 9 February 2005; and
(g)Angela Yam dated 31 January 2005.
10.Evidence in answer consists of statutory declarations by:
(a)David Barkalow dated 24 March 2006;
(b)Julius Zuehlke dated 24 March 2006; and
(c)Gary C Roelofs dated 27 February 2007.
11.Evidence in reply consists of statutory declarations by:
(a) Bernd Andrzejeski dated 11 November 2007; and
(b) Ursula Wotjas dated 9 November 2007.
12.The applicant also filed further evidence in the form of statutory declarations by:
(a)Douglas P Fritz dated 13 December 2007; and
(b)Robert J Yatka dated 28 December 2007.
DECISION
Novelty
Relevant Law
13.The question of novelty is determined under the provisions of subsection 7(1) of the Patents Act (Cth)[4]. The test for novelty has been discussed recently in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (see paragraphs 311 et seq) and Bristol-Myers Squibb Company v FH Faulding & Co Limited [2000] FCA 316 (2000) 97 FCR 524. As noted in both decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries [1977] HCA 19; (1977) 137 CLR 228 at page 235 where Aickin J stated:
"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 invention would if the patent were valid, constitute an infringement."
[4] Outlined in annex A
14.Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).
15.However, as Pfizer noted it is not sufficient for a citation to contain all the essential features of the claim, there must be “clear and unmistakable” directions to the claimed invention. In that regard, the Full Court referred to three key decisions:
(a) Canadian General Electric Co v Fada Radio Limited [1930] AC 97:
“...it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakeable directions to use it.”
(b) General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 45:
“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”
(c) ICI Chemicals v Lubrizol Corp [2000] FCA 1349; (2000) 106 FCR 214
‘... skilled addressees are not required to rummage through the prior patentee’s "flag locker" to find a "flag which the [prior patentee] possessed and could have planted".’
16.Novelty can however be found where a feature is not explicitly mentioned but nonetheless present as an inherent feature as an inevitable result of the disclosure. As noted in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [supra]at page 486:
"if in carrying out the directions contained in a prior inventor's publication will inevitably result in something being made or done which, if the claim of the opposed specification were a claim of a valid patent, would constitute an infringement of that claim, then that claim would have been anticipated".
17.However as also observed by the same Court:
“ If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated."
18.In addition, as noted in the Pfizer decision, a citation to deprive a claim of its novelty must be the same as the claimed invention for the purposes of “practical utility”. In other words, the citation has to “enable” the skilled worker to produce the invention from the written disclosure. The basic principle is explained in Hill v Evans (1862) 4 De G F & J 288; 45 ER 1195be where the court noted
“...the antecedent statement must be such that a person of ordinary knowledge in the subject would at once perceive, understand, and be practically able to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery that affords sufficient room for another valid patent”.
What are the essential features of the independent claims?
19.As the opponent noted, the common essential features of all three independent claims are:
1)a process for coating comestibles;
2)using a suspension coating syrup to layer coats on a core of a comestible material;
3)the coating syrup comprising an unenriched powder (containing equimolar amounts of GPS and GPM) suspended in an enriched Isomalt solution (having an excess of GPS compared to GPM).
20.Claims 1 and 44 have an additional essential feature of using a “dry charge” of the enriched Isomalt between coating steps. This step involves dusting the comestible with a powder form of the ingredient and is used to increase the viscosity of the coating, reduce drying times or reduce tackiness.
21.Claim 17 does not have this feature and instead has a “finishing” step using an enriched solution of Isomalt which is applied once the suspension layers have been completed.
Cited prior art
22.In the statement of grounds and particulars, the opponent listed a number of prior art documents which are summarised in the following table:
Citation Description
Location D1 Australian patent 705600
(Sűdzucker AG) published 27 March 1997Kowalczyk ex JK-4 (Exhibit BF-1 therein) DA1 Article by Ingrid Willibrand-Ettle entitled “Isomalt, Sugar-free” (originally published in German in December 1998 in “ZFL Zeitschrift fűr die Lebensmittelwirtschaft” and in English in the March/April 1999 of the “The World of Ingredients” magazine); Kowalczyk ex JK-3 (exhibit JK-10 therein) DA2 Extract from Silesia Confiserie Manual No. 4, 1996 (pp190-204) Andrzejeski #1 Exhibit BMA-8
Kowalczyk exhibit JK-7DA3 Palatinit GmbH’s recipe entitled “Coating with Isomalt GS” - November 1998 method
(publication disputed)Kowalczyk exhibit JK-4
Andrzejeski #1 Exhibit BMA-2
Dudley Exhibit CGD-19
Wotjas#1 exhibit UMW-2DA4 Isomalt GS brochure, 1998 Dudley Exhibit CGD-3
DA5 Article by Tony Ferguson entitled “Dental Care with Isomalt”, September 1996 Yam declaration DA6 Panning trials report of 23 July 1999 (publication disputed) Dudley Exhibit CGD-17 DA7 Technical application 3.5.1 document, September 1994 Kowalczyk exhibit JK-6 DA8 Palatinit GmbH’s technical application sheet 3.5.3 - July 1999 method (publication disputed) Kowalczyk exhibit JK-11
Andrzejeski #1 Exhibit BMA-2
Wotjas#1 exhibit UMW-2DA9 1996 Isomalt Technical Workshop paper Andrzejeski #1 Exhibit BMA-6
Disputed publication of DA3, DA6 and DA8
23.At the hearing, the applicant argued that the opponent did not clearly establish the publication dates of documents DA3, DA6 and DA8 and hence none of these documents could be considered as part of the prior art base for novelty.
24.For a document to be part of the prior art base for novelty[5], the opponent has to establish that a document was “publicy available” before the priority date of a claim. The recent full Federal Court Decision in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 (1 August 2008) recently reviewed the law on the issue of “publicly available" for the purposes of novelty and inventive step and outlined a number of general principles at paragraph 124:
• The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J cited in Jupiters Ltd v Neurison Pty (2005) 65 IPR 86 at [141]). (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ.)
• It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961)180 CLR 98 at 111 per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality (Fomento Industrial S.A. v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99–100; Re Bristol-Myers Co’s Application [1969] RPC 146 at 155 per Parker LJ).
• The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity (Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 (Merck) at [98]–[103]).
• In order to be "available", information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention (cf RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 593–594).• In order to be "available", information said to destroy novelty must "enable" the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster Cylinders Pty Ltd v Marks (1996) FCR 577 at 581–582).[5] Outlined in annex A
25.In the current case, DA6 is an “in-house” report dated 23 July 1999 which documents trials by Palatinit on 7-9 July 1999 using Isomalt GS. The opponent did not pursue DA6 at the hearing and there is no evidence that this report was ever publicly released. As Mr Dudley noted in his evidence[6], the report was sent to a variety of people but these were confined to employees of either Palatinit or Cadbury. Both companies were bound by a confidentiality agreement which took effect just before the trials. The trial report data was not made available to any one member of the public in a way that left that person free, in law and equity, to use the information (as per PLG Research Ltd v Ardon International Ltd [supra]). Therefore DA6 is not publicly available and does not form part of the prior art base for novelty or inventive step[7].
[6] EIS Dudley declaration of 26 August 2005 at paragraphs 35-40
[7] Outlined in annex A
26.In contrast, DA3 and DA8 are technical application sheets (or “recipes”) which were provided by Palatinit (the sole supplier of Isomalt) on request from customers[8]. The documents themselves are dated– for DA3, this was November 1998 and for DA8, this was July 1999. Their publication dates were confirmed by their owner (Patatinit)[9] and coincide with the known commercial availability of Isomalt GS (when technical application sheets are highly likely to have been prepared). There is no reason to suspect that the dates or the documents themselves are anything other than genuine. I therefore accept that the documents were produced before the priority date of the current claims.
[8] EIS Kowalczyk declaration of 8 August 2005 at paragraph 24
[9] EIS Kowalczyk declaration of 8 August 2005 at paragraphs 24 and 26.
27.The evidence from both sides also acknowledges that technical application sheets from the manufacturer were routinely provided to customers after their publication. Customers who were provided with this material were then free, in law and equity, to make use of this information. I therefore accept that both documents were “publicly available” before the priority date of the current claims.
Are D3 and D8 exempt from the prior art base by virtue of section 24?
28.The applicant argued that the methods published in DA3 and DA8 were covered by a second confidentiality agreement[10] between Palatinit and Wrigley (effective from 31 January 1996) and hence were an “unauthorised disclosure” for the purposes of section 24(1)(b)[11] . The applicant noted that the combined effect of section 24(1)(b) and regulation 2.3(2)[12] was that unauthorised disclosures must be disregarded in such circumstances where a “patent application for the invention is made” within 12 months from the time of publication of the disclosure. As a consequence, the applicant argued that these documents were not part of the prior art base for novelty (or inventive step).
[10] EIA Barkalow’s declaration of 24 March 2006 - exhibit DB-1.
[11] Outlined in annex A.
[12] Outlined in annex A.
29.I note that the complete Australian application was filed more than 12 months after the publication of DA3 (in November 1998) and hence was not within the time limit prescribed by regulation 2.3(2). The applicant argued that DA3 was published less than 12 months from the filing on the US provisional application in August 1999 and that a US provisional application was within the scope of “patent application” as used in section 24.
30.In this regard, the applicant referred to the Federal Court decision in NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542 at paragraph 125. This decision relied on the definition of “patent application” in section 29(2)[13] to construe the same term in section 24 to include an Australian provisional application. The applicant then reasoned that this definition automatically extended to foreign provisional applications because of Australia’s obligations under TRIPS and the USFTA agreements to accord equal privileges to foreign based applicants.
[13] Outlined in annex A.
31.However section 29(2) only refers to Australian provisional and complete applications and the applicant’s extrapolation ignores the definition of “patent application” in schedule 1 to the Patents Act [1990][14] which is limited to Australian complete applications. By either reasoning, the Australian legislation clearly only considers the “patent application” in section 24 to be an Australian application and this does not include a US provisional application. The US provisional cannot therefore be considered a patent application for the purposes of section 24(1). As a result, DA3 was published outside the time limits prescribed in regulation 2.3(2) and the exemption provisions of section 24 do not apply with regard to this document.
[14] Outlined in annex A.
32.DA8 contains a very similar disclosure to DA3 but was published later (in July 1999). As this publication date is within 12 months of the filing of the complete Australian application, it falls within the time limits prescribed in regulation 2.3(2) and hence the document potentially could fall within the scope of the section 24 exemption provisions
33.The applicant argued that the disclosure in DA8 was covered by a confidentiality agreement between the parties which bound both parties to:
“disclose such information…to the other as each deems necessary and appropriate and each company shall accept and hold all information in confidence in accordance with the provisions hereof”.[15]
[15] EIA Zuehlke declaration of 24 March 2006 exhibit JZ-1
34.This obligation continues for a period of 5 years from the date of disclosure. The applicant alleged that the use of Isomalt GS in a suspension method system (as mentioned in DA8) was first disclosed to Patatinit in trials conducted by Wrigley in July–August 1997[16]. The applicant then argued that this key advance was encompassed by the confidentiality agreement and precluded Palatinit from publishing this information.
[16] EIA Barkalow declaration of 24 March 2006 at paragraph 6
35.However, there is no evidence to establish that DA8 was the direct result of Palatinit’s work with Wrigley. From Dr Kowalczyk’s evidence[17], it is clear that independent research was being conducted by Palatinit on coating formulations using Isomalt GS outside of their work with Wrigley (in fact document DA6 is clear evidence of such trials). Given that Palatinit was the sole manufacturer of Isomalt at the priority date, it seems quite reasonable that they would be performing such trials to determine how customers (not just Wrigley) might best use their product. Such work would not be covered by the confidentiality agreement with Wrigley.
[17] EIS Kowalczyk declaration of 8 August 2005 at paragraphs 21 et seq
36.In addition as the opponent noted, the terms of the contract are broad and vague. It seems to me highly unlikely that the terms would preclude a company from using all information exchanged between the parties and hence it is unclear what information was intended to be confidential. I also note that if the applicant’s argument was correct then their own patent specification (published on 26 March 2001 without the written consent of Patatinit) would also be in breach of the confidentiality agreement.
37.The onus is on the applicant to demonstrate that DA8 was an unauthorised disclosure and they failed to meet this onus. I am not convinced that the disclosure of DA8 was covered by the terms and conditions of the second confidentiality agreement and in my view it is not exempt from the prior art base for novelty under the provisions of section 24.
38.As a result, both DA3 and DA8 form part of the prior art base for novelty.
Do any of the prior art documents deprive the claims of their novelty?
39.The closest prior art cited in the Statement of Grounds and Particulars is DA3 and DA8. These documents are both one page technical application sheets containing a single “recipe” for coating with Isomalt GS. These documents (dated November 1998 and July 1999 respectively) were provided by the manufacturer of Isomalt (Palatinit) on request and provide abbreviated directions for coating substances with Isomalt GS using the “suspension method”.
40.The two documents are very similar – the earlier citation is the “unofficial” version (pre-product launch) of the later “official” technical specification but essentially the documents are substantially the same.[18] Both documents have very specific directions about how to make a suspension of Isomalt ST in an Isomalt GS solution. However, there is little detail of how this suspension is then used in a coating process in either document apart from a table outlining general process parameters.
[18]EIS Andrzejeksi declaration of 29 August 2005 at paragraph 57
41.This is in sharp contrast with a later technical application sheet for the same process which was published in August 2000 by Palatinit (technical application 3.5.1b[19]). This later document appears to provide some additional detail to assist the confectioner in the panning process. For example:
“Depending on the quality of the centres surface (smooth or rough, convex or concave, small or large shaped), the amount of suspension needed varies in a wide range. Most centres tend to stickiness and due to that to formation of agglomerates after addition and distribution of the suspension in the first 4 cycles. To avoid this, dust with Isomalt ST-PF after distribution of the liquid.”
[19]EIS Dudley declaration dated 26 August 2005 - Exhibit CGD-7
42.Without such detail, it is not clear that either DA3 and DA8 contains sufficient information to meet the Hill v Evans [supra] test of being the same as the claimed invention for the purposes of “practical utility”.
43.Even assuming that the skilled worker could provide the missing detail from the citations using their common general knowledge (and the opponent did not establish this), there are still further problems with the documents. DA3 and DA8 are both technical application sheets provided by Palatinit to their customers. DA8 is numbered “technical application sheet 3.5.1” indicating that it forms part of a larger collection of recipes. The evidence confirms this by referring to other technical application sheets which are numbered consistently with DA8 (including technical application sheets 3.5.2b[20], 3.3.1 and 3.3.2[21]).
[20] EIS Dudley declaration dated 26 August 2005 - Exhibit CGDA-6
[21] EIS Dudley declaration dated 26 August 2005 - Exhibit CGD-12
44.Being part of a larger collection of recipes, DA3 and DA8 have to be read in the context of all the other technical application sheets because considering them in isolation might be seen as rummaging through the prior art’s "flag locker" to pull out the relevant “flag” (against the teaching of ICI Chemicals v Lubrizol Corp [supra]).
45.In this regard, while DA3 and DA8 both outline the suspension method, another Palatinit technical application sheet (Technical Application sheet 3.5.2b) describes an alternative method (the solution method). While the latter sheet was published after the priority date (in November 2000), it still suggests that even at this date the manufacturer was not necessarily recommending the suspension method to their clients. This is confirmed by the opponent’s evidence. In his affidavit to the Federal Court[22], Mr Dudley noted that Cadbury started their trials on Isomalt-GS in April 2001using Technical Application sheet 3.5.2b. [23] Their initial trials were based on a solution method not a suspension method. It wasn’t until August 2001 that Palatinit provided Dudley with the suspension recipe (Technical Application 3.5.1b).
[22] EIS Dudley declaration dated 26 August 2005 - Exhibit CGD-2, paragraph 53
[23] EIS Dudley declaration dated 26 August 2005 - Exhibit CGD-2, paragraph 51
46.As discussed later in this decision under obviousness, the common thinking at the priority date was that the solution method would achieve better results. It was therefore perhaps not surprising that Cadbury started with the solution method and only moved to the Isomalt GS/ST-PF suspension following a subsequent recommendation by Palatinit.[24]
[24] EIS Dudley declaration dated 26 August 2005 paragraph 25
47.Against this background unless there was a clear direction in the citation (or from the common general knowledge) to explain why a method was particularly advantageous, I am not convinced that there are clear and unmistakeable directions for the skilled worker to use the exact method outlined in DA3 or DA8.
48.The skilled worker could have followed the exact methodology in DA3 or DA8 in their own circumstances but would be equally likely not to [as per General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [supra] at page 486]. As a consequence, in my view, neither DA3 nor DA8 deprives any of the claims of their novelty and I note that the opponent did not strongly press this issue at the hearing.
49.The opponent also argued at the hearing that D1 was a relevant citation. D1 is a PCT patent application (PCT/EP96/03740) by the Sűdzucker AG (the parent company of Palatinit). It entered the National Phase in Australia as application 69282/96 and was granted here as 705600. The application is the first publication of the GPS-enriched isomaltulose compositions produced by Palatinit and their use in hard-coating confectionary. The citation notes that these compositions are more soluble and have greater sweetening power compared with the standard (unenriched) Isomalt product (see page 3, lines 10-16).
50.The citation does specify that either the suspension or solution method could be used for coating comestibles with the GPS-enriched product (see for example page 4, lines 35-39). It mentions that the suspension method has the advantage of a strongly reduced adhesion tendency during the coating and short drying time (see page 4, lines 8-14).
51.However the citation does not disclose making a suspension using a powdered form of non-enriched Isomalt in a solution of GPS-enriched Isomalt and does not recognise the particular advantages (high quality coating) to that specific combination. There are therefore no clear and unmistakeable directions to the claimed invention and the citation does not deprive any of the claims of their novelty.
52.The opponent did not pursue the other documents raised in the Statement of Grounds and Particulars at the hearing. I have analysed all of these in the attached novelty table (see Annex B) and I agree that none of documents raised by the opponent deprive any of the claims of their novelty.
Inventive Step
Relevant Law
53.The question of inventive step is determined under the provisions of subsections 7(2) and 7(3) of the Patents Act (Cth)[25]. For applications filed before 1 April 2002, a claimed invention will lack an inventive step if it is obvious in the light of:
(a)common general knowledge; or
(b)common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
[25] Outlined in annex A.
54.There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
"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."
55.More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd 56 IPR 129 at 142-143 referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the `Cripps question' by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
`Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'
That approach should be accepted."
56.The High Court in Alphapharm also warned against the misuse of hindsight noting that the danger of such misuse will be “particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known”. In that regard, the court referred with approval to Lord Diplock’s comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd ([1972] RPC 346 (at 362)]:
"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."
57.While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
58.Finally, in opposition proceedings before the Commissioner, the onus rests with the opponent to clearly establish its case and the standard of proof required is the civil standard of proof on the balance of probabilities (Dunlop Holding’s Ltd’s Application [1979] RPC 523). Moreover the Commissioner must be “clearly satisfied that the patent, if granted, would not be valid”. Where questions of fact such as obviousness and existence of invention are involved “the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out” (as per Hoffman la-Roche AG v New England Biolabs Inc (2000) 50 IPR 305 at 67).
Common general knowledge
(i) Manufacture of hard-coated confectionary
59.Hard-coated chewing gums (having gum centres coated with a hard crunchy coating) were first introduced in Australia by Wrigley in the form of pellets in 1915[26]. The hard-coating is applied in a process known as “panning”. This process involves placing the uncoated comestibles (edible materials) in a revolving pan and using a coating syrup to form successive layers on a central core material.
[26]See Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005 (supra) at paragraph 6
60.The syrup containing the coating ingredients can either be in the form of a solution (“solution coating method”) or a suspension (“suspension coating method”). In both cases, the coating ingredients crystallise on the core material and dry as a hard-coat layer. This coating process is then repeated until the desired density is obtained.
61.In between layers, the relevant comestibles can be dusted with a powder form of the basic ingredient of the solution (known as a “dry charge”) in order to increase the viscosity of the coating, reduce drying times or reduce tackiness. However this is at the cost of a rougher finish and a more permeable, fragile product.
62.Once the layering process is completed, the products are dried and polished. A “finishing solution” (which has a lower solids content than a suspension syrup) can be then used to form the outer coating layers (regardless of whether the solution coating method or the suspension coating method is used for the inner coating layers) to give the final product’s coat a smoother appearance.
63.It was accepted by both parties in the opposition that all other conditions being equal, crystal size is inversely proportional to drying time. In this art, longer drying times for coating layers apparently result in smaller crystals which produce a better “crunch”. As a consequence, a panner of ordinary skill will generally be able to produce a higher quality coat using the solution coating method rather than the suspension coating method.
64.However, the suspension coating method has the advantage that the existence of a solid powder phase in the syrup reduces drying times and can therefore improve productivity.
(ii) Sugar-Free coatings
65.Health concerns about sugar emerged in the early to mid-1980’s as sugar was seen as contributing to obesity, dental decay and diabetes. This awareness created a demand for sweetening alternatives, and in the case of hard-coated chewing gum a search for an acceptable alternative to sugar coating. From a consumer’s aspect, such an alternative had to be comparable to sugar in terms of its taste, appearance and mouth feel.[27]
[27]Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) (supra) at paragraph 17
66.By 1987, there had been no significant sales of any sugar-free confectionary (including chewing gum) in Australia. Gums with the sugarless sweetener sorbitol had been sold overseas but not in Australia. Sorbitol was difficult to process and sorbitol gums were waxy, rough and had an undesirable mottled appearance. Sorbitol was also hygroscopic which meant it absorbed water from the gum centre. This adversely affected the crunchiness of the product.[28]
[28] Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) (supra) at paragraph 20
67.Because of the known disadvantages of sorbitol, there was a strong market need for an alternative sugar-free product which overcame these difficulties.[29]
[29] Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) (supra) at paragraph 60
68.The sugar-free alternative Isomalt (also known as Isomalt ST) was first produced in the early 1970s by the German manufacturer Palatinit GmbH (who is still the sole commercial supplier of this material). In its crystalline form it looks and feels like sugar and can be panned in exactly the same way as sugar. It is very low in kilojoules, does not cause cavities and being chemically stable, does not react with other ingredients.
69.The critical advantage that Isomalt had over other sugar-free alternatives (including sorbitol) was that it was non-hygroscopic. This made it particularly useful as a coating agent and its “most popular property with confectioners”.[30] The Federal Court in Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) [supra] found that Isomalt and its properties were both part of the common general knowledge in 1987[31] and hence concluded that it would have been obvious to use this commercial product for something for which its known (and advertised) properties made it suitable[32].
[30] Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) (supra) at paragraph 75
[31] Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) (supra) at paragraph 97
[32] Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) (supra) at paragraph 102
(iii) Isomalt GS
70.The Federal Court noted that Palatinit GmbH produced a further product called Isomalt GS which was made by the physical process of fractional crystallisation of Isomalt ST [33]. However the Federal Court did not make any finding about whether this particular form of Isomalt was also part of the common general knowledge. This was the one of the key issues in dispute between the parties in the current case.
[33] Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2005) (supra) at paragraph 26
71.From the opposition evidence, Isomalt GS was first discovered by Sűdzucker AG (the parent company to Palatinit) in around 1995[34] and appears to have been first published on 13 March 1997 with their patent application 705600 (D1). The actual product launch for Isomalt GS was not until July 1999. However the company had provided the product to customers prior to then and the company noted that customer demand exceeded their ability to supply it during the second half of 1998.[35]
[34] EIS Kowalczyk declaration of 8 August 2005 at paragraph 13
[35] EIS Kowalczyk declaration of 8 August 2005 at paragraph 16
72.Isomalt GS had a number of advantages over Isomalt ST. It exhibited better solution kinetics for coating (ie: it was more soluble and dissolved faster). It also enabled manufacturers to use lower process temperatures (by 10-20oC) than Isomalt ST (which is more cost effective and is particularly useful when the core to be coated is heat sensitive).[36] It also releases sweetness more quickly resulting in a higher impact sweetness, and produces smoother coatings. In terms of crunch (breaking behaviour), Isomalt ST breaks into coarser pieces and is harder, whereas Isomalt GS breaks into finer pieces.[37]
[36] Kowalczyk in an affidavit in the Federal Court dated 21 April 2004 (see JK-3)– paragraph 32
[37] EIS Kowalczyk declaration of 8 August 2005 at paragraph 21
73.There was an article in December 1998 by Ingrid Willebald-Ette which described some of the benefits of Isomalt GS. This article was originally published in German in the magazine “ZFL Zeitschrift fűr die Lebensmittelwirtschaft” but similar articles were published in French, Spanish and Italian in confectionary technical journals in those respective languages in March and April 1999[38].
[38] EIS Kowalczyk declaration of 8 August 2005 at paragraph 14
74.These articles led to enquiries from German, Swiss and Austrian companies and in response to some of those enquiries, Palatinit’s technical team then distributed copies of an “unofficial” technical application sheet containing a recipe and process for coating with an Isomalt GS/Isomalt ST-PF coating (November 1998 method - see DA3)[39].
[39] EIS Kowalczyk declaration of 8 August 2005 at paragraphs 24-25
75.However, as Mr Roelofs noted in his evidence in answer[40] large manufacturers generally sell their most recent and innovative confectionary products in bigger commercial markets such as Europe and the United States before distributing their products in Australia. There is no evidence that anyone in Australia had enquired about Isomalt GS prior to the priority date and none of the Australian expert witnesses in the opposition (on either side) admitted to being aware of the new product prior to the priority date.[41]
[40] EIA Roelofs declaration of 27 February 2007 at paragraph 3.9
[41] See,for example, EIS Andrzejeksi at paragraph 67 and EIA Roelofs at paragraph 5.10
76.Ursula Wotjas works for Cadbury (one of Australia’s largest confectionary manufacturers) and noted that technical representatives from Palatinit came to visit her firm once every year to give marketing presentations[42]. At one of these presentations (before 30 August 1999), she had been given a Palatinit marketing brochure (UMW-12). However this brochure only referred to the standard form of Isomalt (later known as Isomalt ST). It appears that even the largest of the Australian manufacturers did not know about the new product (or its properties) before the priority date.
[42] EIS Wotjas declaration of 29 August 2005 at paragraph 22
77.The opponent noted that the common general knowledge “incorporates the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.[43] They also observed that the common general knowledge is not limited to material which might be memorized and retained at the front of the skilled person’s mind but also includes material in the field in which he is working which he knows to exist and to which he would refer as a matter of course”.[44]
[43] Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1979) 144 CLR 253 at 293
[44] ICI Chemicals & Polymers Ltd v Lubrizol Corp (1999) 45 IPR 577
78.None of the Australian experts admitted knowing about Isomalt GS before the priority date. There was also no evidence that they would have referred to one of the general publications of Isomalt GS as a matter of course to learn about the new product prior to the priority date. As such, I agree with the applicant that Isomalt GS was not part of the common general knowledge in Australia prior to the priority date
Were the claims obvious in light of CGK alone?
79.All the expert witnesses agreed that a quality coating was critical in hard-coating confectionary and further that (all else being equal) they would have expected the “solution method” to produce the best quality results based on their common general knowledge.
80.Thus, Mr Andrzejeksi in evidence in support notes
“In my experience and based on my reading before 30 August 1999, some of the advantages of using a solution rather than a suspension syrup are:
(a)solutions are less viscous, and therefore easier to pan than suspension syrups;
(b)solutions are less likely than suspension syrups to suddenly rather than gradually crystallize – whether on the centres (which can lead to large, unsightly crystals forming) or before application to the centres, for example in the holding tanks or pipes if they are not sufficiently heated. Such premature crystallization is sometimes referred to as “graining out”;
(c)if panned and dried correctly, solutions can produce coats with a smoother finish than coats produced using suspension syrups; and
(d)if they are dried correctly, solutions can produce “crunchier” coats. The smoother, crunchier finish is probably due to the smaller crystals that can be produced when Isomalt is dried slowly. Suspension syrups dry more quickly than solutions because they contain less water and they contain particles which seed (encourage) crystallization. Consequently, coats made from suspension syrups tend to have a “grainier” texture”.
81.Mr Andrzejeksi concludes that based on the known advantages of the “solution coating method” he would have used this method rather than the claimed “suspension coating method” . Mr Roelofs in evidence in answer comes to a similar conclusion[45]
[45] EIA Roelofs declaration of 27 February 2007 at paragraphs 3.5-3.7
3.5“ If I was to apply Isomalt as a hard-coating to a confectionary product prior to 30 August 1999 then I would take note of marketing literature provided by the manufacturer, Palatinit GmbH. I would then weigh up and consider various factors desired in the finished product such as whether it is important to obtain higher quality finishes which have smoother coats or whether a more coarse coating is satisfactory. The desired time taken to apply the coat is also a relevant factor.
3.6Generally speaking there are a number of options to apply a hard-coating and some of the options would include
3.6.1 Using a solution syrup;
3.6.2 Using a suspension syrup;
3.6.3 Using a combination of both a solution and suspension syrup.
3.7However it was known before 30 August 1999 that use of a solution syrup would provide a better quality of coating with a smoother finish and thus I would have probably began trials to apply a hard-coating of Isomalt using the solution methods first before 30 August 1999.”
82.The specification notes that one of the difficulties with forming a quality coating is that it takes a long time to apply and dry the multiple coats of liquid used to build up the coating on the product.[46] Although both Roelofs and Andrzejeksi were aware of the time saving advantages of the suspension method, their expectation (based on their common general knowledge) was that this method would not have achieved the level of quality needed in the product.
[46] See page 1, lines 13-18
83.As a consequence, they would not have been directly led to the suspension method as a matter of course. This is particularly true of a suspension using Isomalt GS given my finding above that this product was not part of the common general knowledge of a skilled worker in Australia at the priority date. As a consequence, my view is that the opponent has failed to establish that any of the claims lack inventive step based on the common general knowledge alone.
84.I also note Mr Andrzejeksi’s comments in EIS concerning the use of a “dry charge”. All the experts agreed that such a mechanism builds up the coating quickly thus reducing manufacturing time, but generally makes it more difficult to get a high quality coating and particularly a hard crunchy coating with good appearance. This has been particularly true when hydrogenated Isomaltulose is used to create a coating on the chewing gum pellet. Based on this reasoning, Mr Andrzejeksi concludes he would not have used a “dry charge” (as required by claims 1 and 44 and claims dependent thereon). I accept Mr Andrzejeksi’s reasoning and find this feature is also not obvious in light of the common general knowledge alone.
Are documents DA3 and DA8 part of the prior art base for inventive step?
85.The prior art base for inventive step (prescribed in sections 7(2) and (3) of the Patents Act [1990][47]) requires a document used to deprive a claim of its inventive step to be one which a person skilled in the relevant art could reasonably be expected to have ascertained, understood, regarded as relevant at the priority date of the claim.
[47] Outlined in annex A
86.DA3 and DA8 were documents which were only available on request from the manufacturer at the priority date. The opponent argued that a skilled worker interested in coating with Isomalt would contact the manufacturer (Palatinit) for technical advice on how to use their product and from there be guided by the teachings provided in DA3 and DA8 to use the suspension method containing powdered Isomalt ST in an Isomalt GS solution.
87.Ursula Wotjas discusses this type of approach in her declaration filed in EIS[48]. She notes that the exact method she would have used to hard-coat confectionary would have been influenced by a number of factors including:
a) The properties she wished the final product to possess;
b) The type of centre to be coated, including its heat sensitivity;
c) The budget which she was constrained by; and
d) The volume of product which she needed to produce.
[48] EIS Wotjas declaration dated 29 August 2005 at paragraphs 26 et seq
88.Because of all these different variables, she could not specify which method she would have used in August 1999. However in practice she would have contacted Palatinit or its agent and ask them for their recommended recipes and methods for hard-coating the particular centres with Isomalt. She would then have started trials by following a recipe and method (by inference the methods described in DA3 or DA8) which she believed would result in a product with the desired characteristics.[49]
[49] EIS Wotjas declaration dated 29 August 2005 at paragraph 37
89.However DA3 and DA8 were supplied to customers on a specific request for recipes involving Isomalt GS. As Isomalt GS was not part of the common general knowledge in Australia at the priority date, the skilled worker would not be motivated to make such a request. Instead, they would make a more general enquiry about Isomalt coatings and would be likely to obtain more general literature from the manufacturer about Isomalt.
90.Thus, when Mr Fritz (a US technical expert on chewing gum) requested Palatinit America for literature and samples of their products for a 3-day workshop on Chewing Gum in cooperation with the NCA (National Confectioner Association) at the University of Wisconsin on 1-3 March 1999, he only received a general publication about Isomalt (not Isomalt GS) despite this conference being an excellent opportunity for Palatinit to showcase its new product.[50]
[50] Isomalt- A Bulk Sweetener for Sugar Free and Calorie-Reduced Confectionary Product – filed in evidence as JK-4
91.I note that even if DA3 and DA8 were ascertained by the skilled worker, it is not clear that the skilled worker in Australia would have understood or regarded them as relevant. These documents contained no explanation of the terms Isomalt GS or Isomalt GS crystalline and given the newness of the product, the skilled worker could not be expected to know what these terms meant from their common general knowledge[51].
[51] EIA Roelofs declaration of 27 February 2007 at paragraph 5.18
92.In addition as Roelofs notes in EIA[52], it is not clear that the skilled worker would have found the documents particularly relevant to their problem of producing quality hard-coated confectionary. Nothing in DA3 or DA8 explains what the advantages or benefits were of the suspension method or the product Isomalt GS itself such that a skilled worker would be motivated to use the methods described in DA3 or DA8 (against the common thinking at the time). Although Ingrid Willebald-Ettle’s publication[53] about the benefits of Isomalt GS was available at the priority date and could have provided this motivation, this requires a mosaicing of documents which is not permissible for applications filed before 1 April 2002.
[52] EIA Roelofs declaration of 27 February 2007 at paragraph 5.11
[53]“ Isomalt, sugar free” published in March/April 1999 edition of “The World of Ingredients” magazine – Document DA1 in the Statement of Grounds and Particulars and exhibited in JK-3 (at JK-10)
93.Given this, my view is that neither DA3 nor DA8 would have been ascertained, understood or regarded as relevant by the skilled worker in Australia at the priority date and hence neither document is part of the prior art base for inventive step.
Is the claimed invention obvious?
94.Because DA3 and DA8 are not part of the prior art base for obviousness, they cannot deprive any of the claims of their inventive step under Australian law. There was also no evidence establishing that any of the other documents listed in the Statement of Grounds and Particulars could have been ascertained, understood and regarded as relevant by the skilled worker at the priority date. As a result, there are no relevant documents on which to base an inventive step objection in the Opposition and hence the opponent has failed to establish that any of the claims lack an inventive step.
Manner of Manufacture
95.The opponent argued in their Statement of Grounds and Particulars that the claimed invention involves nothing more that the use of known materials (GPS-enriched Isomalt and non-enriched Isomalt) in a known method of coating comestibles.
96.However as the specification notes[54], it was surprising that a suspension containing a non-enriched Isomalt powder in a GPS-enriched Isomalt solution would produce a better coating than a coating made with suspension where either both the solution and the powder are enriched or both the solution and the powder are not enriched. Given this unexpected effect, the claimed combination provides a result beyond the expected chemical interactions of the components. Hence the claims define a manner of manufacture.
[54] See page 4, lines 1-5
Section 40 issues
97.The opponent raised a number of section 40 issues in their Statement of Grounds and Particulars but only pursued a small number of these issues at the hearing. In particular, the opponent argued that some of the claims are unclear because the terms “high intensity sweetener” (claims 12 and 28), “hard crunch coating” (claims 15, 52 and 42) “moderate crunch coating” (claims 16, 53 and 43) and “improved crunch” (claims 54-55) “lack clarity and are imprecise, relative and subjective. They do not allow a reasonably certain construction and are fairly and equally open to a number of different meanings”.
98.I note that patent claims frequently contain terms that areimprecise. This does not give rise to an objection of lack of clarity if it is possible for the addressee to ascertain whether or not an act falls within the ambit of the claim. The Full Court in Leonardis v Sartas [1996] 449 FCA 1 noted that it is not inadmissible to use in a claim animprecise word in an appropriate context where it conveys the necessary meaning. This is a practical determination, rather than a strictly literal exercise, and it is acceptable if there is minor uncertainty at the edges of a claim:
"The court will give little weight to puzzles which may arise 'at the edge of the claim' if those puzzles would not, as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe that patent."
(Glaverbel SA v British Coal Corp, [1994] RPC 443 at 495)
99.None of the declarants appeared to have had any difficulty understanding the meaning or scope of any of the claims and most of the terms objected to by the opponent were widely used in the evidence by the declarants (from both sides) without any resulting confusion. In my view, all these terms are well-recognised in the art and the opponent has not established that they cause any clarity problems with the claims.
CONCLUSION
100.The opponent has failed to establish any of their grounds of opposition and in my view, none of the claims are clearly invalid based on the material before me.
101.DA6 was covered by a confidentiality agreement between Cadbury and Palatinit and was therefore not publicly available prior to the priority date. It is therefore not part of the prior art base for either novelty or inventive step. DA3 and DA8 were disseminated to clients without confidentiality restrictions prior to the priority date and hence are part of the prior art base for novelty. However, the opponent failed to establish that the skilled worker could have ascertained, understood and regarded either of these citations as relevant before the priority date and hence neither document is part of the prior art base for obviousness.
102.The closest prior art (DA3 and DA8) failed to disclose all the essential features of the invention and therefore do not deprive any of the claims of their novelty. As neither document is part of the prior art base for inventive step, neither citation can deprive the claims of their inventive step.
103.The claims were also found to be for a manner of manufacture and none of them have any section 40 problems which would clearly invalidate the claims.
104.I therefore direct the application proceed to sealing after 30 days from the date of this decision. If a notice of an appeal is served on the Commissioner within that time, the Commissioner will stay her decision until the appeal is withdrawn or finally determined.
COSTS
105.In matters before the Commissioner, costs generally follow the event. In this case, the applicant succeeded in defending their application but they needed to amend their specification during opposition to overcome the prior art raised by the opponent. I therefore award costs according to Schedule 8 against the applicant up until the parties were advised of the allowance of the amendment
(the Commissioner’s letter of 13 July 2007) and against the opponent from that date forward.
Karen Ayers
Delegate of the Commissioner of Patents
09 September 2008Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Mallesons Stephen Jaques, Melbourne
Annex A
Relevant sections of the Patents Act and Regulations
From Patents Act [1990]
7Novelty and inventive step
Novelty
(1)For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a)prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b)prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c)prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
Inventive step
(2)For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.
From Schedule 1:
prior art base means:
(a)in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i)information in a document that is publicly available, whether in or out of the patent area; and
(ii)information made publicly available through doing an act, whether in or out of the patent area.
(b)in relation to deciding whether an invention is or is not novel:
(i)information of a kind mentioned in paragraph (a); and
(ii)information contained in a published specification filed in respect of a complete application where:
(A)if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B)the specification was published after the priority date of the claim under consideration; and
(C)the information was contained in the specification on its filing date and when it was published.
[Note: For the meaning of document see section 25 of the Acts Interpretation Act 1901.]
prior art information means:
(a)for the purposes of subsection 7(1)—information that is part of the prior art base in relation to deciding whether an invention is or is not novel; and
(b)for the purposes of subsection 7(3)—information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step; and
(c)for the purposes of subsection 7(5)—information that is part of the prior art base in relation to deciding whether an invention does or does not involve an innovative step.
From Patents Act [1990}:
24(1)For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:
(a)any information made publicly available, through any publication or use of the invention in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
(b)any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee;
but only if a patent application for the invention is made within the prescribed period.
From Patents Regulations:
2.3(2)For the purposes of subsection 24 (1) of the Act, in the case of information of the kind referred to in paragraph 24 (1) (b) of the Act, the prescribed period is 12 months from the day when the information referred to in that paragraph became publicly available.
From Patents Act
29Application for patent
(1)A person may apply for a patent for an invention by filing, in accordance with the regulations, a patent request and such other documents as are prescribed.
(2)An application may be a provisional application or a complete application.
(3)A patent request in relation to a provisional application must be in the approved form and accompanied by a provisional specification.
(4)A patent request in relation to a complete application must be in the approved form and accompanied by a complete specification.
(5)In this section:
person includes a body of persons, whether incorporated or not.
[Note: see also section 5 for requirements relating to associated applications.]
Schedule 1
“patent application” in the schedule to the Patents Act [1990]:
patent application means an application for a standard patent or an application for an innovation patent.
Annex B
Novelty Table for independent claims 1 and 44
Essential Feature
Citation
(publication date)
multi-layered coating process over a comestible core
using suspension method where suspension contains unenriched powder in enriched Isomalt solution
Dry charge between layers
D1
(27 March 1997)
Y
N- no recognition of the advantage of this specific combination
N
DA1
(originally published in Dec 1998)
N – mentions coating process but does not provide specific details
N – suspension technique with Isomalt GS mentioned but not necessarily with unenriched powder
N
DA2
(1996)
Y
N (no mention of Isomalt GS)
Y
DA3
(November 1998)
Not explicitly disclosed
Y
“Powder addition” at cycles 1-13 referred to in process parameters inferring a dry charge step
DA4
(published in 1998)
N (general brochure on Isomalt GS containing no information about how to apply it on a comestible core)
N
N
DA5
(published in 1996)
Only bibliographic pages provided in evidence – no details of publication itself but given date and title highly unlikely to have disclosed Isomalt GS
DA6
(trials performed between 7-9 July 1999 and document allegedly published before 23 July 1999)
Y
Y (see trial 3)
N
DA7
(September 1994)
Y
N (suspension method used but no mention of GS)
N
DA8
(July 1999)
Not explicitly disclosed
Y
N
DA9
(December 1996)
Y
N (no mention of Isomalt GS)
Y
Novelty Table for independent claim 17
Essential Feature
Citation
multi-layered coating process over a comestible core
using suspension method where suspension contains unenriched powder in enriched Isomalt solution
Finishing coat
D1
(27 March 1997)
Y
N- no recognition of the advantage of this specific combination
N
DA1
(originally published in Dec 1998)
N – mentions coating process but does not provide specific details
N – suspension technique with Isomalt GS mentioned but not necessarily with unenriched powder
N
DA2
(1996)
Y
N (no mention of Isomalt GS)
Y
DA3
(November 1998)
Not explicity disclosed
Y
N
DA4
(published in 1998)
N (general brochure on Isomalt GS containing no information about how to apply it on a comestible core)
N
N
DA5
(published in 1996)
Only bibliographic pages provided in evidence – no details of publication itself
DA6 (trials performed between 7-9 July 1999 and document allegedly published before 23 July 1999)
Y
Y (see trial 3)
N
DA7
(September 1994)
Y
N (suspension method used but no mention of GS)
N
DA8
(July 1999)
Not explicity disclosed
Y
N
DA9
(December 1996)
Y
N (no mention of Isomalt GS)
Y
14
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