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Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company

Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company

Case [2008] APO 20 9 September 2008

Novelty

Inventive Step

Manner of Manufacture

Section 40 Issues

Patent Law

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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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company

Details

AGLC: Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company [2008] APO 20
Case: [2008] APO 20
Decision Date: 9 September 2008

CaseChat Overview and Summary

In the matter of an opposition to the sealing of a patent application filed by Wm. Wrigley Jr Company, the opposition was filed by Cadbury Schweppes Pty Ltd. The dispute centred on whether the patent application, which described a process for coating comestibles using hydrogenated isomaltulose mixture, was novel and involved an inventive step. The application was found to be for a manner of manufacture and did not contain any section 40 problems. The opponent failed to establish any of their grounds of opposition, and therefore, none of the claims were found to be clearly invalid. The decision directed the application to proceed to sealing after 30 days from the date of the decision. The applicant was awarded costs according to Schedule 8 up until the parties were advised of the allowance of the amendment, and the opponent was awarded costs from that date forward.

Orders