Colgate-Palmolive Company v Effem Foods Pty Ltd
[2005] APO 8
•3 March 2005
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 713346 in the name of COLGATE_PALMOLIVE COMPANY
Title: Cat Food Composition of Improved Palatability
Action: Opposition by EFFEM FOODS PTY LTD under Section 59 of the Patents Act 1990.
Decision: Issued 3 March 2005.
Abstract
The opposition fails on all grounds.
In particular:
The opponent failed to establish that enhanced palatability is inherent in the presence of the choline compounds of the invention and hence it was decided that an additional requirement of enhanced palatability is essential to the invention as explicitly recited in the claims.
The documents raised by the opponent did not recite the invention as claimed nor did they provide sufficient disclosure that a skilled worker would have found the invention obvious.
The opponent did not establish that the claims should be limited to the disclosure in the examples and the claims are therefore fairly based.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 713346 by Colgate-Palmolive Company and opposition thereto under Section 59 by Effem Foods Pty Ltd.
BACKGROUND
Patent application no. 713346 was filed under the Patent Cooperation Treaty on 27 January 1997 in the name of Colgate-Palmolive Company as International Application Number PCT/US 97/1263. The application claimed priority from US Application 08/594607 dated 2 February 1996. The application entered the National Phase 11 August 1998 and was advertised accepted on 2 December 1999. A notice of opposition was filed on 1 March 2000 by Effem Foods Pty Ltd ("the opponent"). All evidentiary stages were completed by 29 August 2003.
The opposition was heard in Melbourne on 18 March 2004. The applicant was represented by Mr Paul Kilborn, patent attorney of F.B. Rice & Co, Melbourne. The opponent was represented by Mr Christian Schieber, patent attorney, assisted by Mr Matthew Roper and Mr Bruce Dowsing of Watermark Patent and Trademark Attorneys, Sydney.
The hearing was reconvened in Canberra on 18 November 2004 to consider the relevance of document PAK-4 (see below). The applicant was represented by Mr Paul Kilborn, patent attorney, assisted by Mr Sean Klinkradt of F.B. Rice & Co, Melbourne. The opponent was represented by Mr Christian Schieber, patent attorney, assisted by Mr Adam Hyland, patent attorney and Ms Leanne Oitmaa, Technical Assistant of Watermark Patent and Trademark Attorneys, Sydney.
THE EVIDENCE
The evidence in support consists of statutory declarations by:
· Thomas Carl Heyhoe, consultant for Heyhoe & Associates, dated 1 March 2001 ("Heyhoe-1") and Exhibits TCH-1 to TCH-4.
· Kathernie Margaret Leviton, patent attorney of Watermark Patent and Trade Mark Attorneys, Sydney, dated 28 February 2001 ("Leviton-2") and Exhibit KML-1.
· Kathernie Margaret Leviton, patent attorney of Watermark Patent and Trade Mark Attorneys, Sydney, dated 1 March 2001 ("Leviton-1") and Exhibits KML-1 to KML-4.
The further evidence consists of statutory declarations by :
· Thomas Carl Heyhoe, consultant for Heyhoe & Associates, dated 1 August 2002
("Heyhoe-2") and Exhibit TCH-5.· Kathernie Margaret Leviton, patent attorney of Watermark Patent and Trade Mark Attorneys, Sydney, dated 2 August 2002 ("Leviton-3") and Exhibits KML-5 and KML-6.
The evidence in answer consists of statutory declarations by :
· Paul Anthony Kilborn, patent attorney for F.B. Rice & Co., Sydney, dated 31 August 2001 and Exhibits PAK-1 to PAK-4.
· Peter Board, consultant in food processing technology, dated 6 February 2003 and PB-1 and PB-2.
The evidence in reply consists of a statutory declaration by:
· Thomas Carl Heyhoe, consultant for Heyhoe & Associates, dated 19 August 2003
("Heyhoe-3").THE SPECIFICATION AND CLAIMS
The discovery on which this invention is based is that certain choline compounds, when present in a pet food composition in specified minimum amounts, improve the palatability of the food to the pet animal.
Although previously choline had been recognised as a nutritionally important vitamin and had been routinely added to pet foods, there was no recognition that its presence in the food composition would engender a palatability enhancing effect. The specification therefore discloses the surprising result that pet food compositions which include choline in certain specified minimum quantities, are found to be more palatable by pet animals.
Thus the invention broadly described in the specification is a pet food composition that includes a choline compound as a palatability enhancer. The range of choline compounds envisaged in the specification includes any ionic compound comprising choline or structural analog of choline in combination with a broad range of anions of varying valencies and stoichiometries.
The description further indicates that the choline compound is present either as an ingredient incorporated into the composition or as a coating on its surface. If the choline compound is present as an ingredient incorporated into a pet food composition, it is to be present in an amount of at least 0.25% by weight. If present as a coating on the surface of the composition, it is present "generally in an amount of about 0.06% by weight.."
The description is accompanied by three examples which demonstrate the invention via embodiments that disclose extruded cat food compositions. These compositions include a choline compound either incorporated into the food composition or present in a coating on its surface.
The specification ends with 68 claims. Of these, the independent claims of greatest interest are as follows:
1.A pet food composition having an enhanced palatability to pet animals comprising a nutritionally balanced food mass appropriate for a pet animal and incorporating a palatability enhancing amount of a choline compound of at least 0.25% by weight.
47.A pet food composition having an enhanced palatability to pet animals comprising a nutritious food mass and a palatability enhancing amount of a choline compound of at least 0.25% by weight, wherein the composition is surface coated with a coating containing the choline compound.
65.A method for enhancing the palatability of a nutritionally balanced food mass fed to a pet animal, which comprises adding a palatability enhancing amount of a choline compound of at least 0.25% by weight to said food mass and feeding the palatability enhanced food mass to the pet animal.
DECISION
Novelty
In determining the question of novelty, the test to be applied is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) 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 anticipation would, if the patent were valid, constitute an infringement."
Such an infringement of a claim occurs where "each and every one of the essential integers" of that claim has been taken. (Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391; Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at page 549)).
I note, however, that the disclosure must explicitly achieve the outcome to which the claim is directed. As stated in relation to prior publication in General Tyre & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457:
"To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to what the patentee claims to have invented....A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
There is no dispute as to the priority date of the application in suit, which is 2 February 1996. The opponent conceded at the hearing that it could not be established that the products identified in the evidence in relation to a prior use argument, had been available in Australia before the priority date. The opponent indicated that it did not wish to pursue the argument. Having reviewed the evidence on file, I agree that it is insufficient to support an argument of prior use.
The opponent also conceded at the hearing that D1 to D12 and D14-D15 all lack at least one feature of any of the independent claims of the specification in dispute and consequently only pursued D13 with regard to novelty:
D13: “Nutrient Requirements of Cats”; Revised Edition 1986; Committee on Animal Nutrition, Board of Agriculture, National Research Council; National Academy Press, Washington DC 1986
D13 is not an original publication but merely consolidates information from two other previously published research papers (PAK-4 and PAK-3) which were filed by the applicant in their evidence in answer:
(i) PAK-4: Schaeffer, M.C., et al.; “The Choline Requirement of the Growing Kitten in the Presence of Just Adequate Dietary Methionine”; Nutrition Research, Vol. 2, pp 289-299, 1982
(ii) PAK-3: Carvalho da Silva, A. et al.; “The Domestic Cat as Laboratory Animal for Experimental Nutrition Studies, VI Choline Deficiency; Journal of Nutrition, 67:537-546, 1959.
The opponent argued that on the basis of their disclosure in D13, PAK-4 and PAK-3 could be read as a single disclosure under Section 7(1)(b). I disagree. D13 is merely a summary document which provides a signpost and cannot serve as the basis for mosaicing the documents from which it draws its information.
D13 is a reference document which summarised the disclosures in PAK-3 and PAK-4 but adds no extra information over and above the original publications. In fact, because of the extra detail in PAK-4, it is actually the closest prior art document rather than D13. PAK-4 (and by reference, D13) discloses the use of choline as a nutritional additive and discloses pet food compositions containing:
(i)choline bitartrate in amounts of 0.0, 0.1, 0.21, 0.31, 0.42, 0.52 percent; and
(ii)choline chloride in amounts of 0.63 and 0.3 percent.
These compositions thus contain concentrations of a choline compound that fall within the range indicated in Claim 1. However, the citation does not state that the compositions achieve a palatability enhancing effect and makes no reference to choline’s use or activity as a palatability enhancing agent which is a feature of all the claims.
The opponent contended that such a statement is not necessary in the citation as the invention is fully defined by reference to the specific minimum amount of a choline compound present in the composition, i.e. greater than 0.25%. It argued that the phrases “having an enhanced palatability to pet animals” and “incorporating a palatability enhancing amount of a choline compound”, which appear in the claims, are merely stating the inherent result achieved by using the specified amount of a choline compound and place no real limitation on the scope of the claims.
However, neither the specification itself nor any of the evidence indicates that this enhancement is inherent in all compositions containing a choline compound at concentrations of 0.25% or greater. In fact, Mr Heyhoe indicates he expects that palatability will peak and then decline with higher choline concentration. This view was also propounded by Dr Jim Corbin in his discussion of palatability factors at page 52 of D12.
The applicant also submitted that other factors such as the additional components in the composition may also influence palatability and hence the mere presence of choline concentration in a pet food composition at a particular concentration does not necessarily mean that the composition is inherently palatable. Choline bitartrate, for example, could have a bitter taste which may need to be balanced by other components of the composition. It follows that the above phrases referring to enhanced palatability are essential because they limit the invention to compositions that not only contain at least 0.25% choline compound, but also exhibit an enhanced palatability as a result of the presence of the choline compound.
As a consequence, for a document to deprive the claims of novelty, it must therefore disclose the preparation of a composition that contains at least 0.25% of a choline compound and that has an enhanced palatability. The opponent argued that table 2 of PAK-4 shows that the presence of choline in amounts from zero to 0.3%, which was achieved by the addition of choline bitartrate, led to increased food consumption and weight gain among the cats tested. The opponent argued that this increase in food consumption indicates that the cats found the food compositions which included greater than 0.25% choline bitartrate more palatable.
However, Mr Heyhoe discusses at some length that the test for palatability enhancement is a “two pan” test whereby a preference for the food composition containing the additional component (in this case choline bitartrate) must be assessed in comparison to a food composition in which it is absent, but is otherwise nutritionally balanced. PAK-4 describes no such tests nor did the opponent perform such tests on the compositions specifically disclosed in PAK-4.
In fact, PAK-4 merely explores the nutritional effects of varying amounts of choline compounds and the increased food consumption and weight gain may have arisen from a nutritional imperative rather than being palatability driven. Thus, although it is possible that the food consumption and weight gain recorded in PAK-4 may have arisen as a result of increased palatability, neither PAK-4 itself nor any evidence filed by the opponent establishes that this is the case.
Consequently, on the evidence before me, PAK-4 does not provide “clear and unmistakeable directions” to prepare the compositions as claimed and none of the claims lack novelty based on this disclosure or the documents which reference this disclosure such as D13.
For the same reasons, although PAK-3 discloses pet food compositions containing choline hydrochloride at concentrations of 0.1% and 0.5%, the opponent has not demonstrated that these compositions have enhanced palatability and hence there is no basis for concluding that the current claims lack novelty in light of this citation.
As a result, I consider that the Claims 1 to 68 are novel in light of the prior art raised by the opponent.
Inventive Step
The test for inventive step was given by Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 (at page 286):
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
In addition, Section 7(3) restricts prior art documents considered in assessing inventive step to those which the person skilled in the art, before the priority date of the relevant claim, would be reasonably expected to have ascertained, understood and regarded as relevant and, where applicable, considered obvious to have combined.
In the present case, the problem which was addressed by the invention was to produce a pet food composition with improved palatability. PAK-4, PAK-3 and D13, considered above under novelty, do not discuss any palatability enhancing effect associated with the compositions disclosed, nor do they suggest that the presence of choline has any beneficial effect save that of nutrition. Consequently the PSA, if faced with these documents, would be required not only to conduct experiments to confirm that choline compounds could exhibit a palatability enhancing effect, but would also have to exercise inventive ingenuity in recognising that such experiments were worthy of being pursued. I therefore consider that the PSA would not regard these documents as relevant to the problem and therefore the claimed invention is not obvious in the light of them. I reach the same conclusion with respect to D2, D3, D5, D6, D14 and D15 which refer to choline compounds but give no suggestion that they would function to enhance palatability of pet food compositions in which they are present.
The opponent also raised a number of documents which refer to the problem of increasing palatability in pet food, i.e. D1, D4 and D7 to D12. However, none of these disclose choline as a potential palatability enhancer nor would it be obvious for the skilled worker to select choline as a palatability enhancer given these documents.
I therefore conclude that Claims 1 to 68 possess an inventive step in the light of the cited art.
Manner of New Manufacture
The opponent argued that the application is not for a manner of manufacture on the grounds that it fails to disclose a new manufacture. I consider that I have already discussed this matter under the head of inventive step and consequently I consider the claimed invention passes the threshold test for inventiveness.
Section 40
Fair Basis
The opponent argued that the claims are too broad and lack fair basis because they go beyond the disclosure in the examples. It is well established law, however, that the applicant is not required to provide exemplification of all the embodiments of the invention and hence the claims may encompass embodiments that are not specifically exemplified.
Furthermore the High Court of Australia recently stated in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58, that questions of fair basis of claims should be decided by comparing what is claimed with what the specification as a whole states to be the invention. Thus they should not be decided solely by reference to any one part of the specification, such as the examples.
In the present case the opponent raised several specific fair basis issues, all of which were based on limiting the claims to the examples, but provided no reasons why the examples should place such an unusually strict limitation upon the claims:
1. Claims to pet food compositions should be limited to cat food compositions;
The specification as a whole is directed to pet food compositions with a particular interest expressed in compositions for cats. This is explicitly stated as the field of the invention and discussed in the section that considers the prior art. Although the preferred embodiment is directed to cat food, the opponent has provided no convincing argument as to why this should be considered to be the broadest disclosure of the invention.
Consequently I consider the claims to be fairly based in respect of this feature.
2. Claims as currently directed to pet food compositions of any moisture content should be limited to dry formulations;
The specification provides no limitation on the moisture content of the compositions envisaged and the description specifically states at page 3, 22ff, that "The cat food compositions and methods of enhancing the palatability thereof to which the present invention is intended to apply generally relate to cat food compositions of any moisture content…" Neither the evidence filed by the opponent nor their submissions provide any substantive argument that a skilled addressee would understand the invention to be limited to dry pet foods.
Consequently I consider that the claims are fairly based in respect of this feature.
3. Claims to pet food compositions containing any choline compounds should be limited to choline chloride;
The specification explicitly defines the choline compounds suitable for the invention in a dictionary at page 3, line 6 ff:
"The term 'choline compound' as used herein means choline containing compounds including choline or structural analogs of choline in combination with various anions."
and then lists a range of exemplary anions of varying valencies and stoichiometries and provides several example compounds. Choline chloride is clearly identified as a preferred embodiment and there is no substantive argument as to why the invention should be limited to this embodiment.
Consequently I consider that the claims are fairly based in respect this feature.
4. Claims to pet food compositions containing a minimum of 0.25% of a choline compound should be limited to a minimum of 0.30% ;
The applicant clearly indicates that 0.30% is a preferred embodiment and has chosen to exemplify it. There is no requirement that the examples be directed to the lower and/or critical limits. Furthermore there is no evidence before me that challenges the appropriateness of 0.25% as a lower critical limit for inclusion of a choline compound to achieve palatability enhancement.
Consequently I consider that the claims are fairly based in respect this feature.
5. Claims to pet food compositions containing a minimum of 0.25% of a choline compound should be limited to a minimum of 0.18% ;
The opponent argued that the claims are not fairly based because the examples teach that the minimum amount of a choline compound required to achieve palatability enhancement is 0.18% rather than 0.25% as claimed, because the source of choline compounds used in the examples was only 60% pure.
However, the sentence of the description upon which the opponent based its argument simply states, in relation to example 1, that "The choline chloride was a commercial feed grade of choline chloride (60% purity)". There is no reference to this purity level in relation to calculating the amount of choline chloride present in the example compositions, nor is there any teaching that the concentration in the food composition is reduced due to the purity of the choline compound used.
Furthermore the specification explicitly states that “it is critical that at least about 0.25% of the choline compound is present” in the food composition and that when present in lesser amounts “little or no palatability enhancement is observed”. (see page 5)
This statement is clear on its face and the opponent has provided no convincing reason why the reader would depart from what has been explicitly stated. In contrast, the interpretation suggested by the opponent is a highly strained construction that departs from the teaching of the specification as a whole.
In my view the opponent has failed to make out this argument. I consider that the specification discloses that the minimum concentration of the choline compound required is 0.25% and this is consistent with the minimum recited in claims. I therefore consider that the claims are fairly based.
Full Description
The opponent also argued that the specification does not describe the invention fully because the examples refer to tests to determine the preference of an animal for a food composition but do not specify a period of time over which the animal's preference should be demonstrated. The tests to which the opponent referred are not integral to performing the invention described but were carried out purely to establish that the test compositions achieved the desired palatability effect. Furthermore the opponent offered no argument that the person skilled in the art would be unable to work the invention from what had been described and exemplified.
The opponent’s argument is therefore not that the specification does not describe the invention fully, but that the invention so described will not work. That is, it is a utility argument as defined in Tetra Molectric Ltd's Application 1977 RPC 290.
In addition I note that in respect of each of the specific matters discussed above under fair basis, the opponent’s arguments imply that it considers that the applicant has not established that the invention will work outside the narrow confines of the examples. This also appears to be utility argument.
The onus is on the opponent to establish that the invention does not work i.e. in this case that the compositions claimed do not produce a palatability enhancing effect. Although the ground of utility was not available at the time of the hearing, it has since become available as a result of amendments of the Act by the US Free Trade Agreement Implementation Act 2004. The opponent, however, has not sought to amend the statement of grounds and particulars under Reg 5.9A to include this ground nor to file additional evidence under this ground to support the contention. Furthermore there is nothing in the evidence already on file that directly addresses the utility of the compositions claimed.
Consequently, on the evidence before me I have no reason to believe that the full range of compositions claimed in the application will not achieve the palatability enhancing effect.
I find that the specification meets the requirements of section 40 and the opposition fails on these grounds.
CONCLUSION
I find that the opposition was unsuccessful on all grounds.
Unless the Commissioner is served with a notice of appeal within 28 days of the date of this decision, I direct that the application proceed to sealing.
COSTS
Costs normally follow the event. I see no reason to depart from this principle and I therefore award costs against the opponent.
Leigh R. Tristram
Delegate of the Commissioner of Patents
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