Mars Incorporated v Cadbury Adams USA LLC
[2011] APO 99
•24 November 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mars Incorporated v Cadbury Adams USA LLC [2011] APO 99
Patent Application: 2002343173
Title:Method for High Speed Coating of Confectionary Cores
Patent Applicant: Cadbury Adams USA LLC
Opponent:Mars, Incorporated
Delegate:Nicole Howard
Decision Date: 24 November 2011
Hearing Date: 24 August 2011 in Canberra
Catchwords: PATENTS - section 59 - opposition to grant of a patent - coating of confectionary – lack of novelty not established - lack of inventive step not established – costs awarded against the opponent
Representation: Patent applicant: Ben Fitzpatrick of Counsel, instructed by Jacqueline Satchell, Patent Attorney of Griffith Hack, Melbourne
Opponent:Christian Schieber, Patent Attorney of Watermark, Sydney
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2002343173
Title:Method for High Speed Coating of Confectionary Cores
Patent Applicant: Cadbury Adams USA LLC
Date of Decision: 24 November 2011
DECISION
The opposition does not succeed on any ground. Costs awarded the opponent, Mars, Incorporate.
REASONS FOR DECISION
Background
Patent application 2002343173 (‘hereafter the application’) was filed under the PCT (WO2003/047361) by Cadbury Adams USA LLC (hereafter ‘Cadbury’) on 11 November 2002. It claims priority from US 10/011 904 filed on 4 December 2001.
Following amendments of 7 July 2005 and 19 February 2008 the specification was advertised accepted on 13 March 2008.
A notice of opposition to grant of a patent was filed on 13 June 2008 by Mars, Incorporated (hereafter ‘Mars’), followed by a statement of grounds and particulars (hereafter ‘SGP’) on 15 September 2008. On 29 June 2009 amendments to the SGP were allowed.
On 19 February 2010 Cadbury filed proposed amendments which were published as allowed on 16 September 2010. On 18 August 2011, Cadbury filed a further statement of proposed amendments which have been granted and advertised. At the hearing it was agreed by all parties that opposition proceedings should be based on the specification including these proposed amendments. The amendments relate to minor ‘housekeeping’ matters and any findings in this decision are equally applicable to the specification prior to the proposed amendments of 18 August.
Evidence
Evidence in support was completed on 22 May 2009, consisting of Statutory Declarations by
·Brad Albert dated 1 December 2008 (Albert) together with Exhibits BA-1 and BA-2
·John Lee dated 30 April 2009 (Lee No. 1) together with Exhibits JL-1 and JL-2
·Adam Hyland dated 15 May 2009 (Hyland) together with Exhibits ALH-1 to ALH-3
·John Lee dated 18 May 2009 (Lee No. 2) together with Exhibits JL-3 to JL-20
Evidence in answer was completed on 19 February 2010, consisting of Statutory Declarations by
·Raffaele Calabrese dated 17 February 2010 together with Exhibit RC-1
·Clare Hill dated 17 February 2010 (Hill) together with Exhibits CH-1 to CH-4
Evidence in reply was completed on 19 August 2010, consisting of a Statutory Declaration by
·John Lee dated 19 August 2010 (Lee No. 3) together with Exhibits JL-21 and JL-22
Further evidence was filed on 22 August 2011 and leave granted on 8 September 2011 consisting of a Statutory Declaration by
·Christian Schieber dated 22 August 2011 (Schieber) together with Exhibits CJS-1 to
CJS-3
No evidence in response was served, however the applicant provided written submissions on 7 October 2011.
Grounds of Opposition
The SGP nominated several grounds pursuant to section 59 of the Patents Act 1990. At the hearing Mars expressly limited their grounds of opposition to:
·Section 18(1)(b)(i) – lack of novelty
·Section 18(1)(b)(ii) – lack of inventive step
The specification
The description
The specification describes confectionary products and methods for making confectionary products that have an outer shell or coating. The sugar based or sugarless coating can provide an initial sweetness or other desirable property to the consumer, a crunching sensation when chewed by the consumer, and a smooth outer appearance to the product.
Previously, in order to provide a smooth and thick outer coating, confectionary cores could be subjected to fifty or more separate coating steps, each step including spraying a material around the cores, tumbling or rotating the cores in an appropriate mechanism, and drying each of the successive coatings with hot air or the like a process known as hard panning. Known coating processes can take up to five or six hours or more in order to produce satisfactory coated chewing gum products.
The application describes the invention as providing an improved coated confectionary product and process. In particular, the solid content in the syrup used to coat the pieces and cores is increased. (Syrup solutions generally comprise a sugar or sugarless material dissolved in solution with water.) This reduces the liquid content of the syrup material and reduces the time necessary to dry the coating. The syrups with increased solid content are kept at an elevated temperature in order to prevent the solids from precipitating or crystallising out of solution prior to being sprayed on the pieces or cores. (Keeping the temperature of the syrups consistently elevated and free from crystallisation throughout the process is key to the invention.) The holding tanks or containers in which the syrup is stored are heated, such as by heated water jackets or electrical heating systems. The conduits or lines in which the syrup is transported from the holding tanks to the coating site are also heated in a similar manner. In this way the invention provides a process which is faster, less expensive, and more efficient than known processes and yet produces a high quality coated product the same as existing products. The invention can be used for both sugar syrup solutions and sugarless syrup solutions. The preferred sugarless solutions comprise a polyol.
The specification further explains that traditionally, the amount of solid content in a sugar or sugarless solution is referred to by the ‘Brix’ standard. Previously for sugar-type coatings the Brix content was typically in the range of 75-78 and for sugarless coatings 66-70. The present invention describes these values to be in the ranges of above 80 to not more than 84 Brix and above 70 to not more than 74 Brix respectively.
Examples and comparative data are also provided purportedly demonstrating the claimed improvements of the invention. In particular, Figure 5 appears to show the process of the invention achieving an approximate 50% reduction in the time taken to coat confectionary cores with a sugar coating.
The claims as proposed to be amended
The accepted specification including the proposed amendments ends with 14 claims recited as follows:
1. A method for coating layers of a sugar syrup material on pieces of confectionery material to form a bulk, hard coating, said method comprising the steps of:
(a) introducing pieces of confectionery material into a coating mechanism;
(b) forwarding the sugar syrup material from a container housing the sugar syrup material through a conduit to the coating mechanism;
(c) maintaining the sugar syrup material at an elevated temperature within the container and conduit through heating of the container and conduit sufficient to prevent the solids in the sugar syrup material from crystallising or precipitating out of the sugar syrup material and wherein the temperature of the syrup is kept in the range of 75-100°C;
(d) spraying at least one layer of sugar syrup material having a concentration of solids in the range of above 80 to not more than 84 Brix; and
(e) drying said at least one layer of said sugar syrup material to form the bulk, hard coating of said sugar syrup material on said pieces of confectionery material.
2. The method as set forth in claim 1 further comprising the step of heating said sugar syrup material prior to spraying it on said pieces of confectionery material, said sugar syrup material being maintained in a heated condition until it is sprayed.
3. The method as set forth in claim 1 or claim 2 wherein said confectionery material is a chewing gum material.
4. The method as set forth in any one of the preceding claims wherein said at least one layer of sugar syrup is dried by heated air.
5. The method as set forth in any one of the preceding claims wherein said coating mechanism comprises a rotating drum member.
6. A method of coating layers of a sugarless syrup material on pieces of confectionery material to form a bulk, hard coating, said method comprising the steps of:
(a) introducing pieces of confectionery material into a coating mechanism;
(b) forwarding the sugarless syrup material from a container housing the sugarless syrup material through a conduit to the coating mechanism;
(c) maintaining the sugarless syrup material at an elevated temperature within the container and conduit through heating of the container and conduit sufficient to prevent the solids in the sugarless syrup material from crystallising or precipitating out of the sugarless syrup material and wherein the temperature of the syrup is kept if the range of 75-100°C;
(d) spraying at least one layer of sugarless syrup material having a solid concentration in the range of above 70 to not more than 74 Brix; and
(e) drying said at least one layer of said sugarless syrup material to form the bulk, hard coating of said sugarless syrup material on said pieces of confectionery material.
7. The method as set forth in claim 6 further comprising the step of heating said sugarless syrup material prior to spraying it on said pieces of confectionery material, said sugarless syrup material being maintained in a heated condition until it is sprayed.
8. The method as set forth in claim 6 or claim 7 wherein said confectionery material is a chewing gum material.
9.The method as set forth in any one of claims 6 to 8 wherein said coating mechanism comprises a rotating drum member.
10. A method of forming a hard candy shell on cores of gum material, said shell being formed by successive layers of a syrup material, said method comprising the step of:
(a) introducing cores of gum material into a coating mechanism;
(b) forwarding the syrup material from a container housing the syrup material through a conduit to the coating mechanism;
(c) maintaining the syrup material at an elevated temperature within the container and conduit through heating of the container and the conduit sufficient to prevent the solids in the syrup material from crystallising or precipitating out of the syrup material and wherein the temperature of the syrup is kept in the range of 75-100°C;
(d) spraying successive layers of a syrup material on said cores of gum material in order to form a hard candy shell on said cores and form finished pellets of gum material; and
(e) said syrup material having a solid content above which it would crystallise if not maintained at an elevated temperature; wherein said syrup material is either:
(i) a sugar syrup material having a solid content in the range of above 80 to not more than 84 Brix, or
(ii) a sugarless syrup material having a solid content in the range of above 70 to not more than 74 Brix.
11. The method as set forth in claim 10 wherein said syrup material is a polyol selected from the group consisting of maltitol, xylitol, mannitol, erythritol, lactitol, sorbitol, palatinit, or mixtures thereof.
12. A method for coating layers of a sugar syrup material substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
13.A method of coating layers of sugarless syrup material substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
14.A method of forming a hard candy shell on cores of gum material substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
Claim construction
The construction of the claims is not in dispute, however I note that in the SGP there was some concern regarding the meaning of ‘above 70 to 74 Brix’ and ‘above 80 to 84 Brix’. It was agreed at the hearing that these statements are construed as ranges limited by their lower and upper values. Also, for the sake of clarity, I note that from the specification it is determined that ‘syrup material’ may include other solids in addition to sugar and sugarless sweeteners.
Onus of proof
In proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be ‘clearly satisfied that the patent, if granted, would not be valid’. Where questions of fact such as obviousness and existence of invention are involved ‘the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out’ (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
Novelty
The novelty documents pressed are:
·‘Silesia Confiserie Manual No. 4 – Reference Book for the Manufacture of Panned Goods and the Surface Treatment of Snack Products’, by Josef A. Meri & K.-W. published 1996 (JL-5)
·‘Coating Systems’, The Manufacturing Confectioner, N.T. Canavan, published November 1987 (JL-8)
·US 4 423 086 (Davos et al.) published 27 December 1983 (JL-14)
·WO 1998/028987 (Wm Wrigley Jr Company) published 9 July 1998 (JL-20)
·US 4 792 453 ( Wm Wrigley Jr Company) published 20 December 1998 (JL-22)
·Dumoulin Product Brochure ‘IDA-X Machines’ obtained from ‘Wayback Machine’ website published on or before 1 February 2001 (CJS-2 English translation and CJS-3 French original)
Although in evidence, JL-22 has not been particularised in the SGP. JL-8 and JL-14, while particularized under lack of inventive step, have not been particularized under lack of novelty. At the hearing it was decided that these documents would be considered under Regulation 5.11.
The law on novelty
The basic test for novelty is the ‘reverse infringement’ test as stated in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486:
‘If carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim’.
In applying this test regard must be given to the level of disclosure in the prior publication. As stated in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR at 517:
‘It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakeable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication.’
In Nicaro Holdings, Gummow J also referred to the speech of Lord Reid in C. Van Der Lely N.V. v Bamfords Limited (1963) RPC 61 and 71-72 where Lord Reid reaffirmed the principle set down by Lord Westbury in Hills v Evans [1862] 4 De G, F & J 288; 45 ER 1195 in relation to the level of disclosure necessary to anticipate a claimed invention:
‘a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments’.
Accordingly the alleged anticipation must not only disclose all of the integers of the claim, it must also provide sufficient detail to enable the skilled addressee to combine those integers to produce the invention without the need for further experimentation. This is particularly relevant to applications such as the present which are directed to methods comprising a combination of steps.
‘Silesia Confiserie Manual No. 4 – Reference Book for the Manufacture of Panned Goods and the Surface Treatment of Snack Products (including pharmaceutical dragees)’, by Josef A. Meri & K.-W. published 1996 (JL-5)
Mars submit that this document anticipates claims 1-14. The document is an encyclopaedia-type reference book used in the sugar panning industry and contains general information about panning and automatic panning machines. It is clearly divided into chapters which deal with different aspects of the technology.
Introducing confectionary cores into a coating mechanism, forwarding syrup material through conduits to coating mechanisms, spraying and drying layers of material onto cores and avoiding crystallisation prior to coating are all disclosed and clearly comprise the basic art of panning. Pages 54 and 55 discuss aspects of using supersaturated sugar solutions for coating but do not direct the reader to any particular concentration range of solution nor temperature range they should be kept at, let alone the ranges defined in the present claims. Page 109 (in reference to building up pharmaceutical dragees) cross-references to the confectionary industry where ‘the concentration of the sugar solutions now used has risen to 80%’. This is considered ‘a highly concentrated solution’. While 80% may fall within the range of above 80 to not more than 84 Brix the temperature recommended for spraying this ‘hot coating syrup’ is provided as 70°C, outside the claimed range of 75-100°C. The document also contains descriptions of two automatic coating units, one supplied by Dumoulin and the other by Driam. It is not clear that the coating units provide any active heating of the conduits and nor do they appear to use the Brix and temperature ranges of the opposed specification.
The document does not disclose all the essential features of the present claims. Even if all the integers of independent claims 1, 6 and 10 were individually disclosed in clear, unequivocal and unmistakeable terms, the combination of these features is not. Indeed, when questioned at the hearing Mr Scheiber conceded that all the integers of the claims were not disclosed in a single example. Claims 1-14 are novel in light of this document.
‘Coating Systems’, The Manufacturing Confectioner, published November 1987 (JL-8)
Mars contend his document anticipates claims 1-14. It describes the operation and make-up of an automated panning system manufactured by Driam, employed in the hard and soft panning of confectionary products.
The use of highly concentrated sugar syrups is solely referred to as follows:
‘If, for example, the production is to be run using high-concentrated syrups with more than 80 percent dry substance, the diffusing binary nozzles must be used.’
I agree with Mr Lee that this statement demonstrates the use of such syrups to be feasible (even if unlikely or unusual) and think that such a percentage of dry substance is likely to constitute a Brix value of above 80. However I do not see a clear direction to use these sugar/sugarless syrups in the method of the invention. The statement stands alone as a mere possibility in which case the reader is directed to use a particular kind of nozzle for spraying.
The document further discloses that
‘After preparation,…, the various solutions …used in the diverse processing phases, are stored in jacketed and warm heated storage tanks until needed.’
And that
‘As a rule, jacketed, hot water heated dosing and spraying systems are used.’
Clearly the use of heated storage containers is contemplated however there is no disclosure or even suggestion of using heated conduit to maintain an elevated temperature. Regarding the heated dosing and spraying systems, Hill [4.5.2] explains that they refer to the introduction of the syrup into the coating vessel and not to the conduit for getting it there. The document is also silent on keeping materials in the specified high temperature range of 75-100°C. In any case, the document does not disclose the combination of integers defined in the claims. I find that this document does not deprive claims 1-14 of novelty.
US 4 423 086 (Davos et al.) published 27 December 1983 (JL-14)
Mars allege this document renders the present claims not novel. It is directed to processes for hard coating with sorbitol onto centres of confectionary material using sorbitol syrups of 60-85% by weight. The document does not direct the reader to select a sugar syrup material having a solids concentration in the range of above 80 to not more than 84 Brix or a sugarless syrup (including sorbitol) having a concentration in the range of above 70 to not more than 74 Brix. Broadly speaking, the syrup may be applied to cores at temperatures less than 100°C. However, the examples disclose that the quality of the product improves progressively as the temperature of the syrup is reduced. Indeed, when applied at 70°C, 83% sorbitol syrup produced a ‘very mediocre’ result [Example 1]. Example 3 further demonstrates that the best results for 70% sorbitol syrups are obtained at 40°C. The document does not in any way mention heating storage tanks or conduits to between 75-100°C. Claims 1-14 are clearly novel when compared to this document.
WO 1998/028987 (Wm Wrigley Jr Company) published 9 July 1998 (JL-20)
This document relates to comestibles such as sugarless chewing gum and methods of improving their appearance by adding a food-acceptable, poorly water soluble salt to a coating syrup that further comprises a primary coating material, preferably xylitol. The sugar and sugarless syrups have a very broad range of solids contents being 61-99.5% solids which may be applied at elevated temperatures in a range from 38°C to 116°C. In particular, the Control Sample 2 recipe in Example 1 using xylitol as a sweetener is disclosed as ‘syrup A’ having a Brix value of 71 [page 14]. It is stated that it is preferable that the syrup temperature should be kept constant throughout the process in order to prevent the polyol from crystallising. In control Sample 3, when coating chewing gum centres, it is stated that ‘The syrups were held at 85°C’. From here, and in the absence of any controverting evidence, I think it reasonable to construe ‘holding’ the material as necessarily involving a heated storage container.
The claims in jeopardy specify that the sugarless material be maintained at an elevated temperature through heating the container and conduit sufficient to prevent the solids in the sugarless syrup material from crystallising or precipitating out, and keeping the temperature of the syrup within 75-100°C. Hill [4.17.4] declares that
‘there is no suggestion to heat the conduits between the container and the coating mechanism to keep the syrup within the required range. As I have expressed previously, to my knowledge such heating of the conduits was not practiced or considered at around December 2001.’
Lee states throughout his declarations that heated conduits were known at the priority date of the application.
I agree with Lee that heated conduits were known at the time, however I do not agree that the skilled artisan would necessarily understand the document as specifically directing the use of heated conduit. The claims are novel in light of this document.
US 4 792 453 ( Wm Wrigley Jr Company) published 20 December 1998 (JL-22)
This document discloses sugarless hard coated chewing gum comprising a sugarless chewing gum centre and a sugarless hard coating containing hydrogenated isomaltulose and methods of making the same. During the hard panning process the isomaltulose syrup is added to the centres at a temperature range of about 100-200°F (38-93°C), preferably between about 150-170°F (66-77°C) and most preferably at about 158°F (70°C). A coating syrup containing 73% hydrogenated isomaltulose is exemplified as being applied to the centres at approximately 160°F (71°C). Lee declares that according to technical data on isomalt (sold under the name Palatinose) the Brix value of the syrup would be around 73 Brix. While there is some overlap in the temperature ranges contemplated in the specification and the claims at hand I do not think there are clear and unmistakable directions to use a temperature range of 75-100°C. The most preferred temperature is disclosed as 158F(70°C) and the only actual example is performed at 160°F (71C). This document does not anticipate any of the claims.
Dumoulin Product Brochure ‘IDA-X Machines’ obtained from ‘Wayback Machine’ website published on or before 1 February 2001 (CJS-2 English translation and CJS-3 French original)
These documents are English and French versions of a printout from the ‘Wayback Machine’ website and disclose automatic hard panning machines made by Dumoulin. The machines clearly disclose heated jacketing conduits and storage containers and that syrups of up to 87% of dry substance may be used in coating. It is likely these concentrations fall in into the prescribed Brix ranges of the present claims. However there is no direction or suggestion to keep the syrups in the range of 75-100°C throughout the process or to combine these temperatures with the particular solids contents defined in the claims. Claims 1-14 are novel in light of these documents.
Conclusion on novelty
I find that claims 1-14 are novel.
Inventive Step
The law on inventive Step
The Opponent contends that the claims of the present application are devoid of an inventive step when considered under s7(2) and s7(3).
Section 7 of the Patents Act (1990) provides
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
‘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.’ (Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 at [53]; 212 CLR 411 at [53] approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
‘Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful, desired result’
In relation to combinations, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 56 IPR 129 notes with approval the test set out by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, at page 293
‘In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not itself make an alleged invention obvious. It is the selection of integers out of, perhaps many possibilities, which must be shown to be obvious.
It is in relation to this process that the misuse of hindsight is most common. When once an idea or an object or a process or a combination, admittedly novel, has been published,, it is very easy to say after perhaps months of search and study in the Patent Office and the public libraries that the integers into which the patent might be dissected could be found scattered amongst the prior documents by a person who already knew the solution to the problem and therefore knew what to look for and what to discard. But that process does not demonstrate lack of an inventive step. The opening of a safe is easy when the combination has been already provided.’
The problem
The problem is determined from the specification. The problem is to provide improved processes for hard coating confectionary. More specifically, the problem is to increase the speed of the coating process while maintaining quality of a product.
It is not contested that the invention solves the problem by introducing 2 allegedly new and related integers to the known process of hard panning:
(a)Increasing the concentration of the syrup material to above 80 to not more than 84 Brix for sugar syrup material or above 70 to not more than 74 Brix for sugarless syrup material.
(b)Maintaining the sugar syrup material at an elevated temperature within the storage container and conduit to the coating mechanism through heating of the container and conduit to 75-100°C
When compared to the prior art, the results provided in the specification purportedly demonstrate a significant reduction in the time taken to produce a similar quality of product. This provides improved efficiency and reduces costs associated with manufacturing.
It was not disputed at the hearing or in the evidence that the remaining features of the claims are established to be well known both individually and in combination. Therefore, for the purposes of this decision I need only address the question of what was the common general knowledge in relation to (a) and (b) above, and whether the skilled but uninventive worker as at the priority date, armed with the relevant common general knowledge and any other prior art information of the kind referred to in sections 7(2) and 7(3) of the Act, would have arrived at the invention claimed by taking merely ‘routine steps’.
What was the common general knowledge at the priority date?
To establish the common general knowledge at the priority date I now turn to the evidence which is provided primarily as the Lee and Hill declarations. At the hearing it was submitted that the other declarations are merely corroborative or ancillary, therefore I will only refer to them if necessary.
In considering the specification, I believe that the person skilled in the art would be a person working in the confectionary industry and having experience in the coating of confectionary. Mr Lee and Ms Hill both have extensive experience in the confectionary industry and in the art of panning. I am satisfied that both are qualified to comment on the common general knowledge in the art. I note that Mr Lee is an independent expert while Ms Hill is employed by Cadbury Pty Ltd (Australia). At the priority date of the application Ms Hill was employed by Nestle. Where there is a conflict of views expressed by the experts I will have regard to the background of the declarants in order to accord appropriate weight to the evidence.
I also note that the first Lee declaration was made in isolation from the specification and prior art. Ms Hill’s sole declaration and Mr Lee’s second and third declarations were made after they were provided with the specification and prior art. I must also have regard to this when according appropriate weight to the evidence.
Is it a matter of routine to use highly concentrated syrup material?
Because of his independence I think it appropriate to first consider the evidence of Mr Lee. In his first declaration he makes a general comment that
‘In working with higher sugar concentration syrups at increased temperatures, you would also get more rapid drying times due to lower water content, and hence faster grossing. This would substantially improve the productivity of the panning operation.’ [63]
However, he makes no mention whatsoever of using syrup concentrations in ranges as high as those defined in the claims. Rather, when describing the routine practice of hard panning, he provides
‘Depending on the temperature sensitivity of the core confectionary material, the sweetener solution can be applied at ambient temperature (about 20°C to 25°C), slightly cooled down or at elevated temperatures 40°C to 50°C, also dependant on the solubility characteristics and saturation viscosity of the sweetener material in the specific solvent.’[33]
While this statement does not directly describe syrup concentrations it clearly teaches that as a matter of routine he would be using relatively low temperatures, and what he considers to be an ‘elevated temperature’ is in fact only 40-50°C, well below that of the invention. For crystallisation of the syrup to be avoided (which is accepted as essential to the process of hard panning) it would not be possible for the syrups used conventionally to be anywhere near the Brix values defined in the claims. In my view the first Lee declaration does not in any way contemplate the use of the syrups of the invention. The Hill declaration corroborates this point.
In his second and third declarations Mr Lee generally comments he sees nothing out of the ordinary in the present invention. However, while he reiterates that syrups may be varied and discusses some documents that contemplate highly concentrated syrups, in my view, he again does not teach that it is a matter of routine to use the Brix ranges defined in the claims. I am also mindful that these later declarations were made with knowledge of the specification and may be accorded a lower probative value in any case of inconsistency.
On examination of the prior art I am satisfied that the coating syrups of the invention were in existence at the priority date. However, on the evidence before me I cannot conclude that they form part of the common general knowledge. They are merely an unlikely option chosen from many.
Is it a matter of routine to keep the temperature elevated at between 75-100°C?
Again turning to the first Lee declaration, he states
‘For example, if I decided to work with a sucrose syrup at a higher concentration, i.e. syrups with percentage solids values above 67 (saturated at ambient temperature), I would also seek to work at a higher temperature to take account of increased viscosity of higher concentration syrups at room temperature, and also to counter for an increase in spontaneous crystallisation that higher saturation levels would bring with that.’
At [3.12] Ms Hill agrees that increasing the temperature of the sugar syrup reduces the viscosity and this is one way to minimise the impact of the viscosity of high concentration syrups. However she further provides that she would not have considered raising the temperature of the syrup above 50°C. Given she attests that she would not have considered using syrups with Brix values higher than 72-75 this is not surprising.
Lee also declares
‘in plants where I have worked, we used heated storage tanks. Depending on the sugar concentration of the engrossing syrup, it would not be uncommon to have storage temperatures of around 80°C to 90°C.’ [No. 1, 86]
However, as Hill obliquely suggests above, I note this is not the only way to prevent unwanted crystallisation. Lee No. 1 [71] adds
‘Also, the panner can add specific substances into the pan to inhibit undesired and otherwise control crystallisation of the sucrose. A bit of glucose (syrup) can help. That is, for example, if you add a small %-amount of glucose syrup to a pure sucrose syrup at close to saturation, then the crystallisation will be affected.’
On the balance of the evidence I accept that in order to avoid premature crystallisation the person skilled in the art would at least routinely consider using a temperature range of 75-100°C. (And if for no other reason than the relationship between solubility and temperature is a well-established fact.) The temperature would be simply determined by the solubility of the dry solids. Based on the evidence before me, I do not however think it has been established that the use of this temperature range is inevitable or necessarily preferred over other options.
Is it a matter of routine to use heated conduits and storage containers?
Again I turn to the first Lee declaration where he provides
‘To overcome this unwanted crystallisation problem, in plants where I have worked, we used heated storage tanks. Depending on the sugar concentration of the engrossing syrup, it would not be uncommon to have storage temperatures of around 80-90°C. Importantly, care has to be taken that evaporation from the tank does not take place, as this would lead to supersaturated syrups which would tend to crystallise more readily.’[86]
‘You could also use jacketed supply lines between storage tanks and coating syrup application points, e.g. spraying or tipping equipment, as is common in the confectionary industry. A jacket is literally either an insulating material surrounding the pipe, or a pipe inside another pipe. The inside pipe carries the heated syrup and a heat transfer medium, e.g. water, is circulated in the external pipe around the internal pipe’[87]
I also observe that the opponent submits in the SGP
‘There are a number of ways in which a syrup may be maintained above a particular temperature, including heating the syrup to a high enough point such that in normal use time it will not cool naturally to below the crystallisation point; heating and/or insulating the vessel in which the syrup is stored; heating and/or insulating the conduits through which the syrup must flow to reach the rotary pan; and supplying heat to the vessel and/or conduits carrying syrup.’ [3.1.9]
Ms Hill unequivocally declares that
‘heated jacketing between storage tanks and coating syrup application points was not used in 2001’ [3.22]
and that
‘the Dumoulin and Driam automatic panning machines that I came across during my time at Nestle, …, did not include heated conduits between the syrup storage container and the coating mechanism. Specifically, I do not recall that there was jacketing present on the Dumoulin and Driam automatic panning machines at Nestle at or before December 2001. I do however recall that these automatic panning machines were fitted with heated cleaning nozzles within the coating bar mechanism which were able to clear any crystallised syrup which formed around the spray nozzles. These heated cleaning nozzles were located within the coating bar mechanism, and did not involve heating of the syrup in the container or conduit leading up to the coating mechanism.’
The availability of heated conduits and containers at the priority date is clearly established in CJS-2 above. In my opinion, this does not mean that they would be used as a matter of course. Lee does not state that that a heated storage tank would always be used, rather he states that it would not be uncommon. Furthermore, he explains that one ‘could’ use jacketed supply lines. I note that using a jacketed supply line may only mean using an insulated line rather than an actively heated one. He does not state that he has ever used a heated conduit.
Given the availability of several options in avoiding unwanted crystallisation of syrups and the clearly controverting evidence of Hill I do not consider that the use of heated conduits and/or storage containers has been clearly established as comprising part of the common general knowledge at the priority date.
Are the claims obvious in light of the common general knowledge alone?
I have established that the use of sugar syrup materials having a solid content in the range of above 80 to not more than 84 Brix and the use of sugarless syrup materials having a solid content in the range of above 70 to not more than 74 Brix do not constitute common general knowledge. I have also established that maintaining syrup materials at an elevated temperature through heating of the container and the conduit does not form part of the common general knowledge. Given these features are critical to the invention, it follows that the claims cannot be obvious in light of the common general knowledge alone.
Even if I am incorrect in this regard, the claims are for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by the opponents to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers. Accordingly there must be a motivation for the skilled person to apply what is disclosed in a relevant prior art document or what is common knowledge in the art with the expectation that it will produce the claimed result. Apart from broad assertions from Mr Lee, I have no evidence before me that would indicate the skilled artisan would arrive at the combination of features as claimed.
Are the claims obvious when considered in light of s7(3)?
Mars have adduced quite an extensive list of documents that they allege deprive the claims of an inventive step when read in the light of the common general knowledge individually or in combination. Having established that the critical features of using highly concentrated syrup materials and heated containers/conduits in hard panning do not form part of the common general knowledge, I need only consider the documents that disclose these features. I am only left with one.
Dumoulin Product Brochure ‘IDA-X Machines’ obtained from ‘Wayback Machine’ website published on or before 1 February 2001 (CJS-2 English translation and CJS-3 French original)
The document CJS-3 is a French language version of the translated document CJS-2. It is sourced from a French website using the ‘Wayback Machine’. The only evidence adduced in relation to ascertaining the document is provided by a patent attorney who had only managed to locate it two days before the hearing. I have no evidence before me whatsoever that a skilled artisan in Australia or otherwise would have found this obscure document. The document is clearly not available under s7(3).
CONCLUSION
The opposition does not succeed on any ground.
COSTS
It is usual practice for costs to follow the event. In this case I see no reason to deviate from this approach. Accordingly I award costs against the opponent, Mars, Incorporated according to Schedule 8 of the Patent Regulations 1991.
Nicole Howard
Delegate of the Commissioner of Patents
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