Mars Incorporated v Kraft Foods R & D, Inc - [2019] APO 46

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Paul Harrison v Kraft Foods R & D, Inc. [2019] APO 46

Patent Application: 2012308876

Title:Chocolate product and process for producing the same

Patent Applicant:                   Kraft Foods R & D, Inc.
Opponent:  Paul Harrison
Delegate:  Cathy Douglas
Decision Date:  22 October 2019
Hearing Date:  Written submissions filed on 25 July 2019

Catchwords: PATENTS – opposition to an amendment – allowability under sections 102(1) and 102(2) considered – as a result of the amendment – the amendments narrow the claims and do not introduce new matter or issues – amendments allowed – costs awarded against the opponent

Representation: Patent attorney for the applicant: Paul Harrison
Patent attorney for the opponent: Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012308876

Title:Chocolate product and process for producing the same

Patent Applicant: Kraft Foods R & D, Inc.
Date of Decision: 22 October 2019
DECISION
The amendments filed on 12 November 2018 are allowed.
Costs are awarded against Paul Harrison in accordance with Schedule 8.
REASONS FOR DECISION

Patent application 2012308876 was filed by Kraft Foods R & D, Inc (the Applicant) under the Patent Cooperation Treaty on 10 September 2012. A request for examination was filed on 5 March 2014, and the application was advertised as accepted on 21 May 2015.

A notice of opposition under Section 59 was filed by Mars Incorporated (the Opponent) on 21 August 2015, and the matter was heard on 13 June 2018 in Canberra. A decision (the section 59 decision) issued on the substantive opposition on 12 September 2018. The Hearing Officer found that Claims 7, 8, 10, 12 and 14 to 16 lacked clarity[1], and that claims 1 to 19 lacked support[2]. The Applicant was allowed two months from the date of the decision to propose amendments to the specification.

[1] Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62 at [44].

[2] Ibid at [86].

The Applicant filed a statement of proposed amendments on 12 November 2018. An examiner of patents granted leave to amend the specification on 9 January 2019. The amendments were advertised in the Australian Official Journal of Patents dated 24 January 2019. On 25 March 2019 Paul Harrison (s104 Opponent) filed a notice of opposition to the amendments, and a statement of grounds and particulars was filed on 26 April 2019. No evidence has been filed in this opposition and the hearing was conducted by written submissions.
Legislative provisions
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure. Additionally, the changes brought about by the Raising the Bar Act to the disclosure and support requirements in subsections 40(2) or 40(3) are relevant since subsection 102(2)(b) precludes amendments after acceptance that result in the specification failing to comply with subsections 40(2) or 40(3).
Section 104 states that the applicant is entitled to request amendments:
(1) An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:
· (a) removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;
· (b) correcting a clerical error or an obvious mistake.
Section 104(4) provides for opposition to an amendment:
(4) The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.
Section 104(5) then sets out the criteria for allowability of an amendment:
(5) The Commissioner must not allow an amendment that is not allowable under section 102.
Section 102(1) and (2) as amended by the Raising the Bar Act state:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).
Certain amendments of complete specification are not allowable after relevant time
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
The Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 makes it clear that section 102 as amended is intended to prevent the addition of new matter to the description:
"The item introduces a provision preventing amendment of a complete patent specification after filing to add new matter that would go beyond the disclosure contained in the specification at its filing date. An applicant would not be able to amend the specification to add any material that the hypothetical skilled person could not directly derive by reading the information in the specification as filed."[3]
[3] Item 29 at page 61.
The Opposition
The statement of grounds and particulars sets out the following grounds:
Ground 1 – Subsection 102(1)
1.1 As a result of the Amendment, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification and abstract as filed
Ground 2 – Paragraph 102(2)(a)
2.1 As a result of the Amendment, a claim of the specification would not in substance fall
within the scope of the claims of the specification before amendment
Ground 3 – Paragraph 102(2)(b)
3.1 Paragraph 40(2)(a) – As a result of the Amendment, the specification does not disclose 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
3.2 Paragraph 40(2)(aa) – As a result of the Amendment, the specification does not disclose the best method known to the applicant of performing the invention
3.3 Subsection 40(3) – As a result of the Amendment, the claims are not supported by the specification
The s104 opponent made submissions in relation to each of these grounds, with the exception of Ground 3.2.
Standard of proof
As stated by the delegate in Cytec Industries Inc. v Nalco Company (Cytec industries):
“The standard of proof that applies to oppositions under s104(4) for cases proceeding under the Raising the Bar provisions has not been expressly stated in the Act, however it is a logical inference that the standard required is the balance of probabilities (consistent with the amendment to section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists), and it is the opponent who carries the onus of proof.”[4]
[4] [2018] APO 4 at [18].
The specification
The field of the invention is said to relate to a process for the manufacture of heat resistant chocolate product.[5] Controlled release of water of hydration from compounds encompassed by component (B) during production, using temperatures that do not exceed 50°C is key to the process.[6]
[5] Description page 1 lines 5-10.
[6] Description page 8 line 30-page 10 line 3; page 10 lines 30-35.
The Amendments
The Applicant proposes to amend claim 1, claim 7 and 8, and claim 13 (now claim 12) and to delete previous claim 12. Corresponding amendments are made to the description under the Summary of the Invention. The marked-up version of the complete set of amendments is reproduced in Annex 1. I reproduce a marked-up version of proposed claims 1, 7 and 12 here, these being the only independent claims:
1. A process for the manufacture of a heat resistant chocolate product comprising:
(i) combining at least
(A) one or more fats selected from cocoa butter, cocoa butter alternatives, milk fat and vegetable fats which are liquid at standard ambient temperature and pressure, and
(B) one or more of hydrated salts, hydrated sugars and hydrated sugar alcohols,
to form a chocolate mass having a total amount of fats of 15 to 35 wt. % and total amount of hydrated salts, hydrated sugars and hydrated sugar alcohols of 1 to 15 wt.%;
(ii) refining the chocolate mass; and
(iii) conching the chocolate mass
wherein the temperature of the chocolate mass during refining and conching does not exceed 50°C, and wherein the chocolate mass comprises 1 to 15 wt.% of dextrose monohydrate as component (B) or part thereof, resulting in the controlled release during refining and/or conching of water of hydration from the dextrose monohydrate.
7. A heat resistant chocolate product comprising
(A) one or more fats selected from cocoa butter, cocoa butter alternatives, milk fat and vegetable fats which are liquid at standard ambient temperature and pressure, wherein
the total amount of the fats is 15 to 35 wt.%;
(B’) one or more of hydratable salts, hydratable sugars and hydratable sugar alcohols, wherein the total amount of hydratable salts, hydratable sugars and hydratable sugar alcohols is 1 to 15 wt.%; and
0.05%-2.25% water from ~~hydrated salts, hydrated sugars, and/or hydrated sugar alcohols, wherein the chocolate product comprises 1 to 15 wt.% of dextrose as component (B’) or part thereof, which comes from~~ the incorporation of 1 to 15 wt.% of dextrose monohydrate during production of the chocolate product, the incorporation during production yielding ~~said~~ a dextrose component upon controlled release of water of hydration from the dextrose monohydrate during production,
wherein the chocolate product has been refined and conched at a temperature not exceeding 50°C.
1312. A heat resistant chocolate product produced from a chocolate mass comprising dextrose monohydrate, the chocolate product comprising one or more fats selected from cocoa butter, cocoa butter alternatives, milk fat and vegetable fats which are liquid at standard ambient temperature and pressure, wherein the total amount of the fats is 15 to 35 wt. %,
dextrose monohydrate,
and 1 to 15 wt.% dextrose obtained from the controlled release of water of hydration from the dextrose monohydrate in the chocolate mass as a result of refining and conching
the chocolate mass at a temperature not exceeding 50°C,
wherein the chocolate product contains at least 1.1 wt.% of total moisture, as determined by Karl Fischer titration.
As a result of the amendment
The expression “as a result of the amendment” was a feature of section 102 before the recent changes brought about by the Raising the Bar Act and has been considered on many occasions. In RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd^[7] Carr and Sundberg JJ discussed section 102(1) as it stood at the that time:
“That subsection requires one first to identify precisely what is the amendment. In this case that is done by identifying the difference between the specification as accepted (and as it stood at the hearing of the motion at first instance) on the one hand and, on the other hand, as the specification would read if amended in the manner sought. Then one reads the specification as a whole (as so amended in the manner sought) to see whether as a result of the amendments sought (which must mean by reason of the amendment sought) the specification would claim [‘matter that extends beyond that disclosed’] in the specification as filed. The subsection focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression [‘matter that extends beyond that disclosed’] in the specification as filed. The key point to keep in mind is, as counsel for the respondent contended (in our view correctly), that the words ‘as a result of the amendment’ are not to be confused with the expression ‘after the amendment’.”
[7] RGC Mineral Sands v Wimmera Industrial Minerals Pty Ltd [1998] FCA 1358; 42 IPR 353 at 360.
Deficiencies that do not arise "as a result of the amendment" are not properly matters that can be considered in an opposition under section 104.
Does not claim or disclose matter that extends beyond that disclosed
Subsection 102(1) requires that the specification as proposed to be amended does not claim or disclose matter that extends beyond that disclosed in the complete specification and abstract as filed. In Gabriele Ludwig v The Arizona Board of Regents on behalf of The University of Arizona the delegate stated that:
“This assessment accordingly necessitates a comparison between the specification as it stands and how it would stand if amended as proposed.”[8]

[8] [2018] APO 55 at [28].
The delegate in Cytec Industries referred to the test for added subject matter in the UK articulated by Aldous J in Bonzel v Intervention (No 3) (Bonzel):
“(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(2) To do the same in respect of the patent as granted.
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.”[9]
[9] [1991] RPC 553 at 574.
This test was referred to by both the Applicant and the s104 Opponent in their written submissions. This test is consistent with the Explanatory Memorandum which states that no matter can be added which the skilled person could not directly derive from the specification as filed.
Consideration
Do the claims as proposed to be amended extend beyond the original disclosure?
The s104 Opponent submits that, as a result of the amendment, the subject matter of claims 1, 7 and 12 extends beyond the subject matter disclosed in the complete specification as filed[10]. I will consider these claims in turn.
[10] Opponent submissions at [23].
Claim 1
The s104 Opponent submits that claim 1 as proposed to be amended refers to water of hydration from dextrose monohydrate, whereas page 10, lines 30-35 refer to release of water of hydration from the compounds encompassed by component (B) – not just dextrose monohydrate.[11]

[11] Opponent submissions at [24].

Indeed, the above referenced part of the description states that the effect of processing the chocolate is:
“…the controlled release of water of hydration from the compounds encompassed by component (B)…”
Additionally, dextrose monohydrate is specifically identified in the description as one of the compounds encompassed by component (B)[12]. It follows, therefore, that the description discloses the controlled release of water of hydration of dextrose monohydrate. Therefore, the proposed amendment to claim 1 stating that the result of the process is the controlled release of water of hydration of dextrose monohydrate is not claiming “new matter”. It is a result already clearly and unambiguously disclosed in the specification before amendment. Also, as a result of the proposed amendment, the claim does not state that other compounds present as component (B) do not release water; the claim as proposed to be amended is therefore consistent with the specification prior to amendment in this regard.

[12] Description page 7 lines 26-27.

Therefore, as a result of the amendment, claim 1 does not extend beyond the subject matter of the complete specification prior to amendment.
Claim 7
Regarding claim 7, the s104 Opponent submits that the meaning of the text as proposed to be amended is different from the text before amendment since the text previously said that dextrose comes from dextrose monohydrate, whereas as proposed the text says that the water comes from dextrose monohydrate.[13] In order to address this point, I will compare the specification prior to, and as a result of the amendment.

[13] Opponent submissions at [25].

Prior to the proposed amendment, claim 7 states that component (B’) is:
(B') one or more of hydratable salts, hydratable sugars and hydratable sugar alcohols, wherein the total amount of hydratable salts, hydratable sugars and hydratable sugar alcohols is 1 to 15 wt.%; and
0.05%-2.25% water from hydrated salts, hydrated sugars and/or hydrated sugar alcohols,
wherein the chocolate product comprises 1 to 15 wt.% of dextrose as component (B’) or part thereof, which comes from the incorporation of 1 to 15 wt.% of dextrose monohydrate during production of the chocolate product, the incorporation during production yielding said dextrose component upon release of water from dextrose monohydrate during production.
This reflects equivalent passages in the description[14].

[14] Description page 3a.

I consider that the wording “…as component (B’) or part thereof…” clearly discloses that the composition could have just one hydratable component (B’) which is dextrose, in which case the water from the hydrated components is water from dextrose monohydrate. This is consistent with the section 59 decision, where the delegate stated that:
“… the chocolate product comprises 1 to 15 wt.% of dextrose as component (B’) or part thereof. I understand this to mean that dextrose may be the only hydratable material in component B’…”[15] (emphasis added).
[15] Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62 at [72]
As proposed to be amended, the relevant part of the claim states:
“…0.05%-2.25% water from the incorporation of 1 to 15 wt.% of dextrose monohydrate during production of the chocolate product, the incorporation during production yielding a dextrose component upon controlled release of water of hydration from the dextrose monohydrate during production…”
The text prior to amendment and as proposed states that dextrose monohydrate yields dextrose.

Similarly, the text of the claim prior to amendment states that an amount of water within the range of 0.05%-2.25% comes from the class of hydrated components, of which dextrose monohydrate is clearly a member[16]. Dextrose may be the only hydratable material in the chocolate product. The description prior to amendment also states that dextrose monohydrate “is used as component (B)” and “Additional hydrated materials may also be used”[17] indicating that the latter are optional. Example 1[18] uses a chocolate mass in which the only hydrated component is dextrose monohydrate. Therefore, the specification before amendment clearly discloses the option now claimed that the 0.05%-2.25% water referred to in the claim may be solely derived from dextrose monohydrate. I consider that no new matter has been added.

[16] Description page 7 lines 10-15.

[17] Description page 7 lines 26-28.

[18] Description page 15.

This is not to say that claim 7 as proposed limits the total water present in the chocolate to water only from dextrose monohydrate. The text now merely requires that a proportion of water, within the range of 0.05% to 2.25%, comes from dextrose monohydrate. I understand that other components contributing water may be present.

The s104 Opponent also questions, by the provision of sample calculations, how 2.25% water can be obtained from 1-15 wt.% dextrose monohydrate.[19] However, I can only consider matters that arise as a result of the amendment. I have found above that the specification before amendment clearly disclosed that the 0.05%-2.25% water may be solely derived from dextrose monohydrate. Any difficulty in actually achieving the upper limit of water from dextrose monohydrate alone therefore does not arise as a result of the amendment.

[19] Opponent submissions at [27].

The s104 Opponent’s final comment on claim 7 is that the claim refers to the controlled release of water of hydration “during production”, rather than during refining and conching.[20] However, the use of the phrase “during production” was in the claim before the proposed amendment. It is not a matter that arises as a result of the amendment.
[20] Opponent submissions at [26].
Therefore, as a result of the amendment, claim 7 does not extend beyond the subject matter of the complete specification prior to amendment.
Claim 12
The s104 Opponent submits that claim 12 as proposed claims matter that extends beyond what was originally disclosed because the claim would require more than 15% dextrose monohydrate to be present in the initial chocolate mass to produce the upper limit of dextrose claimed.[21] It is submitted that this “correlates with the conclusion of paragraph 40 of the section 59 decision.”

[21] Opponent submissions at [28].

However, the additions to claim 12 in the proposed amendment are unrelated to this issue of lack of clarity in the section 59 decision. The proposed additions to claim 12, specifying the details of the production process, are clearly and unambiguously disclosed in the specification as filed.[22]

[22] Description page 3 lines 16-18, 7 line 26, page 10 lines 32-33.

The opponent’s further point, that there is some lack of clarity in claim 12 as to how the dextrose ends up in the final chocolate product[23], is not a matter that arises “as a result of the amendment”. The original claim specified the presence of both dextrose and dextrose monohydrate in the chocolate product, as is still specified in the proposed claim.

[23] Opponent submissions at [29].

Further, as the s104 Opponent points out, the specification prior to amendment states that localised heating “during refining and/or conching …”[24] results in the release of water of hydration.[25] The use of and/or is a clear disclosure of the ‘and’ option, the wording now used in proposed claim 12.
[24] Opponent submissions at [30].
[25] Description page 10 line 31.
Therefore, as a result of the amendment, claim 12 does not extend beyond the subject matter of the complete specification prior to amendment.
Amendments to the description
I have found that the proposed amendments to the claims do not result in matter extending beyond the specification before amendment being added. The amendments to the description mirror the proposed changes to claims 1 and 7. It follows that I do not consider any matter extending beyond the specification before amendment is added as a result of the amendment to the description.
Do the amended claims fall within the scope of the claims as proposed to be amended?
Under Ground 2, the s104 Opponent alleges that the amended claims do not fall within the scope of the claims before amendment because something that was not an infringement prior to the amendment would be an infringement as a result of the amendment. The submission relates to the calculations referred to above, and argument that “…2.25wt% lies outside the previously calculable maximum 1.5 wt%...”[26]. I do not agree.

[26] Opponent submissions [36].

The claim before amendment encompassed chocolate products having water from hydrated material in a range of 0.05%-2.25%, and encompassed this amount being produced from dextrose monohydrate, as stated previously. This amount is unchanged by the proposed amendment. Whether or not the chocolate products now claimed can be produced over the full scope of the claim is a question of sufficiency which does not arise as a result of the amendment, and therefore is outside the scope of the present consideration.

I note the Applicant’s submission that the proposed amendments reduce the scope of the claims before amendment; I agree that all claims are narrowed by the proposed amendments. The amendment results in additional limitations being placed on the claims, thus reducing their scope. In the case of claim 7, the specified amount of water is now from the incorporation of one hydrated component, namely dextrose monohydrate, rather than from the range of hydratable components previously specified. The removal of the explicit reference to 1 to 15 wt.% of dextrose in the chocolate product in claim 7 also does not broaden the claim because the amount of dextrose in the product is still limited by the amount of dextrose monohydrate used in production.

Therefore, I consider that the proposed amendment satisfies section 102(2)(a).
Section 102(2)(b): Compliance with section 40(2)(a) and section 40(3)
Sufficiency
Under Ground 3.1 the s104 Opponent alleges that as a result of the amendment, the specification would not comply with subsection 40(2)(a), since the skilled person would only be able to perform the invention over part of the claimed breadth.[27]

[27] Opponent submissions [38].

Once again, I stress that deficiencies that do not arise as a result of the amendment are not properly matters that can be considered in an opposition under section 104.

As previously noted, prior to amendment, the claim encompassed a product containing 0.05%-2.25% water produced only from dextrose monohydrate. Any deficiency regarding the amount of water that can potentially be produced from dextrose monohydrate must have been present in the specification prior to amendment. It is not open to me to consider a lack of sufficiency that does not arise as a result of the amendment. In any case, in the section 59 decision, the delegate did not find a lack of sufficiency.[28]
[28] Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62 at [102].
Support
Under Ground 3.2 the s104 Opponent submits[29] that as a result of the amendment, the claims are not supported by the specification. It appears that the arguments submitted are more suited to a lack of clarity under section 40(3), however I will also consider the ground of lack of support, and then consider the implications of the submissions under clarity.

[29] Opponent submissions [40]-[59].

The support for the claims prior to the proposed amendment was considered by the delegate in the section 59 decision. The delegate, using the test for support in CSR Building Products v United States Gypsum Company[30], found that the contribution to the art of the present invention is:
“…the controlled release, under certain conditions, of water from 1 to 15 wt.% of hydrated materials (including at least 1 wt.% dextrose monohydrate) during production…”
[30] [2015] APO 72 at [115].
He concluded that the absence of the features that define this contribution in the independent claims rendered them lacking support.[31]

[31] Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62 at [60], [65], [77], [85].

The Applicant proposed to amend the claims to overcome this lack of support. Claims 1 and 7 already stated the amount of dextrose monohydrate present in the chocolate mass is 1 to 15 wt.%, and claim 12 requires at least 1 wt.% of dextrose monohydrate to be present in the chocolate mass in order to achieve the required 1 to 15 wt.% of dextrose in the claimed product. The feature of “controlled release” of water of hydration of dextrose monohydrate as a production step has now been inserted into each independent claim, and process temperature restrictions have been added into claims 7 and 12. These amendments are responsive to the delegate’s finding on lack of support. The claims are narrowed by the amendment and no issue of exceeding the technical contribution to the art arises as a result of the amendment.
Clarity
The s104 Opponent puts forward the relevant test for lack of clarity as found in Flexible Steel Lacing Co v Beltreco Ltd (Beltreco)[32]
“It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use: … The consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, commonsense manner … Absurd constructions should be avoided … and mere technicalities should not defeat the grant of protection …”
[32] [2000] FCA 890 at 81.
I also note the Applicant’s reference to Ranbaxy Laboratories Ltd v AstraZeneca AB[33] that the Court (and therefore the Commissioner) should “approach the task of patent construction with a generous measure of common sense.”
Controlled release
[33] [2013] FCA 368 at [108].
The s104 Opponent submits that the term “controlled release” introduced into claims 1, 7 and 12 by the proposed amendment is unclear, and raises multiple questions[34] related to the nature of the control intended by inserted phrase.

[34] Opponent submissions at [44].

However, in the section 59 decision, the delegate did not appear to find this term problematic.[35] The delegate determined that controlled release of water of hydration was produced by certain conditions of manufacture of the chocolate, namely refining, conching and optional tempering at a temperature the does not exceed 50°C. The delegate also referred to a statement provided in evidence explaining that:
“… if a chocolate mixture containing DMH is refined and conched at a temperature that is below 50°C but high enough for conching the chocolate into a liquid state, water is released slowly from the DMH in a controllable manner so that heat resistance can be achieved…”[36]
[35] Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62 at [59]-[60].
[36] Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62 at [64].
He then stated what he considered that the skilled person would understand in this regard:
“On balance I am satisfied that the skilled person would understand that it is essential that the process must be carried out at a temperature no higher than 50°C.”[37]
[37] Ibid at [65].
There is no evidence that “controlled release” in the context in which it occurs would not be understood by the skilled person. I am therefore satisfied that the term “controlled release” when read in conjunction with the production conditions that are now specified in claims 1, 7 and 12, provides a “workable standard” by which the skilled person would understand the scope of the claims.
In claim 7 is the “dextrose component” component (B’) or is it in addition to component (B’)?[38]
[38] Opponent submissions at [45].
Reading claim 7 as proposed in a common sense manner, I understand the claim to mean that since dextrose is one of the class of compounds identified by component (B’), that either (B’) can be dextrose alone based on the phrase “one or more…”, or that (B’) can be dextrose plus others of the class of hydratable salts, hydratable sugars and hydratable sugar alcohols, provided that dextrose monohydrate is incorporated at a level of at least 1 wt.% and that 0.05%-2.25% water comes from the dextrose monohydrate. This is consistent with Example 1, which discloses a chocolate base mass containing both dextrose monohydrate (hydrated material) and sucrose (hydratable disaccharide). I do not consider that there is a lack of clarity with respect to component (B’).
Water of hydration
The s104 Opponent submits that it is not clear in claim 7 if the 0.05%-2.25% water from the incorporation of dextrose monohydrate “is the same as, or in addition to the ‘water of hydration’ released from dextrose monohydrate.” [39] However, I understand that the source of the 0.05%-2.25% water in claim 7 is clearly indicated by the phrase “…from the incorporation of 1 to 15 wt% of dextrose monohydrate…yielding a dextrose component upon controlled release of water of hydration from the dextrose monohydrate…” (emphasis added). That is, the most natural and common sense reading of the words is that the water comes from dextrose monohydrate and is therefore water of hydration. I do not consider that the introduction of the words “of hydration” into claim 7 leads to a lack of clarity. On the contrary, the introduced words further clarify the source of the water.
Does the water content only come from dextrose monohydrate or some other source? Can the product have more than 0.05%-2.25% water?[40]
[39] Opponent submissions at [46].
[40] Opponent submissions at [47] and [48].
Firstly, on its face, claim 7 reads “0.05%-2.25% water from the incorporation of dextrose monohydrate during production” (emphasis added). This phrase does not exclude a further water component from other sources. The text after amendment merely requires that a proportion of water, within the range of 0.05% to 2.25%, comes from dextrose monohydrate. I do not consider that as a result of the amendment, the claim is unclear in this respect.
Secondly, the s104 Opponent submits that it is not possible for the skilled person to determine the source of the water in the chocolate product. This issue of how the skilled person discussed in a would differentiate between water released by dextrose monohydrate and water released by any other hydrated material was raised in the s59 opposition, suggesting that the issue of clarity as to the origin of the water in the product does not arise as a result of the amendment.

In any case, I consider that this issue was adequately answered by the delegate in his acceptance of evidence that suggested that the skilled person can calculate the water content of any ingredient.[41] In this respect, I am satisfied that claim 7 as proposed to be amended does not contravene subsection 40(3) with respect to clarity.
Is claim 7 is unclear, since as a result of the amendment, the amount of dextrose in the final chocolate product is not specified?[42]
[41] Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62 at [101].
[42] Opponents submissions at [51].
The theory behind the invention is that the controlled and on-going dissociation of the water of hydration from dextrose monohydrate provides the heat resistant effect[43]. Based on this effect, it would be expected that the final amount of dextrose in the product would vary over a range. The amount involves a “matter of degree”, and this “lack of precise definition” is not fatal to validity. The amount of dextrose in the final product claimed in claim 7 is not unlimited; it is limited by the amount of dextrose monohydrate that is used during production. I consider that this limitation combined with the temperature restriction during refining and conching provides a workable standard which would equip the skilled person to determine the range of products falling within the scope of the claim. There is no evidence to the contrary, therefore I find that on balance claim 7 is clear.
Is claim 12 unclear?[44]
[43] Description at page 10 line 30-page 11 line 3.
[44] Opponent submissions at [54].
I note that the delegate in the section 59 opposition did not find that claim 13, upon which claim 12 as proposed is based, to be unclear.

As a result of the proposed amendment, additional text is inserted into claim 12 to clarify two points, the nature of the chocolate mass used and nature of the production conditions. There is no evidence that these features introduce ambiguity and I also do not consider that either addition introduces ambiguity. Rather, each simply adds additional features which, on their face, are clear. I do not consider that as a result of the amendment, claim 12 is unclear.
Is there a lack of clarity when considering the amendments to the claims as a whole?[45]
[45] Opponent submissions at [58].
Independent claims 1, 7 and 12 are directed to different aspects of the invention. It is the right of an applicant to draft his claims so as to protect every aspect of the invention that he has disclosed.[46] The s104 Opponent has not adduced any evidence to suggest that the skilled person would not understand the scope of each of the claims either individually or as a whole.
[46] American National Can v Trigon [1996] APO 23 at page 10.
The s104 Opponent has not established that as a result of the amendment the claims lack clarity.
Best method
For completeness, I note that no evidence or submissions have been provided regarding whether as a result of the amendment the specification would not comply with subsection 42(2)(aa). The s104 Opponent has not established that as a result of the amendment the specification fails to disclose best method known to the Applicant of performing the invention.
Conclusion
The s 104 Opponent has not established the amendments are not allowable. Therefore, the Opposition under section 104 has been unsuccessful on all grounds. I allow the amendments.
Costs
The opposition fails. Costs should follow the event. I award costs in accordance with Schedule 8 against the s104 Opponent.
Cathy Douglas
Delegate of the Commissioner of Patents
Annex 1