Koninklijke Douwe Egberts B.V. v Nestec S.A
[2018] APO 29
•4 May 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Koninklijke Douwe Egberts B.V. v Nestec S.A. [2018] APO 29
Patent Application: 2010326818
Title:Beverage preparation machine supporting a remote service functionality
Patent Applicant: Nestec S.A.
Opponent: Koninklijke Douwe Egberts B.V.
Delegate: Greg Powell
Decision Date: 4 May 2018
Hearing Date: 18 December 2017, in Sydney
Catchwords: PATENTS – section 59 – opposition to the grant of a patent – novelty – claims found to lack novelty – inventive step – are documents “ascertained” when they are given to the person skilled in the art by a third party? – lack of inventive step not established – manner of manufacture – “threshold of inventiveness” – lack of manner of manufacture not established – opposition successful – opportunity to propose amendments – costs awarded against the applicant
Representation: Counsel for the Applicant: Katrina Crooks
Patent Attorneys for the Applicant: Paul Harrison and Matthew Ford, Shelston IP
Counsel for the Opponent: Clare Cunliffe
Patent Attorney for the Opponent: Richard Brown, Davies Collison Cave
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010326818
Title:Beverage preparation machine supporting a remote service functionality
Patent Applicant: Nestec S.A.
Date of Decision: 4 May 2018
DECISION
The opposition is successful. Claims 1–3, 6, 8–15, 17–20 are not novel. No other grounds of opposition advanced by the opponent were successful.
I award costs according to Schedule 8 of the Patents Regulations 1991 against the applicant.
REASONS FOR DECISION
Patent application 2010326818 (“the opposed application”) was filed on 30 November 2010, as international application PCT/EP2010/068480 in the name of Nestec S.A. (“the applicant”). The application entered the national phase in Australia on 22 May 2012. The opposed application claims a priority date of 2 December 2009.
The opposed application was advertised as accepted on 31 March 2016. A notice of opposition was originally filed by Steven Borovec on 30 June 2016. A statement of grounds and particulars (the “SGP”) was filed on 29 September 2016.
Evidence in support was filed on 23 December 2016. This comprised:
· a statutory declaration dated 23 December 2016 by Tristan Matthew Downs with supporting exhibits TD-1 to TD-10 (“Downs1”); and
· a statutory declaration dated 22 December 2016 by Brendan Andrew Jones with supporting exhibits BAJ-1 to BAJ-3.
Evidence in answer was filed on 6 April 2017. This comprised:
· a statutory declaration dated 6 April 2017 by Graeme Edward Neil MacDonald with supporting exhibits GM-1 to GM-15.
Evidence in reply was filed on 13 June 2017. This comprised:
· a second statutory declaration dated 13 June 2017 by Tristan Matthew Downs with supporting exhibits TD-11 to TD-13 (“Downs2”).
The name of the opponent was subsequently amended on 5 December 2017 to Koninklijke Douwe Egberts B.V. (“the opponent”).
5.23 request
On 4 December 2017 the opponent filed a request under regulation 5.23 for the Commissioner to consult:
(i)a copy of the Wikipedia page for the Coca-Cola Freestyle beverage preparation machine; and
(ii)a copy of the specification of EP09169800.l, being the priority application for (and identical to the specification of) AU 2010294331 (known as D11) raised as a “whole of contents” novelty citation in this opposition.
Document (ii) had been raised in anticipation of the applicant disputing that D11 was entitled to its priority date. The applicant did not dispute this entitlement in this opposition and, hence, consideration of the request is in relation to document (i) only.
The opponent submitted that document (i) was necessary as the applicant had submitted that it was not apparent that the Coca Cole Freestyle machine referred by Mr Downs in Downs2 was a beverage machine. The opponent submitted that, even though they believed that it was apparent from Downs2 that this machine was a beverage preparation machine, it was put against the opponent that Mr Downs had not had any experience with beverage preparation machines and document (i) was submitted to disprove this. The opponent submitted that document (i) was necessary in terms of determining whether Mr Downs was a person skilled in the art.
The applicant submitted that the full Wikipedia page did not add anything that would substantially change the outcome of the opposition. While the opponent had said that it went to the relevance of Mr Downs as a person skilled in the art, the applicant maintained that document (i) did not add anything extra.
I do not need document (i) to convince me that the Freestyle machine was a beverage preparation machine. That is clear from the evidence already filed. However, as is apparent from my decision below, on the evidence before me I have doubts that Mr Downs is ideally placed to represent a person skilled in the art. These doubts are not assuaged by the additional material that is in document (i). The document provides more information as to the machine itself, but not on Mr Downs. It would not have changed my decision in any way. As noted in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16:
“If the new information is not likely to change the outcome of the opposition in a significant way, there is little advantage gained by bringing it into the opposition.”
It follows that I see no advantage in admitting document (i) and I decline invoking regulation 5.23 to do so.
The invention as described
The opposed application relates to the area of beverage preparation machines, such as coffee machines. In particular, the specification states that it is concerned with a method and system for remotely providing what it terms “service functionalities” to these machines. The opposed application is focused on what are called “capsule machines”.
The specification defines what it means by “beverage” and “capsule” in the following terms:
“For the purpose of the present description, a ‘beverage’ is meant to include any liquid food, such as tea, coffee, hot or cold chocolate, milk, soup, baby food or the like. A ‘capsule’ is meant to include any pre-portioned beverage ingredient within an enclosing packaging of any material, in particular an air tight packaging, e.g. plastic, aluminum, recyclable and/or bio-degradable packaging and of any shape and structure, including soft pods or rigid cartridges containing the ingredient.”
The specification indicates ([0005]) that most coffee and beverage preparation machines have filling means, usually controlled via a control unit of the machine, that include a pump for liquid, usually water, which pumps the liquid from a water source. The water may be heated through heating means, such as a heating resistor, a thermoblock or the like. The specification states ([0006]) that, to allow the user to interact with the machine, to operate it or get feedback, a number of systems have been disclosed in the art. However, the specification notes ([0007]) that, as beverage preparation machines have developed to do more tasks, they have become more complex such that it is “difficult if not impossible”, for the user to “maintain and monitor the functionalities of the beverage preparation machine”. The specification notes that, particularly for machines used by a business:
“where the beverage preparation machines are commercially used and accessed by a plurality of different users, it is quite demanding to [sic] for the customer to always keep the machine in an optimum condition.”
To address these issues, the applicant developed a machine that senses “machine related parameters”, sends the parameters to a remote server and, when a “service functionality” was required to be carried out sending this to the machine.
For present purposes the nature of the invention is best understood by reference to the preferred embodiments as outlined with regard to figure 3. This figure is reproduced below.
As shown in this figure, the beverage preparation machine 1 is connected via a network 511 (such as the internet or an intranet) to a remote server 50. A control unit 21 is connected to a user interface 201 via a bi-directional data communication channel 221. The control unit can control the heater and pump of the beverage processor 40, and can adjust it based on measured parameters of the beverage preparation process via sensors, such as temperature sensors, pressure sensors and flowmeters. The control unit can also adjust the processor based on automatic recognition of the type of ingredient capsule via a capsule recognition system such as an electromagnetic, mechanical, colour or barcode recognition system.
The machine has a communication module 11 for bidirectional communication with the network. The communication module is connected to a user-interface 101, such as a touch screen, or possibly one or more buttons via a bidirectional data communication channel 111. The control unit communicates data to the communication module through a unidirectional data communication channel 211.
In operation, information is gathered together by the communication module from the control unit and/or the beverage processor and sent to the remote server which analyses the information before returning, when appropriate, warnings or other information to communication module. These messages may be information relating to, for example, a need to carry out a particular service, e.g. descaling, a need to repair the machine; and/or information on a particular ingredient that is being processed in said machine.
The Opposed Claims
The opposed application ends with 23 claims, of which claims 1 and 12 are independent. Claim 1 is an apparatus claim and claim 12 is a method claim. In addition, claim 18 is directed to a machine “designed to support a method … of” claim 12 and claim 19 is a system claim using the machine of claim 1 or 18. Claims 1 and 12 are as follows, but the complete claim set is in the accompanying Annex A:
1.A capsule based beverage preparation machine, comprising:
at least one sensor for monitoring machine related parameters;
a communication module for enabling communication with a remote server via a communication network and for submitting the monitored parameters to the remote server;
the communication module being further adapted to receive from the server an indication of a necessary service functionality depending on the submitted parameters; and
a control unit for initiating a corresponding maintenance function in response to the receipt of said indication of a necessary service functionality by the communication module from the server.
12A method for remotely providing service functionalities for a beverage preparation machine, said beverage preparation machine being adapted for preparing a beverage by receiving a capsule in a capsule extraction unit, circulating a carrier liquid through said capsule in the extraction unit and by dispensing a resulting beverage, and being in data communication with a remote server via a communication network, the method comprising the steps of:
monitoring by the beverage preparation machine, parameters related to the machine;
submitting the monitored parameters to the server; and
initiating by the server, a service functionality depending on the submitted parameters wherein said service functionality is a corresponding maintenance function.
Onus of Proof
The request for examination of the patent application was filed on 25 March 2013. As a consequence, substantive amendments to the Patents Act (“the Act”) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) that came into effect on 15 April 2013 do not apply to the present patent application. This includes the addition of subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Further to this point I note that the law that applies to the present grounds of opposition is that prior to amendment by the Raising the Bar Act.
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in their 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).
The Opposition
In the SGP the Opponent pursued grounds under:
· s18(1)(a) – the invention as claimed is not a manner of manufacture;
· s18(1)(b)(i) – the invention as claimed lacks novelty;
· s18(1)(b)(ii) – the invention as claimed does not comprise an inventive step;
· s18(1)(c) – the invention as claimed is not useful;
· s40(2)(a) – the specification does does not describe the alleged invention fully, including the best method known to the Applicant of performing the invention;
· s40(2)(b) – the claims of the application do not define the invention; and
· s40(3) – the claims are not clear or succinct, and are not fairly based on the matter described in the specification.
At the hearing, and in the opponent’s written submissions, the grounds pursued were limited to:
· the invention as claimed is not a manner of manufacture;
· the invention as claimed is not novel; and
· the invention as claimed does not comprise an inventive step.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 Kiefel J identified ([16]) the skilled addressee as:
“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.”
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated at [70]:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”
However, in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 (at [23]), the High Court noted that:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”
There was some dispute between the parties as to each declarant’s suitability to give evidence of the person skilled in the art.
The opponent maintained that Mr Downs was the preferred person skilled in the art (“PSA”). They noted that Mr Downs’s experience working in an industrial design house (Invetech) gave him relevant experience in overseeing every aspect of product design for beverage dispensers of the type disclosed in the opposed application, including software design and network functions. The opponent contrasted this with Mr MacDonald’s experience as an industrial designer which they maintained was someone who was involved in the design of the appearance of beverage machines, but not a person involved in determining the functionality of these machines. They pointed to Mr MacDonald’s previous experience in designing e-card reader housings, a domestic beer keg system housing, assessing the manufacturing process producing uniquely shaped aluminium cans so as to produce similar shaped cans, a slow release lid mechanism in a kettle, and the mechanical design of the housing and the internal modules for a number of projects relating to portable radio repeater stations to meet strict waterproofing standards, noting that these projects were not directed to how the object worked or any networking issues. The opponent pointed to Mr Downs’s evidence in relation to the Coca-Cola Freestyle where he stated that the industrial designer, PinaFarina, had no input into functionality of this beverage preparation machine, while his company was intimately involved in the overall design and implementation of the product. The opponent’s submission was that, as the invention was directed to machine functionality, Mr Downs’s evidence was to be preferred as he had a broader range of experience.
The applicant submitted that Mr MacDonald’s evidence was more appropriately representative of the PSA. The applicant pointed to Fina Research SA v Halliburton Energy Services Inc [2003] FCA 55, which they submitted stood for the proposition that where the invention lies in a specific field of art, then the relevant PSA has experience in that art and not in broader, or related, arts. The applicant characterised Mr Downs as having broader experience. The applicant noted that the title of the opposed application and the field of the invention made it clear that the opposed application related to beverage machines and, as such, the PSA was a person involved in the design and/or development of beverage machines. The applicant noted that Mr Downs, despite his employment in a product design house, had not actually had any experience in any aspect of designing a beverage machine. They noted that Mr MacDonald had been involved in such design and, whatever experience Mr Downs had had in designing machines, the applicant submitted that it was a person with experience in beverage machines who was the PSA.
To my mind, neither of the declarants is ideally placed in this matter. Mr Downs, while he states that he was involved in at least one project of his employer that was directed to a beverage machine (the Coca-Cola Freestyle), doesn’t clearly set out what his role was and what he did (and document (i) discussed above in relation to regulation 5.23 advances this no further). If Invetech was a small company (of, say, 5 people), then it would be very likely that Mr Downs would be involved in all aspects of the various projects that the company worked on. However, there is nothing to indicate that Invetech is this type of company. Indeed, it would appear from Mr Downs’s statement that Invetech is quite a large company and, as such, the extent of his involvement if difficult to gauge. Mr Downs’s CV (at TD-2 of his evidence) also indicates his role in Invetech, while it included hardware and software development of the “easyMAG” (apparently a nucleic acid extractor), was one of attending meetings, signing off contracts, team management and developing sales strategies and client relationships (particularly towards the end of his association). I do not see this establishing Mr Downs as having the relevant experience, notwithstanding his company’s involvement in the Coca-Cola Freestyle machine. It also seems to be a bit of a stretch for Mr Downs to say that, since the industrial designer involved in the Coca-Cola Freestyle was only concerned with the look of the machine, that attribute applies to all industrial designers in general.
However, on the alternative, Mr MacDonald’s relevance is no better. I note that Mr MacDonald states that his design experience with beverage machines was (my emphasis) “to develop certain [Breville] coffee machines” and to “design and develop a ‘K-Cup’ style coffee machine”. However, Mr MacDonald only exhibits pictures of these machines. Mr MacDonald also indicated that, before designing these devices, he searched images of coffee machines. While the applicant urged me not to take these statements as being what Mr MacDonald only did, I have nothing else to go on. As such, notwithstanding the use of the word “develop” in his declaration, it appears to me that Mr MacDonald’s experience, both with beverage machines and other devices, is concerned with the look of the machine. None of this goes to the operation of the machine. While I do not dispute that functional requirements are a consideration when designing something, it is not necessarily the case that there is any need to know how the device works. I do not see any awareness of these things in Mr MacDonald’s evidence, and any “development” he did appears to be the creation of an appearance and not the “nuts and bolts” that appear to be where the present invention is directed.
Unfortunately, this means that I must take care with the evidence from both declarants. The weight to attribute to them is something I must consider carefully. However, I am prepared to accept a point as fact if both Mr Downs and Mr MacDonald agree to it.
Claim Construction
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.”
In the present matter there were two terms in the claims that were said by the parties to be important to the determination of this opposition. These were:
(i)“service functionality”; and
(ii) “corresponding maintenance function”.
It would also appear to me that what is meant by the term “initiating” should be discussed. I will address this first.
“initiating”
The applicant noted that claim 1 defines the control unit as “initiating” the maintenance function. The applicant took this to mean that the control unit carried out the function. That is, the applicant took “initiating” to mean “doing”.
I note in this regard that Mr MacDonald says in his declaration at [48] that:
“The control unit ‘initiating a corresponding maintenance function’ means to me that it is the control unit performs at least the preliminary steps to commence the maintenance function.”
He then gives examples at [49] of what the control unit does as “switching the beverage preparation machine into a maintenance mode or initiating the machine to perform a descaling process” and “the machine may commence a descaling process but the user is required to insert a cleaning liquid to complete the descaling process”. He describes the claim as defining a machine that communicates with a remote server to “locally initiate a maintenance function”. He states that “the remote server sends an indication of necessary service functionality to the beverage preparation machine, which initiates a maintenance function in response to the indication”.
He further states when discussing claim 12 at [67]:
“By ‘initiating’ I understand that at least a preliminary step of a maintenance function is performed with possible subsequent steps to follow.”
While there are other examples in Mr MacDonald’s evidence, it seems clear that he does not equate “initiating” with “doing”. He equates it with “instigating”, “beginning”, and the like. I do not take Mr Downs for the opponent to say anything different. For example, he says at [90] of Downs1:
“the term ‘initiate’ should be limited to the making of decisions and subsequent instructions based on information received”
Clearly, “initiate” means “begin” or something similar. I also note that this is consistent with the definition given in the Macquarie Dictionary.
“service functionality”
In regards to this term, I did not detect any difference between the parties as to what was encompassed by “service functionality”. As noted by the applicant, the description addresses this at paragraphs [122] to [124] which state:
“[0122] Based on these transmitted parameters the server can initiate one or more of the following service functionalities.
[0123] Generally, the service functionalities can comprise one or both of the following options. There can either be provided an indication to the customer, such as an indication on the display 10 of the machine, an indication electronically submitted to the user device 70 of the customer, e.g. via e-mail, SMS or the like, or an indication sent via a letter or the like. Another option is to automatically initiate steps which allow a remedy of an already existing malfunction and/or a prevention of an upcoming disturbance within the functionality of the machine 1, for example an automatic shipping of spare parts or ingredients needed for beverage preparation, an automatic set up of a communication with a help desk, an automatic appointment with maintenance personnel or the like.
[0124] It is also possible that the server 50 sends an instruction to the machine 1 to carry out a specific maintenance operation. In this case if the communication module 11 receives such an instruction, it is submitted to the control unit 21, which in turn carries out the instructed operation, such as for example an automatic cleaning process or the like.”
Clearly, a service functionality could be:
a)Providing information to the user that something needs to be done;
b)Automatically initiating steps that will allow remedying an existing or potential malfunction or disturbance to the machine;
c)Sending an instruction to carry out a specific maintenance operation.
I did not take the opponent to necessarily disagree with this. The disagreement was, instead as to the scope of what a maintenance operation was.
“corresponding maintenance function”
The applicant’s position was that a maintenance function was a physical operation performed by the machine which may be initiated by the user. While it was agreed by the applicant that a service functionality could include restocking of products, such as capsules, they maintained, relying heavily upon paragraph [124], that a maintenance function was a more specific example of a “service functionality” which was to be performed at the machine. As such it did not include restocking of products, which was something done outside the machine. In that vein, the applicant maintained that such a maintenance function was an automated function carried out at the machine. The applicant noted that, while the description clearly contemplated more than just this type of function, the addition of this phrase to the claims during examination meant that the applicant was specifically excluding certain things from their scope.
I noted at the hearing that claim 12 said:
“said service functionality is a corresponding maintenance function”.
which equated the scope of the two elements. I then noted that claim 13 said that:
“initiating a service functionality comprises
…
taking steps for automatically providing a service to the customer,
…
indicating to the customer shortage of an ingredient within the machine needed for preparing a beverage”,that claim 14 said:
“wherein the step of taking steps for automatically providing a service to the customer comprises
…
preparing shipment of ingredients and/or spare parts for the machine”,and that claim 15 stated:
“wherein the step of initiating a service functionality comprises
… generating automatically an instruction:a)to invite the customer to make an order for a shipment of a new stock of capsules, or
b) to prepare a shipment of a new stock of capsules for supply to said customer”.
I noted that, given the equating of scope of the two elements, this seemed to indicate that ordering stock was a maintenance function.
The applicant submitted that the use of “comprises” in these claims, given that “comprises” was a non-exhaustive term, meant that the steps in claims 13–15 were additional to the steps of claim 12. That is, as well as the step of initiating the service functionality, which is a maintenance function, there can also be other steps that can be carried out at the same time, noting that the specification at [122] mentioned initiating one or more service functionalities. As such, the applicant submitted that the maintenance function was not the ordering of stock.
The opponent noted that the term “corresponding maintenance function” only appeared in the claims and the consistory statements. It noted that “maintenance functionality” was used in [140] of the description of the opposed application. The opponent also noted that “maintenance operation” was used in [124] and in [127]. However, it drew a distinction between these two uses, noting that the applicant relied on these words in [124] as limiting a maintenance operation to being an automatic operation, while noting that [127] stated:
“Alternatively or additionally the server 50 can indicate to the customer the need for performing a maintenance operation himself”,
indicating that the words did not just indicate automated functions.
The opponent noted that the specification stated ([1]) that beverage preparation machine was designed to support remote service functionalities. They noted that the specification indicated ([7]) difficulties with customers maintaining and monitoring the machine themselves and sought ([11]) to provide a machine that made handling of the machine easy and simple with as little interaction from the customer’s side as possible. The solution was said ([15]) to help management of resources such as capsule stocks and had ([34]) a connection to a remote network to supply information on a user interface in relation to stock that could be requested directly from the machine ([35]) by the user, or for ordering goods or services. The user interface was said ([36]) to be able to display information regarding a parameter of the machine (such as capsule stock) requiring user intervention.
The opponent submitted that the specification highlighted a limited role of the server in the type of data it transmitted back to the control unit and, consequently, what it could instruct the control unit to do. The opponent noted the specification described ([57]) the communication module as receiving information from the network and communicating to the user such items as the need for a service, the need for repair, or ingredient information. Alternatively, the specification noted the communication module may monitor ingredient consumption and suggest to the user ordering more stock, or request the server to place the order itself ([57], [60]). The opponent pointed out that the specification also described ([58]) the communication module as sending various parameters for the remote server to diagnose and identify when a service is required, but did not contemplate the server directing the machine to self-service. The opponent noted that the specification ([87]) explicitly indicated that the communication module did not act on the beverage preparation module of the machine, as it was clear from figure 3 (above) that the communication module did not send data to the beverage module and the control unit, but only sent data to the user interface ([91]). The opponent also pointed to [126] to [129] of the specification as indicating that, while certain things may be done automatically, user intervention was required. As such, the opponent submitted that it was apparent, with the stray exception of paragraph [124], the opposed application contemplated that the service functionalities could relate to diagnosis rather than to repair. That is to say, the server used the information from the sensors to identify a potential problem with the ingredients or parts, or a need for servicing and used the information to rectify the problem by, for example, ordering new capsules or spare parts, or communicating this to the users of the machine, so that a user could take steps to rectify the problem.
The opponent’s position is to be preferred. While I accept that paragraph [124] indicates the communication module submitting an instruction to carry out a maintenance function to the control unit which carries it out, it does not follow, given the rest of the specification which explicitly indicates that there is a unidirectional channel from the control unit to the communication module, that this means a wholly automatic process with no input from the user. It is also the case that the words “is” in claim 12 explicitly links the scope of the elements of service functionality and maintenance function. I cannot see how those words are supportive of the applicant’s position that, at the same time that a step is being carried out in claim 13 (e.g. indicating to the customer the need for replacement of a part of the machine), which the applicant characterised as a “service functionality”, another service functionality is being carried out, but this service functionality is classified as a “maintenance function”.
To my mind the applicant’s position does too much violence to the words of the description and claims. The word “is” is the present indicative of the verb “to be”. In other words it connotes existence. As such, the claim is defining that the service functionalities exist as maintenance functions and they don’t exist as anything else. It is also the case that the description does not explicitly draw a clear distinction between a “service functionality” and a “maintenance function”. While it is likely correct to say (as Mr MacDonald does at, for example, [47] of his declaration) that “maintenance” is concerned with maintaining the machine in a certain state, the specification makes it clear that the state of the machine that is being maintained is not solely one achieved by cleaning the machine or having a user or a technician performing maintenance on the machine. The state that is to be maintained is one where the machine operates so as to supply beverages. If the machine runs out of beverage stock, then it is not in the correct state. However, the maintenance that is to be carried out is one of obtaining more stock, not cleaning, part replacement or technical intervention of some sort.
To my mind, a “maintenance function” includes within its scope notification to the user to do something (whether that is to cause the machine to do something, or for the user to undertake a particular task such as ordering stock), along with an automated step of ordering parts, ordering stock, making appointments and actions of that type. I cannot see any reason to narrow the scope to that contemplated by the applicant. That is not to say that certain maintenance functions are excluded by the words that appear in certain claims, but, given the broadness of the disclosure, the term does not, in and of itself, exclude what the applicant wants to exclude. It was open to the applicant to explicitly confine the scope of “maintenance function” to a very particular subset of actions. However, they have not done this.
Manner of Manufacture
In the present opposition, the opponent submitted that the claims were not for a manner of manufacture because the invention lacked the necessary quality of inventiveness as per the discussion in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15, (1995) 183 CLR 655. The opponent submitted that, it was apparent from the face of the specification that beverage preparation machines, including machines that used capsules and had customer interfaces, were known at the priority date. It was also submitted that it was known from the specification to use networks to re-order capsules. The opponent submitted that, as a consequence, the inventiveness of the invention was lacking.
The applicant submitted that there was nothing in the specification that indicated that the claimed invention was not new. They submitted that it was not enough for the opponent to make statements simply indicating that the specification showed that beverage preparation machines, as well as the use of networks to re-order capsules, were known at the priority date. The applicant submitted that, even accepting that to be true (which it did not), there were more features claimed and the combination claimed was not established by the specification to be known.
I do not believe that the opponent has made out its case in relation to this ground. The High Court in Philips v Mirabella (supra) stated that manner of manufacture can be a threshold question:
“if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”
In Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316, the majority summarised the effect of the Philips case as follows:
“Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step – that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.”
As I understand this statement, the assessment of whether the invention passes the threshold of inventiveness is done in light of the prior knowledge (which can be considered to be the common general knowledge (“CGK”)) as revealed by the specification.
The opponent seemed to put it that the specification was to be read by a PSA in the light of CGK and, therefore, evidence of the CGK was permissible in considering the issue of lack of manner of manufacture. However, I am not convinced by the opponent's arguments.
As noted above, in Bristol-Myers an invention does not pass the “threshold of inventiveness” test if, in light of what was known in the art “as revealed on the face of the specification”, the invention is obvious. While the opponent was encouraging me to draw on extrinsic evidence as to the CGK in deciding whether the invention was obvious, it must be noted that the court in Bristol-Meyers continued on from the above passage to say:
“Some elaboration, however, is required in relation to what the specification reveals as ‘known’. If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of ‘the common general knowledge as it existed in the patent area’. In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in Philips.”
As I understand this statement, the assessment of whether the invention passes the threshold of inventiveness is done in light of the prior knowledge (which can be considered to be the CGK) as revealed by the specification. Evidentiary references would seem to play no part in this assessment. It seems apparent that the range of the enquiry cannot be extended beyond the content of the specification. To introduce extraneous evidence as to CGK seems to trespass into the decision to be made in relation to section 18(1)(b)(ii).
This approach is supported in Apotex Pty Ltd (formerly GenRx Pty Ltd) v Sanofi‑Aventis [2008] FCA 1194 where it was said (in [119]–[120]):
“[119] … In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 at 664 the High Court quoted with approval the following passage from the NRDC Case 102 CLR 252 at 261–262 per Dixon CJ, Kitto and Windeyer JJ:
‘the Commissioner may properly reject a claim for a process which is not within the concept of a “manufacture”. But the case cited [ie Microcell] shows also that even if the process is within the concept the Commissioner is not bound to accept the allegation of the applicant that it is new, if it is apparent on the face of the specification, when properly construed, that the allegation is unfounded’.
[120] The latter decision has subsequently been discussed by the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171, particularly at [36]–[40] per Brennan CJ, Gaudron, McHugh and Gummow JJ and in Lockwood Security Products 235 ALR 202; (2007) 81 ALJR 1070 at [106]–[107]. It is made clear that external evidence cannot be relied upon.” (my emphasis)
To my mind, the opponent’s attack here is far too general. What is revealed by the specification as prior knowledge does not come close to what is claimed. Taking only what is described in the application as “known” I cannot find any lack of inventiveness. The application thus passes this “threshold of inventiveness” test as developed in the above cases. Therefore, it is directed to a manner of manufacture.
Novelty
The Federal Court of Australia has extensively reviewed the law regarding novelty in judgements. The judgements indicate that the basic test for anticipation is that set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235; that is:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel (see Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183).
Claims 1 and 12 – elements
To allow analysis of the independent claims to start with, it is appropriate to divide claims 1 and 12 into their individual elements. Claim 1 can be separated into individual features as follows:
1.1A capsule based beverage preparation machine, comprising
1.2at least one sensor for monitoring machine related parameters
1.3a communication module for enabling communication with a remote server via a communication network and for submitting the monitored parameters to the remote server
1.4the communication module being further adapted to receive from the server an indication of a necessary service functionality depending on the submitted parameters
1.5a control unit for initiating a corresponding maintenance function in response to the receipt of said indication of a necessary service functionality by the communication module from the server
The individual features of claim 12 are:
12.1A method for remotely providing service functionalities for a beverage preparation machine
12.2said beverage preparation machine being adapted for preparing a beverage by receiving a capsule in a capsule extraction unit, circulating a carrier liquid through said capsule in the extraction unit and by dispensing a resulting beverage, and being in data communication with a remote server via a communication network
12.3monitoring by the beverage preparation machine, parameters related to the machine
12.4submitting the monitored parameters to the server
12.5initiating by the server, a service functionality depending on the submitted parameters wherein said service functionality is a corresponding maintenance function
In this case there appeared to be no suggestion from either side that any of the features of the claims was not an essential feature.
The opponent pressed novelty on the basis of five documents as follows (using the opponent’s numbering):
D1 – EP 2085000
D3 – NO 324898
D11 – AU 2010294331
D12 – WO 2006/050563
D13 – US 2005/0034606D1 – EP 2085000
D1 discloses a capsule based beverage preparation machine with at least one sensor 103. The sensor is said to sense “food components” from, for example, a bar code on the capsule. This code could identify such things as a particular brand, style and/or grind of coffee in the capsule. D1 also discloses a communication module 105 for enabling communication with a “remote resource” 107, which may be a server, via a communication network (e.g. the internet), to submit the information to the remote server. D1 also discloses the server sending “responsive information” back to the communication module. The responsive information could be such particulars as:
(i)the appropriateness of using the pod in the particular machine,
(ii)where the coffee machine is not programmed to properly operate with the particular food in the pod, information provided to the user about the need for a programming update (in addition to the new programming),
(iii)altered brewing times,
(iv)altered process steps that may require the end user to insert additional food components to complete the brewing process,
and so forth.
Claim 1
Clearly, D1 discloses features 1.1, 1.2 and 1.3 of claim 1.
The opponent submitted that D1 also disclosed a control unit, being the end user interface 104. They submitted that this interface presented responsive information received from the server to the user and, as such, initiated a corresponding maintenance function in response to the receipt of an indication of a necessary service functionality by the communication module from the server.
The applicant submitted that the “responsive information” was related specifically to the beverage preparation process and the ingredients of the inserted capsule. To that extent, the applicant maintained that no maintenance function was being initiated as the provision of information to a user was not the initiation of a maintenance function by a control unit. They also submitted that the end user interface was not a control unit.
I have noted above that the state that is to be maintained is one where the machine operates so as to supply beverages. As such, something which achieves this can be said to be a “maintenance function”. Requiring a user to carry out a step so that the machine can supply beverages is, clearly, the initiation of a maintenance function. For D1, the information presented can include instructing the user to insert additional components. As such, I consider that D1 discloses feature 1.4 of claim 1.
The opponent’s submissions on the control unit, being that the end user interface 104 was the control unit, were somewhat at odds with Mr Downs’s evidence, which had the processor 102 as being the control unit. In the present case, I think it is clear from the specification that the control unit is something which controls other modules of the machine. In D1, this is the processor, and this processor causes the user interface to display information (i.e. initiates the maintenance function). It follows that the processor of D1 is a control unit and feature 1.5 is disclosed.
As such, Claim 1 is not novel in light of D1.
Claim 12
D1 clearly discloses features 12.1–12.4 of claim 12. The parties disagreed as to the status of feature 12.5. However, I find that, for the same reasons as given above, this feature is disclosed.
Clearly, the return of “responsive information” by the server to the machine is a disclosure of “initiating by the server, a service functionality depending on the submitted parameters”. In addition, as I noted above, provision of such information to a user does fall within the scope of a “maintenance function”. In D1, the information returned by the server, is the information displayed to the user. It follows that D1 discloses the service functionality and the maintenance function as being the same thing.
Therefore, claim 12 is not novel in light of D1.
As to the dependent claims, I find as follows:
Claim 2 – a user interface is disclosed in D1 (item 104).
Claim 3 – a bidirectional communication interface is disclosed in D1 (item 105).
Claim 4 – this is not disclosed by D1. While D1 discloses storing received information ([0036]), there is no disclosure of storing the monitored parameters.
Claim 5 – D1 does not contain a clear and unmistakable direction to monitor the number and type of consumed capsules. While it discloses communicating “coffee brewing apparatus usage patterns” ([0013], [0039]), this is not the same as saying the capsule consumption is monitored. For example, the term “usage pattern” could just as easily be referring to times of use to determine, for example, peak times.
Claim 6 – a machine having a housing is disclosed in D1 (figure 1).
Claim 7 – D1 does not disclose a beverage preparation unit having a control module. The processor of D1 is not shown as being connected to the coffee brewer 101. Mr Downs’s evidence in this regard is as follows (my emphasis):“I regard the physical locations and associations between communication module and control modules described in this claim as obvious examples of system architectures that would be naturally considered by designers before the Earliest Priority Date. Hence the control module can be associated with or in beverage preparation unit … Alternatively, the control module can be associated with or in communication module”
This association by Mr Downs is purely arbitrary and not in the vein of clear and unmistakeable directions.
Claims 8 to 11 – D1 discloses (item 106, [0026]-[0027]) a dedicated communication network which could be a wireless interface connecting to a public network (such as the internet).
Claim 13 – D1 discloses ([0039]) providing “non-price-based food component information (such as nutritional information, allergen content information, drug interaction information, and so forth)”. Providing this type of information falls within the scope of offering and providing “a service to the customer” which are two of the options in this claim. I cannot see any disclosure of the other options of this claim. Nevertheless, given the use of “and/or” in the claim, the disclosure in D1 is enough to anticipate this claim.
Claim 14 – D1 discloses communication which would allow “direct end user exchanges with a customer service resource” ([0039]). However, this is not a clear disclosure of “arranging an appointment with a maintenance assistant” or “setting up a communication with a help desk” as defined. Even Mr Downs says this phrase only “may” include these things. There is also no disclosure of preparing shipments of ingredients or spare parts. This claim is novel.
Claim 15 – D1 discloses monitoring the type of capsule being used, but it does not disclose monitoring the number of capsules and then ordering capsules when a shortage of capsules is detected. While D1 discloses use of “coffee brewing apparatus diagnostic information”, to expand that into the steps of monitoring capsules numbers and ordering more is a very long bow to draw.
Claim 16 – while D1 discloses verifying users, there is no disclosure of changing the machine settings to match the user’s settings and sending the user identification information to the server.
Claim 17 – D1 discloses using water to brew coffee.
Claim 18 – D1 clearly discloses a beverage preparation machine having a control unit and a communication module. It also discloses, as discussed above, a machine that carries out the method of claim 12.
Claim 19 – as discussed above, D1 discloses a capsule machine as defined in claims 1 or 18 in communication with, a submitting machine parameters to, a remote server which can then initiate a service functionality based on the transmitted parameters.
Claim 20 – D1 discloses identifying the type of each capsule. Given that it does this when the capsule is placed in the machine for use, it is clear that D1 discloses monitoring type of each consumed capsule.
Claims 21 to 23 – While D1 discloses a machine falling within the scope of the independent claims, it is clear that the drawings and/or example of the opposed application show a different connection between various units. As such, these claims are novel.In conclusion, Claims 1–3, 6, 8–13, 17–20 are not novel in light of D1.
D3 – NO 324898
D3 discloses a beverage preparation machine 400 having ingredient cartridges 500. When a cartridge is inserted, a controller 410 gets cartridge information from sensors 421 reading a cartridge label 510 and obtains (data communication means/device 411, 600) cartridge information from a remote “back office” 190. In operation, a user selects a beverage they want and its strength. The strength determines the amount of ingredients delivered from the cartridges when preparing the beverage.
The controller keeps an account of ingredient use from each cartridge and, when cumulative ingredient use of a cartridge reaches a threshold of the total amount available in the cartridge (which amount was supplied to the machine when the cartridge was inserted), the controller causes 414 a message to be displayed on a user interface 430 showing that the cartridge is depleted and should be replaced. Operation of the machine may be blocked until a new cartridge is inserted. The controller also reports this depletion to the back office and the back office communicates a message to a cartridge distributor that a cartridge in the possession of the user has been depleted. The system can be set up to produce an order to the distributor for delivery of new ingredient cartridges. D3 discloses two options in this respect. In the first option, the order is sent automatically. In the second option, a message is displayed to the user by the machine, or via email or SMS, and the user is required to confirm the order on the user interface panel of the machine.
The applicant submitted that D3 was not relevant as it:
a)did not disclose a remote sever that provided any indication of service functionality to the communication module (feature 1.4);
b)did not have a control unit initiating a maintenance function (feature 1.5);
c)did not disclose a remote sever that initiated a maintenance function (feature 12.5); or
d)used cartridges which were not single-use capsules (feature 1.1, 12.1).
Claim 1
With respect to claim 1 of the opposed application, there is no doubt that D3 discloses actions being taken (e.g. ordering more stock) that fall within the scope of “service functionality” and “maintenance function” as I have construed those terms, but I am of the opinion that D3 does not disclose the server sending to the communication module an indication of a service functionality (i.e. feature 1.4). I cannot find any disclosure of a message being sent from the remote server to the communication module indicating that further stock needs to be ordered. The only disclosure of a message informing the user of a stock order appears to be generated by the control unit without any communication from the remote server. While the opponent pointed to D3 mentioning downloading information about cartridge IDs, I have trouble equating this to an indication of a service functionality. I do not think they are the same.
As such, regardless of whether D3 discloses the other features of claim 1 listed above, claim 1 is novel in light of D3.
Claim 12
With respect to claim 12, there is no doubt in my mind that, contrary to the applicant’s submissions, D3 discloses feature 12.5. Clearly, the server initiates a maintenance function by ordering depleted stock.
However, I do not believe that D3 discloses the capsule that is defined in claim 12 (i.e. feature 12.1).
The opponent pointed to paragraph [2] of the opposed application which stated:
“A ‘capsule’ is meant to include any pre-portioned beverage ingredient within an enclosing packaging of any material, in particular an air tight packaging, e.g. plastic, aluminum, recyclable and/or bio-degradable packaging and of any shape and structure, including soft pods or rigid cartridges containing the ingredient.”
The opponent maintained that it is possible to have a package that had more than one portion and that this would fall within the scope of this definition. While I believe that the definition of “capsule” in the specification includes any pre-portioned, rigid beverage cartridge in its scope, and not just single-use cartridges, claim 12 defines more than just the machine using a “capsule”.
Claim 12 requires the beverage preparation machine to be:
“adapted for preparing a beverage by receiving a capsule in a capsule extraction unit, circulating a carrier liquid through said capsule in the extraction unit and by dispensing a resulting beverage”.
The machine of D3 does not contain such a disclosure. Indeed, it would appear from D3 that no liquid is passed through the cartridge, but rather than the contents of the cartridge are dispensed into the carrier liquid. As such, the cartridges of D3 are not the capsules of claim 12.
It follows that claim 12 is novel in light of D3.
As a consequence, all claims are novel over D3.
D11 – AU 2010294331
D11 was raised as a “whole of contents” novelty citation. D11 discloses a capsule based beverage preparation machine 10/10’, with at least one sensor for monitoring the number of capsules consumed (page 6, lines 33-39). A control unit controls processing of the ingredients in the capsules (page 4 lines 1-4). A communication module communicates with a remote supplier server 50 via a communication network 20 to submit the number of consumed capsules to the supplier server. Once a shortage of stock is detected the server automatically generates an instruction to either a) invite the customer to make an order for a shipment of a new stock of capsules, or b) prepare a shipment of a new stock of capsules for supply to the customer.
The applicant submitted that D11 was not relevant as it:
a)did not disclose a remote sever that provided any indication of service functionality to the communication module (feature 1.4);
b)did not have a control unit initiating a maintenance function (feature 1.5); or
c)did not disclose a remote sever that initiated a maintenance function (feature 12.5).
Claim 1
In relation to claim 1, I am in agreement with the applicant in relation to features 1.4 and 1.5. Regarding feature 1.4, while it is true that D11 discloses inviting the customer to make an order for shipment, D11 states that this message is received “via e-mail, phone, fax or paper mail” (page 7 lines 36-37). It is not at all clear whether the remote server provides this type of indication (which I agree is a “service functionality”) to the communication module.
In regards to feature 1.5, the opponent pointed to page 2 lines 18-27 of D11 as disclosing this feature. I note that this passage is discussing the background art. It states:
“EP 1 302 138 discloses a beverage machine connected to a network. The machine is arranged to communicate with a distant server to carry out diagnosis of the beverage machine and to update the machine's control software via the network.
Beverage preparation machines that can be integrated in a network such as the internet are well known. Typically, such a network integration allows remote control or remote software upgrading of the beverage preparation machine.”
I cannot see how this helps the opponent. This passage states that beverage preparation machines can be integrated into a network so that software upgrades can be done remotely. I fail to see how this could possibly be said to show:
“a control unit for initiating a corresponding maintenance function in response to the receipt of said indication of a necessary service functionality by the communication module from the server”
There is a lot missing from the passage from D11.
It follows that claim 1 is novel in light of D11.
Claim 12
Turning to claim 12, given my construction of “service functionality” and “maintenance function”, the applicant’s position is not sustainable. Clearly, the remote server, in inviting a client (however that is done) to make an order, or by preparing a shipment of stock is initiating a maintenance function. Feature 12.5 is disclosed.
It follows that claim 12 is not novel in light of D11.
As to the claims dependent on claim 12, I find as follows:
Claim 13 – D11 discloses (claim 1) automatically ordering more capsules, or asking the customers if they want to order more capsules. As such, providing this falls within the scope of offering and providing “a service to the customer”, as well as indicating to the customer a shortage of ingredients, which are three of the options in this claim. I cannot see any disclosure of the other options of this claim. Nevertheless, given the use of “and/or” in the claim, the disclosure of D11 is enough to anticipate this claim.
Claim 14 – D11 does not disclose “arranging an appointment with a maintenance assistant” or “setting up a communication with a help desk” as defined. However, there is disclosure of preparing shipments of ingredients. Consequently, given the use of and/or in the claim, this claim lacks novelty.
Claim 15 – D11 discloses the features of this claim. Indeed, claim 1 of D11 uses more or less identical wording. Clearly this claim lacks novelty.
Claim 16 –D11 does not disclose verifying users, changing the machine settings to match the user’s settings, or sending the user identification information to the server. This claim is novel.
Claim 17 – D11 discloses using water to brew coffee.
Claim 18 – D11 clearly discloses a beverage preparation machine having a control unit and a communication module. It also discloses, as discussed above, a machine that carries out the method of claim 12.
Claim 19 – as discussed above, D11 discloses a capsule machine as defined in claim 18 in communication with, and submitting machine parameters to, a remote server which can then initiate a service functionality (i.e. ordering capsules) based on the transmitted parameters.
Claim 20 – D11 discloses identifying the type of each consumed capsule.
Claims 21 to 23 – similarly to the discussion in relation to D1, the drawings and/or example of the opposed application show a different connection between various units to that in D11. As such, these claims are novel.
In conclusion, claims 12–15, 17–20 are not novel in light of D11.
D12 – WO 2006/050563
D12 discloses a beverage preparation machine which has at least one sensor (“intelligent monitoring systems”) for monitoring machine related parameters including consumption of ingredients, machine performance, machine hardware and other parameters. A communication module enables communication with a remote station via a wide area network (WAN) linking the local and remote stations. The machine has a control unit (internal control module, page 14, line 6) for initiating maintenance functions. D12 discloses a method whereby the remote station can receive information from the machine as to an order due to the depletion, or imminent depletion of stock. The machine of D12 performs a number of tests on various components, which can involve using data downloaded from the remote server, and sends the results of those tests to the remote sever.
D12 describes a relatively complex functionality. Figure 6 below, which relates to the performance of testing and maintenance on the machine, indicates some of this complexity:
The applicant submitted that the remote station did not provide to the machine an indication of a service functionality depending on the submitted parameters. They submitted that determination of such functionality was made by the machine and the remote station was only accessed to obtain further data rather than to determine needed maintenance. As such, they submitted that the control unit did not initiate a maintenance function in response to receipt of an indication from the remote station. They also did not consider it to be a capsule machine.
As such, the applicant submitted that D12 was not relevant as it:
a)did not disclose a communication module that received any indication of service functionality from a remote server (feature 1.4);
b)did not have a control unit initiating a maintenance function in response to an indication from the remote server (feature 1.5);
c)did not disclose a remote server initiating a service functionality (feature 12.5); or
d)did not use single-use capsules (feature 1.1, 12.1).
Claim 1
With respect to claim 1, the opponent noted that D12 disclosed that a 24-month history was available and that this allowed the machine to be monitored either remotely, or on site, for a variety of parameters. They noted that the system of D12 does go to the WAN to obtain stored data and the stored data is used to help analyse the machine. As such, the machine triggers the process and checks and report on itself. However, I do not see the return of data to the machine by the remote server as being something which could be a “service functionality” as I have construed that term. It is information which allows for a determination by the machine of something that needs to be done. That is, it is the machine that provides an indication of a service functionality, not the remote server. Consequently, features 1.4 and 1.5 are not disclosed.
As to feature 1.1, the opponent accepted that D12 was primarily not about capsule machines (regardless of what “capsule” is taken to mean). However, they noted that page 5 lines 11–13 said:
“… it will be appreciated that the machine intelligence described herein may be adapted to a variety of vending and/or expresso type machines.”
Be that as it may, that is clearly not the level of disclosure required for novelty. As the authorities make clear, the citation has to disclose all features. An oblique reference to other possibilities is not what the authorities consider a disclosure. As was said in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 486:
“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.”
As such, features 1.1, 1.4 and 1.5 are not disclosed by D12 and claim 1 is novel.
Claim 12
As a consequence, given my finding for feature 1.1, claim 12 is also novel in light of D12. However, I would also mention here that there appears to be no disclosure of feature 12.5. The reasoning is similar to that around features 1.4 and 1.5. While it is difficult to discern from the figure above, it appears from D12 that, at most, the remote server operates as a database (e.g. 86), with no processing occurring leading to an indication of a service functionality, or initiation of a maintenance function.
D13 – US 2005/0034606
D13 discloses a coffee brewing machine 10 which contains a coffee extraction module 20, a module producing milk foam 30, a control unit 40 and a water and steam supplier 50. Each module has a transponder which records parameters associated with each module. A reader 70 (i.e. a communication module) can read the data in each black box and send it over a communication network 80 to a remote server 100. An alternative embodiment has the data being sent directly from the transponders. Paragraph [0041] of D13 makes it clear that the invention can also be embodied in a machine operating with insertable coffee capsules.
Claim 1
Given the above, D13 discloses features 1.1–1.3 of claim 1. The dispute between the parties related to whether D13 disclosed features 1.4 and 1.5.
In regard to feature 1.4, the dispute focussed on paragraph [0025] and claim 22 of D13. Paragraph [0025] of D13 states (my emphasis):
“The data transfer from the individual transponders via the reader unit 70 to the computer 100 can occur for example via USB connections 80. It can, however, also be conducted from the transponders via corresponding control modules directly over the internet to a service centre or similar where the data can be analysed and reply messages actuated or a service technician can be assigned for repair or maintenance. The computer 100, which can be provided in stationary or portable form, is provided with a computer program to analyse the data, through which the data can be retrieved and analysed using corresponding menus”,
and claim 22 states (my emphasis):
“22. Coffee machine according to claim 19, wherein the data transfer from the transponders can be conducted via control modules directly via the internet into a mainframe or similar in which this transmitted data is analyzed and, where necessary, replies are sent or a service technician is notified to provide repair or maintenance.”
The opponent submitted that the mentions in paragraph [0025] and claim 22 of replies being sent were a disclosure of the remote server providing an indication of a service functionality. The applicant submitted, based on Mr MacDonald’s evidence, that, at best, “reply messages actuated” in paragraph [0025] referred to calling a technician or possibly sending a reply to an external computer. They submitted that there was no disclosure in D13 of a reply being sent to the machine.
I disagree with the applicant. As an initial observation, it is difficult to see how something which replies to a communication can be seen as doing anything other than replying to the device which sent the communication in the first place. Otherwise, the use of “reply” would make no sense and other words would have been used. As such, D13 clearly discloses that the remote server provides an indication back to the beverage preparation machine. There is then a question of whether the indication provided is a “service functionality”. In this regard, it is clear from the context, which is that the reply relates in some way to date received at the remote server, that it is a service functionality. It would be odd indeed to see these passages of D13 as requiring the remote server, having analysed data relating to machine performance to either send a message which has nothing to do with service functionality, or call a technician for repair or maintenance (which definitely does have something to do with service functionality). To read the reply as being something other than notification of some sort of service would be incongruous. As such feature 1.4 of claim 1 is disclosed.
However, as to feature 1.5, I do not think that the opponent has made its case. Feature 1.5 requires the control unit to initiate a maintenance function and I cannot find a clear disclosure in D13 of the control unit doing this. Mr Downs states in his evidence that claim 26 of D13 says that:
“in the case of the electronic control unit (40), functional processes and time lapses are recorded in the black box on actuation”.
Mr Downs noted the use of “actuation” in claim 26, noted that this was the only other reference in D13 to actuation and concluded that it was clear that “reply messages actuated” in paragraph [0025] referred to a communication from the service centre that would result in functional processes controlled by the control. That is, that the reply message would cause the control unit to initiate a maintenance function. I disagree. The wording of claim 26 cannot support such a conclusion. It clear from claim 26 that it is defining that the black box associated with the control unit (i.e. 64) records information when the machine is actuated. The “actuation” in claim 26, is not the actuation of reply message of paragraph [0025]. It is the operation of the machine. This is very different.
It follows that claim 1 is novel in light of D13.
Claim 12
In regards to claim 12, the parties disagreed over whether D13 disclosed feature 12.5; that is, whether D13 disclosed “initiating by the server, a service functionality depending on the submitted parameters wherein said service functionality is a corresponding maintenance function”. However, given my construction in relation to “initiate”, “service functionality” and “maintenance function”, the applicant’s argument must fail.
It is clear from paragraph [0025] that the remote server, having received and analysed the data from the machine, assigns a service technician for repair or maintenance. This is clearly a disclosure of the server initiating a service functionality on the basis of submitted parameters. In addition, as I noted above, taking steps for automatically providing a service to the customer does fall within the scope of initiating a “maintenance function”. In D13, assigning a service technician is taking steps for automatically providing a service to the user. It follows that D13 discloses the service functionality and the maintenance function as being the same thing.
Therefore, claim 12 is not novel in light of D13.
As to the claims dependent on claim 12, I find as follows:
Claim 13 – D13 discloses (paragraph [0025]) assigning a service technician for repair or maintenance. Doing this falls within the scope of offering and providing “a service to the customer”, which are two of the options in this claim. I cannot see any disclosure of the other options of this claim. Nevertheless, given the use of “and/or” in the claim, this disclosure in D13 is enough to anticipate this claim.
Claim 14 – D13 discloses “arranging an appointment with a maintenance assistant”. It does not disclose the “setting up a communication with a help desk” or “preparing shipments of ingredients” as defined. However, given the use of and/or in the claim, this claim lacks novelty.
Claim 15 – D13 does not disclose monitoring capsule type and use and then inviting the user to place an order or automatically placing an order. This claim is novel.
Claim 16 – D13 does not disclose verifying users, changing the machine settings to match the user’s settings, or sending the user identification information to the server. This claim is novel.
Claim 17 – D13 discloses using water to brew coffee.
Claim 18 – D13 clearly discloses a beverage preparation machine having a control unit and a communication module. It also discloses, as discussed above, a machine that carries out the method of claim 12.
Claim 19 – as discussed above, D13 discloses a machine as defined in claim 18 in communication with, and submitting machine parameters to, a remote server which can then initiate a service functionality (i.e. assigning a service technician) based on the transmitted parameters.
Claim 20 – D13 does not disclose identifying the type of each consumed capsule.
Claims 21 to 23 – similarly to the discussion in relation to D1, the drawings and/or example of the opposed application show a different connection between various units to that in D13. As such, these claims are novel.In conclusion, Claims 12–14, 17–19 are not novel in light of D13.
Novelty – overall conclusion
The opponent is successful under this ground. Claims 1–3, 6, 8–13, 17–20 are not novel in light of D1, claims 12–15, 17–20 are not novel in light of D11 and claims 12–14, 17–19 are not novel in light of D13.
Inventive Step
The statutory basis for inventive step for this opposition is set out at s7(2) and s7(3) of the Act as it stood prior to the Raising the Bar Act, and is reproduced below:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“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.”
In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [53] (“Aktiebolaget Hassle”), the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187] where Graham J posed the reformulated Cripps 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 combination] in the expectation that it might well produce a [useful or better result]?” (emphasis in the original)
The opponent urged me to avoid the position that the Cripps question was the only test that is applicable for inventive step. The opponent noted Generic Health Pty Ltd v Bayer Pharma AG (2014) 222 FCR 336 at [71], where the Full Court said that Aktiebolaget Hassle did not stand for the proposition that the Cripps question must be applied in every case and the question whether experiments were of a routine character to be tried as a matter of course (as per Wellcome Foundation) remained relevant. The applicant submitted that the Cripps question was appropriate in the determination of inventive step.
Ultimately, I do not have to make a decision on this point as the outcome of the opposition remains the same. However, I will note that “matter of routine” in Wellcome Foundation is, in my opinion, congruent with “matter of course” in the Cripps question. I do not see there being any divergence here that would lead to any meaningful difference in outcome when assessing inventive step under either “test”.
In the present case, the opponent contended that the claims lacked inventive step in light of the CGK alone. The opponent also contended that the claims lacked an inventive step in light of information mention in subsection 7(3), specifically, D1, D3, D12 and D13 when combined with the CGK.
Inventive step in light of D1, D3, D12 and D13
To sustain a lack of inventive step in light of D1, D3, D12 or D13, the opponent must show, as required by subsection 7(3), that these documents could reasonably have been ascertained, understood and regarded as relevant. The applicant submitted that there was no evidence in this case from any witness suggesting that they would have consulted patent documents in the course of the development and design of capsule beverage machines. The opponent countered stating that paragraph [32] of Downs2 showed this not to be the case.
Paragraph [32] of Downs2 states (emphasis in original):
“In paragraph 82 of Mr MacDonald's Declaration, Mr MacDonald states ‘I was not aware of any remote maintenance being performed in relation to beverage preparation machines as of December 2009, nor since that time.’ Firstly this reflects that Mr MacDonald's experience appears limited to industrial design related to development of low cost products for the domestic market. Secondly I note that in the field of competitive consumer goods, which includes capsules and capsule-based beverage machines, it was, before the Earliest Priority Date, a known practice in the area of design for a client to provide information as to what has previously been done by others in the field. If Mr MacDonald was working for a design house engaged by a client to develop and new coffee machine, that client would be very familiar with the intellectual property landscape, including patents, and would provide to the design house copies of such patents that are relevant to the new product development, and having regard to documents D1, D3, D11, D12 and D13, Mr MacDonald would have likely become aware of remote maintenance being performed in relation to beverage preparation machines, if engaged to provide product development services (distinct from industrial design services) before the Earliest Priority Date.”
The opponent submitted that, because documents were given to the designers, they were documents that were ascertained, because they would have been expected to read them, and regarded as relevant, because the documents would be used to inform the design parameters to be chosen. As Mr Downs had said that documents provided would have included patents relevant to the new product development, patents should be considered to be documents that fell within subsection 7(3).
The applicant submitted that this did not establish that a PSA would consider patents. They noted that there was no information as to the criteria that the client might apply when selecting documents to provide to the design house.
I enquired of the opponent at the hearing whether there were any statements in evidence that the PSA would go and search patent documents. The opponent indicated that there was not, but submitted that there was no reason in principle to say that patent documents were not documents that were ascertained. The opponent submitted that if part of the PSA’s job at the scoping stage of a design task as a matter of course involved being provided with, and reviewing, prior art, then that prior art would be regarded as having been ascertained, understood and regarded as relevant by the PSA. While the opponent accepted that it would not have been ascertained by PSA themselves, it would have been ascertained.
I disagree with the opponent.
In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21, when discussing subsection 7(3) the High Court said (footnotes omitted):
“150.The proper construction of ss 7(2) and 7(3) has been considered in Firebelt Pty Ltd v Brambles Australia Ltd (‘Firebelt’). In recognising that s 7(3) relaxes the previous rule under the 1952 Act which forbade the use of prior disclosures not proved to be part of the common general knowledge at the priority date, this Court approved a statement by Burchett J in the Federal Court where he noted that s 7(3) in its pre-2001 version is limited:
‘by the words “being information that the skilled person ... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area”. And if a prior [disclosure] passes those tests, it must still be able to be said that, if that [disclosure] had been considered by the hypothetical skilled person together with the common general knowledge at the relevant time, “the invention would have been obvious”.’
151.That passage, noting the words of limitation in s 7(3), reflects the two statutory tests which have already been mentioned: the s 7(2) test of whether an invention is obvious when compared with the prior art base, and the s 7(3) test of whether information is to be included in the prior art base, each test to be determined objectively by the standard of ‘a person skilled in the relevant art’.
152.Given the history, context, purpose and specific words of limitation in s 7(3), all of which were addressed by this Court in Firebelt, the phrase ‘relevant to work in the relevant art’ should not be construed as meaning relevant to any work in the relevant art, including work irrelevant to the particular problem or long-felt want or need, in respect of which the invention constitutes an advance in the art. The phrase can only be construed as being directed to prior disclosures, that is publicly available information (not part of common general knowledge) which a person skilled in the relevant art could be expected to have regarded as relevant to solving a particular problem or meeting a long-felt want or need as the patentee claims to have done. Otherwise the words of limitation in the last 40 words of s 7(3) would have no role to play. Any piece of public information in the relevant art would be included, as is the case with the much broader and quite different formulation in the cognate provisions in the United Kingdom, which do not depend on the standard of a skilled person's opinion of the relevance of the information.” (my underlining)
In AstraZeneca AB v Apotex Pty Ltd; AstraZeneca AB v Watson Pharma Pty Ltd; AstraZeneca AB v Ascent Pharma Pty Ltd [2015] HCA 30 the High Court stated (footnotes omitted):
“68.Before a document containing prior art information can be used along with the common general knowledge for the purposes of the s 7(2) enquiry, it is necessary that it meet the requirements of s 7(3). In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] it was explained that prior art information which is publicly available in a single document is ‘ascertained’ if it is discovered or found out, and ‘understood’ means that, having discovered the information, the skilled person would have comprehended it or appreciated its meaning or import. The Court also explained that the phrase ‘relevant to work in the relevant art’ is directed to publicly available information, not part of the common general knowledge, which the skilled person could be expected to have regarded as relevant to solving a particular problem, or meeting a long-felt want or need, as the patentee claims to have done.
69.Lockwood [No 2] also explains that, in answering the question of obviousness, the information referred to in s 7(3), like that part of the prior art base which is the common general knowledge, is considered for a particular purpose. That purpose is to look forward from the prior art base to see what the skilled person is likely to have done when faced with a problem similar to that which the patentee claims to have solved with the claimed invention. It is this aspect of the s 7(2) enquiry which assumes particular importance on these appeals.” (my underlining)
It was said in Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited [1997] APO 40:
“A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art. The requirements of understood and regarded as relevant are not likely to be an issue where a document relates to the same art as the problem.” (my emphasis)
Clearly, a document is to be ascertained and regarded as relevant (as per subsection 7(3)) in regards to a problem encountered by the PSA. However, the opponent’s evidence does not establish that people like Mr Downs and Mr MacDonald even think about consulting patent documents when they have encountered a problem. The evidence of Mr Downs goes no further than saying that a design house is given documents relevant to the product development rather than relevant to the problem to be solved. The evidence does not even conclusively establish that patent documents are handed over every time a client is engaged by the design house.
As the applicant submitted, the criteria used to choose these documents are not explained. It would appear that one purpose could be in a “freedom to operate” sense; that is, to set the design parameters of a product so as to avoid infringing a patent. They might even be chosen to show the style of machine being sought by the client. The question that needs to be answered is, having been given the brief, if, in designing the new device a problem was encountered, would the PSA consult patent documents? The opponent’s evidence does not address this point, but this is what the authorities indicate is the context around ascertainment and regarding a document as relevant.
It must be noted that I am not making any general statement about a PSA in this art and patent documents. My finding goes no further than saying that the opponent has not discharged its onus in this opposition in regards to the ascertainment of (and regarding as relevant) D1, D3, D12 and D13.
I find that the opponent has not shown that the claims lack an inventive step in light of D1, D3, D12 and D13 combined with the CGK.
Inventive step in light of CGK alone
The problem
The applicant submitted that the opponent had not explained what it considered to be the problem to be solved by the present invention and that Mr Downs was not questioned about known problems associated with beverage machines.
It is not quite correct to say that the opponent did not identify a problem. The opponent stated at paragraph [76] of their written submissions:
“The problem addressed by the opposed application is the development of a beverage preparation machine which can be more easily maintained and monitored and which provides the user with help in managing resources.”
The opponent indicated that this problem came from a reading of paragraphs [8] and [15] of the description of the opposed application.
In relation to the problem, the applicant indicated at [163] of their written submissions that:
“Mr MacDonald … indicates that complexity of beverage preparation machines was increasing and that this was leading to increased difficulties for customers to maintain and operate machines effectively [see paragraph [26] of the MacDonald declaration]. It is submitted that this complexity, is the problem which is solved in the Application.”
The specification states at [0007] (partially quoted at [13] above) that:
“Nowadays beverage preparation machines have to fulfill an increasing number of tasks. This makes the machine more complex and it is thus difficult if not impossible for the customer to maintain and monitor the functionalities of the beverage preparation machine himself. Specifically in the case of B2B solutions, where the beverage preparation machines are commercially used and accessed by a plurality of different users, it is quite demanding to for the customer to always keep the machine in an optimum condition.”
The specification notes at [0008]:
“It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative”.
Insofar as I can tell, the only disadvantage listed before [0008] is the one listed in [0007]. Nevertheless, the specification also states that:
“It is further an object of the present invention to provide such a method, system and beverage preparation machine, which make the handling of the beverage preparation machine for the customer easy and simple. It is a further object to provide such a method, system and beverage preparation machine which allows to shift the workload regarding the maintenance and monitoring of the beverage preparation machine away from the customer and to provide service functionalities with a reduced interaction needed from the customer's side.” (0011])
As such, while complexity certainly contributes to problems with beverage preparation machines, I do not think that it could be said, as the applicant has, that the problem is simply “complexity”. Instead it would appear that the problem is closer to what the opponent has said. However, I do not think it is exactly what the opponent has said. I think that the problem proposed by the opponent includes part of the solution.
To my mind the problem to be addressed is the provision of a beverage machine which simplifies the customer interactions required to maintain the machine in optimum condition. As claimed, the solution of the opposed application is a machine which monitors conditions and informs the customer of, or at least partially undertakes, the need to carry out maintenance, including ordering stock.
The common general knowledge
In their submissions, the opponent set out the following as what they believed had been established as CGK:
(a)coffee preparation machines for domestic and commercial use, including capsule machines;
(b)the fact that capsule based machines used a pod or capsule and the machine forced water through the capsule;
(c)the fact that commercial machines include machines for large groups (e.g. machines in an office setting) or vending machines, and could be more automated, have larger capacity, and more functionality than domestic machines;
(d)the use of interfaces, often with buttons, for users to order from a choice of multiple beverages. These interfaces would trigger a string of commands (a workflow), and may include notifications for users;
(e)the use of control systems in beverage preparation systems, which stored different workflows, and which could include information about consumption;
(f)the fact that network connectivity could be used for machines which used consumables, to track consumable usage;
(g)communications via a network between a service centre and a machine, to assist in fault diagnosis. This communication could be wired or wireless and use various protocols. Wireless connection to a local modem was an obvious choice;
(h)complex products in the food and pharmaceutical industries which had the requirement to dispense certain amounts of liquids and included an interface;
(i)that ingredient reserves or machine operational information and errors could be monitored to assist in servicing, and sent to a service centre via a network to trigger maintenance and replacement of ingredients;
(j)beverage preparation machines could be remotely monitored for servicing, at scheduled times or as required;
(k)two way communications could be used to detect faults or order consumables;
(l)beverage preparation machines could use sensors to measure temperature, pressure and flowrate, ingredients, ambient conditions; waste; the presence of key components and mechanical and electrical characteristics.
It is notable that the opponent relied solely upon statements made by Mr Downs in his evidence to collate this list. They did not explicitly refer to any statements made by Mr MacDonald to corroborate any elements. I have referred above to the difficulty I have with Mr Downs (and Mr MacDonald) as being representative of the PSA. As such, I am unsure about whether such a list can be taken to be a correct statement of CGK. Nevertheless, the applicant indicated in their submissions that they agreed that items (b), (d) and (e) were CGK. They also conditionally agreed that items (a) and (c) were CGK in regards to domestic capsule machines. The applicant maintained that cafes, restaurants and the like did not use commercial capsule machines. They disagreed with the remaining items being CGK. That is, there is disagreement as to whether items (a), (c) and (f)–(l) were CGK. It goes without saying that, if such items cannot be established as CGK, the opponent’s case must fail.
Common general knowledge – discussion
I do not believe that the opponent has made out their case. Apart from the fact that Mr Downs is not a good fit for the PSA, the statements he makes that the opponent relies upon to establish CGK do not necessarily do so.
For item (a), the opponent relies upon paragraph [7] of Downs1. In that paragraph Mr Downs states:
“…I was of the view that the general population would have been aware, at the Earliest Priority Date, of coffee preparation machines for both domestic and commercial use. The types of domestic machines that would have been well known included drip-type coffee machines (percolators), scaled-down versions of the barista coffee machines (i.e., machines that take a ground coffee powder), versions of the machines with more automation, such as machines that would grind the coffee beans for you, and capsule-based coffee machines. I explained that the capsule-based machines would use a pod or capsule and the machine would force water through the coffee in the capsule to make the beverage.”
I note that this paragraph does not go into detail about commercial machines. Mr Downs does not go any further in his evidence. While he does mention machines being used in restaurants, he does not describe these as being capsule machines, even in the sense that I have construed “capsule” in this opposition. I am not prepared to accept that capsule machines being used in a commercial setting were CGK.
For item (c), I do not agree with the applicant. This is primarily because item (c) does not have anything to say about capsules. It refers to commercial beverage machines and/or beverage vending machines being bigger and more automated than domestic machines. I do not see Mr Downs and Mr MacDonald disagreeing in this point.
For item (f), the opponent relied upon paragraph [20] of Downs1. This paragraph states:
“I was asked to expand on the use of a network and I explained that it was known for machines that used consumables, for example medical devices, to use network connectivity. I explained that it was known to use network connectivity to track usage of the consumable including reagents and communicate this and other information about machine status using a network.”
As noted by Mr MacDonald, this paragraph relates to medical devices. While I accept that item (f) only refers to network connectivity for “machines” and not “beverage preparation machines”, no evidence has been led (as it must be) to establish that a person developing a capsule beverage machine would look to the medical and pharmaceutical industry for information. While the opponent refers to microdosing being used in the Coca Cola Freestyle machine (as evidenced by Downs2 and the document that they sought to introduce under regulation 5.23), I do not see that the Freestyle machine has been shown to be CGK. Moreover, even taking dosing in a medical device to be analogous to the dosing of a beverage machine, this item is in relation to networking. It seems to me that making the steps of (i) medical devices are networked, (ii) medical devices use microdosing, (iii) beverage preparation machines use microdosing, (iv) therefore beverage preparation devices are networked is something that can only be inferred with the benefit of hindsight. I am not prepared to accept that beverage preparation machines being networked was CGK.
As to item (g), the opponent relied upon paragraphs [21]–[24] and [52] of Downs1. As with the discussion in relation to item (f), paragraphs [21]–[24] are all related back to medical devices with no evidence to establish that looking at the medical devices art was routinely done. While Mr Downs certainly says:
“For a vending-style beverage machine network connectivity could be valuable to ensure the machine does not run out of ingredients”,
all that establishes is that it would be a good thing for the beverage machine. It does not establish that it is CGK in the art. I am not prepared to accept that beverage preparation machines communicating with a service centre to assist in fault diagnosis was CGK (although I will accept that wired or wireless communication would be used as a matter of routine if such communication was CGK in the art).
In relation to item (h), the opponent relied upon paragraph [25] of Downs1. In actuality, it appears the only dispute in relation to this item was to the word “complex”. The applicant maintained that capsule beverage machines were not “complex products”, also relying on paragraph [25]. Mr Downs states in paragraph [25] inter alia:
“I noted that a coffee machine may come across as a simple device compared to some medical instruments I have been involved with designing, as it is smaller and has less components. However product development involves comparable design challenges and should follow similar design principles. In some regards a coffee machine design has additional design challenges related to higher manufacture volume, untrained users and food industry regulations.”
I agree with the applicant that this paragraph does not establish beverage machines as having similar complexity to other “products in the food and pharmaceutical industries” (whatever they are) in so far as operation goes. I also cannot conclude that “comparable design challenges” may be involved, although I would expect the design principles, in terms of design cost and product cost being critical factors, to be the same in terms of producing something. I am not prepared to accept that item (h) is CGK.
Item (i) is disposed of fairly simply. Given what I have concluded in relation to item (f) above, even if it could be said to be CGK to monitor ingredient reserves or machine operational information and errors in a beverage preparation machine (and I do not think that the opponent’s evidence supports this conclusion), the provision of this information to a service centre via a network is not CGK in the beverage machine art. I am not prepared to accept that item (i) is CGK.
For a similar reason, I also do not accept that items (j) and (k) are CGK. The evidence does not establish to my satisfaction that networked beverage preparation machines, which would need to be the case for the operations described in these two items, were CGK.
For item (l), Mr MacDonald accepts that sensors that measure “temperature, pressure, flow rate, etc” would typically be used in a beverage machine. He disagreed that sensors to measure ingredients, ambient conditions, waste level and the presence of key components were typical. I think it could be said that the use of sensors in beverage preparation machines was CGK, even if the specific type of sensor was uncertain.
As such, given my conclusions that (a), (f) and (g)–(k) have not been established as CGK in the art, the opponent has not met its onus in showing that the claims lack an inventive step in light of the common general knowledge.
Conclusion
The opposition is successful. Claims 1–3, 6, 8–15, 17–20 are not novel. No other grounds of opposition advanced by the opponent were successful.
There is clearly patentable subject matter in the specification. It is customary in this situation for the applicant to be given an opportunity to file amendments to overcome defects identified in a decision. As such the applicant has two (2) months from the date of this decision to file suitable amendments to overcome these findings.
Costs
Costs usually follow the event. I did not take either party to submit that this approach should be varied in this opposition. As the opponent has been successful, I award costs according to Schedule 8 of the Patents Regulations 1991 against the applicant, Nestec S.A..
Greg Powell
Delegate of the Commissioner of PatentsAnnex A
- A capsule based beverage preparation machine, comprising:
at least one sensor for monitoring machine related parameters;
a communication module for enabling communication with a remote server via a communication network and for submitting the monitored parameters to the remote server;
the communication module being further adapted to receive from the server an indication of a necessary service functionality depending on the submitted parameters; and
a control unit for initiating a corresponding maintenance function in response to the receipt of said indication of a necessary service functionality by the communication module from the server.- A beverage preparation machine according to claim 1, further comprising a user interface for outputting the received indication to a user.
- A beverage preparation machine according to any one of the preceding claims, wherein the communication module is a bidirectional interface.
- A beverage preparation machine according to any one of the preceding claims, further comprising a storage for storing the monitored parameters,
wherein the communication module is further adapted to submit the stored parameters upon a request received from the server.
- A beverage preparation machine according to any one of the preceding claims, wherein the monitored parameters include: the number and of consumed capsules; and the type of each consumed capsule.
- A beverage preparation machine according to any one of the preceding claims, further comprising a beverage preparation unit in a housing, the communication module being located inside or outside the housing.
- A beverage preparation machine according to any one of the preceding claims, which comprises a beverage preparation unit having a control module, the communication module being connected to the control module, a communication program for communication to the server being carried out by the control module of the beverage preparation unit or a control module included in the communication module.
- A beverage preparation machine, according to any one of the preceding claims wherein the communication network comprises a dedicated network.
- A beverage preparation machine, according to claim 8 wherein said dedicated network is a wireless network.
- A beverage preparation machine, according to claim 9 wherein said dedicated network is a network between the communication module to a public network.
- A beverage preparation machine, according to claim 9 or 10 wherein said wireless network is selected from the group including GSM, GPRS, UMTS.
- A method for remotely providing service functionalities for a beverage preparation machine, said beverage preparation machine being adapted for preparing a beverage by receiving a capsule in a capsule extraction unit, circulating a carrier liquid through said capsule in the extraction unit and by dispensing a resulting beverage, and being in data communication with a remote server via a communication network, the method comprising the steps of
monitoring by the beverage preparation machine, parameters related to the machine,
submitting the monitored parameters to the server, and
initiating by the server, a service functionality depending on the submitted parameters wherein said service functionality is a corresponding maintenance function.- A method according to claim 12, wherein the step of initiating a service functionality comprises
offering a service to the customer,
taking steps for automatically providing a service to the customer,
indicating to the customer an upcoming maintenance period, indicating to the customer shortage of an ingredient within the machine needed for preparing a beverage and/or
indicating to the customer the need for replacement of a part of the machine.- A method according to claim 13, wherein the step of taking steps for automatically providing a service to the customer comprises
arranging an appointment with a maintenance assistant;
setting up a communication with a help desk; and/or
preparing shipment of ingredients and/or spare parts for the machine .- A method according to any one of claims 12 to 14, wherein the step of monitoring further comprises
monitoring by the beverage preparation machine, the number of consumed capsules; and
automatically recognizing by the beverage preparation machine the type of each consumed capsule, and
wherein the step of initiating a service functionality comprises
comparing for each type of capsule an initial amount of capsules within the beverage preparation machine with the actual remaining amount of capsules; and
in case of detecting a reaching of a shortage of capsules at the beverage preparation machine, generating automatically an instruction:a) to invite the customer to make an order for a shipment of a new stock of capsules, or
b) to prepare a shipment of a new stock of capsules for supply to said customer.- A method according to any one of claims 12 to 15, further comprising the steps of
accepting by the beverage preparation machine a user identification indicating user settings regarding beverage preparations;
adapting the beverage preparation process according to the user settings; and
submitting information on the accepted user identification to the server.- A method according to any one of claims 12 to 16 wherein the carrier liquid is water.
- A beverage preparation machine comprising
a control unit and
a communication module
designed to support a method according to any one of claims 12 to 17.- A system for remotely providing service functionalities for a beverage preparation machine, said system comprising:
a beverage preparation machine being adapted for preparing a beverage by receiving a capsule in a capsule extraction unit, circulating a carrier liquid, such as water in particular heated water, through said capsule in the extraction unit and by dispensing a
resulting beverage; and
a remote server being in data communication with the beverage preparation machine
via a communication network;
further comprising a beverage preparation machine according to any one of claims 1 to 11 or 18, said beverage preparation machine being adapted to monitor machine related parameters and to submit the monitored parameters to the serve; and
wherein the server is adapted to initiate a service functionality depending on the submitted parameters.- A method for remotely providing service functionalities for a beverage preparation machine, according to any one of claims 12 to 19, wherein the monitored parameters include the type of each consumed capsule.
- A capsule based beverage preparation machine substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
- A method for remotely providing service functionalities for a beverage preparation machine, said beverage preparation machine substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
- A system for remotely providing service functionalities for a beverage preparation machine, said system substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
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