John I. Haas v S.S. Steiner, Inc
[2011] APO 40
•9 June 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
John I. Haas v S.S. Steiner, Inc. [2011] APO 40
Patent Application: 2003270103
Title:Improved Application for Hop Acids as Anti-microbial Agents
Patent Applicant: S.S Steiner, Inc.
Opponent:John I. Haas, Inc.
Delegate:Nicole Howard
Decision Date: 9 June 2011
Hearing Date: 9 May 2011 in Canberra
Catchwords: PATENTS - section 59 - opposition to grant of a patent – claims novel and inventive – opposition fails on all grounds
Representation: Patent applicant: Katrina Howard SC, instructed by Alison McMillan, Patent Attorney of Pizzeys, Brisbane
Opponent:Andrew Fox of Counsel, instructed by Ivan Rajkovic, Patent Attorney of Shelston IP, Sydney
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2003270103
Title: Improved Application for Hop Acids as Anti-Microbial Agents
Patent Applicant: S.S Steiner, Inc.
Date of Decision: 9 June 2011
DECISION
The opposition fails on all grounds. Costs awarded against the opponent, John I. Haas, Inc.
REASONS FOR DECISION
Background
Patent application 2003270103 (‘hereafter the application’) was filed as a PCT application (WO2003/097079) by S.S Steiner, Inc. (hereafter ‘Steiner’) on 15 May 2003. It claims priority from US 60/381 659, filed on 17 May 2002. The specification was amended on 9 November 2006 and accepted on 16 January 2007.
A notice of opposition to grant of a patent was filed on 24 April 2007 by John I. Haas, Inc. (hereafter ‘Haas’), followed by a statement of grounds and particulars (hereafter ‘SGP’) on 25 July 2007. On 2 November 2007, the SGP was amended.
The matter was heard in Canberra on 9 March 2011. Steiner was represented was Katrina Howard SC, instructed by Alison McMillan, Patent Attorney of Pizzeys, Brisbane. Haas was represented by Andrew Fox of counsel, instructed by Ivan Rajkovic, Patent Attorney of Shelston IP, Sydney.
Evidence
Evidence in support was completed on 12 February 2009, consisting of statutory declarations by
·Ivan Alexander Rajkovic dated 23 October 2007, 2 November 2007 and 24 October 2008 (Rajkovic No. 1) together with Exhibits IAR-1 to IAR-3
·David Hysert dated 8 September 2008 (Hysert No.1) together with Exhibits DH-1 to DH-5
·Michael Wootten dated 11 February 2009 (Wootten No.1) together with Exhibits MW-1 to MW-16
Evidence in answer was completed on 18 August 2009, consisting of statutory declarations by
·Val Peacock dated 13 July 2009 (Peacock No.1) together with Exhibits VP-1, VP-2 and VP-4 to VP-23
·Val Peacock dated 13 July 2009 (Peacock No.2) together with Exhibits VP-1 to VP-22
·Richard John Hugh Wilson dated 15 August 2009 (Wilson) together with Exhibits RW-1 to RW-14
·Alison McMillan dated 18 August 2009 (McMillan)
It is noted that the McMillan declaration confirms that the two Val Peacock declarations use identical annexure numbers for identical exhibits. The Peacock declarations respond to the Hysert and Wootten declarations respectively.
Evidence in reply was completed on 13 August 2010, consisting of statutory declarations by
·Ivan Alexander Rajkovic dated 14 April 2010 (Rajkovic No.2) together with
Exhibit IAR-4
·Michael Wootten dated 12 August 2010 (Wootten No.2) together with Exhibits MW-17 to MW-23
·David Hysert dated 19 March 2010 (Hysert No.2) together with Exhibits DH-6 to DH-12
Grounds of Opposition
By their amended SGP (2 November 2007), Haas raised five (5) grounds of opposition. At the hearing Haas narrowed the scope of grounds and also limited the number of prior art documents relied on to two (2). For the purposes of this opposition the grounds relied upon by the Opponent are now:
·Lack of Novelty
·Lack of Inventive Step
·Lack of manner of manufacture
·Failure to comply with s.40 (fair basis only)
The specification
The description
The description is directed to processes for preparing alkali metal salt forms of β-acids dissolved in propylene glycol, and their uses in controlling microbial growth in food products, process streams and other applications such as cosmetic and pharmaceutical formulations.
The application explains that before the priority date, it was known that hop resin acids (α-acids, β-acids, iso-α-acids and chemically reduced iso-α-acids such as tetrahydroiso-α-acids) have antimicrobial activity. β-acids are generally considered to be particularly effective. However, to date only aqueous alkaline solutions of β-acids have been prepared, which suffer a number of disadvantages. These include
·Poor solubility resulting in limitations on concentration
·Poor temperature stability
·Poor physical stability (this may include precipitation of waxy or resinous matter that may foul pipelines and dosing pumps)
The specification admits that the use of propylene glycol as a solvent for many organic substances is well-known and that it has been used as an aid to the solubilization of isomerized and chemically reduced, isomerized α-acids.
The present invention is said to ‘surprisingly’ have found that the alkali metal salts of the β-acids are more soluble in propylene glycol than are the free acids themselves, and more soluble also than they are in water. The preparation processes of the invention are limited by the requirement that addition of concentrated, aqueous solution of an alkali metal hydroxide to a heated mixture of β-acids and propylene glycol results in a homogenous solution that after 3x dilution with water has a pH of at least about 9.0.
The solutions/formulations (and processes for their formulation) of the invention are stated to be advantageous over the prior art in that they
·have chemical and physical stability over a wide temperature range
·may be prepared at substantially and usefully higher concentrations
·are miscible with water, facilitating easy dosing at reduced concentrations
·partially mask the normally slightly bitter flavour of β-acid preparations when used in food applications
These features enable more concentrated, stable and effective solutions to be prepared, transported, stored and used than has hitherto been achieved. The key features of the various embodiments of the invention as described are clearly delineated in the claims below and therefore don’t require further explanation here.
The claims
The specification ends with 19 claims recited as follows.
1.A process for the preparation of a solution of hop-derived β-acids suitable for use in the prevention or restriction of bacterial growth and comprising the steps of:
a.heating a mixture of β-acids and propylene glycol:
b.simultaneously or sequentially adding a concentrated, aqueous solution of an alkali metal hydroxide to the heated mixture sufficient to obtain a homogenous solution that after 3x dilution with water has a pH of at least about 9.0, and
c.cooling the resulting mixture.
2.The process of claim 1, wherein the alkali metal is potassium or sodium.
3.A process for inhibiting growth of bacteria of other microorganisms comprising applying a solution containing the alkali metal salts of β-acids in propylene glycol to a solid or liquid medium or process stream.
4.The process of claim 3, wherein the solution of β-acids is applied either in neat form or as an aqueous dilution.
5.The process of claim 4 wherein the solution of β-acids is applied by dipping a solid food product into a solution containing the alkali metal salts of β-acids in propylene glycol.
6.The process of claim 4 wherein the solution of β-acids is applied by spraying a solid food product with solution containing the alkali metal salts of β-acids in propylene glycol.
7.The formulation of a cosmetic or pharmaceutical cream or ointment in which a solution containing the alkali metal salts of β-acids in propylene glycol is added in sufficient amount for the prevention or retardation of the growth of bacteria.
8.The formulation of any pharmaceutical preparation in which a solution containing the alkali metal salts of β-acids in propylene glycol is added in sufficient amount for the prevention or retardation of the growth of bacteria.
9.The process of claim 1, wherein the solution of β-acids contains from about 1 to 30 weight percent of β-acids.
10.The process of claim 1, wherein the solution of β-acids contains from about 5 to 25 weight percent of β-acids.
11.The process of claim 1, wherein the solution of β-acids contains about 20% [sic] weight percent of β-acids.
12.A solution of the alkali metal salts of hop-derived β-acids in propylene glycol prepared as claimed in Claim 1 and in which the concentration of the β-acids exceeds 10 weight percent.
13.The solution of claim 12, wherein the water content is below about 7%.
14.The solution of claim 12, wherein the concentration of the β-acids exceeds 10 weight percent.
15.The solution of claim 14, wherein the water content is below about 7%.
16.A process for the preparation of a solution of hop-derived β-acids, substantially as herein described with reference to any one of Examples 1, 2, 3 or 4.
17.A process for inhibiting bacterial growth, substantially as herein described with reference to Example 7.
18.An ointment substantially as herein described with reference to Example 7.
19.A preparation of alkali metal salts of hop-derived β-acids, substantially as herein described with reference to any one of Examples 1, 2, 3, 4, 5, 6 or 7.
Claim Construction
The scope of claim 1 is central to the outcome of the opposition and is determined by the construction of the terms ‘solution of hop-derived β-acids’ (being the result of the process) and ‘mixture of β-acids’ (being a starting material of the process). On plain reading of the claim, I cannot determine what proportions or range of proportions of β-acids are found in the solutions and mixtures. Referring to the specification, it becomes apparent that the solutions and starting mixtures contain predominantly β-acids. It follows that the solutions and mixtures of claim 1 are construed as containing other hop acids or components, but at a very minimum will consist of a substantial proportion of β-acids.
The Person Skilled in the Art
The field of the invention lies in the chemistry, formulation and application of hop acids. The person skilled in the art will have a background relevant to at least one of these areas.
Haas
The opponent relies on the expert views of declarants Professor Michael Wootten (Wootten) and Dr David Hysert (Hysert). Wootten has qualifications in organic chemistry, and research, teaching and consulting experience in cereal science and technology, starch chemistry and technology and general food chemistry. While it is clear that Wootten has a wealth of experience across the food industry, he has explicitly stated that he does not claim, and has never claimed to be an expert in brewing with respect to hop acids. Hysert has qualifications in bioorganic chemistry, and extensive research, development and consulting experience in the brewing industry, and hops and hops products companies. He was employed by Haas from 1992 to 2007 and at the date of his declaration was an outside consultant to Haas.
Steiner
The applicant relies on the expert views of declarants Dr Val Peacock (Peacock) and Dr Richard Wilson (Wilson).
Peacock has qualifications in organic chemistry and worked on the chemistry of hop flavour in beer. He was the manager of hop technology at Anheuser-Busch Inc. the largest brewery in the United States. His major areas of research interest and expertise include chemical and flavour differences of different hop varieties, storage of hops and hop products, use of hops and hop products in the brewing process and the use of both simple and refined hop products to maximise beer foam and flavour stabilization. Wilson has qualifications in biochemical engineering and extensive research, development and consulting experience in the brewing and hops products industry. Wilson worked many years at Steiner and at the date of his declaration was expecting to work part-time as the Group Technical Consultant at Steiner. Wilson is listed as an inventor of the opposed application.
The Declarants
All declarants have adduced evidence that is relevant to the present case. In many instances their declarations are diametrically opposed. The merits of the opposition must be determined with regard to the evidence, particularly when the common general knowledge is in question. It is therefore pertinent that when there is a conflict in the evidence, I must have regard to the background of the declarants in order to accord appropriate weight to that evidence.
In my view, as an expert in hop chemistry, Peacock is the skilled artisan. While Wootten has an extensive background in organic chemistry and food chemistry, by his own admission he has very little experience in the brewing industry and no experience in hop chemistry. While Wootten may possess knowledge that approaches or approximates that of the skilled artisan, when there is a conflict the evidence of Peacock is to be preferred. Both Hysert and Wilson have a long history as senior employees of the opponent and applicant (respectively). Indeed Wilson is listed as an inventor of the opposed application. They both are regarded as people skilled in the art of hop chemistry.
Priority Date
It is noted that Haas originally pleaded that the present application is not entitled to the earliest priority date in the SGP but did not particularise or proffer evidence in support of such an argument. On comparison of the present claims and the priority document I am satisfied that the invention is disclosed in the priority document, and determine the priority date of all the claims at hand to be 17 May 2002. Given that Haas has chosen not to press the matter, I do not think it necessary to elaborate any further.
Onus of proof
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).
Novelty
The novelty documents pressed in this Opposition are:
·GB 1 112 795 D9 published 8 May 1968
·US 6 475 537 D3 (equivalent of WO2001/006877 published 1 February 2001)
The Opponent contends that D9 is the most relevant for novelty purposes.
The law of novelty
The basic test for novelty is the “reverse infringement” test as stated in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486:
“If carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim”.
In applying this test regard must be given to the level of disclosure in the prior publication. As stated in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517:
“It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakeable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication.”
In Nicaro Holdings, Gummow J also referred to the speech of Lord Reid in C. Van Der Lely N.V. v Bamfords Limited [1963] RPC 61 and 71-72 where Lord Reid reaffirmed the principle set down by Lord Westbury in Hills v Evans [1862] 4 De G, F & J 288; 45 ER 1195 in relation to the level of disclosure necessary to anticipate a claimed invention:
"a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments".
Accordingly the alleged anticipation must not only disclose all of the integers of the claim, it must also provide sufficient detail to enable the skilled addressee to combine those integers to produce the invention without the need for further experimentation.
GB 1 112 795
‘795, titled ‘Water-dispersible Hop Flavours for Malt Beverages and the like’ is concerned with water-dispersible flavouring compositions comprising an isohumulone (α-acids), a method of making the same, and a method of utilizing the same in the flavouring of malt beverages such as beer and ale. The document discloses [p3, 11]
‘The compositions according to the invention are made by mixing together the isohumulone and propylene glycol or glycerine, or both and any water that is to be present, and adjusting the pH to at least 3. The adjustment is normally achieved by the addition of alkali.’
Example 2 discloses
‘A preisomerized extract, containing 40% isohumulone (100g) total weight) was warmed to fluidity, and 50g of propylene glycol was added. Ten ml. of 40% NaOH was added, the pH of the mixture being 6.5’ and also ‘Another similar composition containing 46% preisomerized hop extract, 53% propylene glycol, and 1% [of] 30% weight by weight aqueous sodium hydroxide, having a pH of 7’
Example 3 discloses
‘The pH of a 5% solution of isohumulone [emphasis added] in propylene glycol was raised from pH2 to pH10.7 by the addition of 20% sodium hydroxide, and the final concentration to 4% isohumulone by addition of propylene glycol…It is known that isohumulone forms the valueless, harshly bitter humulinic acid at these pHs in aqueous systems, and the unexpected stability in the presence of glycerine or propylene glycol cannot be explained. It should also be pointed out that essential hop oil could possibly lose flavour quality at this pH, so that a pH in the range of Example 1 is preferred, especially when hop oil is present.’
(Example 1 prefers a pH of at least 3.8 and more preferably 7.)
Haas contend that α-acid preparations contain detectable amounts of β-acids (Wootten No.1 at p6, [25], Hysert No.1 at p2, [7], and that this implicitly discloses that the method described in D9 is equally effective to dissolve β-acids. Haas further contends that on this basis, the document inherently discloses the method as claimed in the opposed application.
Wilson accepts that ‘significant amounts of beta acids’ may be found in the compositions disclosed in Example 2, (p15, [42]). However, Wilson also points out that the compositions of Example 2 fall short of the pH value of at least 9 (p15, [42]).
The requirement that step (b) in the process of claim 1 must result in a homogenous solution that after 3x dilution with water has a pH of at least about 9, is without doubt an essential feature of the claim. Despite containing β-acids, Example 2 does not disclose this feature, rather it explicitly states a pH of 7 “was found to be ideally suited for the intended purpose”. It is clear that claim 1 is not anticipated by Example 2. It follows that dependant claims 2 and 9-15 are also novel in this regard. Omnibus claims 16-19 are directed to various Examples in the specification, none of which travel further than the other claims. Claims 16-19 are therefore novel when compared to Example 2.
The Opponent further contends that Example 3 discloses the use of propylene glycol as a solvent for β-acids in salt form, given β-acids may be found in Example 2. In this example, the pH of the compositions is 10.7. Hysert (No.1, [7]) declares
‘Example 3 describes an isohumulone solution in propylene glycol that is treated with 20% sodium hydroxide to raise the pH level to 10. I also note that the GB ‘795 publication mentions use of “hop extracts” (e.g. page 3, line 71) including isohumulone extracts as part of the formulation, and it is my expert opinion that the hop extracts described in GB ‘795 publication would necessarily contain measurable amounts of other hop acids, including beta acids’.
On the other hand, when discussing Example 3, Peacock declares (No.1,[14a])
‘[Example 3]…In my opinion…does not guide one to the process of the opposed application.’
And further, (No.1,[14c]) in relation to isohumulone products,
‘with today’s highly sensitive analytical methods beta acids would likely be found in the preparations described in the patent, but the last thing a brewer wants injected into his beer is beta acids because they will cloud the beer and may give it a lingering unpleasant bitterness. The concentration of beta acids in these products must be trivial in order for them to be acceptable to brewers’
Example 3 is directed to the preparation of isohumulone products that are specifically intended to be introduced into malt beverage (beer), unlike Example 2. While I accept Hysert’s broad statement that some β-acids may be present in Example 3 it would appear that these exist merely as a minor impurity, given Peacock’s evidence that β-acids are in fact undesirable in such a product. I therefore cannot find that Example 3 provides clear and unmistakable directions to make propylene glycol solutions of alkali metal salts of β-acids, wherein the solutions comprise a substantial proportion of β-acids. Even if I am incorrect on this matter, the onus of proof falls on the opponent, and in my view a strong enough case has not been made out. Claims 1, 2 and 9-19 are therefore novel when compared to Example 3.
Remaining claims 3-8 define various processes and formulations for inhibiting microbial growth using solutions containing the alkali metal salts of β-acids in propylene glycol. These claims are not limited to solutions that have been prepared by the process of claim 1, in particular that step (b) must result in a homogenous solution that after 3x dilution with water has a pH of at least about 9. However, ‘795 does not in any way disclose the use propylene glycol solutions of alkali metal salts as an anti-microbial and therefore cannot deprive these claims of novelty.
I find that all claims (1-19) are novel in light of ‘795.
US 6 475 537 (WO2001/06877)
US ‘537 titled ‘Hops Acid Antibacterial Compositions’ is concerned with anti-microbial compositions comprising hop acids, hop acid derivatives, hop resins or hop resin derivatives, (preferably) β-acids and a food grade surfactant or surface agent which is either a non-ionic surfactant, propylene glycol, or a mixture thereof. There is no mention of preparing alkali metal salts of β-acids.
I find that all claims (1-19) are novel in light of ‘537.
Inventive step
The Invention
The problem to be solved is the provision of stable, concentrated β-acid solutions suitable for use in the prevention/inhibition of microbial growth in solid or liquid medium, process streams, food products, cosmetics or pharmaceuticals. The problem is clearly disclosed in the specification [p3, 11-25].
Haas submitted that the invention lies in the creation of a solution with very little water. This submission is based on a statement made by Peacock (No.1[11]). The applicant asserts that the invention lies in a process that (inherently) results in only a small amount of water being present in the solution, and that this is simply what Peacock is referring to. I agree with this assertion.
As agreed by both parties, the specification teaches steps directed to using propylene glycol as a solvent for alkali salts of β-acids. Whether the integers and their combination defined in the claims is obvious is the question I must answer.
The law of inventive step
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 at [53]; 212 CLR 411 at [53] approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful, desired result?”
Is the invention obvious?
The Opponent contends that the claims of the present application are devoid of an inventive step using two arguments. The first is that the features of the claims are known in light of the common general knowledge alone. The second approach is that the invention is nonetheless obvious when considered in light of s7(3), being that the invention as claimed is obvious when the common general knowledge of the person skilled in the art at the earliest priority date is considered together with either the ‘795 or ‘537 documents cited above.
Are the claims obvious in light of the common general knowledge alone?
The essence of Haas’ first argument hinges on the following propositions that the process described in claim 1:
(a) produces a composition suitable for use in the prevention or restriction of bacterial growth which is a known use;
(b)involves steps which were known, such as creating hop extracts in the form of β-acids in alkali metal salt form; and
(c) utilises propylene glycol as a solvent, which was well known.
Haas characterise the only aspect of the claim left as the potential candidate for an alleged invention as the mere idea of using propylene glycol as the solvent for β-acids in alkali salt form. They argue that the evidence shows that it was well known at the priority date that propylene glycol was useful as a solvent for α-acids. From here they contend that a skilled artisan would readily consider using propylene glycol as a solvent for β-acids in alkali metal salt form.
While integers (a)-(c) may be argued as forming part of the common general knowledge (taken independently), the Opponent needs to establish that it would have been a matter of routine to combine all of the steps in the way it has been done in the claim. Since the Opponent has not adduced any evidence in support of this assertion, I cannot find that claim 1 is obvious in light of the common general knowledge alone. It follows that the remaining claims also stand in this regard.
Are the claims obvious when considered in light of s7(3)?
Haas’ second argument is that the claims lack an inventive step when the common general knowledge is considered together with either the ‘795 or ‘537 documents cited above.
US 6 475 537 (WO2001/06877)
I consider the ‘537 document would be ascertained, understood and regarded as relevant by the skilled person because it solves a very similar problem to that of the present application (β-acid compositions for use an anti-microbial). As discussed under novelty above, ‘537 teaches anti-microbial compositions comprising hop acids, hop acid derivatives, hop resins or hop resin derivatives, (preferably) β-acids and a food grade surfactant or surface agent which is either a non-ionic surfactant, propylene glycol, or a mixture thereof. The compositions have a pH of 6. There is no mention of alkali metal salts of β-acids. Further, propylene glycol is only disclosed as a surfactant or surface agent, there being nothing to suggest that it is used for the purpose of, or is acting as a solvent. No evidence was provided that clearly establishes that the combination of steps that would lead the person skilled in the art from this document to the additional subject matter of the opposed claims would have been a matter of routine. I find claims 1-19 inventive in light of this document.
GB 1 112 795
As established under novelty, the ‘795 patent in Example 2, at best teaches propylene glycol solutions of alkali metal salts of presisomerized extract, with 40% isohumulone (α-acids) at pH 7, wherein measurable quantities of β-acids are inherently present but not specifically disclosed or suggested. Example 3 at best teaches propylene glycol solutions of alkali metal salts of isohumulone at pH 10 but only contains β-acids as a minor impurity (not disclosed or suggested). The composition of Example 3 is used for flavouring beer and the like. The patent makes no mention whatsoever of anti-microbial applications or (explicitly) β-acid solutions. Wootten (No.2 at p16 [39]) says that this document would have been found by him conducting a simple literature search, but provides no detail of why. Hysert (2, [21]) merely attests that ‘he could have accessed each of the cited patent specifications in the event that I wished to investigate a problem I had come across in my work.’ Neither of Wootten or Hysert address this question in light of the problem to be solved. I am not satisfied that the document would be ascertained, understood and regarded as relevant by the skilled person, in particular because the document addresses a completely different problem to that of the opposed application and it is not apparent why a document that discloses α-acid solutions for flavouring malt beverages would be regarded as relevant to making β-acid solutions for inhibiting or preventing the growth of micro-organisms. It follows that the document is not available under s7(3). I therefore find that claims 1-19 possess an inventive step.
Manner of Manufacture
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. 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) 183 CLR 655 at 655).
The opponent argued that the process steps and their products failed the threshold test for patentability because it was apparent on the face of the specification that they were known and therefore not a manner of manufacture. This reasoning simply restates the opponent’s novelty and inventive step arguments which have already been fully considered under those grounds. I have determined that the claims are indeed novel and inventive and I do not propose to revisit the same issues under a different ground.
Section 40(3)
Fair basis
At the hearing Haas advised that they did not wish to press section 40(2) issues, but rather only pursue an assertion that claims 1-12, 14 and 16-19 are not fairly based. The objection is that the claims are not fairly based because it is either essential that the composition contain a as little water as possible (and this feature is absent from the claims), or the claims require as little water as possible and this feature is absent from the description. Despite the inherent contradictions in the Opponent’s position, I have considered whether there is fair basis. The specification does not disclose a solution that has ‘as little water as possible’. As Steiner has pointed out, this objection has not been pleaded or particularised. I will nonetheless make some comments on Haas’ objection.
The general test for fair basis set out in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69]; (2004) 217 CLR 274 at 300 [69] requires that there be 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.’
The specification describes as a process for preparing propylene glycol solutions of alkali metal salts of β-acids. The claims broadly relate to such processes. I find that claims 1-19 are fairly based.
CONCLUSION
The opposition fails on all grounds.
COSTS
It is usual practice for costs to follow the event. In this case I see no reason to deviate from this approach. Accordingly I award costs against the opponent, John. I. Haas, Inc., according to Schedule 8 of the Patent Regulations 1991.
Nicole Howard
Delegate of the Commissioner of Patents
0
8
0