Frederick Michael Coory v Biogaia Biologics AB - [2003] APO 33

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 728008 in the name of FREDRICK MICHAEL COORY

Title: Discharge Cap with Releasable Tablet Basket

Action: Opposition under Section 59 of the Patents Act by BIOGAIA BIOLOGICS AB

Decision: Issued 21 August 2003.
Abstract

The opposition was found to be unsuccessful on the grounds of novelty, inventive step and manner of manufacture, but to succeed on the ground of non-compliance with section 40.
Specifically, it was determined that the specification does not describe the invention fully, and that the claims are not fairly based on the matter described in the specification. In order to satisfy the requirement of full description it must be possible to ascertain the nature of the invention from a reading of the specification as a whole, including the claims. A reading of the complete specification revealed significant discrepancies between the detailed description on the one hand, and claim 1 and its corresponding consistory statement on the other. While recognising that it may at times be unsafe to attempt to find a description of the invention by decisive reference to the preferred embodiment, it was concluded that if as here the words of a claim do not assist in completing the description of an invention, the same words when used in the body of the specification must be equally deficient.
For the same reasons the body of the specification did not provide a disclosure in the relevant sense of what had been claimed with the result that the claims lacked fair basis.
Although partially successful the opponent was not awarded costs due to the way it had conducted the opposition.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 728008 in the name of Fredrick Michael Coory and opposition under section 59 by Biogaia Biologics AB

BACKGROUND

Patent application 728008 (the application) was filed under the provisions of the Patent Cooperation Treaty as application PCT/NZ98/00034 on 12 March 1998 by Fredrick Michael Coory (the applicant) claiming priority from New Zealand application 314936 filed on 12 March 1997. The application was advertised accepted on 4 January 2001.
Biogaia Biologics AB (the opponent) filed a notice of opposition to the application on 2 April 2001 followed by a statement of grounds and particulars on 2 July 2001. The evidentiary stages were completed by the service of evidence in reply on 31 January 2003, and I heard the matter in Canberra on 6 May 2003. The applicant was represented by Stephen R Friend, patent attorney of Wray & Associates, who appeared by telephone. During the course of the hearing Mr Friend referred to written submissions filed by him on the preceding day. The opponent did not take part in the hearing and instead relied on written submissions from David Shanks, patent attorney of Watermark Patent & Trademark Attorneys.
THE SPECIFICATION
The specification commences by indicating that the invention relates to a cap for a drink container. The background art is then described in the following terms:
"Different styles of caps or lids for containers (for liquids) are prolific. They are known in a variety of forms, which can include, for example: a tamper-evident ring; the ability to be re-sealable, a screw-thread; or a combination of these. Such caps also include those that can be drunk through and resealed ("sipper tops"), either with or without a screw thread, so that the container is re-usable.
Drinks and drink containers where two components making the drink are best mixed immediately before drinking are available separately. However for some types of drink, where the concentrate is in tablet or powder form, the availability of drinks with all elements for the drink in the one container are rare and hard to find commercially."
The invention seeks to provide a cap which, when combined with a container, permits two elements of a drink to be separately contained within the same container and mixed immediately before consumption. A further object of the invention is the provision of an economic alternative to presently available containers.
The specification ends with eight claims which are reproduced below:
"1. A cap for a container with a top opening and capable of containing a drinkable liquid, said cap including:
a collar with means for securing the cap to the container about the top opening, said collar being formed with a cylindrical passage therethrough;
a neck portion including a top portion, a bottom portion, and a centrally located seal-breaking means, wherein the neck portion has a passage therethrough, and said top portion is moveable relative to the bottom portion which is secured to the collar, said top portion being moveable between an open position in which position the top portion is spatially separated from the bottom portion, and a closed position in which position the top portion is sealed against the bottom portion, and in which closed position said neck portion provides a seal for retaining liquid within the container; and
a basket capable of containing therein a material which is capable of dissolution in the liquid in the container;
releasable means for maintaining the top portion in the open position; and
a cover which is releasably securable to the collar about the cap; wherein
when initially said top portion is in said open position the liquid is sealed within said container by the basket; and
when said top portion is initially moved to the closed position said seal provided by the basket is broken by the interaction of said seal-breaking means and the basket; and wherein
thereafter, when the top portion is moved to the open position, a passage for fluid from the container is provided, and when the top portion is in the closed position, a seal for retaining liquid within the container is thereby provided.
2. A cap for a container as claimed in claim 1 wherein said cap is capable of re-use, the collar having releasably securable means for securing the cap to the container.
3. A cap for a container as claimed in either claim 1 or claim 2 wherein said basket is cylindrical with a flat base wherein the external diameter of the sides of the basket are substantially the same as the exterior diameter of the bottom portion.
4. A cap for a container as claimed in any one of the preceding claims wherein the top portion of the neck includes a section that narrows to a narrow opening with a diameter less than the diameter of the top of the container, and the sealing means includes two flat surfaces, one of [sic] the top of the collar and one on the underside of a flange on the neck portion and wherein the fit between the neck portion and the collar is a push fit.
5. A cap for a container as claimed in any one of the preceding claims wherein the neck portion includes a seal-breaking means that is in the form of a prong or pointed end, which is integrally formed with the top portion.
6. A cap for a container as claimed in any one of the preceding claim [sic] wherein the cap is capable of re-use with a new basket.
7. A cap for a container as claimed in any one of the preceding claims wherein the basket is formed from a piece of foil and the material is in tablet form encased within the foil.
8. A cap for a container substantially as hereinbefore described and with reference to any one of Figs. 1 to 4 of the accompanying drawings."
The specification explains that the seal provided by the basket is broken upon initial movement of the neck portion of the cap to the closed position thus allowing the material contained by the basket to fall into the liquid in the container. The material is dissolved in the liquid and the resulting drink can be consumed by moving the neck portion to the open position. If the drink is not fully consumed resealing can be effected by moving the neck portion back to the closed position.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars identifies four grounds of opposition available under section 59: non-compliance with paragraph 18(1)(a) (manner of manufacture), subparagraphs 18(1)(b)(i) (novelty) and (ii) (inventive step), and section 40. The particulars in support of the grounds of opposition relating to subsection 18(1) refer to a number of patent specifications as well as the alleged common general knowledge in the field of the invention. The particulars also set out various deficiencies said to exist in the body of the specification and the claims in support of the ground of non-compliance with section 40.
THE EVIDENCE
The evidence in support consists of a statutory declaration from David Harry Shanks, the attorney for the opponent, which was accompanied by a series of exhibits. Exhibits DS-1 to DS-7 comprise copies of the particularised patent specifications. Additional documents are exhibited as DS-9 to DS-13 which Mr Shanks foreshadowed would be the subject of a request to amend the statement of grounds and particulars.
However, no amendment was sought to the statement of grounds and particulars to include any of the additional documents, and nor are they even mentioned in Mr Shanks' written submissions. Mr Friend submitted that the opponent should not as a consequence be heard in relation to these documents, but in light of the detailed argument provided by Mr Friend regarding their disclosures I informed myself of the additional documents pursuant to regulation 5.11 as a matter of public interest (cf. Bausch & Lomb Inc v Allergan, Inc [1997] APO 42). As will become apparent, none of the additional documents have proven decisive to the opposition.
The evidence in answer consists of affidavits from Frederick Michael Coory and Michael Peter Woods.
Mr Coory is the applicant and is named in the application as the sole inventor. He worked in sales and marketing between 1987 and 1993, but since then has been largely involved in design and other innovative work.
According to Mr Coory, the invention originated from attempts made by him beginning in 1995 to develop a product whereby a solid tablet could be kept separate from water or other liquid in which it was to be mixed immediately prior to drinking. His initial tests focused on developing packaging with a solid basket container that could be tipped into a larger liquid container to release the solids in the basket for dispersion through the liquid. These initial investigations revealed the need to address a number of design requirements. Specifically, the problem confronting Mr Coory was to devise a product which would allow two drink ingredients to be separately stored within the same container while at the same time providing a mechanism for sealing the ingredients before, during and after mixing. Mr Coory says many prototypes devised by him were rejected because they did not meet one or more of these requirements. As further lines of inquiry he consulted manufacturers in the industry as well as patent literature, but still without success.
Mr Coory does not elaborate on how he eventually arrived at the product that subsequently became the subject of the application, except to say it was developed over a continuous period of two years. He concludes his evidence by referring to the commercial success of the product in New Zealand, and the grant of a patent on the corresponding application filed in the United States (see exhibit FMC-1).
Mr Woods has worked in the field of industrial design both in Australia and New Zealand since 1983, and assisted Mr Coory to develop a form of the product suitable for manufacture. Mr Woods states he has reviewed the documents on which opponent relies and asserts that the claimed invention is neither disclosed by these documents nor an obvious modification of them.
The evidence in reply consists of a second statutory declaration by Mr Shanks who exhibits as DS-1 an unsworn statement by Dr Helge Castberg, the Vice President New Technology of a company in Sweden. Dr Castberg states that he has been involved in packaging development for liquid food products for the last seventeen years, and expresses the opinion that
"this technology field is very international and competitive, and that people in the field are well aware of solutions and developments independently where [sic] in the developed World they might be. This is even truer in the last 5 years with the easy access to the Internet as well as several databases."
I will make further reference to the evidence and submissions later in my decision noting for the moment, however, that the opponent has not made any submissions in respect of the grounds of novelty and manner of manufacture.
ONUS OF PROOF
As submitted by Mr Friend, the onus of proof in proceedings before the Commissioner lies on the opponent who must establish that it is clear that a valid patent cannot be granted (Stamp vW.J. Powell Pty Ltd 24 CLR 339 at 343). It is also settled in law that the standard of that proof is the civil standard on the balance of probabilities (Dunlop Holdings Ltd's Application [1979] RPC 523 at 543).
DECISION
Priority Date
Mr Shanks submitted that the claims were not fairly based on matter disclosed by New Zealand application 314936 (see exhibit DS-12) and therefore could not properly take its date of filing as their priority date. However, as appears below, noting turns on the entitlement of the claims to derive priority from New Zealand application 314936 and it is therefore not necessary to consider this ground of attack any further.
Section 40
The main criticism levelled against the specification revolves around the terms used to define the neck portion of the cap. As noted earlier, claim 1 speaks of a neck portion having a top portion that is moveable relative to a bottom portion secured to the cap collar, and further characterises the top portion as
"being moveable between an open position in which position the top portion is spatially separated from the bottom portion, and a closed position in which position the top portion is sealed against said bottom portion …"
In Mr Shanks' submission this is inconsistent with the body of the specification where the expression "neck portion" refers to that portion of the cap shown as item 105 in the drawings which moves as a whole and does not have any portion secured to the cap collar. The presence of a consistory clause in the body of the specification does not, so the submission proceeds, resolve the matter as there is no description elsewhere of a neck portion having relatively moveable portions. On this basis Mr Shanks contends that the specification is non-compliant with section 40 since it does not describe the invention fully or, in the alternative, provide a "real and reasonably clear disclosure" (per Rehm Pty Ltd v Websters Security Systems (International) PtyLtd 11 IPR 289) of what is claimed.
In response Mr Friend agrees that the neck portion as claimed correlates generally with neck portion 105 described with reference to the illustrated embodiment, but argues that on a common sense assessment (per Populin v HB Nominees Pty Ltd 41 ALR 471) the bottom portion of the neck portion can be properly construed as being part of the upper portion of the cap collar. He says the bottom portion
"is in fact shown in Figure 1 as being integral with the upper portion of the collar 106, but secured to the collar nonetheless. It should be noted that the claim does not recite the bottom portion as being detachably secured to the collar.
With this construction there is also nothing inconsistent with the neck portion 105 sliding on the upper portion of the collar, and the top portion and the bottom portion of the neck portion as claimed being moveable relative to each other."
It follows, Mr Friend submits, that there is no disconformity between the description and claims with the result that the specification does not fail to meet the requirements of section 40.
Resolution of the grounds of attack pursued by the opponent under section 40 raises questions of construction. In Flexible Steel Lacing Company v Beltreco Ltd 49 IPR 331 at 347-350 Hely J provided an extensive and useful review of the general principles governing the interpretation of patent specifications. It is not necessary to set out that passage in full, except to note his Honour's observation that the specification must be read as a whole while recognising that as a whole it is made up of several parts that have different functions.
Hely J also observed (at 349) that the hypothetical addressee of the specification is the non-inventive person skilled in the relevant art before the priority date. Accordingly, as Populin said at 476-477, the complete specification must not be read in the abstract but should be construed by adopting a common sense approach to what the words used convey in the context of the then-existing published knowledge. The facts in Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 are illustrative of this situation, and the remarks of Lord Diplock (at 242-243) as to a "purposive" rather than a "purely literal" construction may be understood in that light.
In the present case no expert evidence has been tendered regarding what meaning the hypothetical addressee would ascribe to the words used in the specification. However, in my opinion nothing turns on this as it is not suggested by either party that the words have been used in some special sense, and thus their ordinary meaning must prevail (Flexible Steel at 350).
Section 40 relevantly provides:
"(1) …
(2) A complete specification must:
(a)   describe the invention fully, including the best method known to the applicant of performing the invention; and
(b)   where it relates to an application for a standard patent - end with a claim or claims defining the invention; and
(c)   …
(3) The claim or claims must be clear and succinct and fairly based on the matter
     described in the specification"
The specification contains a full description if it makes the nature of the invention clear to persons having a reasonably competent knowledge of the art (Samuel Taylor Pty Ltd v SA Brush Co Ltd 83 CLR 617 at 624-625). In Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd 177 ALR 460 the full High Court rejected the notion that the claims cannot be looked at as part of the specification in deciding whether the invention is fully described. At 466 the full court said:
"Other considerations arise from the statutory text where the issue concerns para (a) of s 40(2). The question then is whether the invention has been fully described in the complete specification. The text speaks here of the complete specification, not any one part thereof. From the distinction drawn in s 40(2) between describing the invention in the complete specification and defining the invention in any claims with which the complete specification ends, it does not follow that the description is to be gleaned solely from one part (the body) and that it is forbidden to obtain any assistance by regard to the remainder (the claims) of the complete specification. Rather, the text indicates that the specification must be read as a whole and that reference to the claims may dispel ambiguity or uncertainty from the body of the specification concerning the description of the invention."
The full court however acknowledged at 466 that something like special principles apply where the scope of a claim is alone in question:
"For example, where the issue is one under s 40(3) of "fair-basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly … Where the question concerns … the sufficiency of a claim to "define" the invention, it has been held in this court under the 1952 Act that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification."

The need to bear in mind the different functions served by the body of the specification and the claims when dealing with fair basing was also emphasised in Rehm at 304:
"As s 40 itself indicates, the task of the body of the specification is fully to describe the invention including the best method of performing it known to the applicant … The function of the claims is to define the invention and mark out the ambit of the patentee's monopoly, and primarily is addressed to potential rivals … The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
It is clear from the authorities to which I have referred that in order to satisfy the requirement of sufficient description it must be possible to ascertain what the invention is from a purposive reading of the specification as a whole, including the claims. As previously mentioned, the specification here commences with a general discussion of the background of the invention and follows this with a consistory clause, the language of which is in accordance with conventional practice reflected in claim 1. The specification next describes one particular embodiment of the invention by reference to four sheets of accompanying drawings. At page 3 it states:
The cap 103 includes a cover 4, a neck portion 105 and a collar 106 … The neck portion 105 includes a lower, circular-shaped edge 110 which is slidably engaged with the periphery of the upper portion of the collar 106.
At the top end of the collar is formed an arcuate projection 108. The projection 108 is peripheral to the collar 106. The projection 108 aids in keeping the neck portion 105 in the open position by retaining the lower shaped edge 110 thereabove, until external force … forces the neck portion 105 past the projection 108. Immediately above the projection 108 is a hook 111 formed integrally with the collar 106, which is peripheral to the top of the collar 106. The hook 111 interacts with the shaped edge 110 to prevent the top coming off the collar unintentionally when the neck portion 105 is being moved between the open and the closed positions (described below).
The neck portion 105 includes a top 112 with at least one hole 109 therethrough … A downwardly facing prong 120 is secured to the underside of the top 112, or formed integrally therewith, as is desired. The prong 120 has a shaped tip 121 which may be sharpened for piercing foil, if so desired" (emphasis added).
It is at this point that the difficulty with full description arises. Mr Friend for the applicant has argued that on a sensible construction the disclosure made in the detailed description of the invention is of a neck portion having a bottom portion formed integrally with the upper portion of the collar, which is entirely consistent with the claims. However, in my view this contention totally ignores the plain wording appearing in the above passage from which it is apparent that the neck portion and the collar are quite separate elements. Almost the first words of the passage inform the reader that the neck portion 105 as a whole slidably engages the upper portion of the collar 106, and moves as a single unit between its open and closed positions. This in turn conveys the distinct impression that the top portion 112 of the neck portion is not movable relative to its bottom portion 110. The passage also contemplates the retention of the bottom portion of the neck portion above the upper portion of the collar until the neck portion is forced to the closed position which reinforces the interpretation to be drawn from the beginning of the passage that the bottom portion of the neck portion is neither formed integrally with as alleged by Mr Friend nor, to use the language of claim 1, secured to, any portion of the collar.
A purposive reading of the specification further reveals that the separation of the neck portion and the collar is deliberate and is in fact central to the dual liquid sealing function the invention provides in the sense I have already discussed. This much is evident from page 4 where it is stated that pushing the neck portion downward
"forces the tip 121 against the foil of the basket 117. The lower portion of this foil basket … gives way, allowing the tablet 138 to fall into the container 2. At the same time, this downward movement forces the shaped edge 110 over the projection 108. The motion of the neck portion 105 is stopped when the projections 113 [at the top of the collar] sit in the holes 109 [in the top of the neck portion], forming a liquid seal between the interior and the exterior of the cap 103. The container 2 can be shaken or agitated so that the solid in the tablet 138 dissolves in the liquid in the container 2.
When the drink is to be drunk, the neck portion 105 is lifted upward … With the basket 117 seal broken there is a liquid passage from the container 2, through the basket 117, the collar 106 and the neck portion 105 to the exterior. If the container is to be resealed, the neck portion is pushed downward again, so that the projections 113 sit in the holes 109, forming the liquid seal again. Thus the container 2 can be safely carried after partial consumption of the liquid within the container."
Once again, this passage as a matter of ordinary language underlines the separate nature of the neck portion and the collar, and the consequent movement of the entire neck portion between open and closed positions.
Based on these significant discrepancies between the detailed description and claim 1, I consider that it is not possible to determine what the invention is from a reading of the specification as a whole. Accordingly I find that the specification does not describe the invention fully. In reaching this conclusion I have not overlooked the fact that it may at times be unsafe to attempt to find a description of the invention by decisive reference to the preferred embodiment (cf. CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481 at 503) particularly where, as here, the specification contains a broad statement of the invention which reproduces the words of claim 1. However, no other portion of the total disclosure, except claim 1 itself, supports this broad statement which therefore can, in my opinion, be put to one side since if the words of a claim do not assist in completing the description of an invention, the same words when used in the body of the specification must be equally deficient (cf. Du Pont de Nemours & Co (Chantry's) Application [1974] RPC 484 at 490).
Turning to the question of fair basing, it is apparent from the outset that the same inconsistencies arise when the body of the specification is compared to the claims. A claim is of course not objectionable simply because it is not restricted to the precise embodiment which is depicted in the body of the specification (Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd 30 IPR 479 at 497). However, as stated in Rehm at 304:
"when the question is one of fair basing of a claim upon matter disclosed either in the body of the specification or in a provisional specification, it is not appropriate and is, indeed, misleading to seek to isolate in the body of the specification or in the provisional specification "essential integers" which correspond with the essential integers in the claim in question … The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
This approach was also adopted in CCOM at 501. For the reasons I have given when dealing with the issue of full description, I find that the body of the specification does not provide a real and reasonably clear disclosure of a neck portion having a top portion moveable relative to a bottom portion secured to the collar as presently required by claim 1. Consequently, claim 1 lacks fair basis. As the remaining claims are likewise in conflict with the body of the specification they are also not fairly based.
The construction for which Mr Friend contends also poses problems for claims 3 and 4.
Claim 3 specifies that the basket is cylindrical with a flat base and has an external diameter substantially the same as the exterior diameter of the bottom portion [of the neck portion]. Mr Friend has submitted that "bottom portion" in this context may be equated with the projections 113 mentioned in the above-cited passage from page 4, but in my opinion this submission is misconceived since on a plain reading of the body of the specification the projections are associated with the collar, and not the neck portion. However, and irrespective of what interpretation is given to the term "bottom portion", there is no disclosure in the relevant sense of a basket having an external diameter substantially the same as the exterior diameter of any part of the neck portion or the collar. I therefore find that claim 3 is not fairly based in respect of the requirement it places on the external diameter of the basket.
Claim 4 calls for "the sealing means" to include "two flat surfaces, one of [sic] the top of the collar and one on the underside of a flange on the neck portion". While it is true that there is no strict antecedent for the term "the sealing means" in claim 4, I consider that when purposively construed this term refers to the seal that results from movement of the neck portion to its closed position. Even so, I am inclined to agree with Mr Shanks that the projections 113 located at the top of the collar which sit in the holes 109 formed through the top portion of the neck portion are the only means disclosed for effecting such a seal. On this footing I find that claim 4 lacks fair basis as to the form of the sealing means it defines.
The opponent has raised a number of additional matters under this ground in their statement of grounds and particulars which in my view can be easily dismissed. Firstly, it is said that contrary to claim 1 the body of the specification does not disclose the provision of a seal by the neck portion to retain liquid within the container. The opponent submits that it is evident from the description of the embodiment of the invention that when the neck portion is closed liquid is still able to flow from the container to the underside of the top portion of the neck portion upon inversion of the container. However, this submission is impermissibly founded on ill-usage of the invention (cf. Martin v Scribal Pty Ltd 92 CLR 17 at 62-63), and in any event I consider that on a purposive construction what the specification clearly contemplates is the provision of a seal to prevent spillage of the contents of the container. As indicated for example at page 4 lines 27-29, once a liquid seal is formed the container "can be safely carried after partial consumption of the liquid within the container".
Secondly, attention is drawn to the fact that the illustrated embodiment shows a tapered passage formed through the collar and a basket comprised of two layers of foil which the opponent says are further instances of disconformity between the body of the specification and the claims. In Patent Gesellschaft AG v Saudi Livestock Transport and Trading Company [1997] 95 FCA at 9 the full Federal Court confirmed that
"[t]he rationale for fair basing, as explained in cases such as Olin Corporation v. Super Cartridge Co Pty Ltd (1977) 180 CLR 236 (at pp.240, 250-251, 263), is that the consideration given by the patentee for the monopoly granted in respect of a valid product claim is sufficient disclosure in the specification to enable the skilled addressee to make the product, once the term of the patent has expired."
Applying this test to the present circumstances, I do not consider that the skilled reader would have any difficulty in providing a cylindrical passage through the collar in accordance with claim 1, or forming the basket from a single piece of foil as in claim 7.
Summary
I have found that the specification does not describe the invention fully, and that the claims are not fairly based on the matter described in the specification. It follows that the requirements of section 40(2)(a) and 40(3), respectively, have not been met.
Nevertheless, the tension between the body of the specification and the claims does not debar consideration of the grounds of lack of novelty and inventive step since, as it turns out, the material relied on by the opponent to support these grounds does not disclose or suggest the invention as claimed or as described.
As an aside, Mr Shanks has implied that the shortcomings I have found in terms of section 40 could be remedied by incorporating claim 1 of the corresponding US grant into the present specification. However, I do not agree since the US claim only speaks of movement of the upper portion of the neck portion, rather than the neck portion as a unit, between open and closed positions.
Novelty
It is well established that the test for novelty 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 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 the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin EngineeringCo 16 IPR 545 at 549). However, as Gummow J said at 560:
"But Aickin J described this test only as "generally" applicable. Where the alleged anticipation is a paper publication, particularly a prior patent specification, there may be ground for debate in a comparison with the specification in suit as to the presence of inessential integers and mechanical equivalents … There may also be dispute whether what has been disclosed sufficiently reveals an essential integer, in the light of the principals in Hill v Evans (1862) 4 De G F & J 288; 1A IPR 1."
It is necessary to turn to the judgement of Lord Westbury in Hill v Evans who said at IPR 7:
"The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication … Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use."
To my mind there is no doubt that every feature of claim 1 should be considered essential. A feature is essential if the applicant has made it an essential feature by the terms of the claim as properly construed (Catnic at 228), and this seems to me to be the case here. Neither party sought to argue in support of an opposing view.
The opponent has not made any written submissions under this ground and simply relies on the patent specifications listed in the statement of grounds and particulars. I will now examine these specifications in the order in which they have been exhibited by Mr Shanks.
US 3347410 (exhibit DS-1)
This specification is directed to an applicator for products such as hair dyes that permits the hair dye materials to be separately stored and subsequently mixed in a single package for immediate application to the hair. The applicator comprises a retainer ring positioned in the neck of a container. The applicator further includes an applicator head having openings therethrough, and a resilient bellows integral with the applicator head and the retainer ring. A pointed stem depends downwardly from the applicator head. A first material such as a liquid component of a hair dye is disposed in the container and a second material such as a pigment is sealed within the retainer ring so that, upon depression of the applicator head, the seal is broken by the stem to allow mixing of the two materials. The mixture may then be applied to the hair through the openings in the applicator head.
However, even if the retainer ring and the applicator head are equated to the collar and the neck portion, respectively, of the claimed invention, these features do not fulfil the functional requirements of claim 1. Most notably, US 3347410 does not disclose a mechanism for resealing the applicator after the initial seal is broken.
This resealing aspect of claim 1 is also not found in US 4638927 (exhibit DS-2) and, in fact, the "neck portion" (see push button 18) disclosed by this document is not provided for the purpose of sealing liquid within the container at any stage of operation.
US 5104008 (exhibit DS-3)
This specification discloses a resealable bottle cap for a moulded sports water bottle. The cap includes a push-pull top cap having an opening in its upper portion which on downward movement of the top cap registers with a plug positioned on a pour spout with which the top cap is slidably engaged to form a closure and thereby seal the bottle. Upward movement of the top cap lifts the opening out of registry with the plug to permit the contents of the bottle to be used.
However, unlike the claimed invention, there is no disclosure of a seal-breaking means that releases a liquid from a basket for dissolution in the liquid in the bottle and, indeed, US 5104008 is not in any way concerned with the separate storage and subsequent mixture of different drink ingredients.
FR 2290366 (exhibit DS-4)
This specification discloses a bottle with a cap containing a tablet or liquid enclosed in a blister pack located between the cap and the neck of the bottle. The blister pack may be broken by a pushing device incorporated in the top of the cap, thus releasing the tablet or liquid to fall into and mix with the contents of the bottle. To gain access to the mixture, it is necessary to unscrew the cap from the bottle and remove the blister pack.
However, there is no disclosure of a collar and, even if FR 2290366 could be construed as disclosing a neck portion, there is no passage through the neck portion and nor does the neck portion move so as to produce the result prescribed by claim 1.
I find similarly in respect of GB 1211168 (exhibit DS-11).
AU 40755/95 (exhibit DS-5)
The statement of grounds and particulars refers exclusively to the specification of AU 711119 which was advertised accepted (and simultaneously published as a B-level publication) well after the filing date of the present application, and thus the question arises of whether the opponent should be allowed to subsequently argue the opposition on the basis of the A-level publication of that specification (cf. Kennametal Inc v Sandvik AB [1992] APO 21 at 4). However, for reasons previously indicated I have directed attention to the A-level publication as a matter of public interest.

AU 40755/95 discloses a pharmaceutical container comprising a bottom container which houses a first substance such as a liquid, and a top container which houses a second substance such as a powder. The top container is provided with a breakable base wall to initially seal its contents from those of the bottom container. A tubular sleeve is mounted in the top container having a helical cutting edge at its base and a truncated cone-shaped top portion which operates as a dropper. A cap with a safety seal is screwed onto the top container over the tubular sleeve. In use, the safety seal is removed and the cap is screwed downwardly to cause breakage of the base wall of the top container by the helical cutting edge.
However, even if the tubular sleeve is said to correspond to the neck portion of claim 1, it does not move between open and closed positions in the sense defined by the claim and, in addition, is not capable of resealing the bottom container once the base wall of the top container is broken.
I find similarly in respect of WO 93/14990 (exhibit DS-6) and US 2859898 (exhibit DS-9), and it is arguable whether the feature disclosed by the former specification corresponding to the basket of claim 1 (see internal closure component 18) provides a liquid seal that is "broken" by seal-breaking means.
AU 30847/97 (WO 98/00348) (exhibit DS-7)
The closure cap disclosed by this specification comprises a screw cap for attachment to a bottle neck and being formed with a central pillar. A push-pull closure member is mounted within the screw cap and includes an aperture which is sealed by the central pillar when the closure member is in the closed position. A blister pack that contains a liquid, powder or tablet and consists of a deformable dome having a frangible seal at its base is attached to the lower portion of the closure member such that when the closure member is moved towards the open position, the dome contacts and is deformed by the central pillar to cause the contents of the blister pack to rupture the frangible seal and drop into the liquid contained in the bottle.
Although providing a resealing mechanism, the cap of AU 30847/97 fundamentally differs from the claimed invention in several respects:
·     the liquid within the bottle is initially sealed by the "neck portion" (closure member) being in the closed position, rather than by the "basket" (blister pack) with the neck portion open;
·     the initial liquid seal provided by the basket is broken by moving the neck portion to the open position, rather than to the closed position; and
·     the "seal-breaking means" (central pillar) forms part of the "collar" (screw cap), rather than part of the neck portion.
US 3924741 (exhibit DS-10)
The container disclosed by this specification comprises a bottle for containing a liquid and a stopper and capsule assembly. The assembly includes a tubular sleeve that extends through the neck of the bottle and terminates in a transverse wall. A number of apertures are provided in the lower portion of the sleeve adjacent to the transverse wall. The assembly further includes a capsule for containing a second ingredient. The capsule is slidably mounted within the tubular sleeve between a lower terminal position in which it seals the apertures, and an upper terminal position in which the apertures are opened to allow the contents of the capsule to drop into the bottle. The resulting mixture can be dispensed through the upper end of the capsule upon removal of a closure cap.
However, unlike the claimed invention, the container disclosed by US 3924741 does not utilise a basket which contains a liquid dissolvable material and initially provides a liquid seal, and, consequently, nor does it incorporate seal-breaking means to break this seal. Further to this, it is clear from a comparison of Figs 2 and 3 that the bottle is initially sealed by the "neck portion" (tubular sleeve) when in the lower terminal or "closed" position, and is unsealed when the tubular sleeve is initially in the upper terminal or "open" position.
Summary
I have found that none of the patent specifications relied on by the opponent take all the essential features of the claimed invention. Accordingly, the ground of want of novelty has not been made out. For completeness I note that a determination of whether the claims are entitled to derive priority from New Zealand application 314936 is clearly inconsequential to this finding.
Inventive Step
Under section 7(2) an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the art in the light of common general knowledge considered either alone or together with information made publicly available inside or outside Australia. Section 7(3) restricts the information to that which could have been reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the art.
Common general knowledge
The essential nature of common general knowledge has been defined by Emmett J in ICI Chemicals & Polymers Ltd v Lubrizol Corp 45 IPR 577 at 599 as follows:
"The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
·     standard texts and handbooks;
·     standard English dictionaries;
·     technical dictionaries relevant to the field;
·     magazines and other publications specific to the field."
The common general knowledge that is relevant is that in Australia. The parties are in general agreement that the invention lies in the field of packaging for liquid products which Dr Castberg has alleged is international in nature in that information is distributed globally. The state of the common general knowledge is a question of fact that must be determined on the basis of evidence from suitably qualified experts of what was known by skilled workers in the field. In the present case no expert evidence has been led on which such a determination can be made. Mr Shanks has submitted that it is clear from the applicant's own evidence and specification that the so-called sipper top is well known in "other developed countries, at least" and, in view of the international nature of the relevant art, it is reasonable to infer that sipper tops had also entered the common general knowledge of those engaged in the art in Australia. There are some indications in Mr Woods' affidavit that this fund of knowledge may not be as widespread as Mr Shanks has suggested. In either event, I do not consider that the line of argument pursued by Mr Shanks assists the opponent.
The only evidentiary material that provides direct guidance as to the structure and operation of sipper tops is US patent specification 5104008 (see exhibit DS-3) which I have discussed above under the head of novelty. This specification was published several years before the priority date of the claims but, as conceded by Mr Shanks, there is nothing in evidence to establish when the type of top it discloses became part of the common general knowledge. Even if it is assumed that a top of the kind represented by US 5104008 had ever assimilated into common general knowledge in this country, this top does not in contrast to the claimed invention allow for the separate storage within the same drink container of two ingredients to be mixed to form a composite product prior to consumption.
Mr Shanks contends that this feature can be found in a number of the other patent documents put in evidence by the opponent. However, I do not understand Mr Shanks to be asserting that the contents of these documents can be treated as common general knowledge, and nor is there any evidence to that effect. Mr Coory has explained that in the course of developing the claimed invention he conducted a patent literature search "to see if a solution had already been found" to the problem he was seeking to address. The analysis presented by Mr Coory of the results of that search creates the definite impression that the documents he located were equivalent to, if not the same as, those upon which the opponent relies. I particularly note in this regard his express reference to US 5104008. Nevertheless, it seems from Mr Coory's evidence that he did not undertake a search of patent literature until late in the development process from which I infer that those skilled in the art did not ordinarily engage in patent searches as a means of acquiring common general knowledge. In fact it seems to me that he read the documents located by him merely for "general ideas" and thus, in accordance with Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59 at [61], these documents are to be discounted as matters of common general knowledge.
On the limited evidence before me I conclude that the common general knowledge in the relevant field in Australia at most does not go beyond sipper style caps of the form exemplified in
US 5104008. As previously indicated, such a cap omits an essential element of the result achieved by Mr Coory when solving the problem that confronted him and, consequently, I find that the claimed invention would not have naturally suggested itself to a skilled worker equipped with the common general knowledge alone.
In stating this I have not overlooked the strong intimations arising from the evidence of Mr Coory that packaging for goods such as effervescent drink tablets and soluble pain relief products was itself commonly known in the art before the priority date. However, even if I am correct in this, the result is the same.
The decision in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd 144 CLR 253 was in respect of obviousness under the 1952 Act, but the following statement from Aickin J (at 293 et seq) remains valid for present purposes:
"An allegation of want of inventive step is not made out by saying you may take one or two, or 21 or 22, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so there could never be a valid patent for a new combination of old integers. The proper question is … whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications."
There is no evidence on this point and I am therefore unable to find that it would have been obvious to the skilled worker when faced with the problem overcome by Mr Coory to select a known sipper top and combine this with the aforementioned known packaging so as to interact with one another in the manner claimed.
This leaves me to consider whether the position is changed when the common general knowledge is considered in conjunction with information that satisfies the test prescribed by section 7(3).
Common general knowledge and prior art information
Mr Friend submitted that the contents of the patent specifications particularised by the opponent under the ground of inventive step could not be regarded as prior art information for the purposes of section 7(3).
There can be no doubt that these documents would be understood by the skilled worker in the field of the invention. Moreover, I am satisfied that the documents could be reasonably expected to have been ascertained in the sense of "discovered" or "found" (cf. Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd 47 IPR 257 at 307). The statement made by Dr Castberg in evidence in reply suggests to me that information regarding developments in the relevant art, both in Australia and overseas, could be readily accessed by the skilled worker particularly through the agency of electronic databases. Although not presented in declaratory form, the veracity of this statement was not seriously challenged by the applicant which is perhaps not surprising given that Mr Coory himself turned to this source of information in the hope that it would point the way to the result he sought to achieve. As I have said, the evidence leaves the definite impression that the documents Mr Coory was able to identify by a search of the patent literature were of like or identical effect to those relied on by the opponent. Mr Coory's status as inventor does not in my opinion diminish the force of this evidence since, as observed by Dowsett J in Firebelt Pty Ltd v Brambles Australia Ltd 43 IPR 83 at 113 (with the subsequent approval of the full High Court: see [2002] HCA 21 at [44]):
"To describe oneself as an inventor is merely to say something about one's capacity to identify and solve a problem. The line between a competent technician, able to solve problems on the basis of an established state of knowledge in his or her industry and an inventor will not always be easily discerned. Further, a person who is an inventor may well also perform non-inventive work."
and I have not been given any reason to suspect that the nature of the search conducted by Mr Coory was "not such as would reasonably be expected to be undertaken by the hypothetical [uninventive] skilled worker", or that the results of that exercise could only be duplicated using the benefit of hindsight (cf. E I Dupont de Nemours & Company v Imperial Chemical Industries PLC [2002] FCA 230 at [106]).
Thus although there is no basis for inferring that the particularised documents were known to exist at the time as part of common general knowledge, it is difficult to see why a person skilled in the art could not reasonably be expected to have nevertheless encountered them in a search exercise.
I also accept that a skilled worker, having discovered the patent specifications in question, would have looked to them as providing a possible solution to the problem Mr Coory was working on. Whilst not all directed to containers for drinkable liquids, I consider the title of these documents alone would sufficiently interest the person skilled in the art to ascertain their full contents.
However, I am not of the view that when considered together with the common general knowledge they would lead by direction to choosing every feature of the claimed invention.
Minnesota is well known authority for the proposition that, under the 1952 Act, a prior disclosure in a patent specification did not provide a basis for a conclusion as to obviousness without evidence that the disclosure in question was part of the common general knowledge at the priority date. In Tidy Tea Ltd v Unilever Australia Ltd 32 IPR 405, Burchett J considered the provisions relating to inventiveness under the 1990 Act. His Honour observed (at 414) that it was one thing to say that there had been a relaxation of the rule forbidding the use of prior disclosures not actually proved to be common general knowledge at the relevant time and another thing to say that, in all circumstances, such a disclosure might be used to some relevant effect. His Honour continued:
"The new provisions are limited by the words "being information that the skilled person … could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area." And if a prior specification passes those tests, it must still be able to be said that, if that specification had been considered by the hypothetical skilled person together with the common general knowledge at the relevant time, "the invention would have been obvious". In Minnesota Mining & Manufacturing Co at CLR 294, ALR 59 Aickin J said:
"It may be noted that even in England where the process of making a mosaic out of prior publications is regarded as permissible under the Patents Act 1949 it is still necessary that the mosaic must be one which 'can be put together by an unimaginative man with no inventive capacity': see per Lord Reid in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 at 355."
I do not think s 7 avoids this."
According to Mr Shanks, the features of claim 1 can be arrived at by combining a known sipper top as exemplified in US 5104008 with prior art information constituted by the contents of either US 4638927 (exhibit DS-2) or FR 2290366 (exhibit DS-4).
The container arrangements disclosed by US 4638927 and FR 2290366, it will be recalled from my discussion on novelty, incorporate a blister-type pack that is ruptured to release its contents for mixing with the contents of a bottle. However, they lack one or other or both of something that equates to a collar and a neck portion that moves between an open position in which it unseals the bottle and provides a liquid passage therefrom, and a closed position in which the bottle is sealed. In fact the neck portion of US 4638927 does not effect sealing at all, while in FR 2290366 the neck portion (if it can be called that) must be physically engaged with or disengaged from the neck of the bottle to respectively seal and unseal its contents. On the other hand, the sipper top of US 5104008 although having a neck portion movable between open and closed positions does not contemplate utilising that functional capability to release a drink ingredient sealed separately from the bottle for mixture with another ingredient contained within the bottle.
In light of this I do not consider that the skilled but non-inventive reader could piece together various features from the available material to produce the whole of the claimed invention without the exercise of inventive ingenuity. For example, even if it was proved, which the opponent has failed to do, that the "unimaginative man" would recognise that some of the features of claim 1 missing from FR 2290366 could be supplied by substituting its "neck portion" (screw cap 4) with the sipper top "neck portion" (push-pull top cap 22) of US 5104008, this step alone falls short of providing a collar which acts to secure the substitute neck portion to the bottle. In addition, the substitute neck portion is, without modification, incapable of breaking the seal initially provided by the blister pack and in a manner that avoids the need to retrieve the ruptured blister pack before the contents of the bottle can be dispensed. I therefore conclude that the skilled worker could not bring together the common general knowledge and the prior art information identified by Mr Shanks to produce the claimed invention without the exercise of inventive ingenuity. The following extract from Mr Coory's evidence appears particularly telling in this regard:
"21 … The sipper top is particularly good at addressing this problem [of providing a resealing mechanism to allow partial consumption of the drink mixture], but does not address the problem of keeping the composite material separate from the fluid in the container, nor does it assist in breaking the container seal and allowing fluid easy egress from the bottle.
22. One or two of the prior art patents provided for a fluid passageway once the seal on the composition had been thoroughly broken and the contents mixed, but the empty packaging then had to be removed from the container before further use of the mixed fluid within the container.
23. I could not find anything that provided a combination of all the aforementioned mechanisms and packaging.
24. When I explained this problem with plastics manufacturers and manufacturers of the effervescent drinks in New Zealand and overseas … they said the problem could not be solved. "
which I accept affords cogent evidence that Mr Coory's attempts to solve the problem he faced involved more than "the trial and error which forms part of the normal industrial function of a skilled worker in the relevant field" (ICI Chemicals at 600). Given the nature of their contents, my conclusion above is not disturbed when account is taken of the balance of the patent specifications set out in the statement of grounds and particulars.

As an apparent fall-back position, Mr Shanks submitted that the claimed invention is nothing more than a workshop improvement over AU 30847/97 (exhibit DS-7). This expression refers to an alteration to an existing device which the person skilled in the art would have come to, "proceeding along previous lines of inquiry and having regard to what was known or used" (Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at 560). However, as discussed earlier, there are a number of features that separate the claimed invention from AU 30847/97, none of which are insubstantial, and hence I can not see that these variations merely represent an improvement which the skilled worker could implement as a matter of routine.
Summary
I have found that the evidence before me is not sufficient to establish that the claimed invention lacks an inventive step in the light of the common general knowledge alone or considered together with prior art information. Accordingly, this ground of opposition has not been made out.
Manner of Manufacture
It is asserted in the statement of grounds and particulars that the claimed invention is directed to a mere collocation of known features each of which performs its normal function. In BritishCelanese Ltd v Courtaulds Ltd 52 RPC 171 at 193-194 it was said:
"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."
The claimed invention plainly answers the description "patentable combination" since the features that make up the invention are functionally dependent on one another.
The statement of grounds and particulars further asserts that the claimed invention lacks "inventive merit". In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 the High Court concluded that the words "a patentable invention" in section 18(1) retain a threshold requirement that the alleged invention be a manner of manufacture. The court also held that this threshold requirement will, notwithstanding an assertion of newness, remain unsatisfied if it is apparent on the face of the specification that the subject matter of the claimed invention is, by reason of the absence of the necessary quality of inventiveness, not a manner of new manufacture.
In the present case there is nothing on the face of the specification to suggest that the threshold requirement of inventiveness has not been met.
In view of the foregoing I find that the opponent has not established this ground of opposition.
CONCLUSION
I have found that the opposition does not succeed under the grounds of novelty, inventive step or manner of manufacture, but is successful under the ground of non-compliance with section 40.
As the deficiencies identified under this ground can be overcome, I allow the opponent 60 days from the date of this decision to file suitable amendments.
COSTS
The power of the Commissioner to award costs is discretionary, so I must take account of all relevant considerations.
In the present case the opponent has succeeded in establishing a substantive lack of compliance with section 40 and the usual practice in these circumstances is for costs to follow the event. However, I have earlier mentioned that certain additional documentary material was included in the evidence in support under cover of Mr Shanks' declaration which he foreshadowed would be formally introduced into the statement of grounds and particulars. It is clear that in preparing a defence to the opposition the applicant assumed that this material would form part of the case it had to answer. In the event no amendment was sought to the statement of grounds and particulars to include any of the additional documents, and nor were they even relied on by Mr Shanks in his written submissions. This clearly has imposed considerable inconvenience on the applicant as well as the Commissioner who is charged with the orderly conduct of proceedings brought before her. For this reason I do not believe that the opponent is entitled to its costs.
Accordingly, I make no award of costs.
O L Haggar
Delegate of the Commissioner of Patents
21 August 2003
Patent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Watermark Patent & Trademark Attorneys, Melbourne