Fonterra Co-operative Group Limited and Kraft Foods Global Brands LLC v Leprino Foods Company
[2015] APO 22
•25 May 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Fonterra Co-operative Group Limited and Kraft Foods Global Brands LLC v Leprino Foods Company [2015] APO 22
Patent Applications: 2005240120 and 2010212424
Title:Cheese and methods of making such cheese
Patent Applicant: Leprino Foods Company
Opponent 1: Fonterra Co-operative Group Limited
Opponent 2: Kraft Foods Global Brands LLC
Delegate: Dr N.R. Madsen
Decision Date: 25 May 2015
Hearing Date: 3rd and 4th March 2015, in Canberra
Catchwords: PATENTS – section 59 – opposition to grant of a patent – claims not clear because term “hot” is of indeterminate scope– claims fairly based – specification fully descriptive and discloses a best method – claims are useful – claims are a manner of manufacture – claims are novel – claims not inventive in view of US 6,120,809 – it would have been obvious to add salt to the heated cheese mass and to add a heated slurry – opposition successful – opportunity to amend
Representation: Patent applicant: Craig Smith of counsel assisted by James Cherry of Freehills Patents Attorneys
Opponent 1: Hamish Bevan of counsel assisted by Kate McHaffie and Andrew Baker, also assisted by Denis Tuffery of AJ Park Intellectual Property
Opponent 2: Andrew Fox of counsel assisted by Jenny Park and Danny Gelman of Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: 2005240120 and 2010212424
Title:Cheese and methods of making such cheese
Patent Applicant: Leprino Foods Company
Date of Decision: 25 May 2015
DECISION
The oppositions to 2005241120 and 2010212424 are successful.
Claims 1, 6-30 and 32-35 of application 2005240120 lack clarity. Claims 9-12 and 15 of application 2010212424 lack clarity. Claims 1-27 and 31-35 of 2005240120 lack an inventive step.
I allow the applicant two (2) months from the date of this decision to propose amendments to overcome these deficiencies.
I award costs according to Schedule 8 against Leprino Foods Company.
REASONS FOR DECISION
Background
This matter relates to patent applications 2005240120 and 2010212424 in the name of Leprino Foods Company (the applicant), filed on 3 May 2005 and 18 August 2010 respectively. Application 2005240120 (‘120) was filed as an application under the Patent Cooperation Treaty while application 2010212424 (‘424) is a divisional application of ‘120. The applications claim priority from US 60/568029 which was filed on 3 May 2004.
The request for examination for both of these applications was filed prior to 15 April 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent applications. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. I also note that any subsequent reference to the Patents Act relates to the Patents Act 1990, prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
Application ‘120 was advertised as accepted on 22 April 2010 while application ‘424 was similarly advertised on 26 May 2011. Notices of opposition to grant of a patent were filed in relation to ‘120 on 22 July 2010 by Fonterra Co-operative Group Limited (opponent 1) and Kraft Foods Global Brands LLC (opponent 2), and similarly for ‘424 on 26 August 2011.
The claims of application ‘120 were twice amended after the filing of the notice of opposition. These amendments were allowed on 5 December 2012 and 1 April 2014 respectively. The claims of application ‘424 were also twice amended after the filing of the notice of opposition. These amendments were allowed on 10 July 2013 and 1 April 2014 respectively.
At the hearing, both opponents filed amended statements of grounds and particulars updating various particulars to align with the submissions made at the hearing. The applicant raised no objection to these amendments. As a result, I allowed these amendments at the hearing.
Due to the similarities between the claims of the two applications and the common issues raised by the opponents, I will address both applications in this decision. In this regard, the majority of submissions were made with direct regard to the claims of ‘120 with similar applicability to the claims of ‘424. To the extent that this is the case I will make it clear in my decision.
The evidence
Extensive evidence was filed by the parties in regard to both applications. To the extent that particular declarations and exhibits are relevant, I will refer to them specifically in my reasoning.
I also note that in making their submissions against application ‘120, the opponents both relied on evidence from the opposition to ‘424, this evidence not being filed with respect to ‘120. To the extent that cross referencing of evidence occurred in the hearing, I am satisfied that there is basis for considering such evidence as further evidence under regulation 5.10. In this case the applicant raised no objection to the documents being considered as further evidence and in fact, agreed that further evidence should be allowed in the present circumstances. The documents had already been considered by both parties prior to the hearing, and both parties have had an opportunity and indeed made representations about them. I consider the criteria for serving further evidence under regulation 5.10(4) and 5.10(5) have been met and thus permit the cross referencing of evidence between the two applications to the extent exercised in the submissions.
Onus
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should 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" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
Grounds of Opposition
The opponents collectively identified and particularised the following grounds of opposition in their statements of grounds and particulars:
·Lack of clarity of the claims
·Lack of fair basis in the specification
·Lack of full description and a failure to define a best method
·Lack of novelty
·Lack of inventive step
·Absence of a manner of manufacture
·Lack of utility
The Specification
The specifications of ‘120 and ‘424 differ only in terms of their claims. The identical descriptions (hereafter referred to as “the description”) relate to the field of cheese manufacture and begin by suggesting that recently there has been an increase in the demand for cheeses with widely differing performance characteristics. This is driven by factors such as an increased variety of foods including cheese, desire for improved nutritional content, and different cooking environments. Particularly, the description points to cheeses used in pizzas as requiring manufacture with a wide range of performance characteristics. At [0010] and [0011], the description then summarises a range of problems that the embodiments described within aim to address.
“There are a variety of challenges to providing cheeses that have a composition which satisfies the desired performance characteristics and nutritional qualities. For instance, it can be difficult to obtain the desired concentration level of some ingredients in a cheese. Another problem is developing a process that activates the latent functional properties of certain ingredients. Another problem is that many methods for preparing cheese involve the loss of significant quantities of some cheese components during processing. This can occur, for instance, when such cheeses undergo the heating and stretching process of the pasta filata process. Often the heating is conducted in heated water, which can remove significant amounts of cheese ingredients.
In view of the high demand for cheese and the foregoing shortcomings associated with some existing methods for preparing such cheeses with the desired performance characteristics, there thus remains a need for additional methods for preparing cheeses of these types.”
The description then provides a summary of the invention which broadly discusses various methods. These methods involve initially providing a slurry that comprises one or more ingredients that one seeks to incorporate into the final cheese product and then combining the slurry with a cheese precursor forming an admixture. In this regard the cheese precursor may include a cheese curd ingredient or a mixture of such ingredients, or a heated mass of cheese (e.g. a heated mass of cheese curd). Also added to the cheese precursor may be a dry powder ingredient. It is also noted that the slurry may be heated.
Various systems are also provided for manufacturing the cheese product. Paragraph [0018] briefly summarises basic components of such systems which include:
“…a slurry preparation system that includes (i) a blender adapted to blend a liquid and one or more generally recognized as safe (GRAS) ingredients together to form a slurry, and (ii) a cooker that is operatively disposed to receive the slurry from the blender and adapted to heat the slurry to a temperature of about 90 °F to about 300 °F. These systems also include a first mixer operatively disposed to receive the slurry from the slurry preparation system and adapted to mix the slurry with a heated mass of cheese curd to form an admixture. A final processing system is also included which is operatively disposed to receive the admixture and adapted to form a final cheese product.”
A number of definitions are also provided in the description. Of relevance to this decision are definitions of a soft or firm/semi-hard cheese, and the term cheese precursor. At [0031] and [0032], a soft or firm/semi-hard cheese is said to generally include:
“… cheeses that have a percentage moisture on a fat free basis (MFFB) of about 54% or more, by weight. The term includes firm/semi-hard cheeses that have a MFFB, for example, of about 54% to about 80%, by wt., and cheeses with a MFFB, for example, of about 58% to about 75%, by wt. The term may also include soft cheeses with a MFFB of greater than about 60%, by wt. The term encompasses a variety of well-known cheeses including, but not limited to, Colby, Havarti, Monterey Jack, Gorgonzola, Gouda, Cheshire and Muenster, which are examples of "firm/semi-hard cheeses." Also included in the term are popular "soft cheeses" such as Mozzarella, cream cheese, and cottage cheese.”
…
“The term includes, for instance, cheeses made by a process in which a cheese curd is heated and kneaded to improve the stretchability or stringiness of the final cheese, provided the cheese falls within the MFFB parameters set above. This process and related processes are sometimes referred to as a pasta filata process of manufacturing. Cheeses made by this process are known under a variety of names, including mozzarella, pasta filata, provolone, Mexican style, scamorze, and pizza cheese.”
At [0035] a cheese precursor is said to broadly refer to:
“…any ingredient that is used to prepare a cheese curd, mixtures of such ingredients and subsequent processed forms of the cheese curd other than the final cheese product. Examples of cheese precursors that are ingredients include, but are not limited to, unpasteurized milk (sometimes referred to in the industry as "raw milk"), the growth medium and bacteria used in the cheese making process (sometimes referred to in the industry as "starter"), and cream. Mixtures of such ingredients are also included. One specific example of such mixtures is "vat liquid", which is a term used to refer to a combination of pasteurized milk, starter and cream. The term also includes coagulum, cheese curd, and processed cheese curd (e.g., curd that has been heated and/or stretched to form a homogeneous mass of cheese).”
While a range of methods are discussed and exemplified, the claims specifically relate to cheeses made using the pasta filata process, which involves the heating and kneading of a cheese curd to form a heated mass of cheese curd (also referred to simply as a heated mass of cheese). In this regard the description adds at [0070] that for ease of reference, cheese curd that has undergone such a heating and kneading process is simply referred to herein as a "heated cheese mass”. According to [0071], combining a slurry with the heated cheese mass is useful because the slurry can be fully worked into the heated cheese mass with minimal loss of ingredients.
In addition to adding a slurry, some methods may involve the addition of other ingredients at points along the cheese preparation process. Such ingredients can be added to the cheese precursors listed above and can be liquids or powders ([0072]). Once all ingredients are combined, the admixture is further processed to obtain a cheese product. An example of such processing includes further heating and kneading in the pasta filata process. The final mixture may be compressed and moulded using conventional techniques to form a cheese product ([0074]). Other options for final processing include forming pieces of cheese which are packaged; packaging and freezing the cheese; extruding and then cutting the cheese; and cooling or refrigeration of the heated cheese ([0075]-[0077]).
I also note that some described methods utilise a heated slurry. Once the heated slurry and heated cheese mass have been formed, they are mixed together to form an admixture ([0088]). According to the description at [0085], this heating can be useful in increasing the amount of ingredients that can be incorporated into the final product and in unmasking the functionality of some ingredients.
The claims
The specification of ‘120 ends with 35 claims, one of which being independent as follows:
1. A method of preparing a cheese product comprising:
(a) providing a slurry that comprises one or more ingredients;
(b) adding a dry powder ingredient to a heated cheese mass, wherein the heated cheese mass is formed during the heating, kneading and stretching of cheese curd;
( c) combining the slurry while hot with the heated cheese mass to form an admixture; and(d) processing the admixture to form the cheese product.
The specification of ‘424 ends with 15 claims, two of which being independent as follows:
1. A soft or firm/semi-hard cheese manufacturing system, comprising:
(a) a slurry preparation system comprising (i) a blender adapted to blend a liquid and one or more generally recognized as safe (GRAS) ingredients together to form a slurry, and (ii) a cooker that is operatively disposed to receive the slurry from the blender and adapted to heat the slurry to a temperature of about 90 °F to about 300 °F;
(b) a first mixer operatively disposed to receive the slurry from the slurry preparation system and adapted to combine the slurry while hot with a heated mass of soft or firm/semi-hard cheese to form an admixture;(c) a cooker/kneader operatively disposed to heat and knead cheese curd into the heated mass of soft or firm/semi-hard cheese and provide the heated
mass of soft or firm/semi-hard cheese to the first mixer;
(d) an ingredient dispenser in communication with the first mixer, and operative to supply a dry powder ingredient to the heated mass of soft or firm/semi-hard cheese in the first mixer; and
(e) a final processing system operatively disposed to receive the admixture and adapted to form a final cheese product.
9. A method for preparing a soft or firm/semi-hard cheese, comprising:
(a) providing a cheese manufacturing system that comprises
(i) a slurry preparation system comprising a blender, and a cooker
operatively disposed to receive a slurry from the blender;
(ii) a cooker/kneader operatively disposed to heat and knead cheese curd into the heated mass of soft or firm/semi-hard cheese and provide the heated mass of soft or firm/semi-hard cheese to a first mixer;
(iii) the first mixer operatively disposed to receive the slurry from the slurry preparation system and the heated mass of soft or firm/semi-hard cheese from the cooker/kneader and form an admixture;
(iv) an ingredient dispenser in communication with the first mixer, and operative to supply a dry powder ingredient to the heated mass of soft or firm/semi-hard cheese in the first mixer; and
(v) a final processing system operatively disposed to receive the admixture and adapted to form a final cheese product;
(b) introducing a liquid and one or more ingredients into the blender;
(c) blending the liquid and the one or more ingredients together to form the slurry;
(d) transporting the slurry from the blender to the cooker and cooking the slurry to a temperature of about 90 °F to about 300 °F;
(e) adding the dry powder ingredient from the ingredient dispenser to the heated mass of soft or firm/semi-hard cheese in the first mixer;
(f) moving the slurry from the cooker to the mixer and combining the slurry while hot with the heated mass of soft or firm/semi-hard cheese to form the admixture; and
(g) transferring the admixture to the final processing system and processing the admixture to form the soft or firm/semi-hard cheese product.
The claims are reproduced in their entirety in an annex to this decision.
Construction and Subsection 40(3): Clarity
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
Also relevant to the application of the rules of construction are the comments made by Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Further, section 40(3) does not mandate the use of precise and absolute terms in the claims. As noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) IPR 331 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
There are a number of important construction issues raised by both opponents. A number of these relate to the claims of both ‘120 and ‘424. I will first address these issues by way of specific reference to claim 1 of ‘120.
Claim 1 of ‘120
The feature of “a heated cheese mass, wherein the heated cheese mass is formed during the heating, kneading and stretching of cheese curd”
In regard to this feature, there was no dispute that the reference to heating, kneading and stretching of cheese curd, limited the claim to the use of a pasta filata process. I also refer to [0070] of the description which discusses that for ease of reference, cheese curd that has undergone such a heating and kneading process is simply referred to herein as a "heated cheese mass”. Opponent 1 submitted that there is no definition of a temperature range for the heated cheese mass. However, I consider that by defining the heated cheese mass in the manner of [0070], it is not necessary that the cheese mass retain a particular temperature. A heated cheese mass is simply a mass that has undergone the pasta filata process.
Remaining in the claim is the feature whereby the heated cheese mass is formed “during” the pasta filata process. The construction put forward by opponent 1 in regard to the word “during” relates to the fact that the “heated cheese mass” takes on its character in the course of the specified activities. In this regard I consider it clear the heated cheese mass is not limited to a final product which has completed the pasta filata process. It is simply a cheese product that may be an intermediate product that has undergone and assumed properties created by the pasta filata process. Alternatively the description at [0035] and [0064] describes the result of pasta filata action as also being “processed cheese curd (curd that has been heated and/or stretched to form a homogenous mass of cheese)” or “a heated mass of cheese curd”. I do not consider any of these terms inconsistent as these all refer to a mass that is the product of some heating, kneading and stretching.
In discussing the nature of “a heated cheese mass” at the hearing, issue was raised in relation to claim 6 and its effect upon the construction of claim 1. Claim 6 simply further characterises claim 1 with the feature wherein the heated cheese mass is a heated mass of soft or firm/semi hard cheese. There was discussion that this claim may be redundant as [0070] states that:
“In some methods, the slurry is mixed with a heated mass of soft or firm/semi-hard cheese that has undergone the heating and kneading process that is associated with the pasta filata process. For ease of reference, cheese curd that has undergone such a heating and kneading process is simply referred to herein as a "heated cheese mass."
I again make reference to paragraph [0032] of the description which points out that the term “soft or firm/semi-hard” includes cheeses made using pasta filata processes such as mozzarella. In this regard, claim 6 has no effect of further limiting claim 1. As a pasta filata cheese is categorised by its nature as a soft or firm/semi-hard cheese, and claim 1 is clearly limited to a pasta filata cheese product it follows that claim 6 is clearly redundant in its dependency to any of claims 1-5. The fact that the claim is redundant in itself is not a matter that gives rise to any lack of clarity.
For these reasons, and the fact that the claims of ‘424 make reference to heating and kneading, it appears appropriate to proceed on the basis that the heated cheese mass of claim 1 of ‘120 is equivalent to the heated mass of soft or firm/semi-hard cheese defined in the claims of ‘424.
The feature of a “slurry”
Opponent 1 provides definitions of a slurry as follows:
Its ordinary English meaning is:
"Thin semi-liquid mud or cement. Now also, any semi-liquid mixture of a pulverized solid or fine particles with a liquid (usu. water); spec. (a) a residue of water and fine particles of coal left at pithead washing plants; (b) farmyard manure in fluid form."
Shorter Oxford English Dictionary on Historical Principles (6"' ed)
(Oxford University Press, Oxford, 2007) at 2880.
"1. a suspension of a solid in a liquid, especially a thin paste containing cement. 2. a semifluid mixture of clay or the like and water."
Macquarie Dictionary (4th ed) (The Macquarie Library Pty Ltd,
Macquarie University, 2005) at 1552.
These definitions are useful however proper construction of the term requires consideration of its context in the specification as a whole. In this regard both opponents point to similar parts of the description which encompass the formation of a slurry as a suspension of solid in liquid and also as an emulsion of two liquids. Relevantly, [0038] states:
“The slurry typically contains a liquid (e.g., water, milk and/or cream) and one or more ingredients (added either as a liquid or a dry powder, for example) that are selected in accord with the final cheese product that is desired.”
I also note that [0128] makes the following reference to what may constitute a slurry.
“The slurries utilized to prepare the soft or firm/semi-hard cheeses that are provided typically are water-based compositions. But some slurries alternatively or in addition include another liquids such as milk or cream. The water in some compositions typically accounts for from about 5 - 95 % of the slurry by weight. Slurries may also include emulsions of water and oil and/or fat.”
The parties seem to agree that an “emulsion” does not fit within the classical definition of a “slurry”. However with particular regard to the paragraphs identified above, I consider it clear that the specification confirms that the term should not be construed as being limited to a particular classical definition of a suspension of a solid in a liquid. In other words, a reading of the specification as a whole provides for a limited extension to the definition of a slurry. This construction is confirmed by expert evidence from each of the parties. On this issue experts stated:
“The term “slurry”, as it is used in the accepted specification, therefore appears to encompass a slurry formed of only liquid ingredients in addition to a slurry formed by mixing solid and liquid ingredients.” (Evidence in support filed by opponent 2 for ‘120 from Professor Barry Law, Law #1 of ‘120 at [5.15])
…
“…it would appear that the term will include emulsions for example oil and cream in water” and “…the term “slurry” has been used in the specification as being used in a sense that includes … mixtures of water and insoluble components…” (Evidence in support filed by opponent 1 for ‘120 from Jeffrey James Mayes, Mayes #2 of ‘120 at [46] and [50])
…
“…[the dictionary definitions of a slurry provided in Mayes #2] describe a mixture of a liquid with an insoluble substance such as a solid or another liquid (i.e, an emulsion).” (Evidence in answer filed by applicant for ‘120 from Professor Donald J McMahon, McMahon #1 of ‘120 at [4.7])
In this regard it appears appropriate to more broadly consider a slurry to be a mixture having a semi-liquid or viscous consistency. Such an understanding is well articulated in the submissions of opponent 1 which state:
“An "emulsion" is a mixture of two immiscible liquids (e.g., oil and water) in which one is dispersed throughout the other in small droplets: see Oxford (at 824) and Macquarie (at 548). While there may be room for debate as to whether an "emulsion" is a "slurry” as those terms are used in ordinary parlance, the specification teaches the person skilled in the art that, in the context of the patent, an "emulsion" is a "slurry".
Opponent 1 continues suggesting a broader construction to that defined above. The submissions of opponent 1 rely on an assertion that the description includes pure solutions within the scope of the understanding of a slurry. In this sense, there are a range of potential ingredients identified in the description (many of which are soluble) in addition to a broad range of water content (between 5-95% by weight). Additionally the opponent points to [0097] wherein it is noted that the concentration of non-fat diary milk can range from “about 0.5 to 95%”. On this basis it is submitted that depending upon the concentration of a solute, the resulting mixture could range from a pure solution to a paste, suggesting that at any point, the specification teaches such a mixture to be a slurry.
In response the applicant submitted that:
“The reasoning that is then advanced is based on paragraph [0097] of the specification. The error in that reasoning is the unstated (and unsupported) assumption that the slurry must solely include dairy solid.
…
If an ingredient (or even multiple ingredients) is selected at a level at which it is fully dissolved in the water, then it will not be a slurry and is not within the contemplation of the Application and its claims. There is nothing in the Applications that suggests otherwise.”
I am inclined to agree with the applicant. There is clear basis for considering a slurry to be either (i) formed by mixing solid and liquid ingredients, or (ii) formed of only liquid ingredients. I see no basis to consider for example, that an aqueous solution, whereby an added solid is completely dissolved, should be considered as a slurry. In regard to the use of such ingredients in the present invention, it is consistent with the description that the inclusion of such an ingredient may simply be an addition to the already formed slurry.
A subsequent submission of opponent 1 is that if the term imports “a level of insolubility so as to give the liquid mixture a particular consistency or viscosity (whatever that may be), then the claim is of indeterminate scope”. In this regard the opponent submits that there is no workable standard to the intended use.
I consider that the definitions identified by opponent 1 and discussed earlier provide a general standard that to be a slurry, a composition can be a thin semi-liquid or paste, or a suspension of a solid in a liquid such that there are at least two “phases” present, e.g oil and water, or water and solid. In this context it appears that both emulsions and dispersions may be considered as slurries. The definitions provided do not appear to require a particular level of insolubility/viscosity as defining a slurry. Given this information, I am satisfied that a person skilled in the art is not faced with any lack of workability to the term “slurry”.
The feature of combining the slurry while “hot”…
Both opponents submit that the claim is not clear in regards to the temperatures that would fall within the range of “hot”. While it is plain that a person generally understands what “hot” means, there is nothing within the claim itself that assists in determining the boundaries of the term. Of most assistance are claims 2-5 wherein the slurry is defined as having a temperature of between about 90-300°F. In this regard, “hot” in claim 1 must be defined as including some temperature range below about 90°F.
Opponent 1 pointed out that while “hot” necessarily requires that the slurry has obtained a degree of heat, there is no use of the term “hot” in the description. Instead, and in accordance with claims 2-5, described is the heating of the slurry in different optional temperature ranges as follows:
a) "cooking the slurry, typically to about 90-300°F, 90-293°F or 100-250°F (38-121°C)" in [0054];
b) "the slurry is typically sheared ... at a temperature of about 90 to 293°F (15 (sic) to 82°C)" in [0057];
c) "Homogenization is usually conducted at a temperature of about 90-293°F (32-145°C) or 100-250°F (38-121°C)” in [0058];
d) "... the slurry that is mixed with the cheese precursor generally has a temperature of about 100-180°F (37-83°C), or about 120-165°F (48-74°C)" in [0059].
There is no further information contained within the description to elucidate what may be the lower bound to the term “hot”.
Responding, the applicant generally submits that:
“The word ‘hot’ is plainly able to be given a sensible meaning in its context in the specification. The issue is around the precise determination of its boundaries. If it were necessary to do so, a court would be able to weigh up the expert evidence and determine whether either the prior art or a defendant’s process fell within the scope of a claim. No such issue arises in relation to the prior art advanced by the opponents.”
In regards to a particular construction, the applicant submitted that term “hot” is consistent with something that has had heat applied. In other words the applicant suggests that “hot” may be above ambient temperature, this being consistent with hot meaning above room temperature.
Importantly I note that there is no particular basis in the description for the construction forwarded by the applicant. The description simply refers to the concept of heating a slurry and provides optional temperature ranges for this heating. Given this, I turn to a definition of the term (The Macquarie Dictionary, 6th ed. 2013, from which defines “hot” as:
“1. having or communicating heat; having a high temperature: a hot stove”
I do not consider that the definition encompasses “hot” as simply being a temperature above room temperature. Common usage of the term incorporates a degree of difference from some reference temperature as defining what may constitute hot. The degree of difference that would constitute something as being hot will depend on the characteristics of the elements being described. For example, it is unreasonable to suggest that a person would consider a stove to be hot at 25°C (77°F). Similarly, I see no basis to consider a slurry as being hot simply if it has had heat applied thus raising its temperature to some small degree above room temperature. In other words, common understanding is that something will be “warm” before it is “hot”. There must be some physical characteristic of the elements involved that enables a person to decide when something may be considered as “hot”.
The description does not discuss physical characteristics of any slurries that would enable a person skilled in the art to determine the lower bounds of when a slurry may be considered hot. In this regard there is no information present to provide the necessary workable standard as required by Flexible Steel Lacing Company v Beltreco Ltd. More specifically, the person skilled in the art is left to wonder whether for example, hot is about 75°F, 80°F, 84.5°F, 89.2°F etc…, without any information available to determine even an imprecise boundary.
Therefore I find that claim 1 of ‘120 lacks clarity. Dependent claims 6-30 and 32-35 also fail to provide for a workable temperature range for the “hot” slurry. As a result these claims also lack clarity. Where necessary, for the purpose of the remainder of this decision I will simply construe the term broadly in accordance with the submissions of the applicant such that the term is consistent with something that has had heat applied.
Claim 1 of ‘424
The features of a “slurry” and “while hot”
Both opponents made similar submissions as those discussed above in relation to claim 1 of ‘120 with respect to the features of a “slurry” and “while hot”. Firstly, there is no reason to adopt a different construction to the scope of “slurry” than that of claim 1 of ‘120.
Claim 1 of ‘424 also refers to combining the slurry while hot with a heated mass of soft or firm/semi-hard cheese. Particularly, the claim is directed to a system comprising various devices such as a slurry preparation system (blender/cooker), first mixer, cooker/kneader, ingredient dispenser and final processing system. In regard to the addition of hot slurry, a first mixer is operatively disposed to receive the slurry from the slurry preparation system and is adapted to combine the slurry while hot with a heated mass of soft or firm/semi-hard cheese. I see no reason to consider that adaptation of the first mixer to combine the slurry “while hot” with the cheese renders any lack of clarity upon the features of the first mixer. The claim is simply directed to a system without the presence of a “hot slurry”. The first mixer need only be adapted to combine in a temperature range which while unclear, is not so unclear such that the person skilled in the art would be unsure of the properties of the first mixer.
Timing in respect of the addition of a dry powder ingredient
Opponent 2 submitted that the claim was not clear in regard to when the dry powder ingredient is added. More specifically the opponent submitted that:
“[i]n certain methods, [the optional] ingredients [e.g. a dry powder ingredient] are added to the heated cheese mass, the processed slurry (e.g., after the slurry has been heated homogenized, sheared and/or the water content adjusted) or the admixture formed once the heated slurry and heated cheese mass are mixed together.” This also suggests that, as the Twice Amended claims specify that the dry powder ingredient is added to the “heated mass of soft or firm/semi-hard cheese”, it is intended that the dry powder ingredient is added before the “admixture” is formed, i.e. before or simultaneously with the combining of the “slurry” and “heated mass of soft or firm/semi-hard cheese”. This however is not clear from the wording of the claims.
There is nothing in the wording of the claim to specify that the “ingredient dispenser” is adapted so that it may only add the “dry powder ingredient” prior to addition of the “slurry” and the formation of the “admixture”.”
I first note that the claim is not directed to a method, but instead the claim is a product claim. The ingredient dispenser as claimed is in communication with the first mixer, and operative to supply a dry powder ingredient to the heated mass of soft or firm/semi-hard cheese in the first mixer. While the ingredient dispenser must be operative to supply dry powder ingredient to the heated mass of soft or firm/semi-hard cheese, I do not consider that the ingredient dispenser as claimed is limited to this functionality only. It is consistent with the description that dry powder ingredient may be added at any time including in the presence of a slurry or even to the admixture. In other words, the ingredient dispenser is to be construed as being operative to supply dry powder ingredient to the heated mass of soft or firm/semi-hard cheese, whereby the ingredient dispenser may also be operative to supply dry powder ingredient at other stages including from addition of the slurry to formation of an admixture. Therefore, I find the claim clear in this regard.
The feature of an “admixture”
Opponent 2 also submitted that the claim was not clear in regard to the extent the “dry powder ingredient” is included in the “admixture”. More specifically the opponent submitted that it is unclear if the dry powder ingredient is incorporated together with the slurry and the heated mass of soft or firm/semi-hard cheese in the admixture. For the same reasons discussed above in regard to the “timing issue” there is no lack of clarity in this instance. While the claim requires an ingredient dispenser operative to supply a dry powder ingredient to the heated mass of soft or firm/semi-hard cheese, the ingredient dispenser may also supply dry powder ingredient at other stages.
In accordance with the discussion above I find claim 1 of ‘424, and dependent claims 2-8 and 14 clear.
Claim 9 of ‘424
The features of a “slurry” and “while hot”
As with claim 1, both opponents made similar submissions as those discussed above in relation to claim 1 of ‘120 with respect to the features of a “slurry” and “while hot”. As discussed above regarding claim 1 of ‘424, there is no reason to adopt a different construction to the scope of “slurry” than that of claim 1 of ‘120.
Claim 9 of ‘424 is directed towards a method of preparing a soft or firm/semi-hard cheese comprising a system analogous to that of claim 1 of ‘424. The method of claim 9 is further characterised by including method steps which involve a soft or firm/semi-hard cheese. In this regard the following features are claimed:
(b) introducing a liquid and one or more ingredients into the blender;
(c) blending the liquid and the one or more ingredients together to form the slurry;
(d) transporting the slurry from the blender to the cooker and cooking the slurry to a temperature of about 90 °F to about 300 °F;
(e) adding the dry powder ingredient from the ingredient dispenser to the heated mass of soft or firm/semi-hard cheese in the first mixer;
(f) moving the slurry from the cooker to the mixer and combining the slurry while hot with the heated mass of soft or firm/semi-hard cheese to form the admixture; and
(g) transferring the admixture to the final processing system and processing the admixture to form the soft or firm/semi-hard cheese product.
Importantly, the claim includes the step of combining a slurry “while hot” with the heated mass of soft or firm/semi-hard cheese. For the same reasons as those discussed in relation to claim 1 of ‘120, I find the claim unclear. Dependent claims 10-12 and 15 also fail to provide for a workable temperature range for the “hot” slurry and are therefore, also unclear. As discussed above, I will simply construe the term broadly in accordance with the submissions of the applicant such that the term is consistent with something that has had heat applied.
Subsection 40(3): Fair basis
The tests accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99 as being relevant to the consideration of fair basis are:
…whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
…whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge (1977) 180 CLR 236].
Both opponents provided submissions in regard to a lack of fair basis of claims. In relation to the claims of ‘120, and similarly applicable to ‘424, opponent 1 submitted that:
“The specification covers a broad array of various methods, covering a multitude of possible combinations of ingredients and approaches to the manufacture of a cheese product. Nowhere in the specification is there a disclosure that supports the particular invention as claimed.”
Similarly, opponent 2 submitted that:
“…the description of the invention involves a collection of general statements regarding the steps and ingredients used in a multitude of methods. There is no clear disclosure in the body of the Twice Amended specification of the method defined by the Twice Amended claims.
For the Applicant to find in the Twice Amended specification a disclosure that will provide fair basing for the Twice Amended claims, the Applicant must be able to point to the substantive disclosure of the invention in those terms within the Twice Amended specification. However, it is unable to do so.”
Analogous objection was taken by opponent 2 to claims of ‘424 where it was asserted that:
“…the description of the invention involves a collection of general statements regarding the steps and ingredients used in a multitude of methods, and equipment used in a vast array of different systems engineered to carry out the described methods. There is no clear disclosure in the body of the Divisional Specification of the system or method defined by the Twice Amended claims.
To the extent that Figure 4B discloses ‘the system’ it is to be noted that it includes additional features which are taught as optional (e.g. ingredient dispenser 251 – see [0134]). Figure 4B does not, accordingly, provide sufficient fair basis for the Twice Amended claims.”
It is apparent that the allegation of a lack of fair basis against the independent claims is equally applicable to the dependent claims.
Responding, the applicant submitted that there is disclosure of all of the claimed features within the description and drawings. In this regard preparation of a slurry comprised of one or more ingredients is disclosed at [0038]. The addition of a slurry to a heated cheese mass that has undergone the pasta filata process is disclosed at [0070]. Heating of a slurry is disclosed at a range of locations including [0015], [0017] and [0043]. Further, combination of a heated or “hot” slurry with a heated cheese mass to form an admixture is disclosed at [0059] and [0085]. Addition of a dry powder ingredient to the heated cheese mass is disclosed at [0073], while paragraphs such as [0074]-[0077] disclose finally processing the admixture to form a cheese product. Additionally, figure 4B and the corresponding text of [0134] and [0138] disclose the devices arranged in a manner corresponding to the system claimed in ‘424.
The applicant also points out that that the method of claim 1 is a subset of the method described in [0013] in that the heated cheese mass of claim 1 falls within the broader definition of a cheese precursor (see paragraphs 13 and 14 above). The method described in [0013] is as follows:
a) Providing a slurry that comprises one or more ingredients
b) Adding a dry powder ingredient to a cheese precursor
c) Combining the slurry with the cheese precursor to form an admixture; and
d) Processing the admixture to form the cheese product
In regard to the claimed method, I agree with the opponents to the extent that there is no single disclosure of the method in its entirety. Instead, what is disclosed is a general method exemplified in a number of examples, whereby a range of optional features are discussed throughout the description. For example, it is the case that a cheese precursor may be a heated mass of cheese, and that a heated or hot slurry may be combined with the heated cheese mass to form an admixture. Similar can be said of the system features wherein [0134] describes the ingredient dispenser of figure 4B as optional.
In satisfying subsection 40(3), there does not appear to be any requirement that a description disclose the claimed invention is such a way as suggested by the opponents. Using the wording of opponent 2, the tests for fair basis do not require it be possible to point to a “substantive disclosure”. Disclosing a general method and apparatus, and supplementing this disclosure with description of optional features that may be the subject of that method or apparatus falls well within the ambit of a real and reasonable disclosure. In other words, it is simply the case that what is claimed is a narrowed subset of what is generally described. With this view it is not the case that the claimed matter travels beyond the subject matter of the invention described in the specification.
Therefore, I find all claims of both ‘120 and ‘424 fairly based.
Paragraph 40(2)(a): Full description, best method
The test for sufficiency of description is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25]:
"… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"
The specification, in addition to fully describing the invention, must include the best method of performing the invention. In American Cyanamid Company v Ethicon Limited [1979] RPC 215 at page 269, it was stated:
"The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention."
Consequently, even if a manner of performing an invention is self-evident, applicants are nevertheless required to set out the best method of performing the invention known to them. The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification (Rescare Ltd. v Anaesthetic Supplies Pty. Ltd., 25 IPR 119). If the applicant identifies a better method at a time subsequent to filing, there is no obligation to amend the specification to include that method. In addition, if the specification does not include the best method, it can be amended to include the best method (as known to the applicant at the time of filing), at least until the time of grant (Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224).
While not discussed in any detail at the hearing, opponent 2’s summary of oral submissions raise an allegation of a lack of full description. As I understand this allegation, opponent 2 makes similar submissions to those discussed above in relation to fair basis. Here the opponent submits that the description:
“… broadly describes various methods and systems for making cheese and cheese products which include various steps, systems components and ingredients which the specification indicates are optional. The Twice Amended claims seek to re-characterise the invention as a system and method of preparing pasta filata cheeses comprising various steps and ingredients which are now not optional.”
…
“Thus, there is clearly a significant and substantive disconformity between the invention described in the Twice Amended specification the invention defined by the Twice Amended claims”
I consider it is clear that the allegation of a lack of full description in this context must fail. According to the test described in Kimberly-Clark, the disclosure need only enable the addressee of the specification to produce something within each claim. No information is presented by the opponent to suggest that the skilled addressee would be unable to perform the invention as claimed. Via the description of broad embodiments in addition description of the various “optional” features, the person skilled in the art is clearly equipped to perform the claimed invention.
Opponent 2 also raised an allegation of a failure to disclose the best method known to the application in relation to both applications. Here the opponent points to evidence filed by the applicant in the form of a declaration filed as further evidence in ‘120 and as evidence in answer in ‘424, from Dr Richard Kevin Merrill (Merrill #1). Dr Merrill is an inventor of the claimed inventions. In this declaration, Dr Merrill provides a commentary on how the alleged invention was devised and also discusses implementation of the claimed invention. The declaration states at [7] that the invention arose as an improvement to the applicant’s dry mixer technology (US patent 5902625). Summarising dry mixer technology Dr Merrill states at [10]:
“The dry powder is added to the pasta filata cheese (rather than to the vat of cheese ingredients) for efficiency reasons. We found that if dry powder is added earlier in the process much of the dry powder ingredient will be lost when the curd is separated from the whey. These extra solids in the whey will clog the filters in a manufacturing plant, leading the (sic) increased maintenance and greater cost of production”.
The declaration then discusses limits to the dry mixer technology being a “dry mix balling problem”. Here dry mix material does not mix homogeneously with the cheese product, forming balls which would harden during cooling, and in some cases damage dicer blades (Merrill #1 at [11]). Discussed in the declaration are some initial attempts to solve this problem ([12]-[13]) before at [15], the declaration discusses the claimed invention:
“As claimed, the process involves adding the ingredients that might normally be added in dry powder form in a slurry form. Importantly, that slurry is heated. Heating of the slurry reduces the food safety risks of adding dry powder ingredients at ambient temperature or less. The heat applied to ingredients in a conventional cheese making process is best described as gentle. Our slurries are much more aggressively heated which also means that certain ingredients can be activated which wouldn’t ordinarily be activated in a conventional cheese making process.”
In describing the claimed process, the declaration adds at [19] that:
“However not all dry powder ingredients can be introduced to the cheese making process in liquid form. Because the slurries undergo heat and shear process, ingredients that are sensitive to heat and shear cannot be introduced in liquid slurry form. Examples include some starches, dairy ingredients, vitamins, and nutritional components. Additionally, certain ingredients might react negatively with slurry ingredients resulting in poor functionality of the slurry ingredients.”
The opponent asserts that the particular cited evidence demonstrates that the applicant has failed to describe the best method as required by s40(2)(a). In this sense it is alleged that the applicant knew of a best method, which included particular ingredients and temperatures, at the time of filing the complete specifications. Responding the applicant submitted that:
“The conceptual error in Kraft’s submission is that it ignores the requirement to establish this in respect of the invention as claimed. So, for, example, in respect of the invention as claimed in claim 1, Kraft advances no evidence to show that there was some better method known to the patent applicant at the time of filing the complete specification that has not been disclosed in the specification.”
…
“There is no evidence referenced in the outline to show that Leprino was aware, as at the date of filing its complete specification, of an undisclosed “best method” of performing any of the inventions claimed.”
I am inclined to agree with the applicant. Particularly, the statements of the Dr Merrill declaration that are relevant to a “best method” of operation of the invention (see [15] and [19]), are statements of fact that do little to demonstrate what was known by the applicant at the time of filing the complete specifications beyond that which was actually filed. As noted in Apotex Pty Ltd v Les Laboratoires Servier [2013] FCA 1426 at [169] “the patentee’s subjective state of mind must be proved by a person seeking revocation of a patent”. The evidence of the applicant’s expert Dr Merrill does not demonstrate the applicant’s state of mind at filing. Hence I am satisfied that the applicant has not failed to disclose the best method of performance.
Therefore I find that the specifications of ‘120 and ‘424 are fully descriptive and disclose the best method of performance.
Novelty
For the purposes subsection 7(1) of the Patents 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 prior art information within the prior art base. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
Regarding the requirement of a clear and unmistakable direction, Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire case which states at pages 485-486:
"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 be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated…
To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee…”
I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
Similarly, the Full Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at 181 said (citing Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40):
“If the prior art discloses some but not all integers of a claimed patent to a product, such as a combination, there is anticipation if the skilled addressee would add the missing information as a matter of course and without the application of inventive ingenuity or undue experimentation.”
The following documents were pressed by the opponents in their submissions. Particularly, opponent 1 raised both of the following documents while opponent 2 only argued a lack of novelty with respect to the second document.
· US 5902625 A (Barz et al.) 11 May 1999
· US 6120809 A (Rhodes) 19 September 2000
Barz
According to opponent 1, Barz describes the preparation of mozzarella type soft or semi-soft fibrous cheese in a manner disclosing all of the features claimed in both ‘120 and ‘424. Analogously to the claimed invention, Barz uses the pasta filata process which comprises the heating, kneading and stretching of curd until it is a homogeneous mass. Relevantly, Barz employs the well-known steps of the pasta filata process in a manner incorporating an additional step h), between well-known steps e) and f) as follows:
e) “heating, kneading, and stretching the cheese curd until it is a homogeneous, fibrous mass of heated, unripened cheese;
f) forming the heated cheese into a shape
…
h) … However, in the process of the present invention, between steps (e) and (f), there is thoroughly mixed into the heated cheese a minor amount of at least one GRAS food additive selected from the group consisting of emulsifying agents, gums, stabilizers, colorants, dairy solids, cheese powders, flavors, non-dairy protein isolates, salt (sodium chloride) and native or modified food starches. (GRAS stands for Generally Recognized As Safe for use as a food additive.)”
The document then describes various ways of adding the GRAS additive to the mass of heated cheese including in dry form, as a solution, or as a dispersion in water. For example, an emulsifying agent can be:
“… incorporated into the heated cheese in a dry form, but the preferred method of addition is first to make an aqueous solution of the additive, typically in the range of about 5 to 50 wt. % solids, e.g., about 20 to 40%, and then add that to the heated cheese.” (see column 3 lines 23-27)
Other examples include the addition of food additives in the following manner:
“It is preferable to add a gum or stabilizer in the dry form, rather than pre-mixed with water.” (column 3, lines 36-37)
…
“Preferably the colorant is added as a solution or dispersion in water”. (column 4 lines 13-14)
…
“Preferably [cheese powder] is added in dry form to the heated cheese”. (column 4 lines 35-36)
…
“… preferably the flavor is added to the heated cheese in the form of an aqueous solution. Typically the solution will contain about 5 to 50 weight percent of the flavor, e.g., about 20 to 40 percent”. (column 5 lines 1- 4)
The food additive is mixed into the heated cheese “after the cheese has undergone some kneading and stretching, but before it is formed into a shape and cooled in brine” (column 6, lines 21-24). The resultant additive carrying cheese mass is then processed. In terms of the equipment used to process the ingredients Barz also teaches:
“The heating, kneading and stretching of the cheese curd is typically done in a piece of equipment called a mixer/cooker. In the prior art the heated, fibrous mass has then been extruded into a desired shape and deposited into a tank of cold brine. In the present process, separate mixing equipment can be installed between the mixer/cooker and the extruder at the brine tank, to mix one or more additives into the cheese before cooling. (See column 6, lines 32-39)
…
... fermented cheese curd is heated in mixer/cooker 1, while being kneaded and stretched to produce molten cheese. The resulting molten cheese is extruded through a transfer tube 2 to form an extruded ribbon of molten cheese. Slitters 3 form grooves in the extruded ribbon of molten cheese. The grooved, extruded ribbon is fed into an additional mixer 6, such as, e.g., a jacketed mixer having overlapping twin screw augers. Disposed between the slitters 3 and the additional mixer 6 is an inlet chamber 5 that enables liquid/dry ingredient applicators 4 to add one or more desired ingredients. e.g ., dry starch from one and an aqueous solution of an emulsifying agent from the other into the ribbon grooves formed in the molten cheese by the slitters 3. The added ingredients are thoroughly mixed into the molten cheese by the additional mixer 6.” (See Figure 7 and column 9, lines 52-65)
Claim 1 of ‘120
In accordance with the discussion of Barz above, it is clear that there is disclosure of a method of preparing a cheese product comprising adding a dry powder ingredient to a heated cheese mass, wherein the heated cheese mass is a result of a pasta filata process. Also disclosed is processing of an admixture to form a cheese product. The applicant argues that there is no clear and unmistakeable direction to the features of: adding/combining a slurry: adding a dry powder ingredient and a slurry; and adding/combining a hot slurry.
Adding/combining a slurry
Opponent 1 argues that the feature of the addition of a slurry is disclosed by way of the addition of a solution or a dispersion of no particular viscosity. Also relevant are the submissions made by opponent 2 in regard to the same feature. Here, opponent 2 points to the examples such as: the addition of annatto and turmeric in the form of a solution or dispersion in water (column 4 lines 6-14): the addition of flavor in an aqueous solution containing about 5 to 50 weight percent of the flavor (column 5 lines 1-4); and the addition of an emulsifying agent in the form of an aqueous solution containing 5 to 50 weight percent solids (column 3 lines 23-27).
Responding, the applicant submitted that:
“A solution is not a slurry … Where there is a reference in Barz to a dispersion (such as the colorant), in each case Barz presents this as an alternative. That is, the instruction could be followed in two separate ways, one of which clearly does not involve a slurry.”
As I have already discussed above, I do not consider a solution with completely dissolved solute to be within the scope of the term “slurry” as it is to be construed in the present applications. Further, there is no particular evidence to suggest that the aqueous solutions identified in Barz can be characterised as being saturated such that the solute is not fully dissolved. It appears as if the disclosure relevant to the claimed feature of a slurry is the addition for example, of a colorant such as annatto and turmeric in the form of a dispersion.
The direction that a colorant is added preferably as a solution or dispersion in water is essentially a direction that there are two particular ways to add a colorant. In other words, a colorant can be added as a solution. Alternatively a colorant can be added as a dispersion. In this regard the direction appears to merely identify two options as “preferred” or “advantageous” ways of adding a colorant. I consider that information to the effect that a colorant can be added as a dispersion amounts to a clear direction to do so.
Therefore, I find that Barz discloses the addition of a slurry by way of a dispersion of colorant.
Adding a dry powder ingredient and a slurry
The applicant also argues that there is no clear and unmistakeable direction to add a dry ingredient and a slurry.
As identified above, after the formation of a homogeneous heated mass of unripened cheese but before final processing, added and mixed into the mass of cheese is a minor amount of at least one additive. I make particular reference to claim 39 of Barz in which anatto and tumeric are added as a solution or dispersion (slurry) alone or in combination with one or more food of the following food additives: gums, stabilizers, colorants, dairy solids, cheese powders, flavors, non-dairy protein isolates, and native or modified food starches. A number of these classifications of additives are preferably added in dry form. For example, cheese powder is preferably added in dry form to the heated cheese (column 4 lines 35-36), as is food starch (column 5 lines 40-41) and non-dairy protein isolates such as soy powder and wheat germ (column 5 lines 5-18).
While there is a range of additives and combinations thereof which can be added to the identified slurry, there is a clear direction to simply add a second additive, which can clearly be a dry powder ingredient. In following this direction, the skilled address will inevitably produce something which anticipates the feature of the addition of a dry powder and a slurry. Thus, I consider that there is a clear and unmistakable direction to the skilled addressee to add a slurry in the form of a dispersion, and dry powder ingredients to the heated cheese mass.
Adding/combining a hot slurry
Opponent 1 submitted that:
“…food additives in liquid form were introduced when they were hot or in such a way that permitted the temperature of the heated cheese to be maintained.”
100.The opponent points to a number of examples in Barz that discuss the addition of liquid ingredients and also discuss the temperature of the cheese mass being maintained at various temperatures such as 110, 120 and 130°F during mixing. The opponent also adds that:
“The person skilled in the art would know why a slurry that was added to a hot cheese mass would be hot.”
101.Firstly, Barz teaches nothing more than the maintenance of the cheese temperature upon addition of ingredients, particularly an aqueous solution. This does not amount to a clear and unmistakable direction to heat the slurry. Instead, it appears that the cheese mass temperature is maintained by direct heating of the cheese mass. This is supported by the fact that 1) there is an absence of any direction in Barz to heat the liquid; 2) The concentration levels of additives provided in the examples and discussed in the document are in minor amounts (eg. approximately 1% by weight additive in a 50% aqueous solution) meaning heating may not be needed; and 3) Examples discuss the cheese being held at a temperature or kept warm (column 10 line 24, column 12 lines 3 and 44), whereby it is also said that cheese will be at a temperature of no more than about 160°F, or in the range of about 110 to 160°F when the additive is added to it (column 6 lines 24-27). The fact that a person skilled in the art would know why addition of a heated slurry would be performed does not assist in establishing a disclosure. Therefore, I find that there is no disclosure in Barz of adding/combining a hot slurry.
Summary
102.In accordance with the discussion above I find claim 1 of ‘120 novel in view of Barz. There is no disclosure of the combination of a hot slurry. Dependent claims 2-35 add further features to those defined in claim 1 and are therefore also novel.
Claim 1 of ‘424
103.Opponent 1 also asserted that the invention defined by claim 1 of ‘424 is not novel in view of Barz. Such a submission was entirely made by way of reference to evidence filed as evidence in reply in the form of a declaration by Wayne Donald Austin (Austin #3 of ‘424) at [154], in which Mr Austin identifies his understanding of disclosure in Barz of the relevant features. The submission reflected in the evidence makes particular reference to figure 7 and associated text produced above at paragraph 88.
104.Reviewing the relevant parts of the document it is clear that disclosed is a soft or firm/semi-hard cheese manufacturing system (abstract). Further features that are disclosed by Barz include:
· A first mixer 6, operatively disposed to receive liquid/slurry (via inlet chamber 5) from the liquid ingredient dispenser (4) and adapted to combine liquid/slurry while hot (the mixer is jacketed to provide heating, column 9 lines 57-59) with a heated mass of soft or firm/semi-hard cheese (from the mixer/cooker 1) to form an admixture
· A cooker/kneader (mixer/cooker 1) operatively disposed to heat and knead cheese curd into the heated mass of soft or firm/semi-hard cheese and provide the heated mass of soft or firm/semi-hard cheese to the first mixer (via 2, 3, 5)
· An ingredient dispenser 4 in communication (via inlet chamber 5) with the first mixer (6) and operative to supply a dry powder ingredient to the heated mass of soft or firm/semi-hard cheese in the first mixer (via inlet chamber 5)
· A final processing system operatively disposed to receive the admixture and adapted to form a final cheese product (items 7, 8, 11-16)
105.However, I consider it clear that there is no disclosure of a slurry preparation system comprising a blender and cooker as claimed. The opponent simply refers to ingredient applicators 4 submitting that blending and cooking is implied by way of the liquid ingredient applicator adding a solution or dispersion. On this point Austin #3 of ‘424 at [157] and [158] states:
“The ‘625 patent describes many ingredients are to be added as a dispersion or solution. By inference there must then be a device which provides the solution or dispersion. That must be a blender.”
…
“The hot solution must have been produced in a blender having a heater or else first produced in a blender and then transferred to a heater.”
106.Firstly, I have already determined that there is no basis to consider that the slurry of Barz is heated or hot. Thus there is no basis to consider that a heater or cooker is present in the manner claimed. Further, I see no disclosure or evidence to support the inference that a blender must be used to prepare a dispersion. Therefore, there is no basis for considering a blender is either implicitly invoked as part of the liquid applicator 4 or is an implicit additional component to the system of figure 7, simply because of the use of solution or dispersion.
107.Therefore claim 1 of ‘424 is novel in view of Barz. Claims 2-8 and 14 add further features to those defined in claim 1 and are therefore also novel.
Claim 9 of ‘424
108.A similar assertion as that raised against claim 1 of ‘424 was raised in regard to claim 9. As with claim 1 there is no disclosure in Barz of a slurry preparation system comprising a blender and cooker as claimed. Furthermore, for reasons the same as those discussed in relation to claim 1 of ‘120, there is no disclosure of a method involving combining a slurry while hot with the heated mass of soft or firm/semi-hard cheese.
109.Therefore claim 9 of ‘424 is novel in view of Barz. Claims 10-13 and 15 add further features to those defined in claim 9 and are therefore also novel.
Rhodes
110.Both opponents raise Rhodes as depriving the claimed invention of novelty. Rhodes describes systems and methods for making cheese with enhanced characteristics such as increased yield and flavour and exemplifies production of pizza style cheese of the type claimed. In general, cheese curds are provided to an infuser which is connected to a vacuum means for developing negative pressure within the infuser. An enhancing agent is fed into the infuser and the curds and enhancing agent are tumbled to form a mixture (column 11 lines 13-22). Other agents can be added at various stages of the processing of the cheese curd within the infuser. The infuser is also used to develop cheese curds into a homogeneous mass of kneaded and stretched pasta filata cheese. This is done by applying a vacuum, further heating the cheese curd, and tumbling/rotation of the infuser (column 24 lines 1-11). After formation the pasta filata cheese is processed. This processing may include extrusion, cooling and packaging (column 24 lines 26-32).
Claim 1 of ‘120
111.The opponents point to examples 1, 2 and 4 of Rhodes to demonstrate a lack of novelty of the claimed invention. Each of these examples involve the addition of a lecithin phospholipid mixture (identified in example 5 Rhodes) which the opponents both argue, constitute a slurry:
“Prior to the addition of the curd to the infuser, a liposome was created using a special lecithin Epikuron135P that is a phospholipid compound. The liposomes were produced by adding 12 pounds of Epikuron 135P to 30 pounds of water and injecting steam while the Scott Turbo mixer was running at full speed. The final weight of the liposome mixture was 48 pounds.” (column 37 lines 47-53)
112.At the hearing the applicant submitted that:
“…we accept that there is actually a likelihood that [the lecithin phospholipid mixture] is an emulsion…”
113.On this basis, and given the construction explained earlier in regard to the term slurry, I will proceed on the basis that the lecithin phospholipid mixture is a slurry comprising one or more ingredients.
Example 1
114.Example 1 describes a method for producing enhanced yield mozzarella cheese. As a starting point mozzarella curd is prepared by cutting and cooking and after removal of whey, is packed into drums (column 23 lines 20-30). Before addition of the curd to the infuser:
“55 pounds of 88% protein Whey Protein Isolate was added to 130 pounds of water and the mixture was pasteurized and denatured by raising the temperature to 160° F, and holding for 15 minutes… The mixture was subjected to high shear via the Scott Turbo Mixer at high speed.” (column 23 lines 39-46)
115.The whey protein mixture is added to the infuser and infused with the curd while the temperature is maintained at 115°F such that the curd may continue to ripen (column 23 lines 44-56). Warm water is circulated through the jacket and flights of the infuser to maintain the temperature of the curd. The formation of a pasta filata style cheese then proceeds as follows (column 23 line 62 – column 24 line 30):
“The cheese curd was allowed to ripen for an additional 23 minutes to a pH of 5.43 and then the water temperature was raised to 155° F, and circulated through the jacket and the flights. The RPM of the infuser was increased to 8.
The door was opened and 18 pounds of fine salt was added to the infuser. The door was closed and the vacuum pump was energized and a vacuum of 26 inches was developed. When the cheese curd temperature reached 128° F., the cheese began to form fibrous strands that stretched from the bottom to the top on each of the internal flights. At this point, an additional 40 pounds of hot water (140° F.) and 15 pounds of the lecithin phospholipid mixture as prepared in Example 5 was added to the infuser. The cheese then started to form a homogenous mass of kneaded and stretched "pasta filata" cheese. The RPM of the infuser was lowered to 6. The entire curd formed into a single mass of pasta filata Mozzarella at 130° F. There was distinct fibrous strands stretching from the bottom to the top of the infuser.”
…
“The mozzarella cheese mass was unloaded from the infuser … then extruded and cooled…”
116.It is apparent in the example that three additives are added to the cheese curd in the infuser being: a whey protein isolate mixture at 110°F; salt; and a lecithin phospholipid mixture. I will address each of these additives in the context of them being a heated slurry/dry powder ingredient, and the stage at which they are added to the cheese curd.
Whey Protein Isolate
117.The whey protein isolate of example 1 is added to the infuser at about 110°F (column 23 line 49) and mixed with cheese curd that has been previously cut and cooked. At this stage, no steps have been performed to convert the cheese curd into a heated mass of cheese. In other words, it does not appear that the infuser has begun operating such that the cheese curd has been heated, kneaded and stretched. It is not until the temperature of the curd reaches 128°F that fibrous stands form within the infuser, and not until after the addition of the lecithin phospholipid mixture that the cheese starts to form a homogenous mass of kneaded and stretched “pasta filata” cheese. In this regard it is clear that the whey protein isolate, to the extent that it may be a hot slurry, is not combined with a heated cheese mass. Instead it appears that the whey protein isolate is being added to cut curd that is yet to be subject to the heating, kneading and stretching of the pasta filata process.
Salt
118.In regard to the addition of salt, there is no dispute that the 18 pounds added to the infuser constitutes the addition of a dry powder ingredient. It is in dispute however, that the dry powder ingredient is added to a heated cheese mass, wherein the heated cheese mass is formed during the heating, kneading and stretching of cheese curd.
119.Here, opponent 1 submitted that Rhodes discloses the addition of dry powder ingredients in the form of salt to cheese curds being formed into a mass during the pasta filata process. The opponent also cited relevant evidence being that of Wayne Donald Austin filed as evidence in response to further evidence for application ‘120 (Austin #3 of ‘120) at paragraph 52(3) which stated:
“… at this time product is being heated by hot water and although not an actual mass, some heating, kneading and stretching would be occurring.”
120.Similarly opponent 2 asserts that salt is added to a heated cheese mass. In this regard, the opponent points to evidence of Professor Barry Law filed in response to further evidence for application ‘120 (Law #3 of ‘120) at paragraphs 6.8-6.9. In relation to the stage where the cheese curd was allowed to ripen, the water temperature was raised to 155° F and circulated through the jacket and the flights, and the RPM of the infuser was increased to 8, Law # 3 of ‘120 stated:
“In my opinion, the curd at this point is a “heated cheese mass, wherein the heated cheese mass is formed during the heating, kneading and stretching of cheese curd”, as that term is used in step (b) of the Twice Amended claims and the amended specification.”
121.I note that the statements of Professor Law and Mr Austin are not supported by any additional evidence of the particular state of the cheese curd. For example, there is no further evidence to suggest whether the curd has ceased to be a volume of cut curd and has formed into a mass that is the product of heating, kneading and stretching, or that the pasta filata process has begun. As pointed out by the applicant, it is only the jacket water temperature that is increased with an increase in RPM of the infuser. The salt is added at this point however there is no specification of a delay prior to the addition of salt. As identified in the description of ‘120 and ‘424, heating, kneading and stretching processes undertaken to form a heated cheese mass are generally performed in the range between 120°F and 180°F (see [0064]). The temperature that it appears the salt is added is likely in the vicinity of 115°F. Furthermore, I note that it is not until the temperature of the curd reaches 128°F that fibrous stands form within the infuser. As a result, it is not clear that heating kneading and stretching has occurred at the point of the addition of salt.
185.Therefore, I consider it clear as a matter of routine, that the person skilled in the art would add the lecithin mixture while hot in the expectation that it would achieve the desired result. The general method of Rhodes is clearly directly to improving yield in pasta filata process while also providing a flexible method of cheese production.
186.In regard to the addition of a dry powder ingredient the most relevant disclosure in Rhodes is example 1 whereby salt is added prior to the formation of a heated mass of cheese. Rhodes discusses little in regard to the reasons for the particular timing of the addition of salt before the formation of fibrous strands which form at 128°. In general, column 15 line 17 to column 16 lines 3 discusses the infusion of whey protein isolate into cheese curds by heating and turning in the presence of a vacuum. As the cheese curds and whey mixture is tumbling, salt may be added to provide the proper taste. Once infiltration of the why protein is complete the curds are removed from the infuser and formed into the desired form. In this regard it simply appears that the teaching of Rhodes is that salt is added and mixed into cheese curd yet to undergo pasta filata processes.
187.To the extent that it may be obvious to add salt after the formation of the heated mass of cheese (e.g. after fibrous strands begin to form at 128°F) opponent 2 pointed to relevant evidence being that of Professor Law filed as evidence in reply in ‘424 (Law #5 of ‘424). At [7.9] Professor Law stated:
“In my opinion, a food technologist would alternatively seek to add salt at the same time as the lecithin phospholipid mixture to reduce the number of times that the lid of the infuser would need to be opened and release the vacuum. In my opinion, the food technologist would have made this modification as a matter of course and without the application of inventive ingenuity or undue experimentation. “
188.Relevantly, opponent 1 provided evidence as to the optional salting of a heated and stretched curd. For example, opponent 1 provided evidence in the form of evidence in support for ‘120 by Jeffrey James Mayes (Mayes #1 of ‘120) which states at [27]-[28]:
“Heating and stretching the curd. The curd is then heated to a minimum of about 55°C and stretched, generally in a hot liquid (water or whey). Salt may be added to the hot liquid prior to the curd to prevent salt washing out of pre salted curd.
Optional salting of heated and stretched curd. Salt (and presumably other additives) may be worked into the heated and stretched curd before the curd is moulded into its final shape. The salt is added as dry crystals and may contain other additives as required.”
189.Similarly, Law #3 of ‘120 at [2.5.2] and [2.5.3] pointed to exhibits BAL-26 and BAL-27 filed with Law #2 of ‘120. These exhibits are extracts from text books entitled “Technology of Cheesemaking”, edited by Barry Law (1999) and “The Technology of Dairy Products”, edited by Ralph Early (1998). The text books discuss the production of pasta filata cheese which involves plasticisation in hot water or whey. In particular, BAL-26 states at 7.2.6.2 that:
“Salt can be incorporated into pizza cheese by direct addition to the curd immediately before stretching, during stretching, or between stretching and moulding.
190.Similarly, BAL-27 adds in regard to production line manufacture of pasta filata cheese on page 115:
“...curd is milled into chips and transported by screw conveyor into a cooker-stretcher where it is plasticised. It is then dry salted and extruded into a moulding machine”.
191.I consider that the evidence cited by the opponents makes it clear that in pasta filata cheese manufacturing processes, it is common to add salt in addition to other dry additives at various stages. This may be before any stretching has occurred (as in Rhodes), during stretching, or between stretching and moulding.
192.In regard to the problem addressed by the claimed invention, it is clear that Rhodes provides for the reduction of ingredient loss during preparation of pasta filata cheese as additives such as salt and the lecithin phospholipid mixture are added to cheese curd after whey is removed and by the addition of whey protein isolate as an enhancing agent. I also consider that the evidence establishes that in seeking to provide for a flexible manufacturing method, the person skilled in the art would consider it a matter of routine to try adding salt and other dry powder ingredients during the stretching process (i.e. to a heated mass of cheese which is formed as the temperature reaches 128°F as discussed in Rhodes). The evidence demonstrates that the person skilled in the art would be well aware of the option of adding salt and other dry powder ingredients at stages from beginning with curds and whey, to ending with a final product of pasta filata cheese. While Rhodes only teaches addition before a heated mass of cheese is formed, it does not disclose any information that would appear to teach against the general principle of adding salt (or another dry ingredient) at any stage. In this regard I am satisfied that the person skilled in the art would be directly led to adding salt and/or other dry powder ingredients before or at the same time as the lecithin phospholipid mixture to arrive at method of pasta filata cheese production that addresses the identified problem.
193.In accordance with the discussion above, I find claim 1 of ‘120 lacks an inventive step in view of Rhodes. Redundant claim 6 and omnibus claim 23 do not appear to add any further limitation to claim 1 and thus also lack an inventive step. Further features are disclosed in Rhodes and therefore also lack an inventive step. These include features of claims 7-14, 21, 22 and 34. In this regard:
· The heated mass of cheese is prepared by heating a mass of cheese curd in the absence of exogenous water, i.e. in the jacketed infuser (claim 7)
· The lecithin phospholipid slurry does not contain cheese curd or one or more analogue cheese ingredients (claims 8 and 9)
· The slurry contains lecithin which is a fat, emulsifier and a foodstuff (claims 10 and 11)
· The slurry is heated by injecting steam directly into the Scott Turbon mixer where it is subject to high shear and homogenisation. Its water content is inherently between 5-95 wt % being about 75% as calculated by professor Law and noted at [6.22] of Law #3 of ’120 (claims 12-14)
· The dry powder ingredient is salt which is also a preservative and foodstuff (claims 21 and 22)
· Processing the admixture comprises further heating, kneading and stretching of the admixture to form a pasta filata product as ingredients are all added before a homogenous mass of cheese is formed via the pasta filata process as per column 23 line 66 to column 24 line 12 (claim 34)
194.Claims 2-5 are limited to particular ranges of the hot slurry temperature. The narrowest range of temperature claimed is about 120-165°F. For similar reasons as claim 1, I consider a temperature of the slurry of at least about 120°F would have been arrived at by the person skilled in the art as a matter of routine. Such a temperature is well below the temperature of the steam which is injected during the preparation of the lecithin mixture. As above, the person skilled in the art would be directly led to add the lecithin mixture immediately after its preparation. I accept Professor Law’s evidence at [6.22] which suggests that given the disclosure of Rhodes, it would have been routine to add the slurry at a temperature at least similar to the heated curd at 128°F.
195.Claim 15 adds the feature of heating the slurry by an indirect heat source to which Professor Law in Law #1 of ‘120 states at [5.47] and [5.48] that heating by direct (via steam injection) and indirect (via a water jacket or plate heater) are standard conventional techniques that were well known prior to the priority date. On this basis I am satisfied that heating of the lecithin mixture directly by steam is routinely substitutable by an indirect heating technique, thereby rendering the claim obvious.
196.Regarding claims 16 and 24, I have already discussed in relation to claim 1 that it would have been obvious to add dry ingredients before or at the same time as hot slurry ingredients. Claim 25 appends to claim 24 and adds the feature whereby the admixture is processed into the pasta filata cheese by steps that include heating, kneading, and stretching the admixture, this feature being disclosed as per the discussion with respect to claim 34 above. Claim 31 also appends to claim 24 and further defines a hot slurry temperature of about 90-300°F. This feature lacks does not add an inventive step for the reasons provided in respect to claims 2-5.
197.Claims 17-20 include specification of the moisture content and the milkfat content, and processing of the admixture comprising steps such as cooling the admixture in a brine solution, comminuting into small particles, packaging and freezing before moisture loss within about 5 minutes to 48 hours after cooling. The evidence of Professor Law in Law #1 of ‘120 supports an assertion that all of the listed processing steps are matters of routine in the final processing of mozzarella style cheeses ([5.50] and [5.51]; see also Mayes #1 of ‘120 at [31] and [32]). Similar reasoning applies to claims 26 and 27. The moisture of the cheese product on a fat-free basis (MFFB) of between 54 and 80 weight percent appears to be a typical characteristic of pasta filata style cheese (Law #1 of ‘120 at [5.52]-[5.53] and description at [0031] and [0034]) arrived at by routine modification of moisture levels during production. Similar can be said of a combined moisture and milkfat content of at least about 70% (description at [0034]). Hence these claims are obvious in view of Rhodes.
198.Claims 28-30 add features to claim 24 wherein the hot slurry is an aqueous mixture that includes non-fat dry milk, starch or delactose permeate. Firstly I consider it clear that the evidence establishes that non-fat dry milk, starch and delactose permeate were commonly used in preparing cheese products including pasta filata cheese, before the priority date (Law #1 of ‘120 at [6.4]; Law #2 of ’120 at [2.43]; Merrill #1 at [9]; Austin #1 of ‘120 at [195]). However, the evidence fails to establish that it was routine to include these particular ingredients in a hot slurry formed as an aqueous mixture and add this to a heated cheese mass. Furthermore, with the problem in mind it appears that the person skilled in the art would be presented with a range of options for the addition of these ingredients to the teaching of Rhodes which may include adding before the formation of a heated cheese mass, addition without heat, adding in dry form, or adding in the form of a solution. As a result I do not consider that the person skilled in the art would have been directly led as a matter of course to modify the slurry of Rhodes to arrive at the invention defined by claims 28-30.
199.Claims 32 and 33 add features to claim 24 relating to high shear conditions placed upon the slurry and homogenisation of the slurry. I have already determined these features are disclosed in Rhodes as discussed above in regard to claims 12-14. Therefore, these features do not add anything inventive.
200.Claim 35 adds the feature to claim 1 whereby processing of the admixture includes the steps of cooling the mixture in a brine solution and shaping the admixture into a ribbon of pasta filata cheese product. Evidence of Professor Law in Law #2 of ‘120 at [2.54] supports the assertion that it is merely a matter of routine to process a pasta filata cheese product in such a manner.
201.Therefore I find claims 1-27 and 31-35 of ‘120 lack an inventive step in view of Rhodes, while the features added by claims 28-30 involve an inventive step in view of Rhodes.
Claims of ‘424
202.As discussed in regard to novelty, there is no disclosure of the operative disposition of the various devices described in Rhodes as required by claim 1 of ‘424. It appears that the document simply describes a collection of devices that perform their functions independently of each other. There is also no disclosure of a separate blender and cooker, and separate mixer and cooker/kneader. Furthermore, the document describes the use of an unconventional method of heating and kneading involving a jacketed infuser shaped like a cement mixer performing tasks of both mixing and heating and kneading. The claim requires these devices operatively disposed to one another in an integrated manufacturing system whereby ingredients/products such as dry powder, slurry, heated cheese mass and admixture are transferred from one device/system to the next.
203.In regard to these differences opponent 2 submitted:
“The person skilled in the art would focus on the function of an apparatus rather than merely on its title, so the Scott Turbo Mixer described in [Rhodes] would be considered by the skilled person as a functional equivalent of both a ‘blender’ and a ‘cooker’, and the infuser would be considered by the skilled person as a functional equivalent of a ‘cooker/kneader’ and a ‘first mixer’. Substitution of equipment is common in the dairy industry and does not equate to an inventive step (Law #5, [7.8]).”
204.It appears to be the case that devices described in Rhodes perform generally similar functions as those of the claim 1. However, the devices of claim 1 are arranged in a particular way being operatively disposed with respect to other devices. For example, in claim 1 a blender is operatively disposed toward the cooker which itself is operatively disposed toward a first mixer. Similarly, this first mixer is operatively disposed to receive a heated cheese mass from a cooker/kneader, dry powder ingredients from a dispenser, and slurry from the slurry preparation system. In this respect, the method of Rhodes is clearly directed towards a system and method involving mixing at the same time as heating and kneading, which is contrary to the claimed invention. Hence while performing similar functions, the devices of Rhodes do not appear to be simply substitutable by the claimed arrangement. It follows that I do not consider the person skilled in the art is directly led by any particular teaching of Rhodes or common general knowledge to modify the apparatus of Rhodes to arrive at an integrated manufacturing system as claimed.
205.Claim 9 of ‘424 includes similar system features of claim 1 of ‘424 and is also inventive in view of Rhodes for the reasons discussed. Dependent claims 2-8 and 10-15 add further features to those defined in the independent claims and are therefore also inventive in view of Rhodes.
Barz + Rhodes
206.Opponent 2 also argued that there would be motivation to combine Barz and Rhodes. It was submitted that they are both directed towards similar problems being the manufacture of cheese with improved performance characteristics and both relate to methods for incorporating additive into cheese. More specifically the opponent argued that in respect of the claims to ‘424 being to a particular apparatus, the skilled person searching patents would find Rhodes first and recognise it is directed towards an unconventional method. The opponent submits that the person would then be motivated to continue to search for more conventional apparatus and would find Barz and thereby use it to modify the teaching of Rhodes.
207.Firstly, I see no particular basis as to why the person skilled in the art would continue searching and find Barz after finding Rhodes. Rhodes itself addresses the problem of ingredient loss and flexibility of production methods by the use of an unconventional infusion technique using whey protein isolate added to cheese curd. Various examples are provided in Rhodes of the addition of different additives in the manufacture of pasta filata style cheese using this general technique. There is no teaching within Rhodes of the compatibility of this technique with more conventional techniques of Barz, nor is there any suggestion in Rhodes of interchangeability of described devices with conventional devices. Further the evidence does not establish that it is common general knowledge to apply aspects of this unconventional technique in conventional systems.
208.Therefore I do not consider there to be reasonable basis to combine Barz and Rhodes such that the claimed invention may be rendered as obvious.
Manner of manufacture
208.Section 18(1)(a) requires that an invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. Whether an invention is a manner of manufacture is assessed by asking whether the claimed invention lacks the necessary quality of inventiveness on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 at [9]; [1995] HCA 15; (1995) 183 CLR 655 at 655).
209.Methods and processes are generally patentable. National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252; (1961) RPC 134 is the leading authority for the patentability of methods and processes:
"The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... - that its value to the country is in the field of economic endeavour."
210.I also point to British Celanese Ltd. v Courtaulds Ltd. (1935) 52 RPC 171 at pages 193-194, where it was said in relation to a collocation of integers:
"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."
211.The opponent’s both raise a number of arguments in relation to the claims of both ‘120 and ‘424 in relation to a lack of a manner of manufacture. I summarise these as follows:
· Opponent 1 pointed out that Barz is incorporated by reference in the specifications of ‘120 and ‘424. It was submitted that because the claimed invention does not possess newness on the face of Barz, there is no manner of manufacture
· Similarly, opponent 2 submitted that because claimed features and the combination a are known, the combination of these features does not involve an invention on its face
· Both opponents generally submitted that the evidence shows that each step/element in the claimed methods and system was well-known before the priority date suggesting that claims are nothing more than a mere collocation.
212.In relation to the first point, I have already determined that the claimed invention is novel in view of Barz. I see no legal basis to consider that there is a lower threshold to lack the necessary quality of inventiveness on the face of the specification (in relation to a disclosure in the specification) than there is in relation to a lack of novelty. On this basis I find this argument must fail.
213.In relation to the second point, for an invention to fail as a manner of manufacture it must lack the necessary quality inventiveness (be it novelty or inventive step) on the face of the specification. As with the first point, there is no information in the specification that would indicate that the claimed combination is known or obvious.
214.In relation to the third point, opponent 2 identified a number of decisions that discuss patentable combinations in a manner similar to British Celanese Ltd. v Courtaulds Ltd.. These include: Williams v Nye (1890) 7 RPC 62; Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142; and, Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30. In the context of a combination where all integers of a claimed combination are individually known, each of these decisions appears to reinforce that it is relevant to consider the result that the claimed combination is designed or directed to achieving. If a particular new or improved result is achieved by mutual relation of the operation of the claimed integers, then a manner of manufacture would be found. In this sense there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the known integers.
215.In relation to the claimed method, there is a clear working interrelationship in the steps leading to the formation of a cheese product in an improved manner. Similar can be said of the claimed system. As a combination, the claimed cheese manufacturing system achieves the relevant result of a system for making pasta filata cheese in an improved manner involving the addition of a slurry to a heated cheese mass.
216.Therefore I find all claims of ‘120 and ‘424 constitute a manner of manufacture.
Utility
217.Jagot J in the Federal Court decision of Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 1632; 100 IPR 285 (at [352]) provided the following summary of this ground of invalidity:
“Section 18(1)(c) requires that an invention be “useful”. This will be the case if the claimed invention does what it is intended by the patentee to do, in the sense of meeting the object or promise in the specification, and the end result obtained is itself useful [Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82; (2008) 77 IPR 449; [2008] FCFCA 82 (at [141])]. For this purpose, the claims must be construed from the perspective of a skilled person in a common sense way, and not in a way that any such addressee would appreciate would lead to an unworkable result (SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd (2011) 92 IPR 46; [2011] FCA 452 at [293]).”
218.Bennett J in Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420 generally accepted the proposition outlined in Norton and Gregory Ld v Jacobs (1937) 54 RPC 271 (the “Norton principle”) at 275-6 that a claim will fail for inutility if within its scope there is subject matter claimed which will not achieve the desired or promised result. However, she did not believe this extended to alternatives within the claim that any sensible person would appreciate would lead to unworkability (at [231]). In her view at [240]:
“The claims are not directed to readers in a vacuum, they are directed to and are to be understood by the skilled workers in the field. That is the person who construes them, in a common sense way (Populin at 476-477). It would be artificial to assess utility in a way that ignores the fact that a design that is theoretically or mathematically within the parameters of the claims would never be contemplated for use by the skilled naval architect wishing to design a hull for a multi hulled vessel capable of speeds greater than 30 knots. A design that no naval architect would adopt would not be the appropriate test on the question of utility”.
219.In accordance with the description at [0011], it appears that a general object of invention is to provide for additional methods for preparing cheeses of the pasta filata type. I also note that the description at [0071] appears to narrow this general object by promising that the combination of a slurry with a pasta filata type cheese mass results in minimal loss of ingredients during the processing steps. It follows that to fail as being useful, an opponent must demonstrate that the claimed invention fails to achieve this object of minimal ingredient loss.
220.Opponent 2 relies on the evidence of the applicant in Merrill #1 at [19] in a similar manner as under grounds of section 40. Here, Dr Merrill states:
“However not all dry powder ingredients can be introduced to the cheese making process in liquid form. Because the slurries undergo heat and shear process, ingredients that are sensitive to heat and shear cannot be introduced in liquid slurry form. Examples include some starches, dairy ingredients, vitamins, and nutritional compositions. Additionally, certain ingredients might react negatively with slurry ingredients resulting in poor functionality of the slurry ingredients. As claimed our process recognizes this. Where it is necessary to add additional dry powder ingredients these are added to the cheese precursor before being added to the slurry. This stepwise method is important. Adding dry powder ingredients to the slurry or cheese precursor/slurry mix will result in the dry powder sitting on the wetter material and compromise mixing. Coating the powdered material to the cheese precursor before it is added to the slurry wets the powder down and ensures homogeneity.”
221.The opponent generally submits that in light of the disclosure of Dr Merrill, the system and methods include embodiments that will not work. In this regard, the opponent points to three aspects of Dr Merrill’s evidence. Firstly, the evidence suggests ingredients that cannot be introduced in liquid slurry form include some starches, dairy ingredients, vitamins and nutritional compositions. This is because they are sensitive to heat and shear. The opponent also points to the fact identified by Dr Merrill that certain ingredients might react negatively with slurry ingredients resulting in poor functionality of slurry ingredients.
222.Responding the applicant suggest that consistently with the principles identified above as articulated by Bennet J, the words in claim 1 “a slurry that comprises one or more ingredients” would be construed as referring to a slurry comprising ingredients that are suitable for addition in a heated slurry. I accept this line of argument that the person skilled in the art would construe the claim in a common sense way so as to exclude ingredients that were unsuitable for the addition as claimed.
223.The applicant also pointed out that the evidence of Dr Merrill involves issues of degree. In this regard I agree with the submission that heat sensitivity will depend upon degree and duration of heating. There may be utility in addition of the identified ingredients such as some starches, dairy ingredients, vitamins, and nutritional compositions in suitable heating ranges which would be evident to the person skilled in the art. The applicant adds that:
“…there may well still be at least some resulting utility from adding such an ingredient in a slurry. Kraft does not seek to support this argument with any evidence involving any specific ingredient in order to demonstrate, to the level of ‘practical certainty’ that is required, that absolutely no utility results.
224.I think that it is most significant that there is no evidence to suggest that the examples identified in Dr Merrill’s declaration will not result in achievement of the object of the invention. While performance of the invention using the examples of Dr Merrill may produce some undesirable results, this does not amount to a suggestion that there would be no minimisation of ingredient loss.
225.A third submission regarding a lack of utility points to the evidence of Dr Merrill whereby it is stated that “where it is necessary to add additional dry powder ingredients these are added to the cheese precursor before being added to the slurry”. Here the opponent provides submissions in the context of ‘424 which are similarly relevant to the method of ‘120:
“…the importance of adding the dry powder before the slurry is not suggested in the Divisional Specification. As described above, there is an issue regarding the timing of each of the steps in the claimed method and the order of operation of the system. However, there is nothing in the Twice Amended claims that excludes the addition of the dry powder ingredient simultaneously with the slurry to the heated mass of soft or firm/semi-hard cheese in the first mixer, provided it is before the slurry and heated mass of soft or firm/semi-hard cheese are combined.
226.I do not see how this third submission renders the claimed inventions as lacking utility. While the evidence of Dr Merrill outlines the benefits of adding dry powder material before adding the slurry, there is no evidence to suggest that adding the dry powder material simultaneously with the slurry (or at any other stage) would result in a claim that did not achieve the object of the invention.
227.Therefore I find that all of the claims of ‘120 and ‘424 are useful.
Conclusion
228.The oppositions are successful. Claims 1, 6-30 and 32 -35 of application 2005240120 are not clear while claims 9-12 and 15 of application 2010212424 are also not clear. Claims 1-27 and 31-35 of ‘120 lack an inventive step. As the matters can be overcome by amendment I will allow a period of two months for the applicant to propose amendments.
Costs
229.It is normal for costs to follow the event. In this case, the opponents have both been successful and I can see no reason depart from the norm. I will award costs against Leprino Foods Company.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
Annex
Claims of 2005240120
Claims of 2010212424
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