Hill's Pet Nutrition, Inc.
[2015] APO 28
•22 June 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Hill’s Pet Nutrition, Inc. [2015] APO 28
Patent:2010276259
Title:Companion animal nutrition system
Patentee: Hill’s Pet Nutrition, Inc.
Hearing Officer: P M Spann – Deputy Commissioner of Patents
Decision Date: 22 June 2015
Hearing Date: 14 May 2015
Catchwords: PATENTS – Examiner’s Objections – section 104 – allowability under section 102(1), 102(2)(a) and 102(2)(b) considered – application for leave to amend refused on all grounds – directions for further re-examination of the patent.
Representation: Patentee: Mr M Caulfield, patent attorney,
Ms M Seter,
FB Rice
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2010276259
Title:Companion animal nutrition system
Patentee: Hill’s Pet Nutrition, Inc.
Date of Decision: 22 June 2015
DECISION
The application for leave to amend the patent specification under section 104 is refused.
Pursuant to section 97(1), I direct that a further re-examination of the patent be conducted.
I also direct that, if the re-examination report is adverse and any grounds of invalidity are not addressed by a statement under subsection 99(1) and/or proposed amendments filed within two months of the date of the report, the patentee be heard on whether the patent should be revoked under section 101.
REASONS FOR DECISION
1. Patent 2010276259 was granted to Hill’s Pet Nutrition, Inc. (the patentee) on 1 August 2013. On 5 August the Commissioner notified the patentee that she intended to re-examine the patent and has subsequently issued three adverse re-examination reports. The patentee has filed statements under section 99 and a series of proposed amendments. Seven adverse examination reports have issued under section 104(2) objecting to the allowability of the amendments. The last report advised the patentee that the matter would be set for hearing to determine whether the application for leave to amend should be refused.
2. The matter was set for hearing on 14 May 2015. On 7 May the patentee filed a sixth statement of proposed amendments and my decision is therefore concerned with the allowability of these latest proposed amendments. While submissions on the validity of the patent were filed I did not hear the patentee on, and at this stage will not consider, whether the patent should be revoked but will give directions for further re-examination of the patent according to the outcome of this matter.
The specification
3. The specification relates to a nutrition system for a companion animal which includes a plurality of food packets formulated to alleviate or manage a particular disorder, for example, obesity. A central concept of the invention described appears to be that each food packet contains an amount of food suitable for a single meal.
4. Particularly relevant to the present matter is that the description at page 19 includes two tables which set out the feeding regimen that would apply to dogs of various goal weights. The first table covers small to medium dogs of 5-40 lbs goal weight and the second, medium to large dogs of 45-90 lbs goal weight. Table 1 is in the form:
Table 1
Goal Wt.
(lbs.)Food Packets Treat Packets Days Supply of Food Day Supply of Treats WLS for Small -
Med dogs
5 - 40 lbs - Goal Weight
INCLUDES:
- (60) 1.75 oz
packets of specially
formulated food
- (72) packets of great tasting,
nutritionally
balance treats -
each packet
contains 3 medium bones5 1 1 60 72 10 1 2 60 36 15 1 3 60 24 20 2 1 60 72 25 2 3 30 24 30 2 4 30 18 35 3 2 20 36 40 3 4 20 18 5. While somewhat unclear I accept the patentee’s submission that the tables instruct a skilled addressee that where multiple food packets are specified these are to be administered during the day as separate meals (eg morning, afternoon or evening) as is suggested at paragraphs 33 and 46 of the description.
6. It is also not entirely clear what significance lies in the number of days supply however I assume it is simply related to a convenient overall package size. Nevertheless this does not explain why a 20 days supply of food is specified for a 40 lbs goal weight and, from table 2, a 60 days supply is specified for a 45 lbs goal weight.
7. Claim 1 of the patent (as accepted) is as follows:
1. A nutrition system for a companion animal comprising:
a plurality of pet food packets, wherein each packet comprises an amount of pet food corresponding to a single meal for a companion animal;
wherein the amount of pet food is formulated to alleviate or manage a disorder in a
companion animal;
and wherein the pet food packet comprises about 20 wt. % to about 40 wt. % of crude protein on a dry matter basis, about 5 wt. % to about 15 wt. % of crude fat on a dry matter basis, about 10 wt. % to about 30 wt. % of total dietary fiber on a dry matter basis, and about 10 wt. % to about 20 wt. % of crude fiber on a dry matter basis,
and wherein the nutrition system comprises a three to six week supply of pet food packets.
8. Aside from further independent and dependant claims there is a claim of the omnibus type:
19. The nutrition system of claim 1, the weight loss system of claim 7, the method of claim 12, or the weight loss nutrition system of claim 18 substantially as hereinbefore described with reference to the Examples, excluding, if any, comparative Examples.
Proposed amendments
9. The claims as proposed to be amended focus on weight loss only. Independent claims 1 and 2 are similar but are directed to different goal weight ranges. Dependant claims 3 and 4 specify the days of food supply for particular ranges of the goal weights and claim 5 the inclusion of “treats, snacks, supplements or beverages”. For reference claim 1 reads:
1. A nutrition system for use in effecting weight loss in a canine in need thereof, wherein the nutrition system comprises:
a plurality of pet food packets, wherein each packet comprises an amount of pet food corresponding to a single meal for the canine may be selected,
wherein the canine has a desired goal weight of 5 to 40 lbs,
wherein the use comprises administering to the canine an amount of food
corresponding to one to three pet food packets,
wherein each packet comprises a nutritionally complete food,
and wherein,
if the desired goal weight of the canine is in the range of from 5 to 15 lbs, the use comprises administering to the canine an amount of food corresponding to a single pet food
packet, or
if the desired goal weight of the canine is in the range of from 20 to 30 lbs, the use comprises administering to the canine an amount of food corresponding to two pet food
packets, or
if the desired goal weight of the canine is in the range of from 35 to 40 lbs, the use comprises administering to the canine an amount of food corresponding to three pet food packets;
wherein the amount of pet food is formulated to alleviate or manage a disorder in a companion animal;
wherein the pet food packet comprises about 20 wt. % to about 40 wt. % of crude
protein on a dry matter basis, about 5 wt. % to about 15 wt. % of crude fat on a dry matter
basis, about 10 wt. % to about 30 wt. % of total dietary fiber on a dry matter basis, and about 10 wt.% to about 20 wt.% of crude fiber on a dry matter basis; and
wherein the nutrition system comprises a 20 to 60 day supply of pet food packets.
The legislation
10. Section 104 of the Patents Act 1990 provides:
(1) An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:
(a)removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;
(b)correcting a clerical error or an obvious mistake.
11. Section 104(5) then places the requirement that the amendments conform to section 102.
(5) The Commissioner must not allow an amendment that is not allowable under section 102.
12. Section 102(1) was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2011. However, the transitional arrangements mean that these amendments to the Act do not apply in the present case (because the request for examination was filed before 15 April 2013). The applicable parts of section 102 as it applies to the present case are:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40(2) or (3).
13. The relevant time in section 102(2) is defined in 102(2A) as after the specification has been accepted. As a result section 102(2) applies.
14. The questions that need to be decided in this matter are whether, as a result of the amendments:
- the claims claim matter not in substance disclosed in the specification as filed (section 102(1))
- the claims fall within the scope of the claims before amendment (section 102(2)(a))
- the specification complies with section 40(2) or (3) (section 102(2)(b))
Are the amendments allowable under section 102(1)?
15. Section 102(1) prohibits amendments that would result in the claiming of matter that is not in substance disclosed The meaning of "in substance disclosed" has been clarified by the courts. In the UK decision Ethyl Corporations Patent [1972] RPC 169, Lord Denning MR said at 195:
"this requirement of 'fairly based' is virtually the same as the requirement that the amendment be 'in substance disclosed'."
16. It is well settled that fair basis is assessed by asking whether there a real and reasonably clear disclosure of the claimed invention in the specification, and do the claims travel beyond the subject matter of the invention described in the specification (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58, 217 CLR 274).
17. An issue present in both claims 1 and 2 is that while specifying that each packet of pet food corresponds to a single meal, the claims then refer to administering food corresponding to multiple packets of pet food without indicating the period in which the food is administered. As I indicated above, I accept the submission that the specification discloses a feeding schedule for some target weights that includes multiple meals per day, each being a separate meal corresponding to a single packet. If this is what is claimed then I agree that what is claimed is in substance disclosed. However the claims are not clear and potentially incorporate multiple packet meals that are not disclosed.
18. Therefore subject to resolution of this lack of clarity I must find that the amendments are not allowable under section 102(1).
Are the amendments allowable under section 102(2)(a)?
19. The High Court in AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227 stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.”
20. An immediate issue that is apparent in comparing the accepted claims and the claims as proposed to be amended is that each of claims 1-19 as accepted is limited to “a three to six week supply of pet food”. The claims are proposed to be amended to claim a 20 to 60 day supply which in no way can be said to fall within the scope of that range.
21. In defence the patentees seeks a favourable construction of omnibus Claim 19 which refers to “The nutrition system of claim 1, the weight loss system of claim 7, the method of claim 12, or the weight loss nutrition system of claim 18 substantially as hereinbefore described ….”. It submits that claim 19 is not limited to the substantive features of the independent claims but merely to the subject, that is, to a “nutrition system”, or a “weight loss system” etc as disclosed.
22. I cannot however agree that this is the correct construction of claim 19. There is nothing to suggest, such as an explicit disclaimer or modification, that the claim is not intended to be fully dependant on claims 1, 7, 12 or 18. That express dependency must be given effect and requires claim 19 to fall within the scope of and be limited to the features of the independent claims, with any further limitation that arises from the words “substantially as described with reference to the examples”. That being the case, the limitation of “a three to six week supply” cannot simply be ignored or substituted with a broader condition drawn from the description.
23. In this regard, the omnibus claim reflects a common structure by which the scope of the claimed invention is narrowed in dependant claims. The circumstances are substantially different to that considered recently in Reckitt Benckiser Healthcare (UK) Ltd v Glaxosmithkline Australia Pty Ltd (No 5) [2015] FCA 486 where the omnibus claim in question was of the form “A liquid dispensing apparatus, substantially as described with reference to the drawings and/or examples” and therefore not limited by dependency on other claims.
24. Consequently I find for this reason that the proposed amendments do not comply with section 102(2)(a).
Are the amendments allowable under section 102(2)(b) with regard to section 40(2) or (3)
25. As indicated above I do not consider claims 1 and 2, as a result of the proposed amendments, to be clear. For the same reason they may also not be fairly based. The claims leave in doubt how food is to be administered and particularly how the requirement for each packet to correspond to a single meal relates to the administration of food corresponding to multiple packets.
26. Aside from this, claims 1 and 2 are further unclear due to the words “wherein each packet comprises an amount of pet food corresponding to a single meal for the canine may be selected”. It is not apparent what effect the limitation “may be selected” has on the administration of an amount of food to the canine.
27. Finally there is an inconsistency in proposed claims 1 and 2 wherein while apparently directed to a nutrition system for use in effecting weight loss in a canine, the claims subsequently refer to “wherein the amount of pet food is formulated to alleviate or manage a disorder in a companion animal”. This creates uncertainty about the formulation of the pet food and particularly whether it is to address weight loss or some other disorder.
28. For these reasons I find that as a result of the proposed amendments the specification would not comply with section 40(3) and that the proposed amendments therefore do not comply with section 102(2)(b).
Conclusion
29. I find that the amendments are not allowable under section 102 and therefore I will refuse the request for leave to amend.
30. The effect my decision pursuant to regulation 9.5 is that re-examination of the patent is completed. However, given that a number of adverse re-examination reports have issued without resolution I will direct that a further re-examination of the patent be undertaken.
31. Furthermore, as a considerable period of time has elapsed without the patentee addressing the matters raised in re-examination, if the re-examination report is adverse and any grounds of invalidity are not addressed by a statement under subsection 99(1) and/or proposed amendments filed within two months of the date of the report, the patentee will be heard on whether the patent should be revoked under section 101.
P M Spann
Deputy Commissioner of Patents
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