Koninklijke Douwe Egberts B.V. v K-Fee System GmbH
[2020] APO 9
•3 February 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Koninklijke Douwe Egberts B.V. v K-Fee System GmbH [2020] APO 9
Patent Application: 2016204473
Title:Portion Capsule and Method for Producing a Beverage Using a Portion Capsule
Applicant: K-Fee System GmbH
Opponent: Koninklijke Douwe Egberts B.V.
Delegate: Dr N. R. Madsen
Decision Date: 3 February 2020
Hearing Date: 9 December 2019, in Canberra
Catchwords: PATENTS – a portion capsule comprising a non-woven felt filter element – section 59 – opposition to grant of a patent – grounds of clarity, support, clear and complete disclosure, best method, novelty, inventive step – opposition successful – claims are clear – claims lack novelty – claims lack an inventive step – claim are supported – invention is clearly and completely disclosed – best method disclosed – opportunity to amend – costs awarded against applicant
Representation: Counsel for the opponent: Claire Cunliffe
Patent attorney for the opponent: Edith Hamilton of Davies Collison Cave
Counsel for the applicant: Laura Thomas
Patent attorney for the applicant: David Mueller-Wiesner of Spruson & Ferguson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016204473
Title:Portion Capsule and Method for Producing a Beverage Using a Portion Capsule
Applicant: K-Fee System GmbH
Date of Decision: 3 February 2020
DECISION
The opposition is successful. Claims 2, 3, 7, 8 and 12 are not novel. Claims 1-8 and 12-14 lack an inventive step. No other grounds are made out.
There is patentable subject matter within the specification that could overcome the adverse findings of the decision. Accordingly, the applicant has two months to propose amendments to overcome these findings.
Costs are awarded against the applicant.
REASONS FOR DECISION
Background
This matter relates to patent application 2016204473 in the name of K-Fee System GmbH (the applicant), having an earliest claimed priority date of 22 September 2010. The patent was examined and advertised as accepted on 14 June 2018. Following this, a notice of opposition was filed on 14 September 2018 by Koninklijke Douwe Egberts B.V. (the opponent). The request for examination was filed on 2 August 2016 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. Thus, the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
The opponent took the opportunity to file evidence in support, to which the applicant chose not to answer. At the hearing the opponent pressed grounds of clarity, support, clear and complete disclosure, best method, novelty and inventive step. The opponent also challenges the priority date of the presently claimed subject matter, this being relevant to a citation pressed for inventive step.
The evidence
Evidence in support comprises the following:
·A declaration by Michael Gerakios (Gerakios) dated 13 March 2019 with exhibits MG-1 to MG-8.
·A declaration by David Ian Husband (Husband) dated 14 March 2019 with exhibits DIH-1 to DIH-15
·A declaration by Edith Francis Hamilton dated 14 March 2019 with exhibits EFH-1 to EFH-6.
The Person Skilled in the Art
The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In Root Quality v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
A skilled addressee in the present case will have a practical interest in the design of coffee pods particularly in the context of filtration methods. Mr David Ian Husband is a mechanical engineer who has worked extensively in the design of consumable products for high volume manufacture, including coffee capsules as well as coffee machine enhancements (Husband at [7]). He is clearly well versed in the art of coffee capsule design and manufacture but admits that although filters were well known at the priority date, he and his colleagues would approach a filtration expert when selecting suitable filters (Husband at [27], [32] and [39]). Mr Michael Gerakios is such a filtration expert. He is a chemical engineer with almost 20 years’ experience in filter media and filter belts (Gerakios at [5]). I consider it clear that the notionally non-inventive skilled addressee would possess the skills of a team including both Mr Husband and Mr Gerakios. As such, their evidence is valuable to the present matter.
Specification
The invention described in the specification relates to the field of beverage capsules used for preparing hot drinks using machines of the Nespresso™ type. The capsules conventionally have a capsule body with a base and a filling side, whereby pulverulent or liquid beverage base is placed between the capsule base and filling side. A filter element is often arranged between the beverage base and capsule base. The capsules are often in the form of a truncated cone with an open filling side for adding the beverage base. The open filling side will usually have a collar edge on which cover film or foil is sealed or adhesively bonded. Particle screens or filters placed against or adjacent the capsule base, are often formed by injection moulding or stamping.
To brew a coffee beverage, the portion capsule is inserted into an appliance which pierces the base with a mandrel and taps the sealing foil or film with puncturing means. Hot water is fed through the portion capsule under pressure extracting substances or dissolving material in the beverages base which flow out of the capsule. The particle screen/filter serves to hold large particles in the capsule as the beverage flows out. The specification at [0005]-[0007] outlines issues with these screens/filters.
[0005] A disadvantage of the screens which are produced using a plastic injection molding process or using a thermoforming or stamping process is, however, that the openings in the screen holes have to be smaller than the smallest coffee particles in order to retain the coffee particles. Since a certain proportion of dust is necessarily produced in a coffee grinding process, coffee particles pass through if the screen holes are too big or the screens are blocked if the screen holes are too small, in particular at high pressures. Furthermore, corresponding supporting elements which act against the capsule base are required beneath the screens in order to absorb the brewing water pressures of up to 20 bar and to prevent deformation of the screens as a result of the high brewing water pressure (together with a high brewing water temperature). These supporting elements disadvantageously require additional material to be used, particularly in the case of screen arrangements produced using an injection molding process, as a result of which the production costs rise.
[0006] Therefore, the prior art discloses portion capsules with screen arrangements which are intended to avoid these disadvantages. US 2778739, EP 1710173 Al and US 5352765 disclose portion capsules having screen arrangements which consist of a screen support with relatively large passage openings, with these openings being covered by a filter material. A disadvantage of these arrangements is that additional costs for material and manufacture are incurred for forming such screen arrangements since they consist of a stable screen support and the filter material which is arranged on the screen support.
[0007] Both in the case of screens with screen holes and in the case of screen arrangements with an additional filter material, it is necessary to ensure that the ready beverage which passes through the screen arrangement can flow to a capsule outflow opening, that is to say a free space for the discharge of a beverage has to be provided between the capsule base and the screen arrangement. In addition, screen arrangements of this kind take up their own proportion of space in the portion capsule, this leading to an increase in the volume of the capsule and thus necessarily likewise to additional material being used.
Paragraph [0008] then discusses that the object of the present invention was to provide a portion capsule having a filter arrangement, which is less expensive, and which overcomes the described disadvantages at the same time.
Figures 4 to 6 show some embodiments of the claimed invention showing a filter element 7 on the base of a capsule. None of these embodiments use a screen between the base and filter.
The claims
10. The specification as accepted includes 14 claims, 10 of which are independent. Claim 1 is as follows with the common features to all independent claims underlined.
1. A portion capsule for producing a beverage, having a capsule body with a capsule base and a cover, with a cavity for accommodating a pulverulent or liquid beverage base being formed between the capsule base and the cover, and with a filter element being arranged between the beverage base and the capsule base, wherein the filter element comprises a non-woven which is arranged on an inner side of the capsule base, the non-woven comprising a felt structure, the felt structure comprising a plastic fiber material, the felt structure is provided on or in a support structure, and wherein the filter element has two felt structures which are separated from one another by the support structure.
11. The remaining independent claims are very similar with the following characteristic differences:
2. ... and wherein the filter element is elastic and at least an edge of the filter element is arranged on the inner side of the capsule base.
3. … and wherein the diameter of the filter element is greater than the diameter of the capsule base.
4. … and wherein the filter element has an edge which projects substantially in the direction of the cover and/or is bent in the direction of the cover.
6. … and wherein the capsule base has a protrusion in a direction opposing the cover.
7. … and wherein the filter element is formed in such a way that, when the capsule base is perforated by an external perforation means, the filter element is at least partially lifted off from the capsule base.
10. … the filter element has a material reservoir, and wherein the filter element has a corrugated or folded region which functions as the material reservoir.
11. …the filter element has a material reservoir, and wherein the filter element is formed in such a way that, when the capsule base is perforated by an external perforation means, the filter element lifts off from the capsule base in a central region of said filter element and material of the filter element from the material reservoir moves in a direction of the central region.
12. … and wherein the capsule base has a predetermined breaking point which is intended to tear open as a result of mechanical contact with an external perforation means.
14. … and wherein the capsule base has an outlet opening which is sealed off by a film or foil, with the film or foil having a pull-off tab for pulling off the film or foil by hand.
The Relevant Priority Date
According to Regulation 3.12(4), in order to obtain priority from an earlier priority document, that document must disclose the invention in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art. To understand what is meant by a clear and complete disclosure, it is useful to turn to the requirement of section 40(2)(a) as amended by the Raising the Bar Act. As per the Explanatory Memorandum, “clear and complete disclosure” is intended to impose the following requirement:
“…that the skilled person reading the specification must be able to perform the invention across the whole width of the claims, not merely in relation to one among other embodiments within their scope. The requirement is consistent with the principle that the description accords with the scope of the monopoly granted.”
In this sense, section 40(2)(a) requires the specification to provide an enabling disclosure of the claimed invention, such that the person skilled in the art can, on the basis of the information disclosed in the application as filed and the common general knowledge in the art, perform the invention over the whole width of the claims, without undue burden or the need for further invention.
The opponent contends that:
“Neither [of the two priority documents, being A1 and A2] disclose the use of a plastic fibre felt in the filter element, which is a requirement of each of the claims. A1 discloses: ‘a tear-proof, nonwoven filter element or an open-pored sponge or foam filter element made from physiologically harmless material, which is preferably firmly attached to the bottom of the capsule,’ and as a ‘non-woven filter or a sponge or foam filter’.”
“A2 discloses that ‘the filter element comprises a non-woven fabric that is arranged in the region of the capsule floor’, as ‘a simple and economical non-woven fabric,” as a ‘non-woven fabric filter’, and in an embodiment, as ‘non-woven fabric material manufactured from fine polyester fibres’ and in another embodiment, as ‘an open-pored sponge and/or foam material’.”
The evidence of Mr Gerakios suggest that a plastic fibre felt is simply a type of non-woven that is made from a physiologically harmless material. Mr Gerakios points to common processes of felting of plastic fibres that do not involve any ordered weaving of the fibre elements (Gerakios at [62], [63]). He notes that “generally, there is little distinction between saying something is a nonwoven and saying it is a felt”, and “in general, a nonwoven is a robust felted material” (Gerakios at [64], [74]). I consider that the limiting of the claims of the present invention to a plastic fibre felt is nothing more than the selection of a particular material that is taught by the broader terminology of the priority documents, akin to the selection of a well-known particular type of screw when a disclosure is in respect of screws in general. I see no undue burden or further invention is selecting a plastic fibre felt. As such, I consider the priority date remains as 22 September 2010.
A result of this finding is that document D8 raised under the ground of inventive step is not relevant to the present matter.
The Common General Knowledge
17. In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited(1980) 144 CLR 253 at page 292, Aickin J. stated:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
18. As a starting point, I am satisfied that the opponent has established the following as common general knowledge:
· Coffee, tea and hot chocolate are beverages that can be made using a capsule. Capsules are generally pierced and hot water flows through the capsule to make the beverage. Capsules are usually made of food grade plastic or aluminium with a polymer or aluminium lid. (Husband at [14]-[16])
· Beverage bases for capsules were typically dry powder or (for tea) leaf. (Husband at [73]-[75])
· Capsules typically have a rounded profile, with the base typically being narrower than the top. (Husband at [28])
· Capsules commonly contained a filter inside, with coffee (for example) being between the filter and the lid (Husband at [27], [28]). Usually, about two thirds to three quarters of the capsule was occupied by coffee grounds. (Husband at [73])
· There were many different types of filter materials that could be placed inside a capsule (Husband at [32]). The filters were placed between coffee grounds and the point of beverage egress to permit flow of beverage out but retain coffee grounds within the capsule (Husband at [33]). Cost was a relevant consideration to selection of filter material (Husband at [34]).
· Typically, there was a gap between the base and a filter. This prevented piercing of the filter. However, where no piercing was involved in extracting coffee from the base (because of pre-perforation) then there was no need to provide a gap (Husband at [52, 71]).
· In selecting a filter, coffee capsule experts would consult filtration material experts (Husband at [39]).
· In selecting a filter, a filtration expert would consider cost and performance (Gerakios at [32], [33])
· A non-woven in the form of polyester felt was a very common filtration material across a variety of applications being low cost (Gerakios at [62], [63]).
Section 40: Clarity/Claim Construction
19. There are a number of key clarity and construction issues that are primarily relevant to the determinations under novelty and inventive step. The usual principles remain relevant to the constructions of the specification and claims. While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Additionally, Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) IPR 331 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) notes:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
Terms requiring careful consideration include “non-woven”, “on or in a support structure”, “elastic”, and “arranged on”.
Non-woven
Regarding this feature the opponent submits that:
“Each of the independent claims refer to a ‘non-woven comprising a felt structure’. The term ‘non-woven’ is unclear because of the conflicting definitions within the Application at [0011] and [0012], since it is unclear how the non-woven can be both ‘an unordered, non-woven structure’ and ‘a fiber-oriented non-woven’. These conflicting definitions render the term ‘non-woven’ unclear.”
Paragraph [0011] of the description states that a non-woven within the meaning of the invention is an unordered, nonwoven structure comprising fibers, in particular plastic fibers. At [0012] it is stated that provision is made for the non-woven to comprise a non-woven material which is produced from fine plastic fibers, for example fine polyester fibers, and, in particular, is a random fiber nonwoven and/or a fiber-oriented non-woven. Clearly, two types of non-woven are contemplated by the text, one where the fibres are unordered and one where the fibres are ordered. The opponent appears to contend that these extracts constitute definitions of the term non-woven that are inconsistent with each other and hence rendering the specification and claims unclear.
Primarily I do not consider the text in [0011] to provide for a limiting definition of the term “non-woven”. The text does not say that a non-woven equates with an unordered structure. The text simply states that a non-woven, that is encompassed by the meaning of the invention, includes an unordered structure. At the same time according to [0012], a non-woven can be considered random (unordered) and/or possibly fibre-oriented (ordered). I do not see these extracts as providing separate definitions of the term, but instead describing different ways that a non-woven can be constructed. It may be ordered or unordered, if it is not woven. In this regard the meaning of the term in the claim is in fact clear, simply being a plastic fibre material that does not include any weaving/interlacing of fibre materials.
On or in a support structure
25. The opponent submits that claim 1 is unclear regarding the term the felt structure is provided on or in a support structure, and wherein the filter element has two felt structures which are separated from one another by the support structure. The opponent suggests that it is “unclear how a felt structure can be in a support structure and also separate by it”. Present in the feature, is a felt structure which itself is composed of two felt structures. The two felt structures are separate from one another, e.g. not touching. The support structure separates the two felt structure elements.
26. In response the applicant has pointed to figures 12(a), 12(b) and 12(c) which show filter elements. Figure 12(a) is a filter element with a single felt structure on a support structure while 12(b) is a filter element which shows two layers of felt on either side of a singular support structure. Figure 12(c) then contemplates two filter elements selected from figures 12(a) and/or 12(b) laying on top of each other. In other words, figure 12(c) shows a sandwiching of a filter element between supporting structures, as well as on top of supporting structures. In this regard, felt structure is on or in a support structure.
27. While the described embodiment assists in understanding what may be meant by the term “on or in”, I consider the plain meaning of the term “on or in” will be a term that the person skilled in the art will understand. In other words, felt structures will be rested on a supporting structure element, or they will be within a structure element or elements. I see no lack of clarity.
Elastic
28. The opponent submits that claim 2 is unclear in regard to the scope of the term “elastic”. They suggest that the degree of elasticity is entirely unclear there being no workable standard present. In response, the applicant points to the need for a purposive construction to the term in that “in the context of the specification as whole, it is clear that the filter element must be sufficiently elastic to allow it to be stretched around the perforation means without being torn”.
29. Reading claim 2, I see no need for such a purposive construction. The claim simply adds the feature wherein the filter element is elastic and at least an edge of the filter element is arranged on the inner side of the capsule base. In fact, the desire of the applicant to limit the claim as per above to me is a gloss. There is no function of the elasticity even contemplated in claim 2, there is no piercing function present in the claim, and for that matter, it is within the scope of the claim that the capsule is not even pierced from the bottom (Figure 7 of the specification shows embodiments where a pull tab is used to allow beverage to flow out). I consider the term elastic clear with a meaning as per the Macquarie Dictionary being:
adjective 1. having the property of recovering shape after deformation, as solids.
30. Claim 2 is clear. The definition provides a workable standard.
Arranged on
31. While not raised as an issue by the opponent in relation to clarity, the applicant pointed to this term forming part of the common features of all the claims. In this regard, a filter element is arranged on an inner side of the capsule base. The applicant submitted that the ordinary meaning of this integer was that a substantial part of the filter is in direct contact with the inner side of the capsule base, the contact not being incidental. I agree with the applicant that there is a requirement for the filter element itself to be physically touching the base of the capsule in such a deliberate way, and this may be before or during use of the capsule. This suggests an intentional structurally arranged contact between the base and the filter element, which may for example constitute the filter element resting entirely on the base of the capsule.
Novelty
32. For the purposes of subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information. Subsection 7(1) also states that two or more documents can be read as a single piece of prior art information if the relationship between those documents is such that a person skilled in the art would treat them as a single source.
33. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 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.”
34. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]). As per the General Tire case: “A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.
35. I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
36. The opponent argues that claims 2 and 3 lack novelty in view of D2 and claims 7, 8 and 12 lack novelty in view of the combination of D2 and D3 being read as a single document.
D2: GB 1402733 published 13 August 1975
D3: DE 2341186, being a German publication evidenced in the form of AU 59165/73 published 13 February 1975
37. There was no contention from the applicant as to the reading of D2 and D3 as a single document in relation to particular claims. In this regard, document D2 made reference to a machine of the type in D3 being used to generate a beverage using the cartridge of D2. It appears straight forward that in this context, there is a single source of information. It was common ground at the hearing that the shared features of all of the independent claims are disclosed by D2.
38. In relation to claim 2, the opponent contends that document D2 discloses that the filter element is elastic and at least an edge of the filter element is arranged on an inner side of the capsule base. Page 3 lines 25-49 provide a discussion of the elastic properties of the “cloth” material (being a polyester fibre felt) used in the described capsule. Figures 1-3 of D2 also show the filter element is arranged on the capsule base there necessarily being an edge of the filter element on the inner side of the capsule base. The applicant’s arguments in relation to claim 2 focussed entirely on their intended narrow construction of the term elastic which I have already considered to be a gloss. Therefore, I find claim 2 not novel. Claim 3 is distinguished from the common features amongst the claims by way of the diameter of the filter element being greater than the diameter of the capsule base. This is explicitly disclosed in D2 where it is said on page 3 that “the elasticity of the non-woven material means that it can be cut to a diameter slightly larger than that of the bottom of the cartridge”. Therefore claim 3 is also disclosed by document D2.
39. Claims 7 and 8 are directed to the feature whereby the perforation of the base of the capsule partially lifts the filter element from the capsule base and wherein this occurs in a central region whereby the remainder of the filter remains attached to the capsule base. Here the opponent contends that:
“The external perforation means is described in D2 p 2 lines 75-76 by reference to D3 (see especially Fig 3, p 7 para 2 and pages 9-10). Mr Husband’s evidence is that it is an inherent feature of the filter described in D2 p 3 lines 19-49 that it is formed in such a way that wherein the capsule base is perforated by the external perforation means, the filter element is at least partially lifted off from the capsule base, in light of the elasticity of the edge of the filter.”
40. In response the applicant agrees that perforation of the capsule base will occur but contends that there is no disclosure that this will have the effect of lifting the filter from the base at the central region of the filter.
41. It is clear that there is no explicit disclosure in document D3 of how the filter of D2 will behave when perforation of the capsule occurs. I note that Figure 3 of D3 does show the piercing element 21 travelling beyond the base of the capsule and into the filter element F.
42. On this basis, Mr Husband suggests in his declaration at [181] that the elastic filter element placed in the cartridge of D2 would feel a lifting force by the insertion of piercing element 21 in a central region, with the area of the filter towards the edges remaining in contact with the base. This would result in a small, at least partial lifting of the filter element from the base in the central region.
43. On balance, I am convinced by the opponent’s position. If the filter element is not fixedly attached to the base then I accept that it would be implicit that there would be a degree of lifting of the central region from the base, before for example, the filter itself is pierced. The claims are not limited to any particular degree of lifting or force patterns. The applicant has not provided any evidence to the contrary of the opponent’s position and seems to rely on the lack of an explicit disclosure of the claimed features. I agree with the opponent that the implicit effect of the piercing means of D3 acting on the capsule of D2 is to provide a degree of central lifting of the filter from the base. Claims 7 and 8 are therefore disclosed.
44. Independent claim 12 adds the feature whereby the capsule base has a predetermined breaking point which is intended to tear open as a result of mechanical contact with an external perforation means. The applicant makes no submissions regarding claim 12 to disagree with the opponent’s identification in D3 at pages 6-7 of the formation of a circular groove to create local weakening to facilitate membrane rupture. However, I note that the membrane M referred to in D3, is not the capsule base upon which a filter F is located. Regardless, by reference to figure 3 of D3, it is clear that the capsule base is intended to be torn open at a predetermined location when contacting an external perforation means 21. As such, claim 12 is not novel in view of the combination of D2 and D3.
45. In summary, I find claims 2 and 3 lack novelty in view of document D2 and claims 7, 8 and 12 lack novelty in view of the singularly read disclosure of D2 and D3.
Inventive Step
46. The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“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.”
47. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53];; 212 CLR 411 at [51]-[53] approved this approach, in addition to that 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]?”
48. The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
49. In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]- [203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
50. In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The Problem
51. The specification discusses a set of problems at paragraphs [0005]-[0007] being that screens or filters produced using plastic injection moulding processes, thermoforming or stamping require hole sizes smaller than the smallest particle to prevent pass through of particles. Supporting elements are also required to hold such screens or filters. This means additional material is required increasing cost. Additional materials used in a device can also increase cost by occupying volume within a capsule on top of the fact that screens need space between them and the capsule base for fluid to flow out of the capsule when pierced. The range of inventions defined by the 10 independent claims seek to solve such problems via the use of a less expensive filter mechanism, implemented with a range of specific mechanical characteristics.In this regard, the claims appear to generally address the problem of providing an improved mechanical arrangement for a beverage capsule which may be less expensive to produce.
Prior Art Base
52. In addition to an attack as to a lack of inventive step on the basis of common general knowledge alone, the opponent raises the following relevant documents under the ground of inventive step along with documents D2 and D3:
D4: US 2007/0148290 published 28 June 2007
D5: WO 03/073890 published 12 September 2003
D9: WO 01/60219 published 23 August 2001
Was the invention obvious?
Common General Knowledge
53. There are two initial points of contention regarding the features that are common between all of the claims. Here the applicant suggests that features of a filter element arranged on an inner side of the capsule base and the felt structure comprising a plastic fibre material would not have been features that comprised common general knowledge that would have been further obvious to combine.
54. Firstly, the applicant suggests that the “prior art teaches away from using a filter arranged on the capsule base”. Importantly this is not in itself decisive of whether a feature is common general knowledge. The applicant also makes reference to the evidence of Mr Husband where it is made clear that an air gap is often used between a screen/filter and the base when the base is to be pierced to allow liquid to flow out. At the same time, it is also true that of the examples depicted in Mr Husband’s evidence, none show a filter positioned on the inner side of a base of a capsule in the manner depicted and described in the present application. At best the evidence demonstrates that “if the capsule is not being pierced at the base, it is not necessary to provide the gap” (Husband at [71]). He suggests that there existed capsules where both ends are pre-perforated so that neither end requires piercing but does not describe a filter element resting on an inner side of the base of a capsule in the manner of the specification. An example presented by Mr Husband was at [48] of his declaration which showed an “open bottom” capsule body with a moulded filter element itself forming a “base” (see below).
55. I consider that such a depiction falls short of a filter being arranged on an inner side of the capsule base wherein a cavity is formed between the base and a cover of the capsule, the capsule being suitable for beverage production by accommodating liquid or pulverulent beverage base within the cavity. In this regard, I consider the present specification and the claims to only contemplate the type of arrangement as depicted above in Figures 4-6 of the specification where a base and a cover have a cavity formed between them which accommodates the beverage base in an enclosed manner, whereby the filter is subsequently provided in some way on the base.
56.There is further reference in Mr Husband’s declaration at [94] indicating that “I had also considered the possibility of connecting the filter to the base of the capsule. However, this was not considered advantageous due to the pressure profiles within the capsule”. Such a statement does not appear to amount to an encapsulation of common general knowledge, but instead a reference to solutions that he has personally considered in the past and furthermore does not equate to the placing of a filter element on the inner side of a capsule base as circumscribed by the claimed subject matter.
57.An alternative presented by Mr Husband is the following depicted at [88] of his declaration:
58. In this depiction, a filter element is placed within the cavity formed between a base and a cover. The filter element can rest on both a rim formed in the walls, and a centre support which is present to reduce the risk of the material sagging in use to the point where it becomes detached from the rim. It appears reasonable to consider both the rim and the centre support as providing structure in the base of the capsule upon which the filter element is “arranged on”. However, as above, I am not satisfied that the present arrangement is common general knowledge as it is simply presented by Mr Husband as an option that he would consider.
59. Therefore, I do not consider it common general knowledge or obvious that one would arrange a filter element within a capsule, on an inner side of the base of said capsule, wherein the base and cover of the capsule define a cavity therebetween. It therefore follows that the claimed invention is not obvious in view of common general knowledge alone.
60. I also make comment regarding the second point being the applicant’s contentions as to the non-obviousness of the use of a felt structure comprising a plastic fibre material. Here the applicant refers to the evidence of Mr Gerakios where he stated at [27] of his declaration that “polyester works well in a dry environment, but if you move into a wet environment it suffers hydrolysis over time”. This statement was prior to his observation that his first thought at the priority date would have been to use a polyester material, preferably a spun-bonded or entangled non-woven (Gerakios at [90]). In this regard, while it may be that hydrolysis may occur, it remains clear to me that the use of polyester non-wovens would generally be an obvious option as an inexpensive and suitable filter element. Importantly Mr Gerakios adds at [27] that the problem of hydrolysis would be that after absorbing moisture, if the filter dries, it cracks. This does not appear relevant to the presently claimed subject matter in the context of the normal functioning of what is generally a single use beverage capsule.
61. In summary, for the reasons discussed above I consider the common elements of the claims to be obvious in view of common general knowledge alone, except for the arrangement of the filter element on an inner side of the capsule base as claimed. Therefore, the claimed inventions of the independent claims are inventive in view of common general knowledge.
D2 and D3
62. Claims 2, 3, 7, 8 and 12 are not novel in view of these documents. They further lack an inventive step for the same reasons. The opponent further alleges that claims 1, 4-6 and 13 lack an inventive step in view of D2.
63. Independent claim 1 includes the unique feature whereby the felt structure is provided on or in a support structure, and wherein the filter element has two felt structures which are separated from one another by a support structure. In its simplest arrangement, the feature may constitute a felt structure attached to either side of a support structure. The opponent points to the evidence of Mr Gerakios at [91] where he refers to the “use of a scrim with the polyester nonwoven”. That is, I would consider using a polyester fibre felt with a scrim inside the filter material.” He also notes at [92] that he would “also have considered pressure laminating two types of materials so that on one side there was a material with fine pores and, on the other side, a courser, free draining material”. In either of these cases the opponent submits that a support structure would separate the two filter structures.
64. To address this point, the applicant identifies that none of the nineteen pieces of prior art in the Statement of Grounds and Particulars suggest such use of a scrim would be obvious. While this may be true, the evidence of Mr Gerakios further adds that these types of materials and use of a scrim would be typical at the priority date (Gerakios at [94]-[95]). Without any evidence to the contrary I consider on balance, that it would have been obvious to try different felts on either side of a scrim in order to address the problem of an improved and less expensive mechanical arrangement for a beverage capsule. As such I find claim 1 lacks an inventive step in view of document D2.
65. Claims 4 and 5 are directed to the inclusion of the filter element having an edge which projects in the direction of the cover, furthermore, extending along a side wall of the capsule body where the side wall extends between the cover and the base. Document D2 discloses the filter element to cover the base of the capsule but does not disclose the filter element with an edge projecting in the direction of the cover. In other words, there is no disclosure of an “oversize” filter element in D2 in a manner similar to Fig 6a above. The opponent points to the evidence of Mr Husband where he identifies cup shaped filters were well known with reference to cup-shaped filters that do not attach to or touch the base of a capsule and instead attach around inside edges or at the top of the capsule (Husband at [47]). The declaration notes a benefit of this being that fluid can pass through the sides as well as the bottom of the filter thus allowing coffee grounds around the edges to experience better flow and soaking.
66. On this basis, I see no barrier to the inclusion in the filter element described in document D2, of edges extending towards the cover along side walls of the capsule body. The applicant submits that neither of the depictions of Mr Husband relate to a filter on the base of a capsule. While this is so, I consider that the evidence teaches the extension of a filter element along side walls of a capsule to have well known benefits that are distinct from placing a filter element on a capsule base. While the applicant also submits that the arrangement as claimed allows the filter to move inwards as the base is lifted by the perforation means as per Figs 6a and 6b, this is not reflected in claims 4 and 5 (instead being suggested in claim 9). Therefore, I find claims 4 and 5 also lack an inventive step in view of document D2.
67. Independent claim 6 is limited by way of the capsule base having a protrusion in a direction opposing the cover. The opponent submits that it was obvious to adjust the profile of the base to separate the filter from the piercing spike and add stiffness by adding a protrusion. At [181] of his declaration, Mr Husband identified it as well-known to adjust the profile of a capsule for this purpose. I agree with the opponent that this would amount to a simple element of design that would be obvious to the skilled addressee. Thus, I consider claim 6 obvious in view of document D2.
68. Claims 13 is limited to the inclusion of a predetermined breaking point in the capsule base to tear open with mechanical contact with a perforating means whereby the breaking point is in a star shape around a central point of the base with reduced material thickness or perforation along lines of weakness. As identified by the opponent with reference to the evidence of Mr Husband at [179] and [181], such perforation techniques are routine.
69. Therefore, I find that claims 1-8, 12 and 13 lack an inventive step in light of D2 (or D2 with D3).
D4
70. Document D4 discloses a portion capsule for beverage brewing. Figure 1 provides useful depiction of the construction of the capsule. The capsule is formed having a body with a base 3 and cover 2. On the base is mounted a supporting structure 6 which serves as a screening device with holes to allow fluid to pass. On the supporting structure is a filter element 28 which can be formed from planar textile fabric. The filter element is located between the beverage base and capsule base sitting on top of the screening device (see for example paragraph [0014] and [0042] of D4). The applicant points out that this type of example is that which is described in the background to the specification at [0006] where the filter element sits on a mounting structure/screen and does not contact the base. In this regard it is clear that the citation does not refer to a filter element comprising a non-woven which is arranged on an inner side of the capsule base. Furthermore, any move to include the non-woven filter element on the base is something that the citation teaches starkly away from. The claimed inventions are inventive in view of document D4.
D5
71. The opponent asserts that claims 1, 2, 4, 6 and 14 lack an inventive step in view of document D5. Document D5 discloses all the common integers of the independent claims except for a clear and unmistakeable direction to the use of a plastic fibre felt. Fig 2f is a useful depiction of the capsule disclosed in document D5.
72. In Fig 2f is shown a beverage capsule with a cover 20 with an inlet 51 and a base 30 which also includes a securely bonded screen attached to the base that can be removed by hand. The base 30 includes outlets for discharging extracted fluid after removal of the bonded screen. A woven or nonwoven fibre filter can be placed over the base 30 and is shown as a layer covering base 30 in Fig 2f. The fibre filter is clearly located on an inner side of the capsule base wherein the capsule base and cover cooperate to form a cavity therebetween for accommodating pulverulent or liquid beverage base.
73. Starting with the problem of providing an improved mechanical arrangement for a beverage capsule which may be less expensive to produce, and given the teaching of the document that nonwoven fibre filter elements can be used, I consider it would have been obvious to modify the teaching of D5 to include a plastic fibre felt that is inherently elastic. As has already been demonstrated, plastic fibre felt is an inexpensive option that the person skilled in the art would be directly led to try. It follows that the common features of the claims are obvious in view of document D5 and common general knowledge.
74. Regarding the additional features added by claims 1, 2, 4, 6 and 14:
· Claim 1 is obvious for similar reasons as discussed with reference to document D2. While Fig 2f provides a curved filter element that may not be obvious to modify to include a scrim, other figures show a capsule with a flat base and filter element that would be obvious to modify to include a two-layered filter structure supported by an internal scrim.
· Claim 2 is obvious as a felted material would necessarily inherently have a degree of elasticity and the figures show at least an edge of the filter element arranged on an inner side of the capsule base.
· Claim 4 is obvious as the filter element of Fig 2f has an edge that projects in the direction of the cover 20.
· Claim 6 is obvious because the capsule base 30 protrudes/projects away from the cover in the form of its curved shape.
· Claim 14 is obvious because the capsule base 30 includes an outlet opening sealed off by a film of foil with a pull off tab.
75. Therefore, I find claims 1, 2, 4, 6 and 14 obvious in view of D5 and common general knowledge.
D9
76. The opponent asserts that claims 2-6 and 12 lack an inventive step in view of document D9. Figs 5 and 6 of D9 show the described invention. Figures 5 and 6 are sections of the capsule taken at different 90-degree front on views. They show a capsule with a cover 16 and a base 18. Within the capsule is a set of leading edges 34 and 32 which support a filter element 14 thereon by fixation means such as heat sealing. Within chamber C1, beverage extract is stored. The capsule is pierced at top and bottom by piercing means 40, 42, with beverage extracted through means 42 via the filter element 14. The filter element rests on the boss aspect of the base 36 as well as resting on leading edges 34 and 32. Therefore document D9 discloses a beverage capsule with a cover and a base forming a cavity for accommodating suitable beverage base, wherein the filter element is between the base and the cover. I further consider that the resting of the filter element on boss aspect 36 constitutes the filter element being arranged on the base to some degree. The filter element disclosed is a non-woven in the form of cellulose polypropylene, however there is no disclosure of the use of a felt structure comprising a plastic fibre material.
77. Regarding the inclusion of the claimed felt filter I consider this feature obvious. As above, such a filter would be routine to try in order to seek an inexpensive solution. I see no barrier to its inclusion in the capsule of D9. As such I consider the common features obvious in view of D9 and common general knowledge. Regarding claims 2-6 and 12, I find as follows:
· Claim 2 is obvious as figure 5 shows an edge of the filter element arranged on an inner side of the capsule base (see for example the corner of the base 18 near item number 10 where the filter element 14 rests). The use of a felted material would further inherently import an element of elasticity.
· Claim 3 is not obvious in view of document D9. There is no suggestion of modification of D9 to include a circular shaped filter. Modification of D9 to produce a circular profiled capsule is a step that I would regard as clearly being more than a matter of routine.
· Claim 4 is obvious as figure 6 shows an edge of the filter element 14 projecting in the direction of the cover 16. This projection seen in figure 6 is along a side wall 34 extending between the base and the cover. Claim 5 is therefore obvious.
· I consider the boss structure 36, in combination with the whole of the base 18 in figures 5 and 6 amounts to disclosure of a protrusion in the base in a direction opposing the cover. Claim 6 is therefore obvious.
· Claim 12 is limited to there being a predetermined breaking point which is intended to tear open as a result of external perforation. Figure 6 makes it clear that the capsule base comprises a predetermined breaking location on the capsule that tears open as a result of external perforation 42. Claim 12 is therefore also obvious.
78. Therefore, I find claims 2, 4-6 and 12 obvious in view of D9 in combination with common general knowledge.
79. In summary, considering all the evidence I find claims 1-8 and 12-14 lack an inventive step.
Section 40 (Disclosure/Support/Best Method)
Clear and Complete Disclosure
80. Section 40(2)(a) of the Act requires that the specification mustdisclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. Such enablement must be across the whole width of the claims, without undue burden or the need for further invention.
81. The provisions of s40(2)(a) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72, who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a specification provides an enabling disclosure as required by section 40(2):
· construe the claims to determine the scope of invention as claimed,
· construe the description to determine what it discloses to the person skilled in the art, and
· decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
82. A further decision, Evolva SA [2017] APO 57, was issued by a delegate of the Commissioner where further review of UK and EPO decisions was performed, the delegate expanding the consideration of the third question in that it was considered necessary to determine whether it was plausible that the invention can be worked across the full scope of the claim.
Disclosure as to the filter material
83. The opponent refers to the common feature amongst the claims of the felt structure comprising a plastic fibre material. With reference to the evidence of Mr Gerakios, the opponent identifies the following issues:
· For liquid beverage preparations, it is crucial to obtain water permeability measures across pressures that would be encountered using standard tests. (Gerakios at [40]-[44])
· The identity of the particular non-woven is unclear and there is no assessment of why the specific filter material used works. (Gerakios at [81]-[82])
· There is no information on pore size and liquid permeability of the non-woven and the ranges provided for air-permeability, basis weight and material thickness embrace fabrics that would not be suitable. (Gerakios at [122])
· To provide a suitable filter, he would need to start from first principles because there are so many possibilities as the specification does not disclose the sort of filter material that has been used. Mr Gerakios states at [123]:
“In order to provide a suitable filter element, I would need to start from first principles as the description embraces so many possible materials. The information in the specification is equivalent to telling a tailor a waist size, a desired colour and that pants have two legs, and then expecting the tailor to make a pair of pants that provide protection to a metal worker. Critical information is missing that will enable someone to meet the desired performance. In short, the specification does not actually disclose what sort of filter material has been used.”
84. In response, the applicant essentially identifies that fact that “the machine and beverage base are not integers of the claims and are outside of the technical contribution to the art that corresponds to the claims”. I consider this submission to be suggesting that the invention described and claimed is not directed towards achieving any particular performance properties of the capsule, but instead is directed to the use of a particular type of filter material within the capsule in order to address issues associated with the cost of capsule production.
85. I agree with the applicant. The scope of the claimed invention includes any plastic fibre felt filter that is in some way suitable for filtering particles from a beverage when situated in a capsule. The description does not seek to achieve any particular outcomes of produced beverage quality in terms of parameters of filter or machine performance. It is not akin to the metal worker discussion where a certain degree of protection may be required. In this sense the scope of the claim is broad and the person skilled in the art is simply guided to include a plastic fibre felt filter that is generally suited to filtering particles from a beverage base. While the expert suggests there would be significant work to optimise performance, the claimed invention does seek to optimise performance.
86. I do not see there being any undue burden or need for further invention in implementing the whole scope of the claims regarding the filter material.
Beverage base or brewing process
87. The opponent points to Mr Gerakios’ identification that he needs to know the particle size distribution of the beverage base, the amount of beverage base, the acceptable level of breakthrough particles, the temperature, and the flow used for brewing. While none of this detail is provided in the specification, for reasons akin to those regarding the filter material, the invention is adequately disclosed.
Support structure
88. The opponent notes that the application does not explain the influence of the support structure on the filtration characteristics. Mr Gerakios explains at [127] of his declaration that any filter including a scrim will be much heavier and thicker than the use of a simply a non-woven without a scrim. In brief, I do not see this creating an issue of disclosure. As above, performance of beverage production is not relevant to the claimed invention.
Lifting the filter
89. The opponent points to the evidence of Mr Gerakios identifying that the specification does not describe the force of penetration and thus provide insufficient information regarding lifting of the filter element. He notes that lifting may cause issues such as slipping of the filter and accordingly does not know how the capsule for example, of claims 9 and 11, can be reliably implemented. The same issues I discuss above apply to this submission. The invention is adequately disclosed.
Material reservoir
90. Regarding the material reservoir the opponent submits:
“Given that the brewing pressure for coffee capsules may be up to 20 bar, it is likely that the material of the material reservoir will be squashed up against the side of the capsule, and it is not clear how the material reservoir would operate under brewing pressures (rather than atmospheric pressures, as shown in Fig 7a and 7b). In order to produce a filter element capable of supporting itself under 20 bar of pressure, the filter element would require significant internal stability, but the Application gives no direction as to how to achieve this stability.”
91. Figures 7a and 7b and associated text in the description provide information as to how the reservoir is expected to work. Its purpose is to function to release material before pressurised water enters the capsule by being pressed by the piercing means (claim 11). I do note however that such piercing is not present as a feature in the claim 10. Regardless, the evidence does not establish that there would be a burden or need for further invention in performing the claimed invention. The evidence simply identifies that the specification does not provide the identified information.
Perforation means
92. In some embodiments the perforation means pierces the filter element (Figures 10 and 11 of the specification). Mr Gerakios notes that he is unsure how such a capsule would work since there would be unfiltered beverage collected. He again suggests designing a pierceable filter would require work from first principles. He also suggests that the specification does not explain how the invention is to be applied to a capsule with any sort of perforation means and machine that is not described.
93. Again, as per above, I consider that the claimed invention is directed to the construction of a capsule as such. The claimed invention does not seek to achieve beverage characteristics or performance. While there may be significant work in optimising the capsule to beverage production characteristics, this is not part of the invention when properly construed. There is no undue burden or further invention that I can see in producing the claimed capsule across its entire scope.
General Plausibility
94. The opponent asserts that the inventions would not work across the scope of the claims and as such there exists a problem of plausibility. My same point remains in that the invention is to the mechanical construction of a beverage capsule that may be less expensive to produce. In contrast to the matters found under support and disclosure in the decision of Stephen Anderson v K-fee System GmbH [2018] APO 56, the claimed invention does not seek to work in a manner to produce a particular beverage quality. Furthermore, the attack appears more akin to an attack as to usefulness of the claimed invention under s40(1)(c). I see no basis to consider that the invention is not useful and the opponent has not made such a case.
95. In summary, the invention is provided with a clear and complete disclosure.
Support
96. Section 40(3) of the Act requires that the claim(s) must be supported by matter disclosed in the specification.
97. The provisions of s40(3) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72, who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a claim is supported by the description.
- Construe the claims to determine the scope of the invention as claimed,
- Construe the description to determine the technical contribution to the art, and
- Decide whether the claims are supported by the technical contribution to the art.
98. Similarly to section 40(2)(a), in this context the body of the specification must disclose the claimed invention in a way which will enable it to be performed by a person skilled in the art without undue burden, or the need for further invention. This also means that each claimed feature must be explicitly or implicitly disclosed in the in the body of the specification. The opponent alleges that each claim lacks support as follows.
Claim 1
99. With reference to the evidence of Mr Gerakios the opponent notes the following as an example:
· The specification does not address the void volume which is created by the scrim, or its effect on filtration ([147]).
· It is not clear from the specification how the felt could be connected to the support structure by interlocking, force fitting, or through cohesion ([148]).
· Given the broad range of parameters, it is implausible that all of the support structures which fall within the range would work ([149]-[150]).
The submissions of the opponent point out that claim 1 covers any portion capsule having a filter element comprising a non-woven plastic fibre felt provided on or in a support structure, wherein the filter element has two felt structures separated by a support structure. This being true, the opponent adds that the claims cover any such capsule no matter how the felt structure and the support structure are connected, submitting that the skilled addressee would not know how to connect the felt and support other than through use as a scrim.
While the claims are broad, in the context of the specification the “technical contribution to the art” of claim 1 appears to be a mechanical positioning of a fibre felt filter in a capsule. The evidence does not suggest that there is any undue burden or need for further invention to perform the claimed invention. The invention does not seek to achieve any particular beverage capsule performance, nor physically attach the filter in any particular way. As such, parameters of construction and operation referred to by the opponent are not part of the technical contribution to the art. Claim 1 is supported.
Claim 2
Claim 2 is said to lack support because in the context of elasticity, it is not clear how much the material will recover from elongation, what forces will be applied or how the forces will be applied. As I have already discussed above, I do not consider there to be any clarity issue. Elastic has a clear meaning in the context of the specification. There is no evidence to suggest that given this clear meaning, there would be any undue burden or further invention to implement elasticity in claim 2. Claim 2 is supported.
Claims 3-6 and 14
The central argument presented by the opponent regarding these claims is that there is no underlying principle in relation to the filter material that would enable selection or design of a filter element to ensure the capsule works to produce a particular beverage. The opponent adds there is no discussion of the beverage base in relation to the filter element or the manner in which the filter element may move during brewing. These issues have already been addressed under section 40(2)(a). These claims are supported.
Claims 7-11
The submissions regarding these claims have already been addressed under section 40(2)(a) in relation to the lifting of the filter and the function of the material reservoir. The claims are supported.
Claims 12 and 13
Claims 12 and 13 relate to the presence of a predetermined breaking point constituting a star shaped central arrangement of lines of weakness. While the specification does not disclose puncturing parameters, I see no reason why the person skilled in the art could not construct the claimed invention across its full scope. Puncturing and use of perforations appears entirely routine and within the skills of the addressee. Figures in the specification show where such puncturing may be arranged. These claims are supported.
Best Method
Section 40(2)(aa) of the Act provides that a complete specification must disclose the best method known to the applicant of performing the invention. The principles regarding best method were unchanged as a result of the Raising the Bar Act. The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification (Rescare Ltd. v Anaesthetic Supplies Pty. Ltd., 25 IPR 119). If the applicant identifies a better method at a time subsequent to filing, there is no obligation to amend the specification to include that method. As identified by Bennett J at [15]-[16] in Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710:
“…it must be established that there was a better method known to the applicant as at the date of filing of the patent than the one described in the specification. That is clearly a subjective question.
…it is necessary first to understand what the invention is. Indeed, this is perhaps the first question that needs to be answered.”
Taking this approach, I will seek to identify what the invention is. In this regard, the opponent first poses two questions being “Is the choice of the filter element part of the invention?” and “Is the choice of beverage base part of the invention?”. The opponent suggests that because a fibre felt filter and beverage base are present as a feature of every claim then the choice of a particular filter element and beverage base is part of the invention.
The problem I see with this starting point is that on my understanding of the specification as a whole, the described and claimed invention does not seek to create any particular performance characteristics of a beverage that are beyond those that arise merely from the inclusion of a fibre felt filter arranged on an inner side of a capsule base, wherein the capsule also includes a beverage base. The problems sought to be solved are in relation to the search for a mechanical arrangement with reduced construction cost for capsules compared to those known in the art. The use of a fibre filter element as claimed appears to achieve this goal.
The evidence of the opponent’s experts points to the criticality of things such a pore size, liquid permeability, particle size distribution, and loading of a beverage base to the production of a beverage in an optimum fashion. The opponent refers to the specification: at [0005] and [0006] which notes the significance of pore size to performance; at paragraph [0012] which discusses some optimal parameters of the non-woven; and at paragraphs [0012], [0016], [0037] and [0072] where the benefit of avoidance of crema formation is discussed. They suggest it can be inferred that the applicant must have been aware of a best method including pore size, permeability and beverage base information that is not disclosed.
I am not convinced that the evidence supports this inference. Firstly, as I note above, the invention does not appear directed to any particular level of performance. It is true that the specification notes the importance of certain parameters to performance, but this falls short of demonstrating that the applicant was in possession of such parameters beyond those generally identified in the description. While there are a large number of independent claims that appear to represent different inventions in the manner in which a filter element is mechanically arranged with respect to the physicality of the capsule, all of the claims are well represented by figures in the description which to me depict different “best methods” of physically arranging a capsule having a plastic fibre felt filter. While it is also true that there is described a positive effect in the context of crema free coffee beverages being produced, this appears from the description to be a direct result of the use of a plastic fibre felt filter as such a filter provides a low level of pressure loss having an inherently shallow gradient ([0072]). With a filter element entirely covering a base of a capsule, as per figure 6a for example, I can see a best method provided for the provision of crema free coffee beverage.
In summary, I do not consider the evidence supports a conclusion that a suitable best method has not been disclosed.
Conclusion
The opposition is successful. Claims 2, 3, 7, 8 and 12 lack novelty. Claims 1-8 and 12-14 lack an inventive step. Claims 9-11 are inventive. The opponent has not presented a case against claims 9-11 in relation to novelty or inventive step and my review of the evidence confirms a finding of inventiveness.
As to section 40, the claims are clear and supported, and the specification provides a clear and complete disclosure along with a disclosure of the best method known to the applicant at the time of filing.
Claims 9-11 appear patentable. As such the applicant may file amendments to overcome the findings of this decision. I herein provide a period of two months from the date of this decision for the applicant to propose amendment to overcome the adverse findings.
Costs
The applicant submitted that regardless of the outcome of the opposition there should be a variation to the scale of costs awarded based on the burden placed on the applicant by the lengthy written summary of submissions filed by the opponent (77 pages in length). They submit the opponent’s submissions are disproportionate to the issues.
While I agree that this is a relatively long summary of submissions, I do not consider the length of submissions to be so burdensome as to warrant a variation to the normal scale. The time required to read the summary is not unusually excessive or in my opinion, amounting to a significant degree of additional work. A variation of scale in such a situation appears far below the standards set out in Sterling Drug Inc v Boots Company PLC (1996) 35 IPR 630.
Hence, I see no reason to depart from the usual awarding of costs in accordance with schedule 8 against the losing party, in this matter being the applicant.
Dr N. R. Madsen
Delegate of the Commissioner of Patents
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