Krones AG v PepsiCo, Inc
[2025] APO 17
•3 June 2025
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Krones AG v PepsiCo, Inc. [2025] APO 17
Patent Application: 2017358895
Title:Ambient filling system and method
Patent Applicant: PepsiCo, Inc.
Opponent: Krones AG
Delegate: Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date: 03 June 2025
Hearing Date: 18 March 2025 via video conference
Catchwords: PATENTS – section 59 – filling system for carbonated beverages operating at ambient temperature – grounds of novelty, inventive step, clarity, support, clear and complete disclosure, utility – construction of claims – meaning of ‘maintain at an ambient temperature’ – claims not inventive – opposition successful – costs awarded against applicant
Representation: Counsel for the opponent: Benjamin Fitzpatrick
Patent attorney for the opponent: BOSH IP
Counsel for the applicant: Clare Cunliffe
Patent attorney for the applicant: Allens Patent & Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017358895
Title:Ambient filling system and method
Patent Applicant: PepsiCo, Inc.
Date of Decision: 03 June 2025
DECISION
The opposition is successful. Claims 1-11 are not inventive.
Subject to appeal, I provide a period of 2 months to file suitable amendments.
I award costs according to Schedule 8 of the Patents Regulations 1991 against the applicant.
REASONS FOR DECISION
BACKGROUND
This matter relates to patent application 2017358895 in the name of PepsiCo, Inc. (the applicant), having an earliest claimed priority date of 8 November 2016. The application was examined and advertised as accepted on 16 March 2023. Following this, a notice of opposition was filed on 16 June 2023 by Krones AG (the opponent).
The request for examination was filed on 8 October 2021 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. Thus, the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
The case management of the matter has been relatively straight forward with some amendments to statements of grounds and particulars along the way, and a stay provided for the opponent to provide full translations of documents filed in German. At the hearing, the opponent pressed the grounds of novelty, inventive step, clarity, support, clear and complete disclosure and utility.
THE EVIDENCE
Evidence in support includes the following declarations:
·A first declaration of Raimund Kalinowski (Kalinowski #1) dated 15 December 2023 with exhibits RK-1 and RK-2
·A declaration of Joachim Weippert (Weippert) dated 14 December 2023 with annexures A-C
·A declaration of Mathias Wahl (Wahl) dated 8 December 2023 with annexures 1 - 10
·A declaration of Uwe Bäumer (Bäumer) (in German) dated 11 December 2023 with attachments not indexed
·A declaration of Volker Stüttgen (Stüttgen) (in German) dated 14 December 2023 with annexures A-C
·A first declaration of Nadia Odorico (Odorico #1) (containing English translations of declarations of Uwe Bäumer and Volker Stüttgen) dated 17 December 2023 with exhibits NO-1 and NO-2
Evidence in answer consists of the following declarations:
·A declaration by Joseph Aloisio (Aloiso) dated 22 May 2024 with annexures JA-1 to JA-9
Evidence in reply consists of the following:
·A second declaration of Raimund Kalinowski (Kalinowski #2) dated 22 July 2024 with exhibits RK-3 to RK-5
·A second declaration of Nadia Odorico (Odorico #2) dated 23 July 2024 with exhibits NO-3 and NO-4
SPECIFICATION
The specification is rather short consisting of only 10 pages of description. It relates to a system and method for filling containers with carbonated beverage. The background to the invention discusses methods that include volumetric filing, time-metered filling and weight-metered filling. Each of these methods may use cold filling operations which utilise refrigeration for eliminating foaming of carbonated beverage. It adds that large amounts of energy can be required to cool the fluid, and this can lead to increased operating costs[1].
[1] Specification at [0006]
Description of the invention begins at paragraph [0019] referring to FIG. 1. The explanation of FIG. 1 is as follows[2]:
Referring to FIG. 1, a fluid mixing system 10 can include a treated water tank 100 that is fluidly connected to a treated water source 80. Treated water 102 can flow from treated water source 80 into treated water tank 100. Treated water 102 can enter treated water tank 100 at approximately 17 degrees Celsius. A vacuum pump 110 can remove the air and gases from within treated water tank 100. In one aspect, vacuum pump 110 can create a deaeration pressure within treated water tank 100 of at least approximately 0.8 bar. In another aspect, the deaeration pressure within treated water tank 100 can be approximately 0.91 bar.
A treated water pump 104 can pump treated water 102 from within treated water tank 100 to the next stage of mixing system 10. In one aspect, treated water pump 102 (sic) can pump treated water 102 through a cooling system 160 to reduce the temperature of treated water 102. In one aspect, cooling system 160 can reduce the temperature of treated water 102 from approximately 17 degrees Celsius before treated water 102 enters cooling system 60 to approximately 7.6 degrees Celsius after treated water 102 exits cooling system 160. In another aspect, treated water 102 can be maintained at ambient temperature in mixing system 10.
Mixing system 10 can include concentrate 132 in a concentrate tank 130. Concentrate 132 can be a beverage flavor syrup. Treated water 102 can mix with concentrate 132 to form a fluid mixture.
A carbonized pump 140 can inject carbon dioxide into the fluid mixture in carbon dioxide dosing apparatus 142 to create a carbonized fluid mixture, i.e., product fluid 152. In one aspect, carbon dioxide injection in carbon dioxide dosing apparatus 142 can occur at a pressure in a range of approximately 3.2 bar to approximately 4.2 bar.
The fluid 152 can be stored in a carbonized tank 150 prior to traveling to a filling machine 300 for dispensing into a container 400 (FIG. 3). In one aspect, carbonized tank 150 can be pressurized at approximately 5.5 bar. In another aspect, carbonized tank 150 can be pressurized at approximately 0.5 bar higher than filling machine 300.
Fluid 152 can exit carbonized tank 150 through product supply conduit 200 and can enter product cooling conduit 202 to cool fluid 152 by passing fluid 152 through cooing system 160. In one aspect, fluid 152 can enter cooing system 160 at approximately 11.8 degrees Celsius and can exit cooling system 160 at approximately 6.8 degrees Celsius. In another aspect, carbonized tank 150 can be fluidly connected to filling machine 300 such that fluid 152 can be maintained at ambient temperature in carbonized tank 150 and in filling machine 300.
In one aspect of the invention, the treated water, fluid mixture, and product fluid 152 can have a laminar flow as they move through mixing system 10. This laminar flow can reduce foam formation in the fluid 152.
[2] Specification at [0019]-[0025]
The invention that is the subject of this dispute is fundamentally related to FIG. 1 involving the travel of fluid from a treated water tank, through a mixing system and into a carbonised tank. Other detail is provided in the specification and claims in relation to a filling machine, the filling machine being depicted in FIG. 3 and FIG. 4. I provide these figures below.
FIG. 3 and FIG. 4 are described as follows[3]:
The filling machine 300 can include a support housing 302 having an upper surface 304 and a lower surface 306 defining an inner fluid chamber 310 for supplying the fluid 152 to be discharged into the corresponding container 400. The fluid 152, which is preferably a liquid beverage, can fill a portion of the fluid chamber 310 while leaving a headspace 320 above the fluid 152 for a pressurized inert gas such as carbon dioxide or nitrogen. The supply and return pipes for the fluid 152 and gas as well are not shown in these Figures.
A valve housing 330 can be mounted to the lower surface 306 of the support housing 302 for controlling the discharge of the fluid 152 into the container 400. The valve housing 330 is shown schematically in the Figures and may be of any suitable design or configuration. An annular container seal 332 can be provided within the valve housing 30 for sealingly engaging the container 400. In the embodiment shown in FIG. 3, the container seal 332 can be designed to seal against a bottle type container 400. In another aspect, the container seal 332 can be configured to accept a can. A control device 340 can be disposed adjacent the upper surface 304 of the support housing 302. The control device 340 will be discussed in greater detail below.
A vent tube 312 can have a first end 313a and a second end 313b with the second end 313b at least partially extending through the valve housing 330. Vent tube 312 can have a height less than approximately 4.5 mm. Vent tube 312 can have an umbellate ring 316 (FIG. 4) positioned adjacent second end 313b. Umbellate ring 316 can have a diameter 317.
The vent tube 312 can move along a predetermined stroke between a filling position and a non-use position. The second end 313b of the vent tube 312 and umbellate ring 316 can be disposed within the container 400 while in the filling position and the second end 313b of the vent tube 312 can be raised above the container 400 while in the non-use position. When vent tube 312 is in the filling position, umbellate ring 316 can be centered in the X direction and in the Y direction with respect to container 400…
…A fluid sealing mechanism 322 including a spring 318 can be movably mounted with respect to the support tube 314 for controlling the discharge of the fluid 152 from the inner fluid chamber 310 to the container 400. The length of spring 318 can be decreased
for slower valve movement. In one aspect, the spring strength can be optimized for laminar flow of fluid 152 from filling machine 300 into container 400. Valve fixing surface angle adjustments can also be made.[3] Specification at [0032]-[0036] and [0039]
The specification seeks to make the point that fluid 152 can be filled into containers 400 from filling machine 300 at ambient temperature requiring less cooling[4]. In other parts of the specification different reference is made to operate at ambient temperature, for example, “treated water 102 can be maintained at ambient temperature in mixing system 10”[5], and “fluid 152 can be maintained at ambient temperature in carbonised tank 150 and in filling machine 300”[6]. Similarly, temperatures in the realm of normal room temperature are discussed[7]:
A cold fill system can dispense a fluid at approximately 8 degrees Celsius into a container. In one aspect of the invention, fluid 152 can be dispensed into container 400 at approximately 15 degrees Celsius resulting in significant energy savings. The filling system according to the present invention that fills containers 400 with a fluid at approximately 15 degrees Celsius can result in a reduction in system energy required to cool the fluid of approximately 60%, as compared to a cold fill system that fills at approximately 8 degrees Celsius.
[4] Specification at [0042]
[5] Specification at [0020]
[6] Specification at [0024]
[7] Specification at [0044]
The claimed invention
There are two independent claims upon which it is useful to focus. They are both (claims 1 and 10) directed towards a method of producing a container filled with carbonated fluid product.
A method of producing a container filled with a carbonated fluid product, the method comprising:
retaining treated water in a water tank;
deaerating the water tank using a vacuum pump;
mixing the treated water with a concentrate to create a fluid mixture;
injecting the fluid mixture with carbon dioxide to create the carbonated fluid product;
storing the carbonated fluid product in a carbonized tank that is fluidly connected to a filling machine;
operating the filling machine to fill the container with the carbonated fluid product,
wherein the treated water, fluid mixture, and carbonated fluid product are maintained at an ambient temperature.A method of producing a container filled with a carbonated fluid product, the method comprising:
retaining treated water at an ambient temperature in a water tank;
deaerating the water tank using a vacuum pump to create a negative pressure of at least 0.8 bar;
mixing the treated water with a concentrate to create a fluid mixture;
injecting the fluid mixture with carbon dioxide at a pressure in a range of approximately 3.2 bar to approximately 4.2 bar to create the carbonated fluid product;
storing the carbonated fluid product in a carbonized tank that is fluidly connected to a filling machine, the carbonized tank having an interior pressure of approximately 5.5 bar;
operating the filling machine to fill the container with the carbonated fluid product, the filling machine having an interior pressure of approximately 5 bar, and the carbonated fluid product being at the ambient temperature.These claims are quite easy to generally understand. They depict the passing of fluid through various stages consistent with FIG. 1. They also clearly refer to the idea that the treated water, fluid mixture, and carbonated fluid product may be at ambient temperature. “Ambient temperature” has a plain meaning recoverable on any quick internet search being along the lines of the average air temperature of an object’s environment, and that this is not necessarily restricted to any particular temperature range.
THE PERSON SKILLED IN THE ART AND THE EXPERTS
The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In Root Quality v Root Control Technologies Pty Ltd[8] Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
[8] [2000] FCA 980
The specification discusses the field of the invention being the filling of containers with carbonated beverages after a process involving the treatment and degassing of water, mixing of water with concentrate, and carbonation of a fluid mixture. The background part of the specification[9] places focus upon methods of filling containers and notes that cold filling operations utilize a refrigeration process for elimination of foaming of the carbonated beverage during filling. It adds that a large amount of energy is required to cool the carbonated fluid during refrigeration[10] and follows this by generally pointing to the thrust of the invention that is represented in the claims[11]:
One aspect of the invention permits a filing system that utilizes an increase in filling temperature, for example, ambient temperature. To achieve the increased filling temperature, the mixer and blower operating parameters can be modified along with a new filing system ventile design. The present invention permits filing of a container with a carbonated fluid at ambient temperatures.
[9] Specification at [0002]-[0005]
[10] Specification at [0006]
[11] Specification at [0007]
It is clear to me that the problem solved by the present invention is the reduction in operating costs of the carbonated fluid generation and filing process. I think it is not questionable that a skilled addressee will have a practical interest and experience in such fluid generation and filling. The opponent suggests that the person skilled in the art would have:
“…specific experience in the processes and equipment for mixing and filling of carbonated beverages into containers, and in particular in the design and working of multi-component mix processors and fillers.”
The applicant argues that the person skilled in the art is the team who would be involved in the design of a commercial carbonated beverage manufacturing process. They point to the idea that a key member in the team would have a degree in mechanical engineering. To put it briefly, I don’t see any reason why a mechanical engineer is necessarily a better expert in the present matter than one involved in the technical support and commissioning of relevant systems. The claimed invention and related technology do not appear particularly complex, and as discussed below, the opponent’s expert clearly has experience working closely with the relevant systems. As such, I consider a skilled addressee may be any of the types of people discussed above, and as per the discussion to follow immediately below, I will proceed generally on the basis that key experts are suitable to stand in the shoes of a hypothetical person skilled in the art.
Both parties, unsurprisingly, seek to argue that their key expert provides a better manifestation of the knowledge of the hypothetical skilled addressee. I will discuss each of the experts and determine more specifically how they stand as relevant expert. I will begin with Mr Kalinowski being the key expert for the opponent before focus upon Mr Aloisio as the key expert for the applicant. I will follow this with brief discussion of each of the other experts that are put forward by the opponent. At this stage I note that the declarations provided by Nadia Odorico do not represent expert evidence but instead merely introduce certain documents into the opponent’s evidence. Similarly, the declaration provided by Matthias Wahl puts into evidence a series of product brochures. None of these product brochures are in English and no translations have been filed. I do not consider the series of brochures to form part of the evidence, and the opponent had already elected not to rely on them.
Mr Kalinowski
According to Kalinowski #1, Mr Kalinowski completed training as a brewmaster in 1979[12] and between 1980 and 1989 he was the commissioning engineer for malt houses and other componentry for a range of brewing companies[13]. He worked in Germany for Coca-Cola with responsibilities including improving the overall quality of the bottling process for carbonated beverages including implementing refillable PET bottles and performing acceptance tests of inspection machines and for mixers, where Coca-Cola concentrate beverage base was involved[14]. He appears to have worked on a range of carbonated soft drink systems including:
·Between 1997 and 2001 at Tuchenhagen Brewery Systems had responsibility for improving mix-processors for producing carbonated beverages, these being continuous in-line systems with deaeration, mixing and carbonation components.[15]
·1998/1999 engaged by Tuchenhagen to work in Japan on a project aimed at increasing filing temperature.[16]
·Between 1998 and 2000 provided technical support in the commissioning and improvement of the operation of inline mixer systems in Australia and Tanzania. He notes that these mixer systems mix and carbonate the fluid from treated water to just before transfer to the filing machine.[17]
·In 1999 provided technical support for commissioning a mix processor in the United States of similar design to Australian and Tanzanian systems.[18]
·In 2000 commissioned multi-component-mix processors at Asahi in Japan. These were in-line units with a two-stage deaerator, mixing of water with a malt-based beverage, final syrup and ethanol, followed by a carbonation.[19]
·In 2002 designed and was personally involved in modification of a mix-processor for producing soft drinks in the form of an in-line unit with one stage deaerator, mixing with syrup, flash pasteurisation, and carbonation.[20]
[12] Kalinowski #1 at [2]
[13] Kalinowski #1 at [3]
[14] Kalinowski #1 at [5]
[15] Kalinowski #1 at [6]
[16] Kalinowski #1 at [7]
[17] Kalinowski #1 at [8]-[10]
[18] Kalinowski #1 at [11]-[12]
[19] Kalinowski #1 at [13]
[20] Kalinowski #1 at [15]
It is plainly clear to me that while a number of years before the priority date of the present application, Mr Kalinowski was well experienced in the operation of in-line mixing and carbonation systems. I have no doubt he is a person with an interest in the invention and that can provide useful evidence to the present matter. The applicant criticises the value of Mr Kalinowski’s evidence for example on the basis that:
· “… it does not appear that Mr Kalinowski has had any meaningful involvement in the industry since 2002”
· “… it also appears from his evidence (inter alia, from his inability to remember the names of his customers (see Kalinowski #1 at [15] and [74])) that Mr Kalinowski does not have very clear memories of matters which occurred in the late 1990s and early 2000s …”
· “Mr Kalinowski’s expertise seems to relate more to commissioning works than to product manufacture.”
· “Mr Kalinowski was given a copy of the Opposed Application before he was asked to comment on what the prior art disclosed… [raising] issues of hindsight” and “it does not appear that [he] was given any briefing on the relevant legal standard that was to be employed”.
· “…despite Mr Kalinowski’s generalised assertion that carbonated drinks have been prepared and filled at ambient temperatures since at least the 1950s, there is no clear evidence of the use of this practice, including any user manuals for this technique. There is no demonstration that Kalinowski’s knowledge is common to those in the carbonate beverage field.”
Nothing at this stage indicates to me that Mr Kalinowski is not generally a reliable expert. In particular I do not see the gap in recent relevant experience before the priority date makes his evidence about what happened in the art prior to 2003 any less valuable. While the points raised by the applicant may go to the weight of a particular piece of Mr Kalinowski’s evidence when put up against that of Mr Aloisio, that is a matter for the details of the issue in question.
Mr Aloisio
According to the Aloisio declaration, Mr Aloisio has 30 years’ experience in the food and beverage industry with a background in mechanical engineering, experience in the production and filling of carbonated drinks as well as packaging[21]. He had operational duties for filling machines in a concentrate plant for Coca-Cola Export Corporation from 1982 to 1989. The applicant further submits with respect to [3] of the declaration that Mr Aloisio:
“…was responsible for maintaining all engineering facets in a manufacturing plant, including the beverage base and concentrate for Coca-Cola products; and co-ordinating and supervising the installation of plant equipment and machinery during plant expansions and upgrades for the Coca-Cola Export Corporation between January 1990 and May 1997, and provided technical support to various departments such as QA (Quality Assurance), bottlers and suppliers, including conducting bottling line trials/audits, for Coca-Cola South Pacific between May 1997 and November 2005. From April 2006 to December 2006, he managed installation, commissioning, training and acceptance of machinery sales, including food and beverage manufacturing equipment, for Carter Holt Harvey. From December 2008 to April 2013, he worked for Visy Plastics, where he was responsible for liaising with key technical partners (including the Opponent) in developing and validating new materials and designs, including hot-fill technologies.”
[21] Aloisio at [3]
I accept his operational duties for filling machines places him as an appropriate person to provide evidence representative of the person skilled in the art. It is clear that his operational responsibility for filing machines for carbonated beverages is limited to the period at Coca-Cola Export Corporation and that he appears to have some more recent experience in filling technologies than Mr Kalinowski. Criticisms applied to Mr Aloisio’s evidence by the opponent generally related to the suggestion that Mr Aloisio’s evidence indicates that his principal experience is in packaging rather than in the production and filling of carbonated drinks. On this basis they suggest a lack of direct experience and a preference for the evidence of Mr Kalinowski over Mr Aloisio.
As was the case with Mr Kalinowski, I consider Mr Aloisio is generally a reliable and useful expert. To the extent that any particular piece of evidence may be preferable, weightier, or determinative, I will deal with this if and when such issues arise. Importantly I note that the key aspects of this dispute focus upon evidence of these two experts.
Mr Weippert
In relation to an allegation made by the opponent of prior use of the claimed invention, Mr Weippert provides a declaration as an employee of Visla since 2019. His declaration purports experience in operations and product management and knowledge of previous system installations prior to the priority date.[22] He appears to have relevant knowledge in mixing and filling systems for carbonated beverages.[23]
[22] Weippert at [3]
[23] Weippert at [4]-[17]
The applicant criticises his evidence on the basis that he does not attach documentation to prove the matters alleged by him and that his evidence should be disregarded. I will do no more than at this point indicate that I will take this into account if and where necessary when weighing evidence.
Mr Wahl
Mr Wahl has worked in the Patent Department of the opponent since September 1986.[24] His declaration discusses his knowledge of the sale of certain systems prior to the priority date.[25] He also discusses the nature of features of known filling machines on the basis of his experience.[26] He doesn’t appear to be a person skilled in the art however his evidence may be of value in supporting the time and location of certain events such as production and publication of patent related information.
[24] Wähl at [1]
[25] Wähl at [4]-[8]
[26] Wähl at [9]-[10]
Mr Bäumer
Mr Bäumer’s declaration as originally provided (supported by the German translation filed by Ms Odorico) notes that he was a sales manager from 1989 to 1998 at Max Kettner Abfüll- und Verpackungsanlagen GmbH and from 1998 to the present at the opponent, Krones AG.[27] He was responsible for the sale of process technology systems and packaging machines to Vilsa. He describes a system which was provided to Vilsa which has similarities to the present invention.[28] The applicant suggests there are issues with his evidence in that he does not attach any documents in relation to that system, except for an order confirmation, ultimately questioning the nature of the system that was in fact supplied. As a sales manager he does not necessarily appear to be a person skilled in the art however it appears that his evidence goes more to the act of providing a certain system to a customer. His evidence may be of similar value to Mr Weippert.
[27] Bäumer at [1]
[28] Bäumer at [7]
Mr Stüttgen
Mr Stüttgen’s declaration as originally provided (supported by the German translation filed by Ms Odorico) notes that he has been employed by Vilsa since 1980 responsible for technical projects and electrical engineering[29], and seeks to provide evidence as to an installation made by the opponent at Visla in 2009-2010 having similar features to the present invention.[30] The applicant notes that the precise nature of his role and his experience is unclear from his declaration, and that Mr Stüttgen does not attach any documentation which would support his evidence as to how the system allegedly installed by Krones worked. They suggest that his evidence is extraordinarily high level, and it should be disregarded.
[29] Stüttgen at [1]
[30] Stüttgen at [3]-[6]
Similarly to Mr Weippert’s evidence I will do no more than at this point indicate that I will take the above into account if and where necessary when weighing evidence.
THE COMMON GENERAL KNOWLEDGE
In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited[31], Aickin J. stated:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
[31] (1980) 144 CLR 253 at page 292
General System Configuration
I start with the evidence of Mr Kalinowski who was asked by the attorneys representing the opponent to provide his opinion on what was common general knowledge at the priority date. As a preface to his evidence, he notes that the technology used to make carbonated beverages including the filling into containers has not changes significantly in the last 50 years[32] and the applicant does not take any particular issue with this. Mr Kalinowski notes steps in the process as follows as being common general knowledge:
[32] Kalinowski #1 at [25]
·“…in most modern systems, which have first a vacuum deaerator, the deaerated water is mixed with the final syrup and is then carbonated.”[33]
·“Both before and after the Priority Date, the preparation of a carbonated drink typically involves the following steps:
a)sourcing and de-aeration of treated water to be used to make the drink;
b)mixing of the water with a syrup containing a flavour concentrated, sugar and acid to make a liquid mixture (called final syrup);
c)carbonation of the liquid mixture through the injection of carbon dioxide (COs);
d)storing the carbonated fluid in a pressurized tank in preparation for transfer to the filling machine.”[34]
·“After this mixing process, the stored carbonated drink is then filled in to containers (for example, bottles) by transferring (with a pump or by the dead space pressure of the tank) the carbonated fluid through a line connected to a filling machine.”[35]
[33] Kalinowski #1 at [26]
[34] Kalinowski #1 at [27]
[35] Kalinowski #1 at [29]
Mr Kalinowski also makes clear that there were two general mixing systems used, those being tank-based and inline mixing systems.[36] He discusses the historical prevalence of tank-based systems with reference to an example that is a common Pre-Mixer design with a pressure de-aerator involving a vacuum pump 3 de-aerating initially obtained water in a vacuum tank.[37] The relevant figure referred to by Mr Kalinowski below is extracted from his declaration and shows a physical system extremely similar to that of the present invention.
[36] Kalinowski #1 at [32]
[37] Kalinowski #1 at [36]
He adds that both “inline and tank-based systems used treated water with the final syrup added to water. The water is typically sourced from a water treatment system which ensures the alkalinity in the water is reduced, which would otherwise neutralize part of the (citric) acid of the beverage.”[38]
[38] Kalinowski #1 at [41]
At this point I turn to the evidence to Mr Aloisi to see what he has to say of the general physical arrangement of components in a mixing system. On this I note that Mr Aloisio was asked to explain how a typical carbonated beverage manufacturing line would have been designed and implemented before the priority date. In responding to this question, Mr Aloisio does not appear to take contention with the evidence from Mr Kalinowski that I have discussed above. He initially spends time discussing the gathering of requirements for a system and the generation of a technical brief.[39] Scoping would be done for relevant equipment which would involve “consideration of the required production flowrate, flavours, taints, carbonation levels, the type of packaging (e.g., glass or PET bottle, can, carton, container shape and sizes) and the required shelf-life details of the product(s). Once scoped, the beverage manufacturer will select appropriate options and equipment for implementation in the particular beverage manufacturing facility.”[40] He goes on to discuss filling systems noting that one would choose between hot-fill (typical for beverages with microbial growth), warm-fill (typical for juice products), ambient-fill (typical for still bottled water) and cold-fill systems (typical for carbonated or other temperature sensitive beverages).[41] In terms of the commercial preparation of a carbonated beverage he notes[42]:
“As a first step, water is treated in accordance with a manufacturing specification to remove any impurities in accordance with the product specification (e.g., chloride, fluoride ions). Depending on the location of the manufacturing site, the water may be sourced from mains water or spring water.
The water treatment step typically includes sterilisation and/or filtration steps. The water is also typically deaerated. Deaeration facilitates in reducing the amount of air within the water, which helps to prepare a more uniform mixture with concentrates (syrups).
The treated water is then mixed at a predefined ratio with a prepared syrup. The mixing can take place as the fluid moves through pipework, in a mixing tank, or through a 'Paramix' system.
The water/syrup mixture is then blended with CO2 at a predefined ratio to produce a carbonated beverage. The specific mechanism for the CO2 blending step may differ depending on the specific equipment of the manufacturing site.
The cooling of the beverage can take place at different stages of the product line. For example, the treated water may be cooled before mixing with the syrup, or the water/syrup mixture may be cooled before blending with CO2. Cooling the beverage helps by increasing CO2 absorption (reducing the amount of CO2 required to carbonate the beverage) and reducing foaming.
The carbonated beverage fluid is then provided to a filler bowl for filling in a product container (e.g., a PET bottle, glass bottle or an aluminium can) via filling heads, after which the container is sealed.”
[39] Aloisio at [8]
[40] Aloisio at [9]
[41] Aloisio at [13]
[42] Aloisio at [24]-[29]
He adds that “One way to control foaming is to chill the beverage product before filling to increase the solubility of CO2 in the fluid. Conversely, higher temperatures when filling carbonated beverages can lead to more foaming. This is a key reason why carbonated beverages, e.g., a soft drink or soda, are filled into the container using a cold-fill system.”[43]
[43] Aloisio at [31]
On review of this information, it is clear to me that the applicant’s evidence does not seek to refute that of the opponent in the characterisation of the common general knowledge relating to the general componentry and process flow of a carbonated beverage mixing system. I accept that it is common general knowledge that the following ordered process may be followed:
· Treated water may be pumped into a water tank in which it may be vacuum de-aerated
· Treated water may then be mixed with a concentrate to create a fluid mixture
· The fluid mixture will be injected with carbon dioxide gas to carbonate
· Carbonated fluid product may be stored in a carbonised tank
· The carbonised fluid tank will be connected to a filling machine that will fill bottles/containers.
Noting the above, what is significant for the present dispute is an understanding of the common general knowledge as to the temperatures at which the process is to operate.
Temperature of operation of soft drink mixing systems
Mr Kalinowski
The opponent looks to point out that there is an existing understanding of the role that temperature and pressure play in the process. They submit that for a given volume of liquid, the amount of carbon dioxide which a solution can maintain depends on the temperature and the pressure. Ultimately, they point to a textbook reference[44] identified in Kalinowski #1[45] as follows:
In the carbonation process, CO2 is injected into the beverage in an enclosed carbonation tank pressurised with the gas. Equilibrium between the gases in the liquid and the corresponding pressure in the tank will exist after a certain time. CO2 will be absorbed into the beverage and will remain in a dissolved state while the beverage is maintained under pressure. The higher the CO2 content required, the higher the saturation pressure required at a given temperature. Conversely, the lower the temperature for a given content, the lower the saturation pressure required.
[44] Carbonated Soft Drinks – Formulation and Manufacture: edited by P. Steen and Philip R. Ashurst, 2006.
[45] Kalinowski #1 at [52]-[54]
Clearly, temperature and pressure are well known as important parameters to carbonated drink manufacture. With this in mind, the opponent then discusses their expert’s understanding of the production of carbonated beverages at ambient temperature prior to November 2016. In this regard, Mr Kalinowski has observed that:
· Carbonated beverage production uses cold-fill systems because lower temperatures increase the saturation of CO2 in the beverage product. However, they also submit that beverage makers also commonly used ambient-fill systems, all around the world, and had done so for decades.[46] In his evidence in reply, Mr Kalinowski outlines bottlers have typically ran carbonating and filling processing at ambient temperature (without active cooling) because incorporating cooling systems add cost and complexity.[47] He adds that it became more common in time (by the 1970s and 1980s) to cool beverages during production as it became more operatively sensible to invest in cooling functions.[48]
· Ultimately the opinion of Mr Kalinowski is for many decades before the priority date it was commonly known to both cool and to not cool carbonated beverages prior to filling.[49]
[46] Kalinowski #2 at [11]
[47] Kalinowski #2 at [12]
[48] Kalinowski #2 at [13]
[49] Kalinowski #2 at [41]
Mr Kalinowski provides further supporting information in discussing that the decision as to the temperature to use in a process depend on the geographical location, the systems available and economic assessment:[50]
“Before the priority date in November 2016, whether or not a cooling system was incorporated in a bottler’s plant was strongly influenced by the cost of energy and the bottler’s economic approach to running their plant. Taking into account all factors required to run a carbonated beverage plant, including age, type and size of: tanks, lines, pumps, fillers and any heat exchanges, the cost of energy required to run the plant was, and still is, a major consideration. The cost of CO2 was also an important factor… All these factors needed to be weighed up against each other, which resulted in some manufacturers choosing to cool the fluid in their carbonated beverage production, and other manufacturers choosing to leave their fluid un-cooled.”
[50] Kalinowski #2 at [17]
He also notes in his first declaration with reference to beverage production plants across the world that operate in different temperature environments[51]:
“The decision as to the temperature to use in the process depends on the geographical location, the systems available and an economic assessment of competing costs.
Mixing systems (whether tank-based or inline) and filling machines to make carbonated drink and fill containers were typically performed at ambient temperature in Europe, Australia and other countries with similar temperatures from well before the Priority Date. For example, in Germany all Coca-Cola bottlers fill their bottles at ambient temperature for many years.”
[51] Kalinowski #1 at [62]-[63]
It is clear to me that a relevant assertion pressed by the opponent is that it is common general knowledge that a complete mixing and filling process may be conducted involving ambient temperatures (i.e. without heating or cooling in the system). I will now turn to the evidence of the applicant, being the declaration of Mr Aloisio, to assess where the balance falls.
Mr Aloisio
I already noted earlier that Mr Aloisio’s evidence points to the proposition that there are various fill systems that operate at various temperatures and that cold-fill systems are generally used for carbonated beverages. He notes that prior to the priority date, cold-fill systems were used because lower temperatures increase the saturation of carbon dioxide in the carbonated beverage product.[52] He also notes that lower temperatures can help reduce the risk of foaming whereby foaming can cause inaccurate filling, loss of product, and introduction of air leading to an inconsistent quality of product.[53] In this regard there is a strong focus of Mr Aloisio’s evidence as to his observation of the widespread use cold-filling (temperature 4-15˚C) for carbonated beverages, however I do note this is only a reference to one particular stage of production of the beverage. Regarding other stages of the production process Mr Aloisio notes[54]:
“The cooling of the beverage can take place at different stages of the product line. For example, the treated water may be cooled before mixing with the syrup, or the water/syrup mixture may be cooled before blending with CO2. Cooling the beverage helps by increasing CO2 absorption (reducing the amount of CO2 required to carbonate the beverage) and reducing foaming.”
[52] Aloisio at [15]
[53] Aloisio at [15]
[54] Aloisio at [28]
Mr Aloisio notes that typically, carbonated beverages are produced in an environment which itself is temperature and humidity controlled using HVAC (Heating, Ventilating and Air Conditioning) systems[55]. He also discusses the general nature of such systems in potentially achieving temperature controls[56]:
“The entire product line between water treatment and filling is typically a closed system to prevent foreign matter from contaminating the beverage. The design of this closed system has an added benefit of limiting the influence of external temperature fluctuations on the product stream. This means that the treated water or beverage mixture can be cooled to the selected filling temperature by means of a single heat exchange process upstream of the filling step.
It is important that the temperature of the beverage is controlled within the product specification ranges throughout the mixing, carbonation and filling processes to ensure that the beverage product meets product specifications for flavour and carbonation content. Temperature instability while manufacturing beverage can cause poor quality and uncontrolled CO2 content which is unfavourable to maintaining flavour profiles.”
[55] Aloisio at [36]
[56] Aloisio at [37]-[38]
He adds that a carbonated beverage product line can be chilled at any point prior to filling to enable the cold filling of carbonated beverage.[57] In this regard, I have no doubt that the choice of parameters including temperature and pressure can lead to differing quality of end product. However, at this point I do note that there is no limitation in relation to product quality in the claimed invention.
[57] Aloisio at [42]
Summing up the evidence above, Mr Aloisio makes clear that cooling at any stage of the mixing and filling process is common, and that ultimately cooling prior to filling in the range 4-15˚C is a common step for filling bottles with carbonated beverage. He suggests that he is not aware of systems that do not use cooling. This position must be balanced against that of Mr Kalinowski.
Consideration
I will focus on the key contentions raised by the applicant in resolving the nature of the common general knowledge at the priority date.
Firstly, the applicant suggest that Mr Kalinowski’s description of the steps involved in creating a carbonated drink (which I generally summarise above at [37]) “omits the ability to control temperature during the preparation process, and that carbonated beverages or other temperature-sensitive beverages require some cooling, or active temperature control before filling to maintain product quality. This temperature control may occur before or after carbonation depending on product specification”.
I do not see issue with the applicant’s submission. I accept that it is commonly true that temperature control can occur at the various stages in the process and that quality is dependent upon temperature. This itself does not mean that it was not also common knowledge that carbonation processes could be or were commonly known to be performed at ambient temperatures. Both things seem to be possible at the same time. As put in the evidence of Mr Kalinowski, there are economic considerations as to the energy you will used in a process. I can see logically if the ambient temperatures exist in a range where one can produce carbonated beverages without having to control temperature, then one has a choice as to whether or not to cool at any stage of the process. It is a clear and unambiguous statement of the evidence of Mr Kalinowski that “Mixing systems (whether tank-based or inline) and filling machines to make carbonated drink and fill containers were typically performed at ambient temperature in Europe, Australia and other countries with similar temperatures from well before the Priority Date.”
A second relevant submission of the applicant is in relation to the statement above from Mr Kalinowski. The applicant argues that:
“It is not clear how Mr Kalinowski can make sweeping statements in relation to Australia or other countries (since his experience in Australia seems to be limited to the commissioning of a single pre-mixer for Schweppes in 1999 [Kalinowski #1 at [8]-[10]), which he does not say bottled carbonated beverages at ambient temperature, and his experience elsewhere seems to be limited to plants in Tanzania which used a cooler [Kalinowski #1 at [8] and [10]] and plants in the United States, which also used a cooler [Kalinowski #1 at [12] and [73]]. Mr Kalinowski does not detail the specific ambient temperature values he is referring to. Mr Aloisio explains that at some stages, ambient temperatures may coincide with the temperature thresholds set for manufacturing at carbonated beverage… but that these temperature thresholds are managed with heat exchangers or cooling units because of environmental temperature fluctuations, which mean the set filling temperature would be unlikely to coincide with the ambient temperatures year round [Aloisio at [126]].”
Mr Aloisio also points out that “he has not seen a carbonated beverage line having no ability to control temperature”[58].
[58] Aloisio at [143]
Importantly the first submission seems to point to the acknowledgement that it would be known that it would be possible to run a complete mixing and filling process at ambient temperatures at certain times of the year. I do not see any material reason to doubt the statement made by Mr Kalinowski and there is nothing from the applicant that genuinely brings it into any specific question. While Mr Aloisio may have not seen a system with no ability to control temperature, this does not mean ambient temperature operation is not a well-known possibility. Mr Kalinowski appears to have broad experience and knowledge across various locations in which he asserts to have commonly seen ambient temperature operation as a possibility. Mr Aloisio appears to be speaking to his relevant upstream process experience, in particular as an employee of Coca-Cola, where he has not seen such operation. However, he appears to implicitly acknowledge that appropriate ambient temperature ranges are reasonably possible as being at certain times of the year, in certain locations, naturally seasonally dependent.
Thirdly, the applicant points to Mr Kalinowski’s statement that “operators would typically want to fill at ambient temperatures in order to save money as it involves less energy”[59] suggesting that Mr Aloisio disagrees with this broad statement because it oversimplifies beverage manufacturing considerations. Mr Aloisio says that this “overlooks the importance of manufacturing a carbonated beverage of consistent quality in accordance with the product specification. In my experience as of November 2016, actively controlling the temperature within a range was an important factor in delivering a carbonated beverage of consistent quality”.[60]
[59] Kalinowski #1 at [61]
[60] Aloisio at [123]
Again, I consider both statements above can be true. There can be a typical desire and knowledge of the ability to perform processes at ambient temperature for cost saving, while at the same time it being generally the case that because of temperature fluctuations in an industrial environment, temperature control may be provided for and used in practice in most circumstances.
Ultimately, much of the applicant’s case in relation to the relevant aspect of common general knowledge is focussed upon the notion that temperature control is required to ensure a beverage of a consistent quality in proximity to the filling stage. I accept this evidence that an industrial process for creating a carbonated beverage will generally have available, and often use, temperature control functions to address issues of temperature change in a location and to achieve optimal production and filling along with optimal product quality. However, this does not detract from the evidence of the opponent which I consider also supports the general idea that it is at least well known that one can perform complete mixing and filing operations at a temperature that may be considered ambient (e.g. without heating or cooling). Based on a fundamental knowledge that heating and cooling in a beverage production system costs money, I also accept that there would be a desire as a matter of common general knowledge, to reduce this cost and a way to do it is to not heat or cool and to have a process run at the temperature of the surrounding environment. It is clearly common general knowledge that there are trade-offs in eliminating temperature control that relate to a sub-optimal production process and product quality.
As such, on balance I conclude that it is common general knowledge that a complete mixing and filling system can operate at an ambient temperature, being one in which there is no heating or cooling used in the system.
In the above analysis I have not sought to provide a complete assessment of the common general knowledge, but sufficient for the purposes of initial consideration of the matters.
CLAIM CONSTRUCTION AND CLARITY
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries[61], the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[62]:
"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."
[61] [1988] FCA 399
[62] [2009] FCAFC 70
I note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim"[63]. Additionally, Flexible Steel Lacing Company v Beltreco Ltd[64] notes:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
[63] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59
[64] [2000] FCA 890 and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121
“Maintained at ambient temperature”
The opponent does not take any issue with this feature however I seek to determine its appropriate construction to better guide the reasoning for this decision. I turn to the Macquarie Dictionary[65].
[65] The Macquarie Dictionary, >
‘Maintain’ is defined as follows:
1. to keep in existence or continuance; preserve; retain: to maintain good relations with New Zealand.
2. to keep in due condition, operation, or force; keep unimpaired: to maintain order; maintain public highways.
3. to keep in a specified state, position, etc.These definitions require a particular state to be “kept” for a time, but there is nothing in the claim to suggest that a particular state is kept for the entirety of the defined method of filling a container with carbonated fluid product. Suffice to say, a state of the treated water, fluid mixture and carbonated fluid must be kept for a period of time. The state relevant to the present matter is “ambient temperature”.
‘Ambient temperature’ as I noted earlier in the decision is a phrase that is easily understood on any internet search, it is the average air temperature of an object’s environment. Ambient is relevantly defined as:
3. of or relating to the surrounding air, especially with regard to temperature, pressure, humidity, etc.
Claim 1 - in light of claim 2
Claim 1 is provided above. Claim 2 reads as follows:
The method of claim 1, wherein the fluid product is not cooled before entering the filling machine.
The opponent submits:
“Claim 2 defines a method dependent on claim 1 where ‘the fluid product is not cooled before entering the filling machine’. This suggests that claim 1 covers embodiments where fluid product is cooled before entering the filling machine which is inconsistent with claim 1 requiring the carbonated fluid product to be ‘maintained at an ambient temperature’.”
The applicant responds by noting:
“For example, if the water was initially heated above ambient temperature for the purpose of being treated, it might need to be cooled. In that scenario, the treated water would be maintained at ambient temperature, but there would nonetheless be cooling. Claim 1 would be infringed, but claim 2 would not. Claim 2 is a narrower claim, and requires that the fluid is not cooled.”
I think both the applicant and the opponent are off the mark here.
Firstly, claim 1 is directed towards a method of producing a container filled with a carbonated fluid product wherein treated water, fluid mixture, and carbonated fluid product are maintained at an ambient temperature. This is not a definitive statement of whether or not cooling is involved in any way, it is the claiming of a feature of the measurable temperature of three aspects of the process at a particular stage of the process. Treated water, fluid mixture and carbonated fluid product are identified multiple times in the claim before it is stated that ‘the treated water, fluid mixture and carbonated fluid product are maintained at an ambient temperature’. I see nothing in the claim that prevents any heating or cooling being present within the scope of claim 1.
The above is somewhat contrary to the opinion applied by the parties to the claimed invention based on the evidence of both Mr Kalinowski and Mr Aloisio where it is suggested that the use of ambient temperature means that there is no heating or cooling unit present, and that ambient conditions are maintained by having no heating or cooling unit.[66] In a sense I simply see the experts understanding as not approaching construction of the claims in a manner which seeks to understand the full scope of a claim. In this regard, I note that claim construction is ultimately for me as decision maker, and not for the experts.
[66] Kalinowski #1 at [79] and
With this in mind claim 2 simply says that ‘the fluid product’ is not cooled before entering the filling machine. It is within the scope of claim 1 that fluid product at a particular point in the machinery is cooled before entering the filling machine.
Claims 1 and 2 are clear in this regard.
The opponent also submits:
“The specification and claims are also unclear as to what the (sic) pressure carbon dioxide is injected into the fluid mixture. Paragraph [0022] and claims 4 and 10 describes a pressure range at the carbon dioxide dosing apparatus of approximately 3.2 bar to approximately 4.2 bar. However, Fig. 1 shows the pressure at the carbon dioxide dosing apparatus 142 as 4.0 bar/3.10 bar. This could mean the CO2-gas pressure in front of a injectors is 4.0 bar and after the injectors it drops because of the suction of the injectors to a pressure of 3.10 bar. However, the carbon dioxide pressures in Fig. 1 and paragraph [0022] are inconsistent with other pressures shown in Fig. 1. For example, to reach a buffer tank pressure of 5.5 bar and filling machine pressure of 5.0 bar, the carbon dioxide injecting pressure of 3.2 to 4.2 bar is too low. This is because there will be a 1.5- 3.0 bar drop across the carbon dioxide dosing apparatus 142 that must be accounted for before the dosing apparatus 142, which an injecting pressure of 3.2 to 4.2 bar does not achieve.”
The applicant submits that the claims do not:
“…need to specify the pressure at which carbon dioxide is injected into the fluid mixture (which will depend in any case on the CO2 concentration required, but the determination of which is well within the capacity of the skilled addressee).”
I simply see no way this is a possible clarity issue. The claims say that carbon dioxide is injected into the fluid mixture. That is a broad feature, but I see no reason why it is unclear.
SUPPORT
Having found the claims clear, I now turn to further issues raised by the opponent under section 40. Section 40(3) of the Act requires that the claim(s) must be supported by matter disclosed in the specification.
Burley J explored the requirement of support in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[67]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...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.
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 breadth of the monopoly claimed”.
[67] [2020] FCA 1477 (Merck) at [546]-[547]
In this context the body of the specification must disclose the claimed invention in a way which will enable it to be performed by a person skilled in the art without undue burden, or the need for further invention, and their must also be a form of literal support for the claimed invention as articulated in the Calix[68]matter by Nicholas J as follows:
“Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed.”
[68] Calix Limited v Grenof Pty Ltd [2023] FCA 378 at [128]
The opponent argues that the opposed application does not properly describe the technical contribution to the art and adds that, to the extent that the contribution is asserted to be the production of carbonated drinks at ambient temperature, this is inconsistent with the opposed application as the body of the specification describes one aspect of the alleged invention as requiring cooling. Much of their submissions focus on the fact that figure 1 and associated description shows operation at selected temperatures and pressures. They suggest that the application does not provide any worked examples or empirical evidence to show how the process is performed at ambient temperature.
In relation to the identification of a technical contribution it seems to me that my analysis of the matter to date makes it clear that the technical contribution of claim 1 is the production of carbonated drinks in a mixing and filling process whereby treated water, fluid mixture and carbonated fluid product are maintained at an ambient temperature. Whether this is enabled by the body of the specification across its full scope without the need for undue burden or further invention is essentially a question for the evidence. While it is the case that the patent application may not describe specifically how to do this and this seems to be the extent of the statements in the evidence of Kalinowski[69], nowhere in his evidence does he suggest that there would be an undue burden or invention in doing so. On the contrary, Mr Kalinowski’s evidence generally suggests it would be obvious to do so, and it would involve no invention. In this regard, the support objection fails.
[69] Kalinowski #1 at [106] and [108], Kalinowski #2 at [21]-[24]
The second element to the opponent’s case regarding support focuses on inconsistency (or ‘material difference’ to use the words in Calix) between the description and claims, with a focus on the specific discussion of figure 1. While much of the discussion in relation to this figure does refer to operation involving cooling, the specification contains references that refer to the possibility of operating without cooling. For example, paragraph [0009] states with my emphasis:
In an aspect of the invention, method of producing a container filled with a carbonated fluid product can include retaining treated water in a water tank, deaerating the water tank using a vacuum pump, mixing the treated water with a concentrate to create a fluid mixture, injecting the fluid mixture with carbon dioxide to create the carbonated fluid product, storing the carbonated fluid product in a carbonized tank that is fluidly connected to a filling machine, and operating the filling machine to fill the container with the carbonated fluid product. The treated water, fluid mixture, and carbonated fluid product can be maintained at an ambient temperature.
Paragraph [0020] states with my emphasis
A treated water pump 104 can pump treated water 102 from within treated water tank 100 to the next stage of mixing system 10. In one aspect, treated water pump 102 can pump treated water 102 through a cooling system 160 to reduce the temperature of treated water 102. In one aspect, cooling system 160 can reduce the temperature of treated water 102 from approximately 17 degrees Celsius before treated water 102 enters cooling system 160 to approximately 7.6 degrees Celsius after treated water 102 exits cooling system 160. In another aspect, treated water 102 can be maintained at ambient temperature in mixing system 10.
Paragraph [0024] states with my emphasis:
Fluid 152 can exit carbonized tank 150 through product supply conduit 200 and can enter product cooling conduit 202 to cool fluid 152 by passing fluid 152 through cooing system 160. In one aspect, fluid 152 can enter cooing system 160 at approximately 11.8 degrees Celsius and can exit cooling system 160 at approximately 6.8 degrees Celsius. In another aspect, carbonized tank 150 can be fluidly connected to filling machine 300 such that fluid 152 can be maintained at ambient temperature in carbonized tank 150 and in filling machine 300.
Paragraph [0042] states with my emphasis:
The general filling operation of the filling machine 300 is now discussed. Fluid 152 can have a laminar flow through filling machine 300. In another aspect, fluid 152 can be filled into containers 400 from filling machine 300 at ambient temperature, e.g., approximately 15 degrees Celsius. Ambient filling requires less cooling and can result in significant operating cost savings.
The above excerpts indicate that the use of the cooling system in figure 1 is optional in the description of the invention. As such, I do not see a material difference between the claims and the specification.
A further argument of the opponent refers to paragraph [0007] of the specification (see above at paragraph [15]) suggesting that essential features are missing from claim 1. Adding my analysis in relation to the ground of support above, I don’t see the specification as suggesting that particular mixer and blower parameters are essential, as the invention merely seeks to minimise energy use in operation. The opponent also argues for a lack of support in relation to claims 1 and 2 on the same basis as that discussed above under the ground of clarity. I consider my analysis under the ground of clarity supports the position that no inconsistency exists between claims 1 and 2 and the body of the specification.
Finally, the opponent raises an argument as to claim 10 lacking in support (see claim 10 above at paragraph [12]). They assert:
“The pressure ranges provided in claim 10 are disclosed in the preferred embodiment in the context of using cooling devices not in the context of performing the process at ambient temperature. For example, the pressure range of 3.2 to 4.2 bar is described in the context of the embodiment shown in Fig. 1 where there are two cooling stages, i.e. not for ambient temperature. Since an increase in beverage temperature requires an increased carbonation pressure, the claimed pressure range in claim 10 for fluid mixture at ambient temperature is not supported by the description.”
As above, there is no evidence of any undue burden or the need for invention. I do not consider there to be any material difference between the invention claimed and that disclosed in relation to claim 10. In this regard, the disclosures of the specification regarding operating at ambient temperature immediately follow the disclosure of the relevant pressure ranges noting that “in another aspect” temperatures may be maintained at ambient temperatures. I consider this disclosure of ambient temperature operation at said pressure ranges. While those pressure ranges may not be optimal, there is nothing to suggest they are not enabled.
The ground of support fails.
CLEAR ENOUGH AND COMPLETE ENOUGH DISCLOSURE
Section 40(2)(a) of the Act requires that the specification mustdisclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. Such enablement must be across the whole width of the claims, without undue burden or the need for further invention.
The provisions of s40(2)(a) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company[70], who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a specification provides an enabling disclosure as required by section 40(2):
a) construe the claims to determine the scope of invention as claimed,
b) construe the description to determine what it discloses to the person skilled in the art, and
c) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
[70] [2015] APO 72
A further decision, Evolva SA[71], was issued by a delegate of the Commissioner where further review of UK and EPO decisions was performed, the delegate expanding the consideration of the third question in that it was considered necessary to determine whether it was plausible that the invention can be worked across the full scope of the claim. These principles have been confirmed by the Federal Court[72].
[71] [2017] APO 57
[72] Cytec Industries Inc. v Nalco Company [2021] FCA 970
Jusand[73] is also useful judgement where the Full Court applied principles entirely consistent with those above and considered the concept of a relevant range for the purpose of assessing enablement across the scope of the claims. There it was noted that whether a range is a relevant range is to be:
“…judged against the invention as claimed and, where appropriate, against its essence or core where that is understood to be related to the technical contribution the specification makes to the art and/or its inventive concept.”
[73] Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd (Jusand) [2023] FCAFC 178 at [191], [217]
The opponent puts forward similar arguments to those above under the ground of support. The applicant’s response is to the extent of the following:
“…the Applicant’s case is not that it was not known how to produce and fill carbonated beverages at ambient temperature. It is that was not known to produce and fill carbonated beverages at ambient temperature. In light of that significant distinction, it is apparent that the Opponent’s case on an absence of disclosure fails at the threshold.”
I generally agree with this for the reasons already provided above. Mr Kalinowski does not provide evidence as to an inability to work the invention of claims 1 or 10 across their full scope.
A more specific submission made by the opponent is in respect of laminar flow, this being the subject of claim 8 as follows:
The method of any one of claims 1 to 7, wherein the treated water, fluid mixture, and carbonated fluid product have a laminar flow.
They argue that the specification does not describe how to create laminar flow. Referring to the evidence of Mr Kalinowski and his statement that “I do not understand how you could get laminar flow in the mixing system and or the filler” they argue that “Laminar flow could only be achieved with lines of very big diameter and by eliminating all centrifugal pumps and control valves…”[74]. They also point out that while laminar flow may be possible at low velocities, Mr Kalinowski is unaware of any system that works with laminar flow in the mixer or filler system, however I note that the claim is not limited to such laminar flow that may not be possible. In other words, I do not see that this aspect of laminar flow represents a relevant range.
[74] Kalinowski #1 at [111]
The above falls short of the opponent demonstrating a lack of clear and complete disclosure. The feature is merely that there is a laminar flow of those fluid elements at some stage of the process. The opponent’s expert understands how one might generally create laminar flow and does not demonstrate that there is something within the scope of the claims that he could not do without an undue burden or further invention.
The ground of clear and complete enough disclosure fails.
UTILITY
100. Principles relating to the ground of utility were helpfully summarised recently by Burley J in Merck, at [432], [433], [436] and [449] relevantly as follows:
“Section 18(1)(c) of the Patents Act provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is useful. Until recently, the requirement that an invention so far as claimed be “useful” within s 18(1)(c) was defined solely by reference to the common law development of that concept. The words in Lane Fox v Kensington & Knightsbridge Electric Lighting Co [1892] 3 Ch 424 at 431 … of Lindley LJ (with whom Lopes LJ agreed) set the scene (emphasis added):
The utility of the alleged invention depends not on whether by following the directions in the complete specification all the results now necessary for commercial success can be obtained, but on whether by such directions the effects which the patentee professed to produce could be produced, and on the practical utility of those effects.
What the patentee “professed to produce” is to be ascertained by having regard to what is now routinely referred to as the “promise of the invention” being the promise that the specification is said to make of the invention claimed: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 84 and 96–7; 11 IPR 289 at 292 at 305–6 (Gummow J); Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 394 (per Lockhart J). This is assessed as a matter of construction of the specification: see generally ESCO Corporation v Ronneby Road Pty Ltd (2018) 358 ALR 431…[2018] FCAFC 46 at [182]–[239]…
In each case it is necessary to consider the nature of the promise of the invention by reference to the specification and also whether that promise is met by that which is the subject of the claims. Often that enquiry gives rise to a question of claim construction: if a broad claim includes something that does not meet the promise of the invention, will it be invalid for want of utility? …
There is no dispute that a promise may be implied from language used in the specification.”
101. The opponent argues that claims lack utility as follows:
“As noted above in relation to s 40, the description of the preferred embodiments identifies various control parameters such as pressures in the context of cooling the process. The process would not work if all cooling in the system was simply bypassed and nothing else was adjusted. The filling pressure at the filler would need to be very high, well above the saturation pressure of the final carbonated beverage at 6.8°C and at 17°C.
Further, if the cooling was simply by-passed, the final product would not meet product specification, foaming would occur and the bottler would lose control of the entire process. In practice, adjustments would need to be made to the process to compensate for removing the entire cooling system or even part of it. If the cooling system was by-passed, the fluid temperature would rise and the fluid pressure would need to be increased to keep a pressure above the saturation pressure in order to maintain the CO₂ content. A larger filling machine may be required and/or the production speed would need to slow down to increase the pressure relief time period (snifting time). However, the Opposed Application does not explain any such compensation resulting from by-passing the cooling system 160.”
102. The applicant submits that these submissions are “premised on the basis that the skilled addressee would implement the claim in a manner which would not work, despite the fact that it would be perverse to do so”.
103. I tend to agree with the applicant but importantly, whether the invention will “work” is a question in the context of the case law answered by understanding if the invention does what it intended to do by the patentee. With this in mind, I see nothing in the specification to suggest that there is a promise of product quality and the avoidance of foaming, or for that matter, avoidance any other challenges that may be encountered in the process. In a manner that in this case is analogous to the identification of the problem addressed in the specification for the purposes of inventive step, it appears to me that the described and claimed invention is intended to be a method of generating carbonated soft drink and filling bottles which is capable of reducing operating costs. All of the claims achieve this promise.
104. The ground of utility fails.
NOVELTY
105. For the purposes of subsection 7(1) of the Patents Act (1990), an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information. Subsection 7(1) also states that two or more documents can be read as a single piece of prior art information if the relationship between those documents is such that a person skilled in the art would treat them as a single source. Furthermore, prior art information includes a “prior use” constituting information made publicly available before the priority date through the doing of an act.
106. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd[75]:
[75] [1977] HCA 19 at [20]
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
107. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed[76]. To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented”[77]:
[76] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]
[77] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]
“A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.
108. The opponent presses three documents for the purpose of the ground of novelty along with an allegation of prior use.
109. Where there is an allegation of prior use focus must be placed upon the public availability of disclosure. Notably, the Full Court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd[78] states that:
[78] [2008] FCAFC 139 at [124]
“In respect of the issue whether information was ‘publicly available’ before the priority
date, the following principles emerge from the cases:· The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd[1993] FSR 197 at 226 per Aldous J cited in Jupiters at [141]). (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ.)
· It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 at 111 per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality (Fomento Industrial S.A. v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99–100; Re Bristol-Myers Co’s Application [1969] RPC 146 at 155 per Parker LJ).
· The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity (Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 (Merck) at [98]–[103]).
· In order to be ‘available’, information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention (cf RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 593–594).
· In order to be ‘available’, information said to destroy novelty must ‘enable’ the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster at 581–582).”
110. As pointed out by the applicant in their submissions, I accept that the mere provision of access to a product does not necessarily make the integers of the invention publicly available. One must demonstrate that the relevant product or process was publicly available and demonstrate what information was conveyed by that prior use to a notional skilled addressee.[79]
[79] Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31 at [11]-[12], [48]-[49]
111. I will deal with each of the allegations of a lack of novelty in turn.
D1: Fullmix” product brochure, obtained at Interbrau trade fair in Munich, Germany on 25 September 1993.
112. There is no dispute that document D1 is a relevant piece of prior art for the purposes of considering disclosure. The three figures below are from this brochure and depict a beverage preparation system in three connecting stages.
113. The first figure depicts water being held in a tank and a vacuum deaeration pump for degassing the water. The second figure shows the water travelling to a precision blending step, where syrup is injected into the water before passing to a still beverage buffer tank. After the still beverage buffer tank, the fluid mixture is injected with carbon dioxide to create a carbonated fluid product which flows to a carbonised storage tank. From the storage tank, the carbonated beverage is sent to a filler for bottling.
114. The opponent points out that there is no explicit disclosure that the water is treated, and argues that it would be understood by the person skilled in the art that the water will be treated. They note that while not depicted, the person skilled in the art would understand that the filling machine is directly attached to the mixing system indicated by the line “finished beverage to filler”. The also argue that:
“There is no cooling (or heating) device in the diagrams or description of D1. Additionally, step 4) on page 4 states that “The deaeration process is performed at ambient temperatures and therefore requires no plates or other surface elements”. The schematic diagrams on pages 4, 5 and 6 obviously follow on one after the other to show the entire mixing and carbonating process. Since the deaerated water is at ambient temperature and there is no indication of any cooling, the PSA would understand the entire process to the filler line is performed under ambient temperature. As discussed below, it would be very unlikely that the beverage is cooled at the filler. It would not make sense to cool at the final step at the filler as it would be much easier and more economical to cool earlier in the process. Accordingly, in the absence of any explicit teaching of such an unusual cooling step, the PSA would understand that D1 taught the production and filling of carbonated beverages at ambient temperature.”
115. The applicant points out that:
·“D1 does not provide any details on the subsequent filling step or other downstream processing once the mixture has been carbonated”.
·“The deaeration process is said (at item 4) to be performed at ‘ambient temperatures’ – that is, at the in-situ temperature of the local environment rather than using water that has been purposefully chilled prior to or during the deaeration process”.
·“Overall, D1 does not describe the entire mixing and filling process can be carried out at ambient temperature. The Opponent’s case on D1 [assumes] that the person skilled in the art will ‘read in’ certain features which are not expressly disclosed.”
116. Regarding the first feature in contention, I consider that there is no disclosure that the water present at the start of the process is treated. It is plainly clear that the opponent’s argument relies on the addition of knowledge of the person skill in the art to the disclosure relevant to the first figure.
117. The next feature in contention is whether the document discloses that the carbonised tank is fluidly connected to a filling machine. As noted above, the opponent suggests that while not depicted, this is implied in the third figure wherein it is noted that finished beverage travels by a pipe to a filler. I am comfortable that on balance a person skilled in the art would read this as there being a fluidly connected flow from the carbonised tank to a filling machine. I don’t see any other way to reasonably interpret the schematic drawing which shows an arrow of flow of carbonated fluid product to a filler. If this wasn’t intended to be a direct connection, then I would expect the arrow to direct the fluid to something other than a filler.
118. Most importantly to the broader issues of this dispute is the nature of the disclosure of D1 in respect of the operating temperatures of the various stages being the initial water supply, fluid mixture, and carbonated fluid product. While it is clear that the water present at deaeration is at an ambient temperature there is no explicit disclosure of temperatures of fluid mixture and carbonated fluid product. The opponent’s approach to the nature of this disclosure is to suggest that given there is no indication of some kind of temperature control the person skilled in the art would understand the entire process is performed under ambient temperatures.
119. I cannot agree with this argument. The figures are plainly a schematic representation with supplementing text that only teaches a temperature at one particular stage of the process. Thus, on my reading, this leaves open the possibility of any sensible temperatures being present at other stages of the process, being the temperature of the mixture and the temperature of the carbonated fluid product. The absence of information on temperature with no heating or cooling devices present in the figure does not amount to a clear and unmistakable suggestion that all stages involve operation at a particular temperature, this temperature being ambient. The document leaves the temperatures across the process ambiguous. As put by the applicant, there is a necessity to “read in” certain features. I consider features related to fluid mixture and carbonated fluid product temperature, along with the claimed feature that the water is treated, are not clearly and unmistakably disclosed in D1.
120. It follows that independent claims 1 and 10 (and thus all the claims) are novel in view of D1.
D2: KHS product brochure, published in 1997
121. Document D2 discloses a mixing system known as the “Paramix system Innopro CM”. A translation of this document was provided under direction of a delegate during the opposition process. The opponent suggests with reference to the figure below that the system operates to:
·“Degas (deaerates) water in Tank A using vacuum pump E;
·dose syrup from Syrup tank B using Volume ratio control F;
·mix the syrup with the deaerated water at Mixing pump I;
·carbonate the water/syrup mixture by mixing carbon dioxide 5 just before carbonating pump G;
·pumping the carbonated fluid at carbonating pump G into Buffer tank C where the carbonated beverage is stored; and
·pumping the carbonated beverage from Buffer tank C using Booster pump H to transfer (at 4) the beverage to a filler.”
122. The opponent also notes that D2 does not specifically show that carbon dioxide is injected into the water mixture but suggest that using nozzles was a well-known means of injected carbon dioxide and still is. They note that the arrow at 4 “would be going directly to the filling machine”. They refer to the last paragraph of the text in the document which says that the system “produces highly carbonated beverages without cooling at temperatures up to 20˚, which can be filled warm into bottles or cans”. In response, the applicant notes that the document does not describe the entire mixing and filling process, with reference being made to the last paragraph noted above.
123. What is clearly disclosed in the figure is a method of producing filled containers of carbonated fluid which involves:
· Retaining water in a water tank A
· Deaerating the water with a vacuum pump E
· Mixing the water with concentrate to create a fluid mixture at I
· Adding carbon dioxide to the fluid mixture to carbonate via 5
· Storing carbonated fluid in a tank C before being passed via fluid connection to a filler at 4
· Filling at a filling machine (“Getränk zum Füller” translating to “Beverage to Filler”)
124. I see no clear an unmistakable direction to injection of carbon dioxide (even though it would seem sensible to accept this as being a well-known feature). I also see no clear and unmistakable directed to treating the water. Clearly there is only relevant discussion of temperature control in respect of the statement in the document that the system produces highly carbonated beverages without cooling at temperatures up to 20˚, which can be filled warm into bottles or cans. I simply cannot take this to be a clear an unmistakable disclosure to there being operation such that the water, fluid mixture and carbonated fluid product are at some point maintained at an ambient temperature. There is no information in the document as to the temperature of the environment in which a process will operate and while at most there may be no cooling (although cooling may be required to keep temperatures below 20˚), that is not to say there is no warming used. Ultimately, there is no direction as to the temperature of the different stages with respect to the environment.
125. Similarly to D1 it follows that all the claims are novel in view of D2.
D6: Dissertation entitled “For the Optimization of High-Performance Filling Systems for Carbonated Beverages” by M. Rammert, published in 1993
126. Document D6 is dissertation for a Doctor of Engineering degree that was published in 1993. Again, a translation of this document was provided under direction of a delegate during the opposition process. The key figure referred to by the opponent is on page 3 of this document and is reproduced below.
127. The opponent begins by noting that D6 does not explicitly teach treated water and for reasons I have already discussed, the novelty debate could stop here. However, I will continue for completeness. Clearly disclosed in the document are:
·Retention of water in a tank (4)
·Vacuum deaeration via a vacuum pump (3)
·Mixing water with concentrate to create a fluid mixture (bringing together of water and syrup at 9)
·Injected fluid mixture with carbon dioxide (15)
·Storing carbonated fluid product in a carbonised tank (16)
·Fluidly connected a carbonised tank to filling machine to fill containers (17)
128. The opponent points out that the document discloses filling containers with a carousel filler (at section 2.3) which suggests that filling can be between 0-50˚C. They note that the document adds that at the time of its publication, cold filling was no longer common and suggest that filling at energetically favourable temperatures was preferred. The applicant’s response points out that the document does not describe the entire mixing and filling process.
129. The problem with this document and its lack of clear articulation of operating temperatures is identical to the other documents. There is simply no clear and unmistakable direction to maintenance of water, fluid mixture, or carbonated fluid product at an ambient temperature. The claims are thus novel in view of D6.
Prior Use of ‘Vilsa’ installation and process
130. The opponent asserts that a number of claims are anticipated by a prior use and disclosure of processes identified in the evidence of Mr Weippert, corroborated by the evidence of Mr Stüttgen, Mr Bäumer and Mr Wahl. These declarations outline a range of features related to the commission, manufacture, supply and installation of a system provided by the opponent in 2009/2010. In particular, with reference to the evidence of Mr Weippert[80] the opponent notes:
[80] Weippert at [4]-[6], corroborated by Stüttgen at [5]-[6]
“In 2009/2010, Krones installed and commissioned a "Contiflow mixer” (Krones machine number KB40204) and a filler "MECAFILL VKP-PET” (Krones machine number K129A55) at Vilsa’s premises.
This mixing and filling system was designed to carry out the following steps 4) to 10), which procedure was carried out, among others, during commissioning in 2010 (with Vilsa employees) and during subsequent production in 2010 and thereafter for several carbonated drink products. Steps 1) to 3) were carried out using overall system components at Vilsa production site, i.e. that were not installed by Krones.
1) Pumping water out the mineral water (ground) source;
2) Reducing the content of iron and manganese in the water by filtration;
3) Intermediate storage of the water in a tank;4) Pumping the water from the intermediate storage tank to a water deaeration tank;
5) vacuum deaerating of the water by using a vacuum pump, which is connected to the deaeration tank in which the water is maintained during deaeration;6) mixing the deaerated water with a concentrate or syrup;
7) carbonating the mixture by injection of carbon dioxide and storing the so produced carbonated soft drink in a carbonized buffer tank,
8) pumping the carbonated soft drink from the carbonized buffer tank via pump and pipelines to a filling machine (the above-mentioned "MECAFILL" filling machine),9) Filling these carbonated drinks into bottles (PET reusable bottles)
10) Closing the bottles with a cap”131. They also suggest with reference to the evidence[81] that:
[81] Weippert at [7]-[10], Stüttgen at [7]-[10]
“During the entire process, i.e. during all of these 10 steps, neither the water nor the degassed water nor the mixture nor the carbonated soft drink was actively cooled or heated. Accordingly, throughout production there was no active influence on the temperature of the water, the degassed water, the mixture of concentrate (syrup) and water or the carbonated drink. Neither the water, the degassed water, the mixture, nor the carbonated soft drink flowed through a device (e.g. a heat exchanger) that actively influenced or changed the temperature until the product was bottled and the bottle was closed. As a result, the carbonated soft drink was bottled at nearly the same temperature as the water from the ground source in step 1).
The water temperature from the mineral water source was usually in the range of 15°C +/- 2°C throughout the year. This temperature did not change significantly during all the above mentioned steps 1) to 10). Apart from minor changes, the water temperature largely corresponded to the filling temperature. During longer production stops, the temperature of the water within the plant (tanks and pipelines) could reach values of 17°C or higher due to transferred heat from the production facility to the water. To avoid unnecessary water losses, this water was used in the beginning of the next production to produce carbonated soft drinks. Consequently, the first filled containers had a slightly higher temperature compared to the containers filled during normal operation.”
132. Notwithstanding analysis of whether these features correspond to the claimed invention, a key aspect of the applicant’s response is that the opponent has not demonstrated that the working of the system installed at the plant made the features of the alleged process publicly available. They refer to evidence of Mr Aloiso who suggests that during an initial project tender process confidentiality or non-disclosure agreements can normally be in place[82]. They also refer to his evidence which says that during manufacturing[83]:
[82] Aloisio at [47]
[83] Aloisio at [48] and [49]
“…in my experience each manufacturer has strict protocols around safety and security, including information security, security gates requiring personnel sign-in, and restricted areas secured by key passes. The beverage industry is highly competitive and the syrups for carbonated beverages are typically kept confidential, along with other sensitive manufacturing details. In my experience, personnel on site, whether employees or contractors, are informed or understand that confidentiality protocols are in place.
Throughout my career, including as an employee and in various consultancy roles, my access once on-site has generally been restricted to only the facilities related to my role – that is, access to the broader manufacturing site is not provided. It is also common general practice to sign nondisclosure agreements for certain major projects, often without an end date specified in the agreement.
The equipment used in carbonated beverage lines typically look like large stainless-steel units. There are no signs identifying what each piece of equipment is doing and equipment can include outer casings with inner mechanisms that are not visible. The specific parameters being used (e.g., flow rate, temperature, pressure) are also not apparent without close inspection or disassembly. Furthermore, as there are multiple tanks, fluid lines etc., it is difficult to understand where product is flowing without detailed schematics, particularly when equipment is located over various rooms and sections in a factory.”
133. Responding to this, the opponent points to Mr Kalinowski’s evidence[84] which notes generally that bottling manufacturers will often have open days with tours and the public is often permitted to view production facilities, potentially through windows. He suggests that a skilled addressee would find it sufficient to identify the features of a production process by attending an open day.
[84] Kalinowski #2 at [19] and [20]
134. I do not consider the evidence formulated by the opponent can be considered sufficient to potentially discharge the onus required for public availability of all the claimed features. Firstly, the evidence of Mr Kalinowski referred to immediately above does nothing to support the particular circumstances of the installation in question. It is the particular installation of 2009/2010 that I must be satisfied was installed and operational in a manner that disclosed features without fetter of confidentiality to the public. Additionally, features related to qualitative aspects of the process such as whether water is treated and what temperature the stages of the process are operating at are features that without further evidence, I cannot be satisfied were “visible” in a manner that could have constituted a public disclosure merely by an act of viewing the system. This issue can even be extended to the physical construction of the system as there is nothing before me to show how the installed system was laid out and presented in the production plant. Thus, I consider that the opponent’s case in relation to disclosure by prior use cannot succeed.
135. As such, I conclude that the claimed invention is novel.
INVENTIVE STEP
136. Pursuant to subsection 7(2) of the Patents Act (1990), an invention is 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 before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
137. Subsection 7(3) provides that 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.138. A test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd[85] as follows:
[85] [1981] HCA 12 at [45]
“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.”
139. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd[86]; approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd[87] in which Graham J had posed the question:
[86] [2002] HCA 59 at [51]- [53]
[87] [1970] RPC 157 at 187
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
140. The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
The Problem
141. The specification[88] begins mentioning the three most common types of filling systems being volumetric, time-metred and weight-metred filling. It pivots at paragraph [0006] to add that cold filling operations utilise refrigeration for eliminating foaming of carbonated beverages during filing but notes that a large amount of energy is required to cool carbonated fluid during refrigeration resulting in increased operational costs. It then briefly introduces the invention at paragraph [0007] by discussing the fact that the present invention permits filing of a container with carbonated fluid at ambient temperature. As put by the opponent the problem identified by the application may be “characterised as reducing the overall energy used to produce and fill carbonated beverages to make the process more economic”.
[88] Specification at [0002]-[0005]
142. I agree with the opponent that this is the appropriate formulation of the problem. The applicant has not sought to identify the problem in their submissions. The focus of the applicant’s approach is to point out that the most important considerations for effective filling of carbonated beverages are maintaining carbon dioxide content, preventing oxygen pick-up and and controlling beverage temperature. I don’t doubt that these things are important, but these arguments go more to the questions of obviousness in light of the problem and not to identification of the problem itself.
Prior Art Base
143. The opponent argues that the claimed invention is obvious in view of common general knowledge alone, and/or obvious in view of that common general knowledge in combination with any of D1, D2 or D6.
Was the invention obvious?
Common General knowledge
144. The opponent fundamentally argues that all of the features are common knowledge, and it would be readily apparent that claim 1 merely recites a well-known process that would have been entirely routine at the priority date.
145. The applicant argues that the skilled addressee is commonly aware of temperature control (referring to opponent’s documents D3, D4, D5, D6, D7, D14, D18 and D19), and would not be led to an ambient temperature. They also point to D13 and the evidence of Bäumer which attests to products bottled at a desired temperature range.
146. I identified the common general knowledge earlier in this decision to include that:
· Treated water may be pumped into a water tank in which it may be vacuum de-aerated
· Treated water may then be mixed with a concentrate to create a fluid mixture
· The fluid mixture will be injected with carbon dioxide gas to carbonate
· Carbonated fluid product may be stored in a carbonised tank
· The carbonised fluid tank will be connected to a filling machine that will fill bottles/containers.
and that
· a complete mixing and filling system can operate at an ambient temperature, being one in which there is no heating or cooling used in the system.
147. Turning to claim 1 it is quite clear that the physical construction of a production system involving de-aerating treated water in a tank via a vacuum pump, mixing de-aerated and treated water with concentrate, injecting the mixture with carbon dioxide, storing carbonated mixture in a carbonised tank, and then sending the carbonated mixture through pipework to a filling machine to fill bottles, is common general knowledge. The applicant takes no contention with this system and process as being well-known. The only key point of contention is the temperature of operation that each stage of the process involves. The opponent argues that it is well-known to operate the whole process at ambient temperatures to address issues of energy usage, while the applicant suggests that temperature control is used, and it is not well known to operate at ambient temperatures.
148. My analysis earlier in this decision concluded that ambient temperature operation of the production process was a well-known possibility. Ambient temperature is merely the temperature of the surrounding environment in the production setting. I accepted that while it may be desirable for product quality and avoidance of foaming to control temperatures and this takes them out of ambient ranges, the claimed invention (particularly claim 1) does not appear to address issues of foaming, claim 1 being merely aimed at solving the problem of minimised energy usage. With this in mind, I consider it obvious that a person skilled in the art, armed with the common general knowledge that a mixing and filling system can be operated completely at ambient temperatures, would be directly led as a matter of course to try to run a system whereby the treated water, fluid mixture, and carbonated fluid product, at some point of the production process, are maintained at an ambient temperature. The person skilled in the art would try this in the expectation that it might well reduce energy consumption because less heating and/or cooling would be required to take temperatures to ranges that are not ambient.
149. Therefore, I find that claim 1 lacks an inventive step in view of common general knowledge alone.
150. The applicant does not seek to provide discussion of evidence or submissions in relation to independent claim 10 or the dependent claims. I address each of the additional claims as follows:
· Claim 2 is limited to the fluid product not being cooled before entering the filling machine. As I have accepted Mr Kalinowski’s evidence that operating the mixing and filling system at ambient temperature is well-known, this feature is necessarily obvious.
· Claim 3 further limits claims 1 or 2 to the pressure of the vacuum pump being at least approximately negative 0.8 bar. Kalinowski #1[89] suggests this is common. I find claim 3 obvious.
[89] Kalinowski #1 at [120]
· Claim 4 further limits any of the previous claims to the pressure of carbon dioxide injection being in the of approximate range 3.2 to 4.2 bar. Mr Kalinowski suggests this is at the lower end of the normal range[90]. I find the claim obvious.
[90] Kalinowski #1 at [121]
· Claim 5 merely limits the internal pressure of the carbonised tank to approximately 5.5 bar. Mr Kalinowski says this is well within normal range[91] and as such I consider it obvious.
[91] Kalinowski #1 at [122]
· Claim 6 narrows claim 5 by stating that the interior pressure of the filling machine is approximately 5 bar. It is obvious as again Mr Kalinowski notes[92] it is well within normal ranges.
[92] Kalinowski #1 at [123]
· Claim 7 is of similar scope to claim 6 in that it is directed to any one of claims 1 to 4 wherein interior pressure of the carbonised tank is approximately 0.5 bar higher than the interior pressure of the filling machine. This is obvious for reasons the same as claim 6.
· Claim 8 adds the features to any of claims 1 to 7 that the treated water, fluid mixture, and carbonated fluid product have a laminar flow. I construe this to merely be that at some point of the process, but not necessarily throughout all of the process, each of those steps involve laminar flow. In approaching the claimed invention under the ground of s40, the opponent notes that laminar flow could be achieved by lowering flow rate and using certain pumps[93]. In the evidence in answer, Mr Aloisio notes that he would have no concerns implementing laminar flow based on the application[94], and he points to the application which notes that laminar flow can reduce foam formation[95] which I presume is because it reduces bubble formation. Following the above information, it appears to me that it is well-known that laminar flow reduces foaming and that there are no difficulties in implementing some form of laminar flow. The claimed feature is generally mentioned in passing in the specification as an optional feature where it is said that ‘treated water, fluid mixture, and product fluid can have a laminar flow as they move through the mixing system “, and “fluid can have a laminar flow through the filling machine”. The applicant’s submissions under s40 focus fundamentally upon the present invention being that it was not known “to” produce and fill beverages at room temperature across the scope of all the claims, and not that it was not known “how” to. In this regard, the general claiming of laminar flow appears to merely address the desire to reducing foaming, there being no apparent barrier crossed to including such a feature. The applicant places no emphasis whatsoever on claim 8. I consider on balance the skilled addressee would be directly led to seek a degree of laminar flow in various stages because it is a well-known way to reduce bubble formation.
[93] Kalinowski #1 at [98] and Kalinowski #2 at [26]
[94] Aloisio at [136]
[95] Specification at [0025]
· Claim 9 limits any of claims 1 to 8 to an ambient temperature of approximately 15˚C. The evidence is Mr Kalinowski suggests this is typical[96]. I accept this as evidence of obviousness.
[96] Kalinowski #1 at [126]
· Independent claim 10 differs from independent claim 1 in that it also includes: the vacuum pump creates a negative pressure of at least 0.8 bar; injection of carbon dioxide occurs in the pressure range 3.2 to 4.2 bar; the carbonised tank has an interior pressure of approximately 5.5 bar; and the filling machine has an internal pressure of approximately 5 bar. For reasons already discussed in relation to dependant claims this claim lacks an inventive step.
· Claim 11 adds features to claim 10 as follows:
a support housing having an upper surface and a lower surface defining an inner fluid chamber for supplying the fluid material to be discharged into the container;
a valve housing mounted to the lower surface for controlling the discharge of the fluid material;
a vent tube having a first end and a second end, the second end at least partially extending through the valve housing;
an umbellate ring surrounding the vent tube and being positioned adjacent the second end of the vent tube;
a spring positioned about the first end of the vent tube; and
a fluid sealing mechanism positioned adjacent to the upper surface and operating with the spring to control fluid flow into the beverage container.
The opponent suggests that the claim recites well known components of filling machines at the priority date[97]. The applicant takes no contention with the opponent’s position and their evidence does not address the claim. I accept the opponent’s position and also find claim 11 obvious.
[97] Kalinowski #1 at [128]
151. Hence, I find claims 1-11 lack an inventive step in view of common general knowledge alone.
Document D1
152. In my consideration of document D1 above with respect to claim 1, I concluded that the document did not disclose that the water is treated, and did not disclose temperatures of fluid mixture and carbonated fluid product. In relation to document D1 the opponent argues that:
“D1 clearly teaches the production of carbonated drinks at ambient temperature. To the extent that D1 is said not to exclude the possibility of cooling at the filler, for the reasons detailed above, if the PSA wished to reduce energy usage the first thing they would consider would be to avoid any such cooling step. As noted, it was well within the ordinary skill of the PSA to determine the necessary operating conditions, including pressures, to produce and fill the specified carbonated beverage without cooling.
153. The applicant’s argument focusses on the general thrust of relevant literature as suggesting that maintenance of temperature was important, and that this would teach away from ambient temperatures in the system of document D1.
154. In relation to the feature of treating water I have already discussed above how this was an element of the common general knowledge. I have also accepted that possible operation throughout the production process at ambient temperatures was an element of the common general knowledge. While many industrial systems may not have operated with no heating or cooling because of the desire for particular production quality targets I note that that claim 1 does not seek to address such problems. On my reading the claimed invention merely seeks to operate a process with reduced energy consumption. With this in mind, I consider the person skilled in the art would consider minimising energy consumption in document D1 by operating at the temperature of the ambient environment at not only the de-aerating stage, but also at the stage of mixing and processing of carbonated fluid product. There is no explicit discussion of heating or cooling in the system of D1 that could potentially teach away from such a solution.
155. I thus find claim 1 obvious in view of document D1 when combined with the common general knowledge. I see no different conclusion to reach regarding further claims 2-11.
Document D2
156. In my consideration of document D2 above with respect to claim 1, I concluded that the document did not disclose the treating of water or injection of carbon dioxide, and did not disclose temperatures of fluid mixture and carbonated fluid product. Similar reasons are put forward by both parties as those put forward in relation to document D1 and I find the same in relation to the features discussed above. The further feature of injection of carbon dioxide is said to be merely representative of a well-known means of adding carbon dioxide to the system using nozzles by Mr Kalinowski[98]. The applicant does not content with this evidence. I thus find claim 1 obvious in view of document D2 when combined with the common general knowledge. I see no different conclusion to reach regarding further claims 2-11.
[98] Kalinowski #1 at [140]
Document D6
157. In my consideration of document D6 above with respect to claim 1 under the ground of novelty, I identify issues identical to those discussed with respect of documents D1 and D2. I see no barrier, faced with the problem of reducing operating costs, to consider modification of the invention described in document D6 to maintain the treated water, fluid mixture and carbonated fluid product at the ambient temperature. Like with the other evidentiary bases for my finding of obviousness, the claimed invention does not seek to address any problem associated with product quality, and in as much, I do not consider the common general knowledge, or the document teach away from the claimed solution. I thus find claim 1 obvious in view of document D6 when combined with the common general knowledge. I see no different conclusion to reach regarding further claims 2-11.
CONCLUSION
158. I conclude that the opposition is successful. The opponent has established all claims as obvious. While not clear at this point what amendment the applicant may make to overcome this finding, the specification may contain patentable subject matter. I will provide an opportunity for amendment.
COSTS
159. The applicant has unsuccessfully defended the application. It is normal in such matters before the Commissioner for costs to follow the event.
160. The applicant has argued that regardless of the outcome:
“…the Opponent should pay the Applicant’s costs, given the Opponent’s conduct, including the Opponent’s filing evidence in German and not providing translation, raising grounds (such as manner of manufacture) which were misconceived and then dropping them on the eve of the hearing and including a vast quantity of prior art (including prior art introduced on amendment) and relying very little on it.”
161. I asked the applicant at the hearing if there was space for any nuance on this seeking of costs without the bounds of full costs and no submission was forthcoming. The opponent pointed out that it would be dangerous to penalise the opponent where they had appropriately trimmed the sails of their case and sensibly focussed it.
162. I agree with the opponent. I don’t see anything particularly unusual about the present matter. While documents were filed in German, appropriate steps were taken by the opponent to address this. I see insufficient reason to depart from the normal approach, and I award costs against the applicant.
Dr N. R. Madsen
Deputy Commissioner of Patents
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