Kraft Foods Schweiz Holding GmbH v Mars, Incorporated
[2023] APO 41
•31 July 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Kraft Foods Schweiz Holding GmbH v Mars, Incorporated [2023] APO 41
Patent Application: 2016365338
Title:Crumb chocolate flavor compositions
Patent Applicant: Mars, Incorporated
Opponent: Kraft Foods Schweiz Holding GmbH
Delegate: Dr A. Lim
Decision Date: 31 July 2023
Hearing Date: 31 May 2023, via video conference
Catchwords: PATENTS - section 59 – opposition to the grant of a patent –support – comparison of the invention as defined in the claims with the invention as disclosed in the specification – the scope of the claims corresponds to the technical contribution to the art – claims comply with the requirements for support, sufficiency, clarity, utility, inventive step, and manner of manufacture – opposition unsuccessful – cost awarded against the opponent
Representation: Counsel for the applicant: Ms Nicola Gollan
Patent attorney for the applicant: Dr Anna Goldys of Minter Ellison
Counsel for the opponent: Mr Ben Fitzpatrick
Patent attorney for the opponent: Ms Janelle Borham and Dr Tim Fyfe of Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016365338
Title:Crumb chocolate flavor compositions
Patent Applicant: Mars, Incorporated
Date of Decision: 31 July 2023
DECISION
The opposition is unsuccessful.
The opponent has not established that claims 1-18 of the opposed application fail to comply with the grounds of support, sufficiency, clarity, utility, inventive step, and manner of manufacture.
Subject to appeal, I direct the application proceed to grant.
I award cost according to Schedule 8 against Kraft Foods Schweiz Holding GmbH.
REASONS FOR DECISION
Background
Patent application 2016365338 (the opposed application) was filed on 1 December 2016 under the provisions of the Patent Cooperation Treaty. The opposed application claims priority from US 62/261,800 which was filed on 1 December 2015.
The opposed application was examined and advertised accepted by the Commissioner on 4 February 2021. Kraft Foods Schweiz Holding GmbH (the opponent) filed a notice of opposition on 4 May 2021 and filed a statement of grounds and particulars (SGP) on 4 August 2021.
Evidence in support (EIS) was filed by the opponent on 4 November 2021. On 22 December 2021 Mars, Incorporated (the applicant) requested, under regulation 5.9 of the Patents Regulations 1991, that the period to file Evidence in answer (EIA) be extended by a period of two months. EIA was filed by the applicant on 8 April 2022 following the allowance of an extension of time under reg 5.9(2)(b). On the same day, the applicant requested to make voluntary amendments to the claims of the opposed application. The amendments were allowed without opposition and allowance of the amendments was published on 11 August 2022. Consequently, the applicant’s amendments of 8 April 2022 form part of the specification and the opposition proceeds in respect of the amended claims.
Due to an apparent misunderstanding by the opponent about the due date for filing EIR following a direction that the opposition be stayed while the status of the proposed amendments was resolved, the opponent missed the due date. On 17 August 2022 the opponent filed a declaration and accompanying exhibits that was intended as EIR and requested an EoT under reg 5.9 to file EIR. A delegate of the Commissioner did not believe that an extension under reg 5.9 was appropriate and refused the request.
On 2 November 2022, the opponent requested the Commissioner consult, under reg 5.23, the documents that had been intended to be EIR. These documents consisted of a declaration by David Allan Baines dated 16 August 2022 and exhibits DAB-20 to DAB-29 and are collectively referred to as “the second Baines Declaration”. A delegate of the Commissioner considered the circumstances leading up to the evidence not being filed earlier, formed a view that the information in the second Baines Declaration were not crucial to a decision for the opposition and public interest weighed against allowing the opponent’s request under reg 5.23.
On 23 November 2022, the opponent filed a new and condensed declaration by David Allan Baines together with accompanying exhibits A to E (collectively termed “the November 2022 Baines Declaration”) which the opponent submitted provided the Commissioner with more targeted information directed at matters that arise only because of the claim amendments. The delegate was satisfied that it was appropriate to invoke reg 5.23 to consult the November 2022 Baines Declaration. Pursuant to reg 5.23(2) the applicant was given the opportunity to provide evidence or make representations in response to the November 2022 Baines Declaration but did not do so.
The opposition
The grounds of opposition stated in the SGP are:
·claimed invention is not for a manner of manufacture,
·lack of novelty.
·lack of inventive step,
·lack of utility,
·lack of a clear enough and complete enough disclosure in the specification,
·lack of support, and
·lack of clarity and succinctness
However, the opponent ultimately did not plead the grounds of lack of novelty and lack of succinctness in written submissions or at the oral hearing.
The evidence is summarised in the table below.
Evidence Declarant Exhibits Date Reference In Support David Allan Baines DAB-1 to DAB-19 2 November 2021 Baines #1 Martine Trotin MT-1 to MT-5 2 November 2021 Trotin Anthony J Brown AJB-1 to AJB-4 1 November 2021 Brown In Answer John Didzbalis JD-1 to JD-7 7 April 2022 Didzbalis
The documents for me to consult under regulation 5.23 consists of a declaration by David Allan Baines and exhibits A to E filed 23 November 2022. I note that while the declaration was dated 21 November 2021, Dr Baines refers to the claim amendments filed on 8 April 2022 and Dr Didzbalis’ declaration of 7 April 2022. Therefore, I consider it reasonable to infer an error was made when dating Dr Baines’ declaration and the actual date intended was 21 November 2022. This inference is consistent with a reference to “a new Declaration of David Allan Baines dated 21 November 2022...”, in the cover letter accompanying Dr Baines’ declaration.
Since the opposed application was filed on 1 December 2016, this application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. This includes subsection 60(3A) of the Act which states:
(3A) If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.
The standard of proof that applies to the present opposition is the balance of probabilities, and the opponent carries the onus of proof.
The specification
The opposed application states the field of the invention is “a crumb chocolate flavor system for chocolate-based flavor compositions used in fat-based confectioneries and methods for making such compositions”.[1]
[1] The specification at page 1, lines 9-11.
The opponent submitted that since “the subject matter of the Opposed Application extends to flavour compositions for any food products, to give those food products a chocolate flavour (particularly a crumb chocolate flavour), …the relevant field is flavour compositions for food products, and more specifically for chocolate products, and chocolate production technology.”[2] The opponent further submitted that the person skilled in the art (PSA) is “therefore an individual or a team with experience across one or more flavour compositions and flavor development in food compositions, including but not limited to chocolate and food technologists specialising in chocolate.”[3]
[2] The opponent’s submissions filed 17 May 2023 at [13]. I note the American English spelling “flavor” and the British English spelling “flavour” have both been used in this decision for the same word. The specification uses the American English spelling for “flavor”. The opponent and the applicant have used the British English spelling for “flavour” in written submissions. I have also used “flavour” in this decision.
[3] The opponent’s submissions filed 17 May 2023 at [14].
The applicant submitted that the opponent’s submissions should be rejected because “[i]t is clear from the Application that the field of the invention is directed to chocolate-based flavour compositions, not to ‘flavour compositions for any food products’”.[4] The applicant further submitted that:
[4] The applicant’s submissions filed 24 May 2023 at [27].
“The Summary of the Invention refers to a ‘crumb chocolate flavor system’, the Examples of the Application are all directed to chocolate flavours, and the claims of the Application are directed to chocolate compositions and flavour compositions. The Background of the Invention states that the Invention addresses a need in the art for ‘a method of manufacturing milk chocolate or chocolate-like products that are able to capture the aroma and creaminess of crumb chocolate.’ There is no suggestion in the Application that the flavour composition can be applied to ‘any food products’ – instead, it is clear that the field of the Invention is chocolate flavour compositions, and particularly a ‘crumb chocolate flavor system’ which is designed to replicate the taste of crumb chocolate.[5]
[5] Ibid, citing the specification page 2, lines 2-4.
and
“While the Application refers to ‘food products’ at times, it is clear that in context these references are to food products that fall within the category of confectionary or chocolate-based products. For example, the Application states that: ‘In the presently disclosed subject matter, the flavor compositions include a combination of compounds to establish a crumb chocolate flavor in a food product, for example, a fat based confectionary such as a chocolate product.’”[6]
[6] The applicant’s submissions filed 24 May 2023 at [28], citing the specification at page 11, lines 11-13.
and
“The Opponent’s attempt to expand the field of the Invention to ‘flavour compositions for any food products’ is a transparent attempt to align the field of the Invention with the expertise held by their expert, Dr Baines.”[7]
[7] The applicant’s submissions filed 24 May 2023 at [29].
I have perused the opposed application and note that while the specification describes that the flavour compositions can be used in a wide variety of food products, most of the flavour compositions described are chocolate-based flavour compositions that replicate the taste of crumb chocolate in confectionary or chocolate-based products.[8] For the reasons I will discuss shortly, I consider all the expert witnesses are appropriately qualified to give evidence as to what a person skilled in the art (PSA) knew and would have done.
[8] The specification at page 5, lines 24-27, page 9, lines 19-20, page 27, lines 1-4.
The specification as amended up to this point in time has 18 claims. Claims 1, 9 and 16 are the independent claims. The claim set is reproduced in Annex A of this decision.
Principles of construction
Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[9]
[9] [2013] FCA 214 at [139]; 100 IPR 451.
The person skilled in the art (PSA)
It is well established that many of the issues in an opposition are answered by reference to the PSA:
“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.”[10]
[10] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70]; 177 ALR 231.
However, the PSA is an artificial construct that is used as a tool of analysis, and there is a danger in trying to identify them as an actual person or persons:
“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.”[11]
[11] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23]; 89 ALJR 798.
An understanding of the PSA is based on evidence from persons with knowledge of the art as to the things that they know and do, and what they understand to be commonly known and done. The qualifications of the expert witnesses, relevant to the present opposition, are summarised below. The opponent relies on the evidence of Dr Baines, Mr Brown and Dr Trotin. The applicant relies on the evidence of Dr Didzbalis.
Dr Baines has a Doctor of Philosophy in Natural Products Chemistry and has held various roles in the food and flavour industry spanning more than 40 years.[12] These roles include a flavour scientist at Unilever, manager of the flavour chemistry research group at Spillers Research and Technology Centre (which became Dalgety Research and Development Centre), technical director at Lucas Ingredients and a consultant to the food and flavouring industry.[13] Dr Baines is currently a Visiting Professor at the University of Reading in the School of Chemistry, Food and Pharmacy.[14] He is a “flavor chemist with specialist expertise in a range of food flavourings including citrus, fruit, dairy and savoury, and the use of enzyme and chemical processes to generate flavours applied to human, animal and pet food products”. Dr Baines has a particular interest and expertise in flavours produced by the Maillard reaction, which is a chemical reaction between amino acids (present in protein-containing food products) and certain sugars that develops a range of colours and flavours in foods. Examples of processes that involve the Maillard reaction include the browning of meat and the development of savoury flavour through this process, the production of dried and condensed milk and the development of certain flavour characteristics in chocolate during chocolate production. [15] He states that in view of the connection between the Maillard reaction and flavour development in a range of products, he also became interested in the flavours developed in the production of chocolate.[16]
[12] Baines #1 at [11]-[19].
[13] Baines # 1 at [13]-[18].
[14] Baines #1 at [11].
[15] Baines # 1 at [12].
[16] Baines # 1 at [13].
Prior to 1 December 2015, Dr Baines was engaged as a consultant and managed food safety for a cocoa production company in Ghana. Due to his personal and professional interest in flavours, Dr Baines researched and experienced first-hand the steps involved in the production of cocoa mass (cocoa liquor) as ingredients of chocolate making while engaged by the company in Ghana. Through this experience Dr Baines became familiar with the key flavour chemicals in chocolate, and how these may be enhanced through various processing steps in cocoa bean processing and chocolate production from raw ingredients. Dr Baines proposed that the company in Ghana enhance certain chocolate flavour characteristics by adding amino acids during the cocoa mass production steps. Dr Baines is familiar with the processes involved in crumb chocolate manufacture and the range of compounds present in both chocolate and crumb chocolate production.[17]
[17] Baines #1 at [19].
Mr Brown is currently an Associate Principal Scientist within the Central Chocolate team at Mondelez International and is a technical lead with an in-depth technical knowledge of chocolate, its ingredients, and processes.[18] Before 1 December 2015, Mr Brown was the Group Leader, Cocoa & Chocolate Solutions’ at Mondelez International.[19] I note that Kraft Foods Schweiz Holding GmbH (the opponent) is within a group of companies that includes Mondelez International.[20]
[18] Brown at [7].
[19] Brown at [5], Exhibit AJB-1.
[20] Trotin at [2]; Brown at [3].
Dr Trotin is currently a Principal Scientist within one of the Mondelez International group companies working as a flavour scientist. Before 1 December 2015, Dr Trotin was a Senior Associate Principal Scientist in flavour research within the Mondelez International group of companies. [21] Dr Trotin has tested commercial chocolate products to determine the amounts of various compounds in different products.[22]
[21] Trotin at [2]-[3].
[22] Trotin at [8]-[9].
Dr Didzbalis is a flavour chemist with over 30 years’ experience, holds the role of Flavour and Sensory Science Lead at Mars Advanced Research Institute and has been employed by the applicant for over 20 years. Dr Didzbalis has a Doctor of Philosophy in Food Chemistry, is an inventor of the Opposed application and has “in-depth technical knowledge and expertise in chocolate and confectionary flavor science and product development, including the impact of odorants and taste-active compounds on flavor perception in relation to cocoa, chocolate and other confectionary products, and the characterisation of chocolate manufacturing processes and their effect on flavor formation and retention.”[23]
[23] Didzbalis at [1], [4], [6] and [8].
The opponent submitted that:
“The views expressed by Dr Didzbalis should be understood in light of the fact that he is both an inventor of the Opposed Application and an employee of the Applicant.”
and
“Greater weight should be accorded to the evidence of the independent expert, Dr Baines, as compared to that the evidence of the inventor Dr Didzbalis.” [24]
[24] The opponent’s submissions filed 17 May 2023 at [29]-[30].
The applicant submitted that:
“… Dr Baines’ predominant professional focus has been on the Maillard reaction, particularly as it relates to meat flavours, and that this has resulted in a peripheral interest in the manner in which the Maillard reaction impacts on a variety of flavours, including in relation to chocolate.
However, the field of the Invention is specifically directed towards ‘a crumb chocolate flavor system for chocolate-based flavor compositions’. In light of the above, Dr Baines could not be said to be a person with a ‘practical interest’ in the subject matter of the invention… Dr Baines is therefore not an appropriate proxy for the person skilled in the art.”[25]
[25] The applicant’s submissions filed 24 May 2023 at [29]-[30].
I have considered the qualifications and experiences of the declarants mentioned above. I am of the view that all declarants can provide evidence as to what the PSA knew and would have done. The weighing and evaluating of the evidence to decide the characteristics of the PSA is part of the normal work of a delegate of the Commissioner.
The background to the invention
The opposed application describes that, historically, milk chocolate was made with milk powder and condensed milk.[26] In the early part of the 20th century a new process was developed for making milk chocolate which used an ingredient called “chocolate crumb powder”.[27] The process for making milk chocolate using chocolate crumb powder was developed to circumvent shortages of fresh milk during certain periods of the year.[28]
[26] The specification at page 1, lines 14-15.
[27] The specification at page 1, lines 23-24.
[28] The specification at page 1, lines 19-20.
Chocolate crumb powder consists of sugar, cocoa mass (cocoa liquor) and milk which are mixed and dried (i.e., the “crumbing process”). The resulting chocolate crumb powder has a shelf life of at least one year.[29] An incidental benefit of the crumbing process is that the drying step produced special flavours which create unique characteristics of milk chocolate produced in the United States and Britain. Therefore, milk chocolate made in these countries using the chocolate crumb powder process differs in flavour from continental European milk chocolate which is made with milk powder and does not involve a drying step.[30]
[29] The specification at page 1, lines 24-26.
[30] The specification at page 1, lines 24-30.
The process of making chocolate using chocolate crumb powder imparts a distinct aroma and creaminess in the milk chocolate which is not achieved by “making milk chocolate from a dry mix chocolate (i.e., using dry milk powder)”.[31] However, the drying step used to produce crumb chocolate powder is costly and unnecessary since the continuous supply of fresh milk became available.[32]
[31] The specification at page 1, lines 31-32.
[32] The specification at page 1, line 33 to page 2, line 2.
Aim of the invention
The specification states:
“… there remains a need in the art for a method of manufacturing milk chocolate or chocolate-like products that are able to capture the aroma and creaminess of crumb chocolate (i.e., milk chocolate made with chocolate crumb powder) without the need for a thermal step.[33] (emphasis added)
[33] The specification at page 2, lines 2-5.
and
“By accurately tailoring milk chocolate flavors beloved by consumers of milk chocolate produced in the United States and Britain, the presently disclosed subject matter addresses this need. In the disclosed subject matter, a group of flavors or odorants that are common to crumb chocolate has been identified, whereby specific components can be added to fat-based confection made with dry mix chocolate to create the flavor of crumb chocolate without the need for the laborious and costly drying step. The presently disclosed subject matter also discloses a group of flavors or odorants that are common to crumb chocolate that can be added to fat-based confection to create the flavor of crumb chocolate.”[34]
[34] The specification at page 2, lines 6-13.
and
“The flavor compositions of the presently disclosed subject matter can be modified to provide for any number of improved flavor profiles, which closely mimic those products otherwise formed from chocolate crumb powder. The flavor compositions of the presently disclosed subject matter can be used throughout the entire food industry, for example, for the flavoring or enhanced flavoring of confections, snack food products, beverages and bakery products, among others. The concentration of such flavor compositions comprise a wide array of levels and ranges, as the intensity will depend on the finished food products as well as end user preferences.”[35] (emphasis added)
[35] The specification at page 5, lines 22-29.
I infer the aim of the invention is to provide a flavour composition which modifies a final food flavour to resemble the taste of chocolate crumb powder without the need for a drying step of the crumbing process.
The invention as described in the specification
The specification describes the subject matter as being directed to a crumb chocolate flavour system for chocolate-based flavour compositions used in fat-based confectioneries and methods for making such compositions.[36] The specification then describes three aspects of the invention.
[36] The specification at page 2, lines 14-16.
The first aspect of the invention is for a chocolate composition comprising dry milk chocolate and an extraneous flavour composition, wherein the extraneous flavour composition comprises a minimum of five flavour compounds selected from a list of compounds across three categories, these categories being (1) a highly volatile compound, (2) a lactone compound, and (3) a caramelic composition.[37]
[37] The specification at page 2, lines 17-28.
The second aspect of the invention is for a flavour composition comprising the same list of compounds as stated for the “extraneous flavour composition” of the first aspect but this time the flavour composition is stated to provide “enhanced creaminess to a chocolate composition”.[38]
[38] The specification at page2, line 29 to page 2a, lines 7-8.
The third aspect of the invention is for a flavour composition comprising set amounts of nine defined compounds.[39]
[39] The specification at page 2a, lines 9-18.
The specification also states that the amount of each component in the flavour composition varies depending on the potency of each compound, and the amount of each compound employed is an effective amount to provide a flavour composition that exhibits a sensory effect.[40] A “sensory experience” of a subject exposed to a flavour is defined in the specification as a subject’s sensory perception of a taste, taste profile, flavour, flavour profile or texture profile.[41] I consider it is reasonable to infer that an effective amount of a flavour component to exhibit a sensory effect means an amount of the flavour component sufficient to give a subject a perception of a flavour profile, taste profile, etc.
[40] The specification at page 11, lines 22-25.
[41] The specification at page 10, lines 26-27.
In certain embodiments of the flavour compositions, each one of the highly volatile compound, the lactone compound and the caramelic composition are described to be present in “an amount effective to provide an overall crumb chocolate aroma, a creamy aroma, or a combination thereof.”[42] The specification refers to “creaminess” as a flavour profile that can be manipulated by odorants and/or flavourings that elicit a creamy aroma or flavour.[43] Examples 4 and 5 of the specification, which I will discuss later in this decision, describe a group of odorants that significantly influence the overall aroma and/or creaminess of crumb chocolate or a dry mix chocolate.[44] Consequently, I consider that the specification describes flavour compositions that are used to provide an overall aroma of crumb chocolate, a creamy aroma of crumb chocolate, or an overall aroma and creaminess of crumb chocolate.
[42] The specification at page 13, lines 10-13, page 15, lines 9-12, page 18, lines 13-16.
[43] The specification at page 11, lines 4-5.
[44] The specification at pages 42-46.
The specification defines the meaning of several terms, and it is useful to provide the definitions of some of these terms here.
Fat-based
The specification uses the term “fat-based” to refer to a material having a fat or lipid continuous phase in which material components such as, for example, milk proteins and sugars are dispersed.[45]
[45] The specification at page 7, lines 24-26.
Chocolate
The term “chocolate” is used in the specification to refer to all chocolate or chocolate-like compositions with a fat phase or fat-like composition, including standardised and non-standardised chocolates. Standardised chocolates are chocolate compositions conforming to the United States (U.S.) Standards of Identity (SOI). Non-standardised chocolates are chocolate compositions not conforming to the U.S. SOI.[46] In the United States (U.S.), chocolate is subject to a standard of identity established by the U.S. Food and Drug Administration (FDA) under the Federal Food, Drug and Cosmetic Act. Definitions and standards for the various types of chocolates are well established in the U.S. Non-standardised chocolates are those chocolates which have compositions that fall outside the specified ranges of the standardised chocolates.[47]
[46] The specification at page 7, lines 27-31.
[47] The specification at page 8, lines 3-8.
Chocolate-like products
The specification uses the term “chocolate-like products” to include, for example, imitation chocolate that has cocoa butter replaced with other fats.[48]
[48] The specification at page 8, lines 2-3.
Chocolate crumb powder or crumb powder
The compound ingredient for making crumb chocolate is referred to as “chocolate crumb powder” or “crumb powder”. Chocolate crumb powder is made from a blend of sugar, milk and/or other dairy ingredients and cocoa mass (cocoa liquor) which is concentrated to a moisture content of around 1% by means of a drying step, such as a multiple-step evaporator and under vacuum conditions (i.e., crumbing process). The dried compound ingredients can then be milled to form a powder and the crumb chocolate powder can be stored for use at a later stage to make crumb chocolate.[49]
[49] The specification at page 8, lines 21-28.
Crumb chocolate or CGC
The specification uses the terms “crumb chocolate” or “CGC” to refer to fat-based confection, such as milk chocolate, made with chocolate crumb powder. The crumb process is described as providing a method that can generate a “creamier milk chocolate (i.e., milk chocolate with a taste profile characteristic of crumb chocolate) as compared to dry mix chocolate without chocolate crumb powder.”[50]
[50] The specification at page 8, lines 29-33.
Dry mix chocolate or DMGC
The specification uses “dry mix chocolate” or “DMGC” to refer to a milk chocolate made with milk powder and without chocolate crumb powder or without the crumb process.[51]
[51] The specification at page 9, lines 1-3.
Chocolate composition or chocolate admixture
The specification uses “chocolate composition” or “chocolate admixture” to refer to “an admixture or composition that is admixed or combined with a dry mix chocolate or other chocolate base with a flavour composition”.[52] The term “chocolate base” is not defined in the specification. However, when describing “chocolate compositions and end products”, the specification states:
[52] The specification at page 9, lines 7-9.
“Crumb chocolate flavoring compositions can be combined with dry mix chocolate or similar chocolate base to form chocolate compositions or admixtures.”[53] (emphasis added)
[53] The specification at page 27, lines 5-6.
Therefore, I infer that “chocolate composition” means a composition comprising (1) dry mix chocolate combined with a flavour composition, or (2) a “chocolate base” combined with a flavour composition. I understand the “chocolate base” to be a chocolate or chocolate-like product that has a similar flavour profile as “dry mix chocolate” (i.e., milk chocolate made with milk powder and without chocolate crumb powder or without the crumb process).
Flavors
The specification uses the terms “flavor” and “aroma” interchangeably and states that the terms are synonymous. The term “flavor” is stated to include odours, odorants and/or tastes.[54]
[54] The specification at page 10, lines 11-12.
Creaminess
The term “creaminess” is used in the specification to refer to a flavour profile that can be manipulated by odorants and/or flavourings that elicit a creamy aroma or flavour. Creaminess of a compound can be influenced by fat content, viscosity, particle size, smoothness, consistency and thickness. The specification describes that there is a positive correlation of flavour notes like cream, vanilla, coconut, and caramel to “creaminess”.[55]
[55] The specification at page 11, lines 4-9.
Flavor composition
“Flavor composition” is used in the specification to refer to one or more compounds or biologically accepted salts thereof that modulate (including enhancing, multiplying, potentiating, decreasing, suppressing, or inducing) the tastes, smells and/or flavours of a natural or synthetic tastant, flavouring agent, taste profile, flavour profile and/or texture profile in an animal or a human.[56]
[56] The specification at page 9, lines 21-28
Extraneous flavor composition
The specification uses “extraneous flavor composition” to refer to “chocolate crumb flavor compositions of the presently disclosed subject matter”.[57]
[57] The specification at page 9, lines 29-30.
Examples
I will now discuss the examples of the specification which include the procedure used to select flavour compounds that replicate a crumb chocolate flavour.
Example 1 describes methods used to identify odour-active compounds in CGC and DMGC through Aroma Extract Dilution Analysis (AEDA) and Static Headspace Olfactory (SHO) techniques.[58] The volatile compounds of chocolate samples were separated from non-volatile compounds by solvent assisted flavour evaporation (SAFE).[59] The volatile compounds isolated using SAFE were further separated into acidic and neutral-basic fractions, serially diluted and analysed by High Resolution Gas Chromatography-Olfactometry (HRGC-O) with flame ionization detection (FID) and simultaneous orthonasal perception at the sniffing port until no odorant could be perceived any longer.[60]
[58] The specification at page 31, lines 15-16.
[59] The specification at page 32, lines 1-3.
[60] The specification at page 32, line 20 to page 34.
Dr Baines stated that SAFE is a conventional technique used to extract flavour (aroma) compounds from a food product without causing any chemical reaction or rearrangement that changes the identity of the flavour compounds.[61] AEDA, SHO, HRGC using an olfactory port (commonly referred to as “sniff-GC”) and FID are conventional techniques used to analyse and identify components that make up a flavour composition. AEDA is a procedure where an aroma extract is diluted successively, and analysis is performed on the diluted sample using sniff-GC and FID. SHO is a technique used to detect volatile compounds that are in the volume of gas above the sample (i.e., “headspace”) and responsible for flavour. AEDA is conducted by drawing different volumes of the headspace and using the same dilution factors. [62] Dr Baines stated that the mentioned conventional techniques are common and every-day procedures practiced by flavourists, both before 1 December 2015 and since then.[63] There is no evidence that contradicts this view in the EIA. Therefore, I consider the techniques for identifying and analysing odorants in different chocolate samples, as described in the specification, were commonly known and used by the person skilled in the art at the priority date of the opposed application.
[61] Baines #1 at [30], [75].
[62] Baines #1 at [31]-[32].
[63] Baines #1 at [29].
The aroma-active regions were identified in the chromatograms, and each aroma detected was assigned a flavour-dilution factor (FD-factor) corresponding to the highest dilution in which the aroma was detectable. The higher the FD factor (the lowest dilution at which an odorant can barely be perceived) the higher the importance of the odorant to the overall aroma/flavour.[64]
[64] The specification at page 33, line 27 to page 34, line 1.
When the FD-factor is ≥32, the odorant was deemed to be more important to the overall aroma.[65] Table 10 of the specification lists identified odorants with a FD-factor of ≥32 in the chocolate samples analysed. A difference between the samples was only recognised if the FD-factors between the samples differ in at least four dilution steps.[66] CGC (crumb chocolate) exhibited higher FD-factors for some compounds compared to DMGC (dry mix chocolate), for example 2-ethyl-3,5-dimethylpyrazine, 4-hydroxy-2,5-dimethy-3(2H)-furanone (or furaneol). However, DMGC exhibited higher FD-factors for some compounds compared to CGC, for example hexanoic acid and 2-methyl-3-(methyl dithio)-furan.
[65] The specification at page 35, lines 6-7.
[66] The specification at page 35, line 14 to page 36, line 1.
In Example 1, SHO was performed to differentiate between the most potent and the less or non-aroma active highly volatile compounds of the samples. The odorants were identified by comparison with reference solutions based on retention indices, odour qualities, and intensities smelled at the sniffing port and by mass spectrometry with different ionisation methods (electron impact ionisation (EI) or chemical ionisation (CI)). The FD-factor results from Table 11 of the specification are reproduced below.
FD-Factor No. Aroma compound CGC DMGC 1 3-hydroxy-2-butanone 8 8 2 methanethiol 2 8 3 methylpropanal 8 8 4 2,3-butanedione 4 8 5 ethyl acetate - - 6 3-methylbutanal 8 8 7 2-methylbutanal - 1
The specification concludes that “[t]here were no distinct/significant differences in the FD-factors of CGC as compared to DMGC. Thus, no major differences in the dilution analyses of the highly volatiles exist.”[67]
[67] The specification at page 37, lines 17-19.
Example 2 quantifies the concentrations of odorants in the CGC and DMGC aroma isolates prepared in Example 1. The highly volatile compounds methylpropanal, 2- and 3-methylbutanal, 2,3-butanedione and methanethiol were quantitated by means of the stable isotope dilution analysis and static headspace gas chromatography and mass chromatography. The results are shown in Table 12 of the specification, reproduced below.[68] Additional analysis was conducted to examine additional odorants and the results are shown in Table 13 of the specification, which has not been reproduced in this decision.
[68] The specification at page 38, lines 2-10.
The specification discusses that distinct differences in the concentration of 2,3-butanedione and Strecker aldehydes (methylpropanal, 2- and 3-methylbutanal) could be determined, except for methanethiol in which almost comparable amounts were quantitated.[69] The specification also notes that the quantitative results disagree with the results of Example 1 where no distinct differences between the FD-factors were observed. The specification further notes that:
[69] The specification at page 38, lines 18-20.
“… dilution analysis is primarily a screening method, and depending on the amount of the sample, matrix effects on volatile release, and on the physical condition of the panelist the quantitative results may be more meaningful. A definite statement about the influence of a single odorant on the overall aroma and, hence, on the difference of the aroma and the creaminess of the chocolates was only possible by the odor activity value (OAV) in Example 3.”[70]
[70] The specification at page 39, lines 5-10.
The specification notes that in comparing odorants in CGC and DMCG, three compounds stood out: methanethiol, phenylacetaldehyde, and 4-hydroxy-2,5-dimethy-3(2H)-furanone (or furaneol). The difference in the compound concentrations between both chocolates was attributed to the crumb powder and, therefore, the crumb process.[71]
[71] The specification at page 40, lines 2-5.
Example 3 describes the odour activity value (OAV) analysis. The OAV is a measure of importance of a specific compound to the overall odour of a sample (e.g., chocolate). OAV is calculated as the ratio between the concentration of individual substance in a sample and the threshold concentration of this substance (i.e., the minimum concentration that can be detected by human nose or odour threshold value) or:[72]
[72] The specification at page 40, lines 9-15.
Odorants with an OAV greater than 1 are stated to generally contribute to the aroma of the corresponding food.[73] The OAV of quantitated odorants in DMGC and CGC are shown in Table 14 of the specification, reproduced below. The specification notes that literature-based odour thresholds were only used if they were performed under the same conditions.
[73] The specification at page 40, lines 17-18.
The specification notes that only five odorants differed significantly between CGC and DMGC: 2-methylbutanal, methylpropanal, 4-hydroxy-2,5-dimethy-3(2H)-furanone (or furaneol), tetramethylpyrazine and 2-methylbutanoic acid.[74]
[74] The specification at page 42, lines 4-6.
Example 4 describes constructing an odourless chocolate matrix to evaluate which odorants contribute to the aroma of crumb chocolate. Odorants were removed from DMGC and stock solutions of thirty-five odorants that had previously (in Example 2) been identified in DMGC and CGC were prepared. The thirty-five identified odorants were added to the odourless chocolate to create recombinant CGC and recombinant DMGC which simulate the aroma of CGC and DMCG, respectively.[75] Orthonasal aroma profile analyses and evaluation by panellists were used to substantiate that the overall aroma of the original CGC and original DMGC was like the respective recombinant. The specification states that at least all the decisive odorants for the overall aroma and creaminess of CGC and DMCG were identified and quantitated.[76]
[75] The specification at page 42, lines 12-33.
[76] The specification at page 43, lines 9-29.
Example 5 describes omission experiments where whole recombinants of CGC and DMCG, consisting of thirty-five quantitated odorants each, were orthonasally compared with associated mixtures in which certain odorants were missing. Trained panellists used orthonasal perception in a method, termed a triangle test, to identify a differing sample in a set of three samples (triad). The triad consisted of two identical samples and a third sample that is different. The panellist evaluated the creaminess of the differing sample in comparison to the other ones. If no difference was observed, the panellist was requested to speculate which one was different – this is referred to as “forced-choice”.[77]
[77] The specification at page 44, lines 1-11.
The results of the omission experiments performed with the CGC recombinant are shown in Table 15 of the specification, reproduced below. I understand that a record of “yes” in Table 15 is an indication that an odorant or a group of odorants had a significant influence on the overall aroma and/or creaminess of crumb chocolate.[78]
[78] The specification at page 44, lines 12-14.
The specification states that the results from the omission experiments performed with the CGC recombinant show the following:
·“..all highly volatiles together were important for the overall aroma of CGC; however only methanethiol contributed significantly to CGC’s creaminess”;[79]
[79] The specification at page 45, lines 3-5
·“The [quantitated] lactones significantly influenced the overall aroma and creaminess even though they had OAVs below 1. Such results were not only additive but synergistic”;[80]
[80] The specification at page 45, lines 9-11. I understand the quantitated lactones as those listed in Table 14 of the specification and include δ-octalactone, γ-nonalactone, γ-undecalatone, δ-dodecalactone, δ-decalactone. I note this is also the understanding of the applicant (see written submissions filed 24 May 2023 at [16]) and the opponent (see written submissions filed 17 May 2023 at [182]).
·“When all [quantitated] odorants with less than an OAV less than 1 was omitted (except for the lactones), there was an effect on the overall aroma, but creaminess was not influenced”;[81]
[81] The specification at page 45, lines 11-13. I understand the quantitated odorants to be those listed in Table 14 of the specification.
·“4-hydroxy-2,5-dimethyl-3(2H)-furanone alone showed no significant influence, but in combination with phenylacetaldehyde and 3-hydroxy-2-methyl-4H-pyran-4-one (i.e., maltol) there was a significant contribution to the overall aroma and creaminess”;[82]
[82] The specification at page 45, lines 14-17.
·“.. although phenylacetaldehyde and 3-hydroxy-2-methyl-4H-pyran-4-one had OAVs below 1, they appeared to influence the effect of 4-hydroxy-2,5- dimethyl-3(2H)-furanone on the overall odor and creaminess of CGC. These odorants were chosen due to similar odor qualities (honey-like, caramel-like), and the fact that 4- hydroxy-2,5-dimethyl-3(2H)-furanone was in higher concentrations in CGC than DMGC indicates the source of many of these compounds appeared to come from crumb powder.”[83]
[83] The specification at page 45, lines 17-22.
The specification states that based on the omission experiments, several odorants significantly influenced the creaminess of CGC. However, not all these odorants had higher concentrations in CGC than in DMGC, only the odorants which are indicated in Table 18 of the specification.[84] Table 18 is reproduced below. I note that the three of the eight quantitated lactones, namely γ-octalactone, ẟ-decenolactone and γ-dodecalactone, that are not listed in Table 18 are recorded in Table 13 to have lower concentrations in CGC compared to DMCG.[85] I also note that the odorants listed in Table 18 are the nine odorants claimed in the chocolate composition of claim 1 and the flavour composition of claim 9 of the claim set.
[84] The specification at page 46, lines 16-19.
[85] The specification at page 39.
The specification states:
“Consequently, the creaminess of DMGC could be adapted to CGC’s creaminess by increasing the concentration of following odorants: 4-hydroxy-2,5-dimethyl-3(2H)-furanone, phenylacetaldehyde, 3-hydroxy-2-methyl-4H-pyran-4-one, methanethiol, ẟ-octalactone, γ-nonalactone, ẟ-decalactone, γ-undecalactone and ẟ-dodecalactone.”[86]
[86] The specification at page 47, lines 4-8.
I consider it is reasonable that the PSA would have understood that the nine odorants listed in Table 18 are compounds that have been identified by the inventors of the opposed application to significantly contribute to the creamy aroma associated with crumb chocolate – creaminess being a particular flavour note of the overall crumb chocolate flavour profile. I also consider it reasonable that the PSA would have understood that using these nine odorants in combination modifies the creaminess of DMCG to resemble the creaminess of CGC.
The specification describes several embodiments, which I will discuss shortly, of crumb chocolate flavour compositions where the nine odorants listed in Table 18 are used in combination and in various concentrations. The crumb chocolate flavour composition is described to be admixed in a chocolate composition (Table 7) in one embodiment.[87] In another embodiment, the crumb chocolate flavour composition is described as used to impart a crumb chocolate flavour to a dry mix chocolate (Example 7, Table 19).[88] The crumb chocolate flavour composition is also described to be used to impart the aroma and creaminess of crumb chocolate to an end product or food product (Example 8, Table 20; Example 9, Table 21).[89]
[87] The specification at page 23, lines 3-8.
[88] The specification at page 48, lines 8-13.
[89] The specification at page 48, line 20 to page 49, line 1.
Table 7 of the specification, reproduced below, shows an embodiment of a crumb chocolate flavour composition with the listed compounds and having the indicated range of concentrations.[90] The embodiment of Table 7 is claimed in claim 16 of the claim set.
[90] The specification at page 23, lines 6-8.
Table 19 of the specification, reproduced below, shows another crumb chocolate flavour composition which can be used to “impart a crumb chocolate flavour to a dry mix chocolate”.[91] The embodiment of Table 19 is claimed in claim 17 of the claim set.
[91] The specification at page 48, lines 11-13.
Table 20 of the specification, reproduced below, shows another embodiment which can be used “to impart the aroma and creaminess of crumb chocolate to an end product” (i.e., a completed product or food product).[92] The embodiment of Table 20 is claimed in claim 18 of the claim set.
[92] The specification at page 48, line 20 to page 49, line 1. The definition of “end product” is found in the specification at page 9, line 9.
Table 20 A Composition for a Crumb Chocolate Flavor
Odorant µg/kg of the Admixture w/w % of the Flavor Composition dimethylhydroxy furanone (furaneol) 183 5.2 phenylacetaldehyde 10.1 0.3 maltol 158 4.5 methanethiol 1.2 0.03 ẟ-decalactone 430 12.3 ẟ-dodecalactone 2536 73 ẟ-octalactone 93 2.7 γ-nonalactone 53 1.5 γ-undecalactone 21.7 0.6 Total 3486 100
Table 21 of the specification (not reproduced here) shows a crumb chocolate flavour composition that has the most extensive list of odorants (35 odorants in total). This embodiment can be admixed to a food product “to impart the aroma and creaminess of crumb chocolate to the food product”.[93]
[93] The specification at pages 49-50.
Common general knowledge (CGK)
Before construing the claims, it is helpful to review what was already known in the art before the priority date, 1 December 2015, in the field of the invention.
CGK is the background knowledge and experience available to all those working in the relevant art:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”[94]
[94] Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 at [115]; 144 CLR 253 at page 292 (the 3 M case).
The CGK is not limited to knowledge which the PSA might have memorised but also includes information which the skilled person knows exists and would have referred to as a matter of course. Emmett J stated:
“The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
· standard texts and handbooks;
· standard English dictionaries;
· technical dictionaries relevant to the field;
· magazines and other publications specific to the field.”[95]
[95] ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; 45 IPR 577 at [112].
However, it is not enough that information is recorded in a document, even if that document is widely circulated − it is only part of the CGK when it is generally known and accepted. Middleton J stated:
“… information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art … Reference in this regard is made to the words of Luxmoore J in British Acoustic Films (1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.”[96]
[96] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368; 101 IPR 11 at [217].
Chocolate crumb
Mr Brown and Dr Didzbalis both provided statements about what chocolate crumb is and how it was made before the priority date of the opposed application.[97] The statements of both expert witnesses about chocolate crumb are consistent with how the specification describes the ingredient chocolate crumb powder and the crumbing process which I have previously discussed. Additionally, the expert witnesses stated the crumbing process involves drying and heating which lead to the development of characteristic caramelised, fruity flavours in the resulting chocolate through the occurrence of Maillard reactions. These are reactions between a reducing sugar containing an aldehyde and amino acids on milk proteins.[98] I consider the ingredient chocolate crumb powder, the crumbing process and the thermal treatment for producing the characteristic flavour and aroma of milk chocolate made from chocolate crumb powder were part of the CGK before 1 December 2015.
[97] Brown at [13]-[18]; Didzbalis at [23]-[31].
[98] Brown at [17]; Didzbalis at [26]-[27].
Techniques used to identify and analyse odorants in chocolate samples
I have previously discussed that SAFE, AEDA, SHO, HRGC using an olfactory port (commonly referred to as “sniff-GC”) and FID are techniques commonly known and used by the person skilled in the art to analyse and identify components that make up a flavour composition.[99]
[99] Baines #1 at [29]-[32], [75].
The invention as claimed and clarity
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd. (Lundbeck):
“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”[100]
[100] [2009] FCAFC 70 at [118] – [120]; 81 IPR 228.
It is a requirement of subsection 40(3) of the Act that the claims must be clear. As stated by the court in Flexible Steel Lacing Company v Beltreco Ltd., and cited with approval in Austral Ships Sales Pty Ltd v Stena Rederi Aktiebolag:
“…Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”[101]
[101] [2000] FCA 890 at [81]; 49 IPR 331. Cited with approval in [2008] FCAFC 121; 77 IPR 229.
A claim will lack clarity if a third party could not ascertain whether a proposed action would fall within the ambit of the claim.[102]
[102] Monsanto Co v Commissioner of Patents (1974) 48ALJR 59.
I will now consider the meaning of several terms in the claims.
Claim 1
Claim 1 is an independent claim of the opposed application. It reads:
A chocolate composition comprising
dry milk chocolate and
an extraneous flavor composition, wherein the extraneous flavor composition comprises
a) a highly volatile compound which is methanethiol,
b) a plurality of lactone compounds which are ẟ-dodecalactone, ẟ-decalactone, γ-
nonalactone, ẟ-octalactone and γ-undecalactone, and
c) a caramelic composition comprising dimethylhydroxy furanone, phenylacetaldehyde,and maltol.
“dry milk chocolate”
The opposed application does not define “dry milk chocolate”. Instead, “dry mix chocolate” or “DMCG” is stated to refer to milk chocolate made with milk powder and without chocolate crumb powder or without the crumb process.[103] The specification also states:
[103] The specification at page 9. lines 1-3.
“Current methods of making milk chocolate from a dry mix chocolate (i.e., utilizing dry milk powder) do not adequately capture the distinct aroma and creaminess of milk chocolate manufactured from chocolate crumb powder.”[104] (emphasis added)
[104] The specification at page 1, lines 31-33.
Dr Didzbalis states:
“Based on my knowledge and experience in the field of chocolate manufacture [at the priority date], I understand ‘dry milk chocolate’ and ‘dry mix chocolate’, as referring to a dry chocolate mixture made from dry milk powder. As such, I understand both terms to have the same meaning.”[105]
[105] Didzbalis at [41].
Dr Baines and Mr Brown both appear to suggest there is a difference between “dry milk chocolate” and “dry mix chocolate”.[106] Mr Brown also states:
[106] Baines #1 at [59]; Brown at [31]- [32].
“What the ‘dry milk chocolate’ term in claim 1 of the Mars patent application does and does not cover is unclear to me. Given the apparent purpose of the document in trying to produce non-crumb chocolate with a crumb chocolate flavour, it would be strange if the intention was for the claims to also include chocolate made by the crumb process. However, I am unsure whether in fact the claims do or do not cover such products.”[107] (italics in original)
[107] Brown at [32].
Given that the definition of “dry mix chocolate” in the specification and the context in which the term is used, as quoted above, I consider it is reasonable to interpret “dry milk chocolate” of claim 1 as a dry chocolate mixture made from dry milk powder. I agree with Dr Didzbalis to the extent that “dry milk chocolate” and “dry mix chocolate”, as used in the specification, have the same meaning. Consequently, I interpret “dry milk chocolate” as milk chocolate made with milk powder and without chocolate crumb powder or without the crumb process. My interpretation is also consistent with Mr Brown’s observation that it would be strange for “dry milk chocolate” to include chocolate made by the crumb process if the purpose is to produce non-crumb chocolate with a crumb chocolate flavour.
“extraneous flavor composition”
The opponent alleges that the term “extraneous flavor composition” is unclear.[108] The opponent submits:
[108] The opponent’s submissions filed 17 May 2023 at [224].
“There is a question as to whether the term means either (a) a flavour composition that is simply ‘extraneous’, or (b) a flavour composition that has an overall ‘crumb flavour’ or crumb flavour ‘objective’. If the latter, then there is absolutely no clarity as to what makes any ‘composition’ within the scope of the term, and outside the scope of the term, due to some requirement of a perceived ‘crumb flavour’ or an objective of a crumb flavour.”[109]
[109] The opponent’s submissions filed 17 May 2023 at [227]
and
“The Opposed Application states that ‘As used herein, extraneous flavour composition refers to the chocolate crumb flavour compositions of the presently disclosed subject matter’. If this definition is considered to import a requirement of some flavour notes that must be present in the flavour composition, there is no set definition for a ‘crumb flavour compositions’, and the identity is ambiguous.”[110]
[110] The opponent’s submissions filed 17 May 2023 at [228].
Dr Didzbalis referred to the definition of “extraneous flavor composition” on page 9, lines 29-30 of the specification and states:
“… the definition of ‘extraneous flavor composition’ … is expressed as being limited to ‘chocolate crumb flavor compositions’, I also understand this term to refer to flavor compositions that specifically reproduce the characteristic and unique flavor and aroma of crumb chocolate.”[111]
[111] Didzbalis at [59].
Dr Baines’ understanding of “extraneous flavor composition” in claim 1 is a flavour composition that is the same as the composition outlined in claim 9 (as amended) and that is added and mixed with the dry milk chocolate. Dr Baines also understands the reference of “extraneous flavor composition” on page 9, lines 29-30 to be a reference to the flavour composition outlined in claim 9 (as amended).[112]
[112] Baines #1 at [60]; the opponent’s submissions filed 17 May 2023 at [226].
The opponent alleges that Dr Baines’ interpretation of “extraneous flavor composition” does not require a particular flavour profile and a broader interpretation of the term is preferred. The opponent also observes that claims 1 and 9 make no reference to crumb chocolate, and a broader interpretation of the term is supported by the structure of the claims, particularly the appendance of claims 10 to 15 on each of claims 1 and 9 “in which the weight-to-weight amounts of components are defined by reference to ‘the flavour compositions’”.[113]
[113] The opponent’s submissions filed 17 May 2023 at [59]-[60].
In addition to the explicit indication in the specification that “extraneous flavor composition” refers to “the chocolate crumb flavor compositions of the presently disclosed subject matter”, the specification also states:
“In the presently disclosed subject matter, the flavor compositions include a combination of compounds to establish a crumb chocolate flavor in a food product, for example, a fat based confectionery such as a chocolate product.”[114] (emphasis added)
[114] The specification at page 11, lines 12-14.
and
“The present disclosure relates to crumb chocolate flavor compositions that can be admixed with dry mix chocolate, or a fat-based confection made with dry mix chocolate to form a chocolate composition, to impart a crumb chocolate flavor without the use of crumb chocolate, and thereby avoiding the laborious and costly drying step used to make crumb chocolate. The crumb chocolate flavor compositions can also be admixed with other fat-based confections to provide the aroma or creaminess of a crumb chocolate flavor.”[115] (emphasis added)
and
“… the crumb chocolate flavor compositions contain one or more odorants in effective amounts to provide an overall crumb chocolate aroma, a creamy aroma, or a combination thereof.”[116] (emphasis added)
I accept that claim 9 does not explicitly refer to crumb chocolate and I will discuss the interpretation of claim 9 shortly. However, I consider the opponent’s broad interpretation of “extraneous flavor composition” for claim 1 nullifies the statement in the specification that this term refers to “chocolate crumb flavor compositions of the presently disclosed subject matter”. To the extent that there is any ambiguity in the statement about what is included in the scope of “presently disclosed subject matter”, the other portions of the specification which I have quoted above clearly indicate that a crumb chocolate flavour composition functions to provide an overall aroma of crumb chocolate, a creamy aroma of crumb chocolate, or an overall aroma and creaminess of crumb chocolate. As I noted earlier, “aroma” and “flavor” are used as synonyms in the opposed application.
Consequently, “extraneous flavor composition” of claim 1 imports a functional limitation from the specification and means a flavour composition that provides an overall aroma of crumb chocolate, a creamy aroma of crumb chocolate, or an overall aroma and creaminess of crumb chocolate.
[115] The specification at page 20, lines 9-15.
[116] The specification at page 27, lines 21-23.
100. I consider the term “comprises” is being used in a non-exhaustive sense to define the compounds or odorants of the extraneous flavour composition of claim 1. Therefore, I interpret that the extraneous flavour composition of claim 1 includes the nine recited odorants but may include additional odorants which have not been defined. As discussed previously, I consider the PSA would have understood that the combined use of the nine recited odorants of claim 1 modifies the creaminess of DMCG to resemble the creaminess of CGC. Since I interpret the specification to use “dry mix chocolate” and “dry mix chocolate” to have the same meaning, it follows that the nine recited odorants of the extraneous flavour composition of claim 1 modifies the creaminess of dry milk chocolate to resemble the creaminess of CGC.
101. In summary I interpret claim 1 to be directed to a chocolate composition that has two parts, (a) dry milk chocolate, which is milk chocolate made with milk powder and without chocolate crumb powder or without the crumb process, and (b) an extraneous flavour composition that includes at least the nine recited odorants and provides an overall aroma of crumb chocolate, a creamy aroma of crumb chocolate, or an overall aroma and creaminess of crumb chocolate by modifying the creaminess of dry milk chocolate to resemble the creaminess of CGC.
Clams 2-5
102. Clams 2 to 5 are appended to claim 1 and define additional features of the chocolate composition. Claims 2 and 3 define the concentration of the extraneous flavour composition mixed with the chocolate composition in µg per kg. Claims 4 and 5 define the concentration of extraneous flavour composition mixed with the chocolate composition as weight percentages (w/w) of the chocolate composition.
Claims 6-8
103. Claims 6 to 8 are appended to claim 1 and define selected odorants of the extraneous flavour composition by reference to specific odour activity value; also known as OAV.
104. As previously discussed, OAV is a measure of importance of a specific compound to the overall odour of a sample (e.g., chocolate) and is calculated as the ratio between the concentration of individual substance in a sample and the threshold concentration of this substance (i.e., the minimum concentration that can be detected by human nose or odour threshold value). Therefore, I consider the specific OAV for a recited odorant in claims 6 to 8 defines a value that is assessed by reference to the overall chocolate composition.
Claim 9
105. Claim 9 is another independent claim that reads:
A flavor composition comprising
a) a highly volatile compound which is methanethiol,
b) a plurality of lactone compounds which are ẟ-dodecalactone, ẟ-decalactone, γ-nonalactone, ẟ-octalactone, and γ-undecalactone, and
c) a caramelic composition comprising dimethylhydroxy furanone, phenylacetaldehyde, and maltol, and wherein the flavor composition provides enhanced creaminess to a chocolate composition.
“Flavor composition”
106. The compounds of the flavour composition of claim 9 are defined in a non-exhaustive manner and include the same nine compounds or odorants defined for the “extraneous flavor composition” of claim 1. However, claim 9 does not refer to crumb chocolate and the term “extraneous” is omitted from the words of the claim. Therefore, I consider the words of claim 9 do not import the functional limitation defined in the specification for “extraneous flavor composition”.
“wherein the flavor composition provides enhanced creaminess to a chocolate composition”
107. The opponent submits:
“Properly construed, claim 9 defines a flavour composition per se, containing at least the 9 named compounds. While there is a reference to a ‘chocolate composition’ at the end of the claim following the statement in the claim that the flavour composition ‘provides enhanced creaminess’, this added wording following ‘wherein’ places no limitation on the scope of the claim. The claim is a product claim directed to a flavour composition only, and not to any ‘use’ of that product.”[117] (italics in original)
[117] The opponent’s submissions filed 17 May 2023 at [63].
108. I accept claim 9 to be a product claim directed to a flavour composition and is not limited to a particular use of the product. However, I consider that the words following “wherein” have work to do and provide a functional limitation. I have previously found that a PSA would understand that using the nine odorants in combination significantly contribute to the creamy aroma associated with crumb chocolate – creaminess being a particular flavour note of the overall crumb chocolate flavour profile. Reading the words of claim 9 following “wherein” together with the recitation of the nine odorants, I interpret the flavour composition is defined to provide the function of enhancing the creaminess of a chocolate composition, this being an aspect of reproducing an overall crumb chocolate flavour.
“chocolate composition”
109. I have previously interpreted “chocolate composition” to mean a composition comprising (1) dry mix chocolate ( i.e., milk chocolate made with milk powder and without chocolate crumb powder or without the crumb process) combined with a flavour composition, or (2) a chocolate or chocolate-like product that has a similar flavour profile as “dry mix chocolate” combined with a flavour composition.
Claims 10-15
110. Each of claims 10 to 15 are appended to the chocolate composition of claim 1 or the flavour composition of claim 9 and further define the amount for the components (a) methanethiol, (b) lactone compounds, or (c) caramelic composition, in weight percentages (% w/w) relative to the flavour composition.
111. Claim 11 defines the concentration range for the five lactones compounds collectively as an amount, from about 0.01% to about 98% w/w, relative to the flavour composition. Claim 14 defines the concentration range of each of the five lactone compounds in % w/w relative to the flavour composition.
112. Claim 12 defines the concentration range of the caramelic composition as an amount, from about 0.005% to about 25% w/w, relative to the flavour composition. Claim 13 defines the concentration range for each of the components of the caramelic composition in % w/w relative to the flavour composition.
Claim 16
113. Claim 16 is an independent claim that reads:
A flavor composition comprising:
(i) between about 0.1% w/w and about 20% w/w dimethylhydroxy furanone;
(ii) between about 5% w/w and about 80% w/w ẟ-dodecalactone;
(iii) between about 0.005% w/w and about 1% w/w phenylacetaldehyde;
(iv) between about 0.1% w/w and about 5% w/w maltol;
(v) between about 0.001% w/w and about 0.1% w/w methanethiol;
(vi) between about 0.5% w/w and about 15% w/w ẟ-decalactone;
(vii) between about 0.1% w/w and about 3% w/w ẟ-octalactone;
(viii) between about 0.05% w/w and about 5% w/w γ-nonalactone; and(ix) between about 0.01% w/w and about 1% w/w γ-undecalactone.
114. Claim 16 lists in a non-exhaustive manner the same nine odorants defined in claim 9, and further defines the concentration range of each odorant. The defined concentration ranges of the nine odorants of the flavour composition of claim 16 are those of a preferred embodiment of a crumb chocolate flavour composition which is described in Table 7 of the specification. Therefore, I consider a PSA would understand that using a particular concentration within the concentration ranges defined in claim 16 for each one of the nine odorants will result in an overall aroma of crumb chocolate, a creamy aroma of crumb chocolate, or an overall aroma and creaminess of crumb chocolate.
Claims 17-18
115. Claims 17 and 18 are ultimately appended to claim 16 and further narrow the concentration range of each of the flavour components in % w/w relative to the flavour composition. At the oral hearing, the applicant confirmed that there is an error in the appendency of claim 18 and this claim is intended to be appended to claim 16 rather than claim 17. I consider the error to be an obvious mistake as clearly some of the concentration values defined in claim 18 cannot fall within what I consider to be “about” those values defined in claim 17. Nothing material turns on this error which the applicant may amend if it chooses to do so.
116. I conclude that the opponent has not established that any one of the claims of the opposed application lacks clarity.
Support
117. Section 40(3) of the Act requires that the claims must be supported by matter disclosed in the specification. Burley J considered the requirement of support in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) (Merck) and noted the claims will be appropriately supported if they “correspond to the technical contribution to the art”.[118]
[118] [2020] FCA 1477; 155 IPR 1 at [530]-[531] citing Walker LJ in Generics UK(HL) at 19 who referenced Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon) at 659.
118. The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. The distinction was explained by Walker LJ in Generics (UK) Limited v H Lundbeck A/S [2009] UKHL 12 (Generics UK(HL)):
“The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. ‘Inventive concept’ is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 9 paras 112-113) which entitles the inventor’s achievement to be called inventive. The invention’s technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.”[119]
[119] Generics UK(HL) at [30].
119. An important question will often be whether the technical contribution to the art is a general principle or the specific examples in the specification. Lord Hoffmann gave some examples in Biogen v Medeva Plc [1997] RPC 1 (Biogen):
“Thus if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect. On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them.”[120] [citations omitted]
[120] Biogen at 49.
120. In Merck Burley J referred to CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR), where the Deputy Commissioner adopted the summary provided by Aldous J in Schering Biotech Corp’s Application, [1993] RPC 249 at 252-253, to answer the question of the claim support obligation:
“… to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.”[121]
[121] Merck at [546].
121. Burley J stated:
“That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed.”[122]
[122] Merck at [547].
122. The considerations for the approach as stated in CSR, which the Federal Court have approved, are:
“i) construe the claims to determine the scope of the invention as claimed,
ii) construe the description to determine the technical contribution to the art, andiii) decide whether the claims are supported by the technical contribution to the art.”[123][123] CSR at [115].
The opponent’s allegation of “not… a new principal [sic] capable of general application to all chocolates, but… ultimately a random selection of flavour compounds…”
123. The opponent alleges the claims of the opposed application lack support for several reasons. Firstly, the opponent refers to the evidence in Trotin Exhibit MT-4 which includes analytical data regarding certain flavour compounds which were found to be present in chocolate samples commercially available in 2010 and contends that “the amounts of different flavour compounds present in different chocolate products can vary widely.”[124] The opponent characterises the analysed chocolate samples as “non-crumb chocolate” and contends that “the commercially available non-crumb chocolates have far higher baseline amounts of phenylacetaldehyde, γ-nonalactone, δ-decalactone, maltol and furaneol as compared to DMGC, and far higher amounts than even the crumb-chocolate variant CMC.”[125]
[124] The opponent’s submissions filed 17 May 2023 at [72]-[73].
[125] The opponent’s submissions filed 17 May 2023 at [74]. The opponent’s characterisation of the chocolate samples of Exhibit MT-4 as “non-crumb chocolate” is based on Dr Baines’ evidence, Baines #1 at [113].
124. The opponent then contends:
“The omission experiments in the Opposed Application, which provide a foundation for the choice of flavour compounds, is heavily reliant on comparing quantities of flavour compounds. However, it is apparent from the widely ranging relative amounts of such flavour compounds in chocolate products generally that the Applicant has not found a new principal [sic] capable of general application to all chocolates, but instead has made what is ultimately a random selection of flavour compounds, and widely claimed all combinations of those compounds in any relative amounts.”[126]
[126] The opponent’s submissions filed 17 May 2023 at [75].
125. The applicant submits:
“There is no indication anywhere in the Trotin declaration whether or not these chocolates were made using the chocolate crumb powder process – instead, it is clear from Dr Trotin’s evidence that the study was not directed at crumb chocolate, but rather the broader question of ‘compounds known to be potent in providing flavour to chocolate, and quantifying the amounts of those compounds present in the chocolate samples’. The Opponent's submissions state that the chocolates in Exhibit MT-4 ‘are properly characterised’ as ‘non-crumb chocolate’, making reference to Baines 1 at [113].... However, Dr Baines does not provide any reason why he refers to these chocolates as ‘non-crumb’.”[127]
[127] The applicant’s submissions filed 24 May 2023 at [63].
and
“… all that can be concluded from the data in Exhibit MT-4 was that when certain commercial chocolate products were tested, they were found to contain phenyl-acetaldehyde, γ-nonalactone, δ-decalactone, maltol and furaneol (notably, these compounds are not the same as the combination claimed the claims of the Application, particularly as all claims of the Application must include methanethiol as a component of the flavour composition). There is no evidence regarding the flavour, odour and creaminess of the chocolate products in Exhibit MT-4.”[128]
and
“In these circumstances, the evidence presented in Exhibit MT-4 does not in any way detract from the technical contribution made by the Application in this case – indeed, the data recorded in Exhibit MT-4 appears entirely irrelevant to this Opposition.”[129]
[128] The applicant’s submissions filed 24 May 2023 at [65].
[129] The applicant’s submissions filed 24 May 2023 at [67].
126. The legal principles for the requirement of support, which I discussed previously, require a comparison of the invention as defined in the claims with the invention as disclosed in the specification. Therefore, I agree with the applicant that in the present circumstances the data recorded in Exhibit MT-4 is irrelevant to the assessment of the support requirement.
The opponent’s allegation of “ glaring inconsistencies in the data and the interpretation of the results”
127. The opponent vigorously contends there is huge disconformity between the empirical results disclosed in the specification and what is claimed in the claims. [130] The opponent makes many submissions on data presented in Example 1 (Tables 10 and 11) which relate to the FD-factor of identified odorants, Example 2 (Table 13) which quantitates selected odorants in DMGC and CGC, Example 3 (Table 14) which refers to the OAV of selected odorants and Examples 4 and 5 (Table 15) which describe the results of omission experiments performed with the CGC recombinant.[131]
[130] The opponent’s submissions filed 17 May 2023 at [78].
[131] The opponent’s submissions filed 17 May 2023 at [79]-[110].
128. The opponent’s submissions include:
·“… there are several compounds in Table 10 which have a higher FD factor (in some cases, much higher) in the CGC than in the DMGC, but which are not listed in the claims of the Opposed Application…”[132]
·“Methanethiol (FD-Factor 8 (DMGC) v 2 (CMG)), is already present in more perceivable amounts in dry mix chocolate than in crumb chocolate, as shown by its higher FD factor in DMGC. Accordingly, there is no need to add further methanethiol to the dry mix chocolate as part of a flavour composition to replicate the flavour and creaminess of crumb chocolate. However, methanethiol is listed as the highly volatile compound in the independent claims.”[133]
·“Table 13 lists … four compounds which are present in the CGC in larger amounts than in the DMGC, but which are not included in the independent claims as necessary components of the flavour composition. These are hexanoic acid, dimethyl trisulfide, 1-octen-3-one and indole.”[134]
·“Some of [the compounds of Table 14] are listed in claim 1 for inclusion in the flavour composition, however, their OAV values suggest that they in fact do not actually contribute significantly to the aroma of either chocolate composition.”[135]
and
“A claim may have utility even if a promised advantage cannot be achieved in all cases or with the same degree of success: Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 at 142-143 (Gummow J) and Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) (2011) 92 IPR 320 at [245], point 8 (Jagot J). Thus, if a claimed method of treatment for nausea was effective in a substantial proportion of patients experiencing nausea, the claim would not be invalid merely because a small proportion of patients experiencing nausea did not respond to the treatment. This is because the skilled addressee reading the specification would not expect (assuming he or she is not told otherwise) that the claimed treatment will be an effective treatment for every patient suffering nausea resulting from every conceivable condition.”[159]
[158] [2016] FCA 1238 at [168]; 122 IPR 17.
[159] Apotex 2016 at [170].
163. In Apotex Pty Ltd v AstraZeneca AB (No 4) Jagot J pointed out that lack of utility requires evidence, not just speculation:
“Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification.”[160]
[160] [2013] FCA 162; 100 IPR 285 at [352].
164. In Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd., Greenwood J (Rares J concurring) stated an assessment of the utility requirement involves an analysis of what the specification itself says is the promise of the invention, and whether by following the teaching of the specification the claimed invention does attain the result promised:
“Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?...”[161]
[161] [2016] FCAFC 29; 117 IPR 210 at [121].
The opponent’s allegations
165. The opponent alleges that for the same reasons argued in the context of lack of support and lack of sufficiency, “it is evident that the claims encompass flavour compositions that do not necessarily provide the characteristic flavour and aroma associated with chocolate made from crumb”[162]
[162] The opponent’s submissions filed 17 May 2023 at [145].
166. The opponent also alleges:
“… the Opposed Application has also not demonstrated how de minimis amounts of the flavour compounds named in claim 1 can provide the flavour of crumb chocolate as promised by the object of the invention. It is not conceivable that flavour compositions containing minute amounts of the named flavour compounds could possibly meet the objective of replicating crumb chocolate flavour.”[163]
[163] The opponent’s submissions filed 17 May 2023 at [146].
The promise of the invention
167. I have previously found the aim of the invention is to provide a flavour composition which modifies a final food flavour to resemble the taste of chocolate crumb powder without the need for a drying step of the crumbing process.
168. For the reasons I have already discussed, I consider the specification provides an enabling disclosure that would enable a PSA to follow the teaching of the specification and attain a flavour composition that modifies the creaminess of a chocolate composition to resemble the creaminess of CGC without the need for a drying step of the crumbing process. I have also interpreted each of claim 1 and claim 9 to define a functional limitation, this being modifying the creaminess of dry milk chocolate or a chocolate composition, respectively, to resemble the creaminess of CGC. Additionally, I have interpreted the concentration ranges defined for the nine recited odorants of claim 16 will provide an overall aroma of crumb chocolate, a creamy aroma of crumb chocolate, or an overall aroma and creaminess of crumb chocolate.
169. I also note that the opponent has not filed any evidence to support its allegations of lack of utility.
170. Consequently, I conclude that the opponent has not established a lack of utility for any of the claims of the opposed application.
Inventive step
171. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states:
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 (whether in or out of 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).
172. Subsection 7(3) prescribes the information that may be considered as:
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 that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
173. The prior art base for the purposes of inventive step is made up of (1) information in a document that is publicly available anywhere, and (2) information that is made publicly available through doing an act anywhere.[164]
[164] The Act, Schedule 1, definition of prior art base.
174. Once the CGK and relevant information have been identified, the test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd Aickin J stated:
“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.”[165]
[165] [1981] HCA 12 at [45]; 148 CLR 262 at 286.
175. An expectation of success is not an additional requirement over and above matters of routine:
“It is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterisation of steps as routine and to be tried as a matter of course.”[166]
[166] Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73 (Generic Health); 314 ALR 91 at [71].
176. Where an invention comprises a combination of integers, the question is whether the combination, not the individual integers, is obvious: “the selection of the integers out of ‘perhaps many possibilities’ … must be shown… to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers”.[167] As Aickin J said in the 3 M case, “[t]he opening of a safe is easy when the combination has already been provided.”[168]
[167] Aktiebolaget Hassle v Alphapharm Pty Ltd. [2002] HCA 59 at [41]; 212 CLR 411 at 429 citing Aickin J in the 3M case [1980] HCA 9 at [116]; 144 CLR 253 at 293.
[168] HCA 9 at [117]; 144 CLR 253 at 293.
177. Regarding the undesirability of analysis by hindsight, the Full Court of the Federal Court (Sheppard J in agreement with Lockhart CJ and Wilcox J) warned:
“Questions of obviousness are frequently difficult because it is very easy to fall into the trap of using hindsight. Once an innovation which is useful comes onto the market, there is an inclination not only for lawyers but also for those in the relevant industry to treat it as the norm and as something which might have been easily thought of by any reasonably competent worker in the industry.”[169]
[169] Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173, at 193-194.
Obviousness in light of CGK alone
178. The opponent submits that the relevant technical problem addressed by the opposed application is “to produce… a group of flavour compounds… that create the flavour of crumb chocolate” and that “following the conventional processes for developing a flavour compound to replicate a known flavour would have directly led to the claimed composition”.[170] The opponent refers to the evidence of Dr Baines at paragraphs [29] to [39] of Baines #1 and submits that (a) using the routine and convention quantitative analyses (namely AEDA, HRCG, gas chromatography-olfactometry and gas chromatography mass spectrometry) key compounds responsible for flavour are identified, (b) information on the quantities of flavour compounds are used to decide on the key flavour compounds to select for the development of the flavour composition, and (c) the final food product made with the flavour composition can be tested to check that the product has the desired overall flavour.[171]
[170] The opponent’s submissions filed 17 May 2023 at [162], [165].
[171] The opponent’s submissions filed 17 May 2023 at [167].
179. I consider the cited evidence of Dr Baines explains the techniques commonly known and used by the person skilled in the art to analyse and identify components that make up a flavours composition. Dr Baines states that he would “have immediately predicted the final composition [of a flavour composition that could be used in a chocolate to avoid the crumbing process] would contain Strecker aldehydes, lactones, ketones and malty-caramelly-compounds such as furaneol (a dimethyhydroxy furanone) and maltol”. I consider Dr Baines’ predicted final composition to be a high-level concept of the classes of compounds that could constitute a flavour composition for mimicking the flavour of crumb chocolate. Dr Baines’ predicted composition does not identify all the specific odorants now claimed in the claims of the opposed application.[172] I also consider that selecting the nine odorants now claimed in the claims could not be predicted based on quantitative information alone, given the observations by both parties that the quantitative information for individual odorants described in the opposed application do not always agree to show a definitive trend to indicate a higher concentration in CGC.
[172] Baines # 1 at [44].
180. The opponent contends that all the odorants named in the claims of the opposed application were well-known flavour compounds at the priority date.[173] Even if I accept that this was the case, there is no evidence to find that it was part of the CGK and a matter of routine, at the priority date, to arrive at the combination of odorants claimed in the claims.
[173] The opponent’s submissions filed 17 May 2023 at [163].
181. Dr Didzbalis states that the significant impact of the combined use of the following groups of compounds on overall aroma and creaminess was “inherently unpredictable, and unexpected”:
(a)three caramelic compounds – furaneol, phenylacetaldehye and maltol, and
(b)five lactones (claimed in the claims 1 and 9) – ẟ-dodecalactone, ẟ-decalactone, γ-nonalactone, ẟ-octalactone, γ-undecalactone.[174]
[174] Didzbalis at [72], [76].
182. Dr Didzbalis also states:
“… ultimately it is how… odorants, working in combination, through mechanisms such as suppression, blending and fusion, are sensorily perceived by the human brain that produces the overall aroma of a food product, such as the characteristic and distinctive aroma of crumb chocolate.”[175] (italics in original)
[175] Didzbalis at [74].
183. I am satisfied that the opponent has not established that PSA would have taken routine steps leading to the combination claimed in any one of the claims of the opposed application in light of the CGK alone, before the priority date. Consequently, I conclude that the opponent has not established that any of the claims of the opposed application lacks an inventive step in light of CGK alone before the priority date of the claims.
Obviousness in light of citations considered together with CGK
184. The opponent relies on the following two citations to allege lack of inventive step of the claims of the opposed application:
·GB 2370213, published 26 June 2002 (also referred to as D6); and
·Schlutt, B., et al., J Agric. Food Chem., Vol. 55, No.23, pp 9634-9645, published 2007 (also referred to as D7).
185. D6 and D7 were published before the earliest priority date of 1 December 2015 and therefore form part of the prior art base for the purposes of novelty and inventive step.
186. I note that the opponent’s submissions regarding obviousness are somewhat unenthusiastic compared to its submissions regarding the ground of support. At the oral hearing, the opponent did note that the ground of support is the main ground on which the opposition is argued.
D6: GB 2370213
187. D6 discloses a process of manipulating the flavour associated with chocolate by adding a flavour attribute. Crumb chocolate flavour is mentioned as a flavour attribute.
188. The opponent acknowledges that D6 does not disclose the constituents of the crumb flavour. However, the opponent contends that since it is within the CGK of the PSA “to follow conventional steps to develop a new flavour composition that matches the flavour profile selected for a food product” and “the 9 flavour compounds identified in claim 1 are shown to form part of the common general knowledge as key candidate flavour compounds for inclusion in such a flavour composition”, “[i]t must therefore be found that the subject matter of claim 1 lacks inventive step in light of D6 combined with the common general knowledge.” [176]
[176] The opponent’s submissions filed 17 May 2023 at [191].
189. I note Dr Baines states:
“D6 has a similar objective to the Mars patent application, but is more generalist as to the flavors to be created, and does not give examples of flavour compositions for generating crumb flavour specifically.”[177]
[177] Baines #1 at [125].
190. I consider the opponent’s arguments to be the sort of analysis by hindsight which the case law cautioned against. Since the evidence does not explain that selecting the combination of odorants now claimed in the claims of the opposed application was part of the CGK and a matter of routine, I conclude that the opponent has not established that any of the claims of the opposed application lacks an inventive step in light of D6 considered together with the CGK before the priority date of the claims.
D7: Schlutt, B., et al., J Agric. Food Chem., Vol. 55, No.23, pp 9634-9645, 2007
191. D7 discloses studies to identify sensorially active volatile compounds that enhance the creaminess of full-fat cream. Methanethiol is disclosed to be detected exclusively in heat-treated cream. D7 states:
“Sensory experiments showed that methanethiol may play a role in creaminess perception, but in particular the amounts have to be present in a distinct concentration range… .”[178]
[178] D7 at page 9639, right-hand column, lines 9-12.
192. Dr Baines states:
“D7 also provides information that supports the inclusion of methanethiol into a flavour composition to provide creaminess of the type associated with heat-treated cream, which is the type of flavour characteristic associated with crumb chocolate.”[179]
[179] Baines #1 at [130].
193. The opponent submits that “D7 teaches the [sic] 4 out of 5 lactone compounds present in the claims of the Opposed Application are present in full-fat cream… .”[180] However, the opponent also submits:
“D7 does not teach the use of methanethiol and the named lactones for inclusion in a flavour composition, together with the 5th lactone, and a 3-component caramelic composition. However,… it was well known to flavourists that they may combine any number of flavour compounds known to produce particular flavour characteristics (e.g. creaminess, as provided by the methanethiol and lactones), with other compounds that provide caramel flavours (such as the so-called ‘caramelic compounds’ frequently used in combination), to result in a flavour composition with creamy and caramel flavours.”[181]
[180] The opponent’s submissions filed 17 May 2023 at [196].
[181] The opponent’s submissions filed 17 May 2023 at [197].
194. Again, I consider the opponent’s arguments to be tainted by hindsight and untenable. Since the evidence does not explain that selecting the combination of odorants now claimed in the claims of the opposed application was part of the CGK and a matter of routine, it is evident to me that the opponent has not established that any of the claims of the opposed application lacks an inventive step in light of D7 considered together with the CGK before the priority date of the claims.
Conclusion on inventive step
195. I conclude that the opponent has not established that any of the claims of the opposed application lacks an inventive step in light of CGK before the priority date of the claims, whether that knowledge is considered separately or together with the information in the cited documents.
Manner of manufacture
196. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. It is well established that this involves asking whether the necessary quality of inventiveness is apparent on the face of the specification (“the threshold requirement”). In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd the High Court said:
“if it is apparent upon the face of the specification, when properly construed, 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”.[182]
and in Bristol-Myers Squibb Co v FH Faulding & Co Ltd the Federal Court said:
“if, on the basis of what was known, as revealed on the face of the specification, the invention 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 – then the threshold requirement of inventiveness is not met.”[183]
[182] [1995] HCA 15; 183 CLR 655 at [9].
[183] [2000] FCA 316; 46 IPR 553 at [30].
197. Another formulation of the requirement is found in Commissioner of Patents v Microcell Ltd:
“We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter of a patent, …”[184]
[184] [1959] HCA 71; (1959) 102 CLR 232 at 251.
198. The opponent submits that the invention as claimed in the claims is not a manner of manufacture because “it relates to a mere admixture of known ingredients, the combination of which was known and/or obvious at the Priority Date.”[185]
[185] The opponent’s submissions filed 17 May 2023 at [204].
199. The opponent also submits that “each feature of the claims is merely performing its normal function and is not functionally dependent on any other part in any inventive way” and “[t]here is no evidence of a synergy between furaneol, phenylacetaldehyde and maltol with methanethiol and the five selected lactones in the Opposed Application.”[186]
[186] The opponent’s submissions filed 17 May 2023 at [207]-[208].
200. I have previously found the evidence does not establish that it was not part of the CGK or a matter of routine for the PSA to combine the odorants claimed in any of the claims to arrive at the flavour compositions of the opposed application. The evidence does not establish there is lack of invention on the face of the specification.
201. Additionally, the opponent submits:
“… there is no distinction between (a) a chocolate product that contains particular flavour compounds that comes about naturally (through natural presence of such flavour compounds in the chocolate product, or through processing steps), and (b) a chocolate product to which additional flavours are added, where those flavours are of the same identity as those present naturally in the product. It is improper to grant a patent for a ‘product’, such as that defined in claim 1 (and all other product claims), that is chemically and physically indistinguishable from existing products, due to any assertion that the way compounds make their way into the product is significant.”[187]
[187] The opponent’s submissions filed 17 May 2023 at [209].
202. The applicant submits:
“The references in the Opponent’s submission to “naturally” and “natural presence” are misleading – chocolate products are not naturally occurring, they are manufactured products that do not exist in nature. The claimed invention is a particular chocolate composition (including a flavour composition) which is made up of particular ingredients. There can be no suggestion that this impinges on a “naturally” occurring product – it is an “artificial state of affairs of economic significance”, which falls clearly within the boundaries of the established classes of inventions which constitute a manner of manufacture for the purposes of s 18(1)(a) of the Act.”[188] (italics in original)
[188] The applicant’s submissions filed 24 May 20223 at [39].
203. I agree with the applicant that the chocolate compositions and flavour compositions claimed in the opposed application are manufactured products and are patentable subject matter.
204. The opponent has not established that the invention in any of the claims of the opposed application is not a manner of manufacture.
Conclusions
205. The opponent has not established that claims 1-18 of the opposed application fail to comply with the grounds of support, sufficiency, clarity, utility, inventive step, and manner of manufacture. Therefore, the opposition is unsuccessful.
206. Subject to appeal, I direct the application proceed to grant.
Costs
207. It is normal that costs should follow the event. I see no reason to depart from that result. Cost according to Schedule 8 are awarded against Kraft Foods Schweiz Holding GmbH.
Dr A. Lim
Delegate of the Commissioner of PatentsAnnex A: The claims of the opposed specification
1. A chocolate composition comprising
dry milk chocolate and
an extraneous flavor composition, wherein the extraneous flavor composition comprises
a) a highly volatile compound which is methanethiol,
b) a plurality of lactone compounds which are ẟ-dodecalactone, ẟ-decalactone, γ-
nonalactone, ẟ-octalactone and γ-undecalactone, and
c) a caramelic composition comprising dimethylhydroxy furanone, phenylacetaldehyde,
and maltol.
2. The chocolate composition of claim 1, wherein the extraneous flavor composition is admixed at a concentration from about 500 μg/kg to about 5000 μg/kg of the chocolate composition.
3. The chocolate composition of claim 2, wherein the extraneous flavor composition is admixed at a concentration from about 3000 μg/kg to about 4000 μg/kg of the chocolate composition.
4. The chocolate composition of claim 1, wherein the extraneous flavor composition is admixed at a concentration from about 0.00005% to about 20% w/w of the chocolate composition.
5. The chocolate composition of claim 4, wherein the extraneous flavor composition is admixed at a concentration from about 0.0001% to about 17% w/w of the chocolate composition.
6. The chocolate composition of any one of claims 1 to 5, wherein the dimethylhydroxy furanone is furaneol and the furaneol provides an odor activity value higher than 1, and wherein each of the phenylacetaldehyde and maltol provide an odor activity value less than 1.
7. The chocolate composition of claim 6, wherein the furaneol provides an odor activity value between 6 and 8.
8. The chocolate composition of any one of claims 1 to 7, wherein the lactone compounds each
provide an odor activity value less than 1.9. A flavor composition comprising
a) a highly volatile compound which is methanethiol,
b) a plurality of lactone compounds which are ẟ-dodecalactone, ẟ-decalactone, γ-nonalactone, ẟ-octalactone, and γ-undecalactone, and
c) a caramelic composition comprising dimethylhydroxy furanone, phenylacetaldehyde, and maltol, and wherein the flavor composition provides enhanced creaminess to a chocolate composition.
10. The chocolate composition or flavor composition of any one of claims 1 to 9, wherein the methanethiol is present in an amount of from about 0.001% to about 25% w/w of the flavor
composition.11. The chocolate composition or flavor composition of any one of claims 1 to 10, wherein the plurality of lactone compounds are present in an amount of from about 0.01% to about 98% w/w of the flavor composition.
12. The chocolate composition or flavor composition of any one of claims 1 to 11, wherein the caramelic composition is present in an amount of from about 0.005% to about 25% w/w of the flavor composition.
13. The chocolate composition or flavor composition of any one of claims 1 to 12, wherein the caramelic composition comprises
(i) dimethylhydroxy furanone in an amount of from about 0.1% to about 20% w/w of the flavor composition;
(ii) phenylacetaldehyde in an amount of from about 0.005% to about 1% w/w of the flavor composition; and
(iii) maltol in an amount of from about 0.1% to about 5% w/w of the flavor composition.
14. The chocolate composition or flavor composition of any one of claims 1 to 13, wherein:
(i) ẟ-dodecalactone is present in an amount of from about 5% to about 80% w/w of the flavor composition;
(ii) ẟ-decalactone is present in an amount of from about 0.5% to about 15% w/w of the flavor composition;
(iii) γ-nonalactone is present in an amount of from about 0.05% to about 5% w/w of the flavor composition;
(iv) ẟ-octalactone is present in an amount of from about 0.1% to about 3% w/w of the flavor composition; and
(v) γ-undecalactone is present in an amount of from about 0.01% to about 1% w/w of the flavor composition.
15. The chocolate composition of claim 1 or flavor composition of claim 9, wherein the methanethiol is present in an amount of from about 0.001% to about 0.1% w/w of the flavor
composition.16. A flavor composition comprising:
(i) between about 0.1% w/w and about 20% w/w dimethylhydroxy furanone;
(ii) between about 5% w/w and about 80% w/w ẟ-dodecalactone;
(iii) between about 0.005% w/w and about 1% w/w phenylacetaldehyde;
(iv) between about 0.1% w/w and about 5% w/w maltol;
(v) between about 0.001% w/w and about 0.1% w/w methanethiol;
(vi) between about 0.5% w/w and about 15% w/w ẟ-decalactone;
(vii) between about 0.1% w/w and about 3% w/w ẟ-octalactone;
(viii) between about 0.05% w/w and about 5% w/w γ-nonalactone; and
(ix) between about 0.01% w/w and about 1% w/w γ-undecalactone.
17. The flavor composition of claim 16, wherein the flavor composition comprises:
(i) about 18.5% w/w dimethylhydroxy furanone;
(ii) about 69% w/w ẟ-dodecalactone;
(iii) about 0.6% w/w phenylacetaldehyde;
(iv) about 0.3% w/w maltol;
(v) about 0.08% w/w methanethiol;
(vi) about 7.1% w/w ẟ-decalactone;
(vii) about 0.7% w/w ẟ-octalactone;
(viii) about 3.9% w/w γ-nonalactone; and
(ix) about 0.2% w/w γ-undecalactone.
18. The flavor composition of claim 17, wherein the flavor composition comprises:
(i) about 5.2% w/w dimethylhydroxy furanone;
(ii) about 73% w/w ẟ-dodecalactone;
(iii) about 0.3% w/w phenylacetaldehyde;
(iv) about 4.5% w/w maltol;
(v) about 0.03% w/w methanethiol;
(vi) about 12.3% w/w ẟ-decalactone;
(vii) about 2.7% w/w ẟ-octalactone;
(viii) about 1.5% w/w γ-nonalactone; and
(ix) about 0.6% w/w γ-undecalactone.
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