Koninklijke Douwe Egberts B.V. v Nestec S.A - [2017] APO 22

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Koninklijke Douwe Egberts B.V. v Nestec S.A. [2017] APO 22

Patent Application: 2011208837

Title:Method for providing information to a user from a capsule for the preparation of a beverage using a code

Patent Applicant:                   Nestec S.A.
Opponent:  Koninklijke Douwe Egberts B.V.
Delegate:  Xavier Gisz
Decision Date:  17 May 2017
Hearing Date:  Written submissions filed on 14 March 2017, 28 March 2017 and 4 April 2017

Catchwords: PATENTS - opposition to the allowance of amendments under subsections 102(1), 102(2)(a) and 102(2)(b) of the Patents Act 1990 – amended claims in-substance disclosed – claim 16 does not fall within the scope of the accepted claims – amendment not allowed – costs awarded against applicant.

Representation: Patent attorney for the applicant: Shelston IP
Patent attorney for the opponent: Davies Collison Cave Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011208837

Title:Method for providing information to a user from a capsule for the preparation of a beverage using a code

Patent Applicant: Nestec S.A.
Date of Decision: 17 May 2017
DECISION
The amendment introduces a new claim (claim 16) which includes matter that would not in substance fall within the scope of the claims before amendment and thus does not comply with s 102(2)(a).
Subject to appeal I refuse the amendments.
I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Applicant, Nestec S.A.
REASONS FOR DECISION
Background

Patent application 2011208837 in the name of Nestec S.A. (the Applicant) was advertised as accepted on 5 November 2015. An opposition by Koninklijke Douwe Egberts B.V. (the Opponent) to the grant of a patent was filed on 5 February 2016.
A Statement of Grounds and Particulars was filed on 5 May 2016. Evidence in support was filed on 5 August 2016.
Amendments were proposed on 27 September 2016. Leave to amend was granted on 2 November 2016. The amendments were advertised for opposition on 17 November 2016. A Notice of Opposition to the amendments was filed on 17 January 2017. A Statement of Grounds and Particulars was filed on 17 February 2017.
The Commissioner advised that the hearing would be on the basis of written submissions. The Opponent’s submissions were filed on 14 March 2017. The Applicant’s submissions were filed on 28 March 2017. The Opponent’s submissions in reply were filed on 4 April 2017.
Grounds of Oppositions
The Statement of Grounds and Particulars opposes the amendments under subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act. Under paragraph 102(2)(b), it is asserted that the proposed amendments would not comply with subsections 40(2) or 40(3).
The law
As the request for examination of the patent application was filed before 15 April 2013, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application.
The relevant sections of the Patents Act in the current case are sections 102(1) and (2) as they existed prior to the introduction of the Raising the Bar Act. These are set out below:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(2A) For the purposes of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent--after the specification has been accepted
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3) The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
It is plain from the wording of section 102 that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn [1994] FCA 969; (1994) AIPC 91-056 at 38,204). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are not relevant to the present action.
Subsection 102(1): In-substance disclosed in the specification as filed
When determining whether a matter is in substance disclosed in the specification as filed, the courts have basically applied the test for fair basis. Thus for an amended claim to claim matter in substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd [1998] FCA 1358; (1998) 42 IPR 353).
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 the test requires “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
This was cited with approval in Lockwood (supra).
Paragraph 102(2)(a): In-substance Fall Within the Scope of the Claims Before Amendment
A useful test for considering the allowability of an amendment under paragraph 102(2)(a) is whether a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already. This view was expressed in AMP Incorporated v Commissioner of Patents (1974) 48 ALJR 278 where the High Court stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.”
I note that the allowability of an amendment under paragraph 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in-substance fall within the scope of every claim before amendment, rather it only need to in-substance fall within the scope of broadest claim(s) before amendment.
Paragraph 102(2)(b): Compliance with subsection 40(3), clarity and fair basis
I have already identified the relevant law with respect to fair basis. In relation to clarity, while the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385, recently the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
The Amendments
A marked-up version of the amendments is provided below:
1. A method for providing information to a user from a capsule for the preparation of a beverage in a beverage producing device comprising providing a capsule with a two-dimensional barcode thereon, capturing at least one image of the barcode via a digital camera and displaying decoded information from said image on a display, wherein said barcode is positioned substantially in a central area of a sealing membrane.
2. A method according to claim 1, wherein the digital camera is part of the beverage producing device.
3. A method according to claim 1 or claim 2, wherein the decoded information is configured to be displayable on ~~a digital camera of~~ a portable telecommunication terminal.
4. A method according to any one of the preceding claims, wherein the display is part of the beverage producing device.
5. A method according to any one of the preceding claims, wherein the display is part of a portable telecommunication terminal.
6. A method according to any one of the preceding claims, wherein at least one operation consists in selecting data from ~~the~~ a set of data contained in the code before displaying said information.
7. A method according to any one of the preceding claims, wherein the displayed decoded information includes product information and brewing parameters.
8. A method according to any one of the preceding claims, wherein the displayed decoded information includes a web address.
9. A method according to any one of the preceding claims, wherein the displayed information is an image of the code.
10. A method according to any one of the preceding claims, wherein it comprises displaying information prompting the user to follow instructions relevant to the beverage preparation.
11. A method according to any one of the preceding claims, wherein it comprises displaying information prompting the user to access a website or automatically directing him/her to a website.
12. A system for preparing a beverage from a capsule in a beverage producing device, comprising:
a capsule comprising a two-dimensional barcode,
a beverage producing device comprising capsule handling means including a capsule-holder for receiving the capsule therein and identification and control means,
wherein the identification and control means comprises a digital camera positioned relative to the handling means and configured for capturing an image of the two-dimensional code placed on the capsule and transferring said image or binary information related thereof to a control unit of the identification and control means,
wherein the identification and control means further comprises a display for displaying decoded information from said image,
wherein said barcode is positioned substantially in a central area of a sealing membrane.
13. A system according to claim 12, wherein said barcode is a matrix code.
14. A method according to claim 1, said method substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
15. A system according to claim 12, 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.
16. A method for providing information to a user, from a capsule for the preparation of a beverage via operation of a beverage producing device, the method comprising:
providing a capsule with a two-dimensional barcode thereon, wherein the two-dimensional barcode provides a set of data encoded via a two dimensional pattern;
capturing, via a digital camera, at least one image of the two-dimensional barcode; and
displaying, on a display, decoded information from said image of the two-dimensional barcode, wherein the decoded information is decoded from the set of data encoded via the two dimensional pattern;
wherein said two-dimensional barcode is positioned substantially in a central area of a sealing membrane of the capsule.
17. A method according to claim 16, wherein the digital camera is part of the beverage producing device.
18. A method according to claim 16, wherein:
the digital camera is part of the beverage producing device;
the display is part of a portable telecommunication terminal separate of the beverage producing device; and
the decoded information is displayed on the display which is part of the portable telecommunication terminal separate of the beverage producing device.
19. A method according to claim 16, wherein:
the digital camera is part of a portable telecommunication terminal separate of the beverage producing device; and
the display is part of a portable telecommunication terminal separate of the beverage producing device; and
the decoded information is displayed on the display which is part of the portable telecommunication terminal separate of the beverage producing device.
20. A method according to claim 16 or claim 17, wherein the display is part of the beverage producing device.
21. A method according to 16 or claim 17, wherein the display is part of a portable telecommunication terminal separate of the beverage producing device.
22. A method according to any one of claims 16 to 21, including:
selecting a subset of data from the set of data encoded via a two dimensional pattern; and
displaying said decoded information based on the selection of the subset of data from the set of data encoded via a two dimensional pattern.
23. A method according any one of claims 16 to 22, wherein the displayed decoded information includes product information and brewing parameters.
24. A method according to any one of claims 16 to 23, wherein the displayed decoded information includes a web address.
25. A method according to claim 16, wherein:
the digital camera is part of the beverage producing device; and
after capturing, via the digital camera, the at least one image of the two-dimensional barcode, the beverage producing device displays a complete or partial reproduction of the two dimensional barcode;
the complete or partial reproduction of the two dimensional barcode is re-captured by a portable telecommunication terminal separate of the beverage producing device, and decoded via a decoding application.
26. A method according to any one of claims 16 to 25, wherein the displayed information includes information for prompting the user to follow instructions relevant to the beverage preparation.
27. A method according to any one of claims 16 to 26, wherein the displayed information includes information for: prompting the user to access a website; or automatically directing him/her to a website.
28. A system for preparing a beverage from a capsule in a beverage producing device, the system comprising:
a capsule comprising a two-dimensional barcode, wherein the two-dimensional barcode provides a set of data encoded via a two dimensional pattern, wherein the capsule comprises a sealing member, and wherein the two-dimensional barcode is positioned substantially in a central area of the sealing membrane, and
a beverage producing device comprising:
a capsule handling means including a capsule-holder for receiving the capsule therein;
an identification and control means;
wherein the identification and control means comprises:
a control unit; and
a digital camera;
wherein the digital camera is positioned relative to the handling means and configured to:
capture an image of the two-dimensional barcode; and
transfer said image or binary information related thereof to the control unit of the identification and control means; and
wherein the identification and control means further comprises a display configured to display decoded information from said image of the two-dimensional barcode, wherein the decoded information is decoded from the set of data encoded via the two dimensional pattern.
29. A system according to claim 28, wherein said barcode is a matrix code.
30. A system according to claim 28 or claim 29, wherein the displayed decoded information from said image of the two-dimensional barcode is based on a selection of the subset of data from the set of data encoded via a two dimensional pattern.
31. A system according any one of claims 28 to 30, wherein the displayed decoded information includes product information and brewing parameters.
32. A system according to any one of claims 28 to 31, wherein the displayed decoded information includes a web address.
33. A system according to any one of claims 28 to 32, wherein the displayed information includes information for prompting the user to follow instructions relevant to the beverage preparation.
34. A system according to any one of claims 28 to 33, wherein the displayed information includes information for: prompting the user to access a website; or automatically directing him/her to a website.
Claim 3
The Opponent states:
“Claim 3 is proposed to be amended as follows:
A method according to claim 1 or claim 2, wherein the decoded information is configured to be displayable on ~~a digital camera of~~ a portable telecommunication terminal.
This claim has been amended to delete "a digital camera of" thereby broadening it and introducing new subject matter such that it now specifies that the decoded information is configured to be displayable on a portable telecommunications terminal generally.
The specification as filed only discloses display on the camera. The final paragraph of page 3 of the specification as filed states:
In particular, the digital camera can be part of the beverage producing device. In another mode, the decoded information is configured to be displayable on a digital camera of a portable telecommunication terminal. For this, one or more programs are provided in the portable terminal enabling decoded information from the code to be displayed in a comprehensive form for the user on the display. (Emphasis added)
This is reinforced by the specification as filed which shows the portable telecommunication terminal in Figure 8 as integer 40 and specifically notes that the camera of that terminal as integer 42. In contrast to this specific disclosure, the amendment seeks to define the alleged invention in terms of the decoded information which is displayable on either the camera or some other part of the portable telecommunication terminal which is not specified.
There is no basis in the specification as originally filed for claiming that the decoded information is configured to be displayable on a portable telecommunications terminal except where it is displayed on the digital camera of that terminal.
This is confirmed in other parts of the specification as filed. For example, at page 15 of the specification as filed, it is stated:
As illustrated in Figure 9, the product information as well as URL contained in the code can also be read by a mobile telecommunication terminal 40 before insertion of the capsule in the beverage producing device. For this, the mobile telecommunication terminal requires a digital camera 42 and a decoding application which can be downloaded by the user onto the terminal or preloaded.
It follows that claim 3 as proposed to be amended has introduced subject matter not disclosed in the specification as filed.”
The Applicant states:
“Claim 3 has been amended as follows:
A method according to claim 1 or claim 2, wherein the decoded information is configured to be displayable on ~~a digital camera of~~ a portable telecommunication terminal.
The Opponent alleges that this results in a broadening of the claim (which is irrelevant for the purposes of section 102(1)), and introduction of new subject matter (in relation to which the applicant strongly disagrees).
The practical question to be asked here is whether a claim to displaying decoded information on a portable telecommunication terminal travels beyond the subject matter disclosed in the specification. This clearly should be answered in the positive. There is no dispute that the specification provides clear support for displaying the decoded information on a component of a portable telecommunication terminal. Therefore, by plain logic, the specification also inherently supports display of that decoded information on the portable telecommunication terminal itself.
The Opponent’s argument is tantamount to drawing a distinction between “displaying information on the screen of a phone”, and “displaying information on a phone”. In the context of the specification, there can be no discernible practical point of difference between the two. To suggest that the specification does not provide clear unambiguous support for displaying of the decoded information on a portable telecommunications terminal is nonsensical.”

Figure 9 discloses decoded information displayable on a portable telecommunication terminal with a digital camera. Figure 9 is reproduced below:
Figure 8 discloses decoded information displayable on a portable telecommunication terminal, where the information has been captured by a digital camera on the beverage producing device. Figure 8 is reproduced below:
The corresponding description of Figure 8 is at page 15 lines 15 to 19 which states:
“In a possible application illustrated in figure 8, the beverage producing device is configured via its communication unit to communicate with a mobile telecommunication terminal 40 of the user to exchange information such as to display information on its display 41 such as product information or a link to a commercial website corresponding to the coded URL address.”
Figure 8 and corresponding description provide support for the decoded information to be displayed on a portable telecommunication device. I am satisfied that the removal of the words ‘a digital camera’ from the claim is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1).
Claim 3 is a dependent claim. Although the removal of the words ‘a digital camera’ broadens the scope of claim 3, it is still within the scope of the independent claim on which it is dependent (claim 1). Thus I consider that this aspect of the amendments complies with 102(2)(a).
Claim 16
Set of data
The Opponents states:
“Proposed new claim 16 is a new independent claim and it reads as follows (with underlining added):
A method for providing information to a user, from a capsule for the preparation of a beverage via operation of a beverage producing device, the method comprising:
providing a capsule with a two-dimensional barcode thereon, wherein the two-dimensional barcode provides a set of data encoded via a two dimensional pattern;
capturing, via a digital camera, at least one image of the two-dimensional barcode;
displaying, on a display, decoded information from said image of the two-dimensional barcode, wherein the decoded information is decoded from the set of data encoded via the two dimensional pattern;
wherein said two-dimensional barcode is positioned substantially in a central area of a sealing membrane of the capsule.
This method defines a two dimensional pattern, set of data and decoded information and the respective relationship between these features. This can be illustrated below in the following manner:
These features and their interrelationship were not in substance disclosed in the specification as filed, which refers only to the operation of selecting data from the set of data contained in the code in generic terms; see at page 4, line 5 and original claim 6 of the specification as filed. The process of decoding or encoding in this manner is not in substance disclosed in the specification as filed.
There is no disclosure in substance of a two-dimensional pattern in the specification as filed and, insofar as the barcode is concerned, the specification only discloses that the barcode comprises information in a binary format and consists of a particular matrix code meeting various standards. It does not disclose the specific abovementioned method sought to be introduced via the proposed amendments.”
The Applicant states:
The Opponent’s complaints centre on the following portions of the claim: “wherein the two dimensional barcode provides a set of data encoded via a two dimensional pattern” and “wherein the decoded information is decoded from the set of data encoded via the two dimensional pattern”.
There is no question that the specification discloses “providing a capsule with a two-dimensional barcode thereon” (for example, see page 8: “the optical code is a two-dimensional barcode”). At a most basic definitional level, a two-dimensional barcode provides a set of data encoded via a two dimensional pattern. That is, the phrase “wherein the two-dimensional barcode provides a set of data encoded via a two dimensional pattern” adds nothing substantive in terms of subject matter beyond what is inherent in the term “two dimensional barcode”. Rather, that phrase serves no functional purpose other than to add language to improve clarity of the claim as a whole by providing antecedence for a functional clarifying of the term “decoded information”.
The Opponent’s further submissions state at paragraph 17:
“The Applicant’s Submissions state at [59] that “Claim 16 simply defines that the two dimensional barcode is used to encode data, which is subsequently decoded” and at [69] that “the fundamental purpose of a two dimensional barcode is to enable encoding and decoding of data via a two dimensional pattern”. Thus, it is understood that the Applicant proffers the following relationship as being defined in claim 16:
I consider that claim 16 differs from the previously defined claims only to the extent that it contains an intermediate step of a “set of data” rather than just going from barcode to decoded information.
The purpose of the intermediate step is given at page 4 of the description which states:
“In the proposed method, an operation may consist in selecting data from the set of data contained in the code before displaying said information.”
This intermediate step is further explained at page 15 of the description which states:
“It should be noted that only certain bits of the code can be made accessible to the user as others can be confidential or useless. Thereby, algorithms or software for selecting relevant data from the code is provided in the terminal. Such algorithms or software can be downloaded as part of the decoding application.”
I consider these parts of the description to be a disclosure of the intermediate step of a “set of data” and thus there is an in substance disclosure of this feature of the claims in the specification. I also consider this feature of the claims to fall within the scope of the claims before amendment.
Via operation of a beverage producing device
The Opponent states:
“Claim 16 is a proposed new independent method claim. It will contravene s102(2)(a) of the Act if it is broader in any sense than the broadest method claim contained in the claim set prior to amendment, i.e. claim 1. It is therefore appropriate to compare the text of this claim to the previous claim 1 in marked up form as follows:
A method for providing information to a user, from a capsule for the preparation of a beverage ~~in a~~via operation of a beverage producing device, the method comprising;
providing a capsule with a two-dimensional barcode thereon, wherein the two-dimensional barcode provides a set of data encoded via a two dimensional pattern;
capturing, via a digital camera, at least one image of the two-dimensional barcode; ~~via a digital camera~~ and displaying, on a display, decoded information from said image of the two-dimensional barcode, on a display, wherein the decoded information is decoded from the set of data encoded via the two dimensional pattern;
wherein said two-dimensional barcode is positioned substantially in a central area of a sealing membrane of the capsule.
The first change in wording shown above is deletion of the requirement of providing information from a capsule for preparation of a beverage in a beverage producing device. The proposed amendment embraces broader wording which merely states the beverage is prepared via operation of a beverage producing device, increasing the scope of the claim to cover a situation where preparation of a beverage merely occurs via operation (but not in) the device.”
The Applicant states:
“The Opponent makes two complaints against amendments made in claim 16:
(i) That preparation of a beverage “via operation of a beverage producing device” is broader than preparation of a beverage “in a beverage producing device”; and
(ii) That the inclusion of additional punctuation in the claim preamble somehow broadens the claim scope.
In relation to (i), we submit that there is no practical difference whatsoever between preparation of a beverage “via operation of a beverage producing device” and preparation of a beverage “in a beverage producing device”. The phrase “in a beverage producing device”, as used in the patent specification, clearly relates to the operation of a beverage producing device to produce a beverage, and in no way requires some form of specific “internality” in terms of production location.
For the Opponent’s argument in relation to (i) to be plausible, it would be necessary to show that there is some way of preparing a beverage via a beverage producing device that would not be covered by a reasonable construction of the original language of preparing a beverage in a device. Not only does the Opponent fail to point out any possible example, we assert that no such example could be practically conceived. In particular, the claim language is still limited to operation of a beverage producing device, and by any reasonable definition the act of operating such a beverage producing device to produce a beverage would cause preparation of the beverage in the device.
Of course, at a practical level, operating a beverage producing device to produce a beverage would typically result in dispensing of a beverage outside of the device. However, that beverage is still produced “in the device” before being dispensed (otherwise the device would not fulfil its specified functional requirement of being “beverage producing”), and the original claim language would be interpreted to cover such a conventional scenario.”
In relation to (i), I agree with the Applicant. I can find no practical difference between the phrases: “via operation of a beverage producing device” and “in a beverage producing device” and thus this aspect of the amendment is allowable.
Providing information to a user from a capsule for the preparation of a beverage
The Opponent states:
“Furthermore, the incorporation of the commas into the first line of claim 16, compared to claim 1, results in the preamble of the claim differing in meaning from the preamble of claim 1. Proposed claim 16 is directed to a method of providing information to a user, where the information is from a capsule. In contrast, the preamble of claim 1 specifies that the method is “for providing information to a user from a capsule for the preparation of a beverage in a beverage producing device”. That is, the method is for providing information to a user for the preparation of a beverage and that information is from a capsule.
New claim 16 is unlimited in the type of information that can be provided to the user, in contrast to claim 1. Accordingly, new claim 16 is broader in scope than claim 1.
It follows that claim 16 does not in substance fall within the scope of the claims of the Opposed Application.”
The Applicant states:
“As for (ii), the incorporation of a comma into the claim preamble does not change interpretation of the claim. Furthermore, both claim interpretations put forward by the Opponent are equally valid irrespective of whether the comma is in place. The lack of punctuation in original claim 1 (which provides a similar preamble) gives rise to both possible interpretations. More specifically, in original claim 1 the preamble states:
Method for providing information to a user from a capsule for the preparation of a beverage in a beverage producing device
From a purely linguistic perspective, given the lack of punctuation, this could reasonably be interpreted to mean either:
· A method for providing information to a user, the information coming from a capsule, the capsule being a capsule used for the preparation of a beverage in a beverage producing device; or
· A method for providing information to a user from a capsule, the information being information for the preparation of a beverage in a beverage producing device.
However, when read in the context of the specification, it is clear that the meaning of claim 1 is to provide information to a user, where that information has come from a capsule (information encoded by way of a two-dimensional barcode). This is consistent with new claim 16.
The applicant maintains that the use of punctuation in claim 16 does not broaden or narrow the claim scope; punctuation has simply been used to improve claim readability.
In view of the foregoing, the proposed amendment to claim 16 is not prohibited by section 102(2).”
The preamble of the accepted claim states:
A method for providing information to a user from a capsule for the preparation of a beverage in a beverage producing device comprising...
The preamble of claim as amended states:
A method for providing information to a user, from a capsule for the preparation of a beverage via operation of a beverage producing device, the method comprising...
The Applicant argues that the preamble of claim 1 that “from a purely linguistic perspective” the preamble of claim 1 could be validly interpreted in two ways:
• A method for providing information to a user, the information coming from a capsule, the capsule being a capsule used for the preparation of a beverage in a beverage producing device; or
• A method for providing information to a user from a capsule, the information being information for the preparation of a beverage in a beverage producing device.
The Applicant’s argument is essentially that there are two valid ways to parse the preamble of claim 1:
1. (A method for providing information to a user) (from a capsule (for the preparation of a beverage in a beverage producing device)) comprising...
2. (A method for providing information to a user from a capsule) (for the preparation of a beverage in a beverage producing device) comprising...
Put more succinctly, the Applicant argues that the two alternative interpretations of the preamble of the accepted claim are: 1) the capsule is for the preparation of a beverage, or 2) the information is for the preparation of a beverage. I note that the first interpretation is broader than, and completely includes within its scope, the second interpretation. The first interpretation is not limited to the type of information provided to the user, whereas in the second interpretation the information provided to the user is limited to only information for the preparation of the beverage. The Applicant then goes on to argue that “when read in the context of the specification” the first interpretation should be adopted.
I have construed the accepted claim preamble such that there is only a single interpretation of the claim – the information provided to the user is for the preparation of a beverage – for the following reasons. Firstly, this is the natural and plain meaning of the preamble; the main subject of the preamble is the information provided to the user so, in the absence of punctuation or other indicators, descriptive words of the claim are assumed to be referring to the main subject. Secondly, if the claim preamble were intended to define a feature of the capsule a more suitable place would be in the features of the claim , i.e. following the words “providing a capsule...”.
The Applicant’s argument that there is descriptive support for their interpretation, and thus this interpretation should be adopted, is not persuasive for the following reasons. Firstly, both the Applicant’s interpretation and the Opponent’s interpretation have support in the description. Secondly, claims do not necessarily have to encompass all or the maximum number of features. Although claims should be construed broadly, this is only as broadly as is reasonable.
The Applicant and the Opponent both agree that the preamble of amended claim 16 defines that the capsule is for the preparation of a beverage thus there is no limitation on the information provided to the user. I concur with this interpretation. The commas of the preamble of the claim act parenthetically to make it clear that the capsule is for the preparation of the beverage and the information provided to the user has no limitation.
The amended claim 16 is broader in scope than the claims as acceptance. Consequently this aspect of the amendment contravenes s 102(2)(a) and is not an allowable amendment.
Though not argued by the Opponent, I note for completeness that the amendment to the preamble of claim 16 is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1).
Claims 22 and 30
The Opponent argument with respect of claims 22 and 30 relate to the same ‘set of data’ issue as in claim 16. I have found in relation to claim 16 that the ‘set of data’ feature is disclosed in the specification as accepted and is within the scope of the claims. It follows that the ‘set of data’ feature in claims 22 and 30 is disclosed in the specification as accepted and is within the scope of the claims.
Claim 28
The Opponent states:
“The broadest claim to a system in the claims of the application as accepted is claim 12. The wording of claim 12 is reproduced below and marked up to show the amendments necessary to bring it into line with proposed new claim 28.
A system for preparing a beverage from a capsule in a beverage producing device,
the system comprising:
a capsule comprising a two-dimensional barcode, wherein the two-dimensional barcode provides a set of data encoded via a two dimensional pattern, wherein the capsule comprises a sealing member, and wherein the two-dimensional barcode is positioned substantially in a central area of the sealing membrane, and
a beverage producing device comprising:
a capsule handling means including a capsule-holder for receiving the capsule therein; ~~and~~
an identification and control means,;
wherein the identification and control means comprises:
a control unit; and
a digital camera;
wherein the digital camera is positioned relative to the handling means and configured ~~for~~ to:
~~capturing~~ capture an image of the two-dimensional barcode ~~placed on the capsule~~ ; and transferring said image or binary information related thereof to a control unit of the identification and control means,; and
wherein the identification and control means further comprises a display ~~for~~ configured to display~~ing~~ decoded information from said image of the two-dimensional barcode, wherein the decoded information is decoded from the set of data encoded via the two dimensional pattern.
~~wherein said barcode is positioned substantially in a central area of a sealing membrane.~~
Both new claim 28 and claim 12 specify that the barcode is positioned substantially in a central area of the sealing membrane. However, claim 12 also specifies that the barcode is "placed on the capsule", indicating that it was applied to the capsule by a “placing” step, consistent with the following text in the specification as filed in the fifth paragraph of page 5:
“…the two-dimensional code is placed between at least one inner opaque layer and an outer transparent layer of the membrane. As a result, the code is protected against the external physical and/or chemical attacks but also provide a sufficient contrast to be read despite its small size.”
It follows that "placed on the capsule" defines a particular manner of causing the barcode to be positioned on the capsule. Claim 28 is silent as to placing the barcode on the capsule. Accordingly, claim 28 contains no limitation as to how the barcode comes to be positioned substantially in a central area of the sealing membrane. For this reason, claim 28 does not in substance fall within the scope of the claims of the application.”
The Applicant states:
“As noted by the Opponent, new Claim 28 is similar to former claim 12. The Opponent observes that:
· Claim 12 defines “an image of the two-dimensional code placed on the capsule”.
· Claim 28 defines “a capsule with a two-dimensional barcode thereon”.
From this, the Opponent alleges that claim 28 is broader than claim 12 on the basis that the term “placed” defines a particular manner of causing a barcode to be positioned on the barcode. The Applicant disagrees, and submits that the term “placed” is sufficiently broad to cover any means by which a barcode comes to be positioned on a capsule.
For the Opponent’s argument to be successful, it would be necessary to identify some way in which a barcode could be positioned on a capsule without having been “placed” there. Given that there is no reason why the term “placed” should be afforded a narrow interpretation (in claim 12 the term is functionally used to convey positioning, not a specific form of manufacture), it is impossible to reasonably conclude that the barcode could exist on a capsule without having been “placed” there.”

I agree with the Applicant. There is essentially no difference in the phrasing of the two-dimensional code on the capsule between original claim 12 and claim 28.
I am satisfied that the amended claim 28 is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1). I can find no aspect of claim 28 that extends beyond the scope of the claims as accepted. Thus I consider that this aspect of the amendments complies with 102(2)(a).
Conclusion
The amendment introduces a new claim (claim 16) which includes matter that would not in substance fall within the scope of the claims before amendment and thus does not comply with s 102(2)(a).
Subject to appeal I refuse the amendments.
Costs
Ordinarily in proceedings such as these, costs follow the event. I see no reason that warrants varying this approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Applicant, Nestec S.A.
Xavier Gisz
Delegate of the Commissioner of Patents