Mars, Incorporated v Kraft Foods R & D, Inc
[2018] APO 62
•12 September 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mars, Incorporated v Kraft Foods R & D, Inc. [2018] APO 62
Patent Application: 2012308876
Title:Chocolate product and process for producing the same
Patent Applicant: Kraft Foods R & D, Inc.
Opponent: Mars, Incorporated
Delegate: Dr Leslie F. McCaffery, Deputy Commissioner of Patents
Decision Date: 12 September 2018
Hearing Date: 13 June 2018, in Canberra
Catchwords: PATENTS - opposition to the grant of a patent under section 59 – clarity – support – whether the specification is clear enough and complete enough for the skilled person to work the invention across the full scope of the claims – novelty – inventive step – utility – opposition successful – opportunity to amend – costs awarded.
Representation: Patent attorney for the applicant: Mr Gavin Adkins and Dr Sheila Barbero, Griffith Hack
Patent attorney for the opponent: Dr Aaron Olsen, Spruson & Ferguson
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: 12 September 2018
DECISION
The Opposition under Section 59 is successful.
Claims 7, 8, 10, 12 and 14 to 16 lack clarity.
Claims 1 to 19 lack support.
The Applicant has 2 months from the date of this decision to propose appropriate amendments to the specification.
Costs are awarded against the Applicant, Kraft Foods R & D, Inc.
REASONS FOR DECISION
Background
Patent application 2012308876 was filed by Kraft Foods R & D Inc. (the Applicant) under the Patent Cooperation Treaty on 10 September 2012. The complete application claims priority from an earlier application, European Patent application 11180877 which was filed on 12 September 2011. The priority date was not disputed and therefore I will assume this to be correct.
Examination of the application was requested 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. A Statement of Grounds and Particulars (SGP) was filed on 21 August 2015. An amended SGP was filed on 2 May 2017. The SGP set out grounds for opposition under novelty, inventive step, utility, section 40 (lack of clear enough, and complete enough disclosure, lack of best method, lack of definition, lack of support and lack of clarity) and manner of manufacture. The amended SGP did not include the grounds under best method and definition. The ground of manner of manufacture was also not pursued at hearing, but submissions were made in respect of novelty, inventive step, inutility, lack of clear enough and complete enough disclosure, support and clarity.
Evidence in Support (EIS) was completed on 22 February 2016. Evidence in Answer (EIA) was completed on 25 May 2016. Evidence in Reply (EIR) was completed on 3 March 2017. The Applicant sought to file further evidence pursuant to sub-regulation 5.23(2)(c) in relation to matter in the EIR which was considered to not be in response to EIA. However the Delegate determined that the additional material was not likely to change the outcome of the opposition in a significant way and therefore did not allow the request.
The application was amended during the opposition. A first request for amendment was filed on 14 June 2016 (after completion of EIS), but these amendments were not allowable. Further amendments were filed on 2 September 2016 which were allowed and incorporated into the specification on 4 January 2017.
The matter was heard on 13 June 2018 in Canberra. As mentioned above the grounds of novelty, inventive step, utility and section 40 (clear enough and complete enough disclosure, support and clarity) were pressed at hearing. The Applicant was represented by Mr Gavin Adkins of Griffith Hack and the Opponent by Dr Aaron Olsen of Spruson & Ferguson.
Standard of proof
The examination of the present application 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). The standard of proof that applies to the examination of the present application is therefore the balance of probabilities – I must accept the present application if satisfied, on the balance of probabilities, that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
Evidence
EIS consisted of a declaration by Mr John Lee dated 22 February 2016 and Exhibits JL-1 to JL-12.
EIA consisted of: a declaration by Mr Steven Lee dated 24 May 2016 and Exhibits SL-01 to SL-04; and a declaration by Ms Imola Zsigmond dated 24 May 2016 and Exhibit A.
EIR consisted of a declaration by Mr Barry David Glazier dated 2 March 2017 and exhibits BG-1 to BG-12.
Construction: Legal principles
10. The principles of construction are well established. As Middleton J stated:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[1]
[1] Eli Lilly and Co Ltd v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451 at 482 [139].
11. Middleton J went on to provide a useful summary of relevant principles:[2]
[2] Ibid at [143].
- a patent is a public instrument which must, if it is to be statutorily valid, define a monopoly which is not reasonably capable of being misunderstood;
- the Court, when reading the entire patent specification, must place itself in the position of a person who is skilled in the relevant art, given their general knowledge, and the common general knowledge and the state of the art that existed before the priority date of the patent;
- the words used in a specification, including the claims, are to be construed from this standpoint in a “commonsense” and not abstract manner;
- what is disclosed in the body of the specification will also assist the skilled person in the art to understand the claims, bearing in mind that a patent is a unilateral document and the patentee has chosen particular words to describe the invention;
- the claims define the monopoly claimed by the patent;
- terms which are unclear in the claims may be defined or clarified by reference to the body of the specification;
- language which has no positive meaning in the claims may become clear when the specification is used as a “dictionary” for the jargon in the claims; and
- that said, given the special function of the claims, it is impermissible to read into a claim an additional integer, or otherwise vary the scope of the claim by reference to the body of the specification.
12. Middleton J also cautioned that:
“It is clear from the above propositions (particularly the latter three points) that the use the Court can make of the body of a specification will vary from case to case. As Apotex submitted, there is a fine line between using the specification to construe the claim, and using the specification in such a way that adds an impermissible gloss to the claims.”[3]
[3] Ibid at [144].
13. These are the principles that I will apply in this determination.
The person skilled in the art
14. The specification is construed through the eyes of the person skilled in the relevant art. This is the hypothetical person to whom the specification is addressed.[4] This determination plays a central role in determining the validity of the patent:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious...”[5]
[4] General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 134.
[5] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70]-[71].
15. The person skilled in the art is assumed to be a skilled but unimaginative and non-inventive worker in the field of the invention.[6] One formulation describes them as “those likely to have a practical interest in the subject matter of [the] invention.”[7] Notably:
“The identification of the relevant field will, in its turn, determine the characteristics of the notional worker skilled in the art who must provide the answer to the question of whether the invention was obvious. Such characteristics will include the qualifications of the notional worker, the setting in which he or she operates and the practices and techniques that he or she will regard as commonplace and known.”[8]
[6] Minnesota Mining and Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 293.
[7] Catnic Components v Hill & Smith Ltd [1982] RPC 183.
[8] Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at 153; (2002) 212 CLR 411 at 465.
16. As noted above, evidence was provided by Mr John Lee, Mr Steven Lee, Ms Imola Zsigmond and Mr Barry Glazier.
17. Mr John Lee was a consultant who had worked in the food, cosmetic and pharmaceuticals industries in Australia since 1967, and in the confectionary industry since 1986.[9] He had a Bachelor’s degree in Chemical Engineering from The University of New South Wales and an MBA from Macquarie University. Mr John Lee passed away in late 2016.
[9] John Lee at [1.2].
18. Mr Steven Lee is a consultant who has worked in the confectionary industry since 1979. He has a Bachelor of Science degree from The University of New South Wales, a Graduate Diploma in Industrial Management from Swinburne University of Technology and a Certificate IV in Assessment and Workplace Training from William Angliss Institute. The Applicant noted that Mr Steven Lee has experience in the preparation of heat-resistant chocolate.[10]
[10] Steven Lee at [3.29] to [3.30].
19. Ms Zsigmond is an Associate Director Leading Global Productivity for Chocolate in Research, Development and Quality at Mondeléz UK R&D Limited. She has about 26 years of experience in research and development of confectionaries (mainly chocolate). She has a degree in Food Science and Technology from the University of Galati, Romania. The Applicant noted that she has led research programs aimed at developing heat resistant chocolate.[11]
[11] Zsigmond at [6].
20. Mr Glazier is the Global Chocolate Product Science Director with Mars Global Chocolate. He has worked in the confectionary industry since 1995. He has a Bachelor of Science, Marketing from Ithaca College, Ithaca, New York, and Master of Science, Food Science from The Pennsylvania State University, University Park, Pennsylvania. His evidence indicates that he has been involved in developing and testing “heat robust chocolate solutions”.[12]
[12] Glazier at [1.7].
21. Neither party disputed that all of the experts were well qualified to provide evidence on this matter. However the Applicant noted that Mr John Lee had previously acted as a witness in a number of oppositions that had involved the Opponent or one of their subsidiaries, and that he had been engaged as a consultant by the Opponent between 2010 and 2011.[13] They also submitted that Mr Glazier’s evidence is “primarily an exercise in advocacy on behalf of his employer”, and that it “should be approached with circumspection.” They highlighted several instances that they considered argumentative, conclusory and unsubstantiated.[14] Where necessary I have taken such matters into account when determining the weight that I can give evidence from each party.
[13] Applicant written submissions for hearing at [15].
[14] Applicant written submissions for hearing at [20].
The specification and claims
22. Under “Field of the Invention”, the specification states that:
The present invention is directed to a process for the manufacture of a heat resistant chocolate product. The invention is further directed to a heat resistant chocolate product.
23. The specification provides a definition of heat-resistant chocolate as follows:
A chocolate product is ‘heat-resistant’ as defined herein when it can be exposed for prolonged periods of time to a temperature of up to 40°C, or up to 50°C, without losing its shape. Specifically, a chocolate product is regarded as heat-resistant if it exhibits a penetration force of 100 g or higher after being maintained at 50°C for 2 hours. For comparison, a conventional, non-heat-resistant chocolate product would typically exhibit a penetration of 55 g or less.
24. Under the “Background of the Invention” the specification states that:
Heat-resistant chocolate products containing chocolate or chocolate compound are of particular interest for consumers in countries with a hot climate, or during the hot seasons, when conventional chocolate products become soft and sticky when temperatures exceed 30oC.
25. The specification goes on to state that:
It is an object of the present invention to provide a process which can, at similar or reduced efforts and with conventional machinery, provide a chocolate product, such as chocolate in tablet (block) form or as a coating, with improved heat resistance, shelf stability at elevated temperatures and sensory characteristics, or a balance thereof.
26. The “Summary of the Invention” indicates that the invention relates to a process for the manufacture of a chocolate product comprising the steps of refining, conching and optionally tempering a chocolate mass which comprises 15 to 35 wt.% of a fat component (component A) which is liquid at standard ambient temperature and pressure, and 1 to 15 wt.% of a hydrated component (component B) comprising hydrated salts, hydrated sugars and hydrated sugar alcohols, wherein the temperature of the chocolate mass during refining, conching and optional tempering does not exceed 50°C.
27. I note that the general description of the invention states that the component B is selected from hydrated salts, hydrated sugars and hydrated sugar alcohols, but amendments were filed during the prosecution of the case that limited the scope of this component as where this component was between 1 to 15 wt.% of dextrose monohydrate. I note that this does not preclude the inclusion of the other defined hydrated materials in this component up to the remainder of the 15 wt.%.
28. The application sets out two aspects of the invention. These correspond to the process defined by Claim 1 and the product defined in Claim 7. Under “Detailed Description of the Invention” the specification provides further detail on these first and second aspects of the invention. The fat component A may comprise cocoa butter, cocoa butter alternatives (including cocoa butter substitutes, cocoa butter replacers and cocoa butter equivalents), milk fat and vegetable fats which are liquid at standard ambient temperature and pressure.
29. Component A preferably comprises 25 to 35 wt.% of the chocolate mass, and in particular 28 to 30 wt.% for block-molded tabletted formats, and higher fat contents of ≥ 30 wt.% for enrobing applications. The specification states that milk fat (which is apparently also referred to as butter fat) typically lowers the melting profile of conventional chocolate. The overall composition and especially component B is said to enable the use of increased levels of milk fat and hence deliver a creamier tasting product. In a preferred embodiment the chocolate mass comprises at least 1 wt.% and up to 15 wt.% of milk fat.
30. Component B comprises dextrose monohydrate. Other hydrated components that may be used include hydrates salts (hydrates of alkali metal salts and hydrates of alkali metal earths), hydrated sugars (hydrated monosaccharides, hydrated disaccharides such as lactose monohydrate, and hydrated polysaccharides) and hydrated sugar alcohols (such as hydrated forms of glycerol, sorbitol, erythritol, xylitol, mannitol, lactitol, and maltitol). Component B is said to typically contain 5 to 15 wt.% of water based on the total amount of component B.
31. The chocolate product of the invention preferably contains at least 1.1 wt.% of total moisture as determined by Karl Fischer titration. A preferred range is 1.3 to 3 wt.%. In a preferred embodiment the chocolate product contains at least 2 wt.% of free moisture. Two specific examples are provided. Example 1 shows a chocolate product containing 5% dextrose monohydrate, and Example 2 describes a product containing 10% dextrose monohydrate. The mixtures are refined and conched at a temperature lower than 50°C. Both examples were thermo-cured at 50°C for four weeks.
32. The specification ends with 19 claims. Claims 1, 7 and 13 are independent claims. The claims are set out in full in the Annex to the decision.
Clarity
33. Section 40(3) of the Act requires that the claims must be clear. The Opponent made submissions in relation to Claims 7 to 10, 12 and 14 to 16. The Opponent raised two issues in this regard – I will deal with these in turn. Claim 7 is as follows:
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 dextrose component upon release of water from dextrose monohydrate during production.
The amount of dextrose provided by the dextrose monohydrate
34. Claim 7 includes the characterising feature that:
…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.
35. The Opponent submitted that Claim 7 and dependent claims 8 to 10, 12 and 14 to 16 lack clarity since it is unclear how 1 to 15 wt.% of dextrose monohydrate can yield 1 to 15 wt.% dextrose. Mr Glazier calculated that the maximum yield of dextrose that could be provided from 1 to 15 wt.% dextrose monohydrate is 0.91 to 13.65 wt.% (based on dextrose monohydrate containing 91% anhydrous dextrose).[15] The Opponent therefore argued that the definition in Claim 7 of the product containing 1 to 15 wt.% dextrose contravened the principle of conservation of mass. A consequence of the present definition is that the skilled person would not be able to determine whether they would be infringing the claim, and in particular whether the claim should be determined on the basis of the dextrose monohydrate in the starting material or the dextrose in the final product.
[15] Glazier at [1.51].
36. The Applicant considered this a technical argument and the Opponent was essentially criticising the feature for being imprecise. They argued that the specification clearly sets out the relationship between the components and the fact that the dextrose in the final chocolate product corresponds to the dextrose monohydrate used in the chocolate production. They also submitted that the definition provides an approximate correlation within a range that would be considered acceptable by the person skilled in the art.
37. A claim will lack clarity if a third party cannot ascertain whether a proposed action would fall within the ambit of a claim.[16] A claim does not lack clarity because it uses inexact expressions or is difficult to construe as long as it provides a workable standard suitable to the intended use.[17] The key consideration is what constitutes a workable standard in the present case.
[16] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59.
[17] Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [40].
38. In this regard I note that the imprecision in the definition of component B’ is impacted by the presence of other components. The quantity of water in each of these materials is different and would contribute to the final wt.% of component B’ to different amounts. This factor points towards it being reasonable for there be a degree of imprecision in the general definition of component B’.
39. On the other hand the quantities defined for dextrose and dextrose monohydrate differ by almost 10% between the defined value and the actual value that would be obtained from the starting material. Whilst a workable standard would provide for some imprecision, including rounding of figures, the level of imprecision here is not appropriate. For example the Opponent highlighted the theoretical maximum yield of dextrose from 15 wt.% dextrose monohydrate is 13.67. This would appear outside the usual range of rounding that would be applied (for example, rounding to 2 significant figures would take this value to 14 rather than 15).
40. On balance I consider that the claim is unclear. Two conditions are possible: either (a) 1 to 15 wt.% of dextrose monohydrate is used in the starting chocolate mass; or, (b) 1 to 15 wt.% dextrose is obtained at the completion of the process from the use of dextrose monohydrate in an amount capable of providing that quantity. It is not clear which of these applies from the definition provided in Claim 7 and therefore the skilled person would not be able to determine with sufficient whether or not a particular action infringed the claim. This determination also applies to dependant Claims 8, 10, 12 and 14 to 16 which do not provide any further definition that would clarify this point.
The temperature at which refining and conching is performed
41. The Opponent also submitted that Claim 8 and dependent claims 9, 10, 12 and 14 to 16 lack clarity as the phrase “refined, conched and optionally tempered at a temperature not exceeding 50°C” is ambiguous. They considered that the phrase could be read in two ways: (i) that the temperature defined only applies to the optional tempering step, or (ii) that it also applies to the steps of refining and conching.
42. The Opponent noted that Mr John Lee considered that only the tempering step was performed at below 50°C,[18] while Mr Steven Lee stated that all of the steps were carried out at below 50°C.[19] They argued that the difference in the expert evidence on this point indicated that the claim lacked clarity.
[18] John Lee at [1.89].
[19] Steven Lee at [1.89].
43. The Applicant submitted that the Opponent was seeking to introduce uncertainty where none was reasonably present. Regardless of whether or not this is the case, I consider that Claim 8 is clear in meaning and defines that all three steps are carried out at less than 50°C. The fact that the parties cannot agree on the construction does not render the claims unclear.[20] Even though there may be alternative ways of interpreting Claim 8, reading the specification as a whole would resolve such ambiguities. For example, the specification at pages 8 to 9 provides a description of the various steps and specifies that in accordance with the invention the temperature does not exceed 50°C during these steps. I therefore consider that a meaning can be given to these claims and they do not lack clarity.
Conclusion on Clarity
[20] Novozymes A/S v Danisco A/S (2013) 99 IPR 417 at [95].
44. Claims 7, 8, 10, 12 and 14 to 16 lack clarity.
Support
45. Section 40(3) requires that the claims must be supported by matter disclosed in the specification. The test for support was provided by the delegate in CSR Building Products Limited v United States Gypsum Company at [115][21] as follows:
(i)Construe the claims to determine the scope of the invention;
(ii)Construe the description to determine the contribution to the art; and,
(iii)Decide whether the claims are supported by the technical contribution to the art.
[21] CSR Building Products Limited v United States Gypsum Company [2015] APO 72
46. A claim will exceed the technical contribution to the art if: (i) it encompasses results which are not enabled, such as the making of a wide class of products when it enables only one of those products and discloses no principle which would enable others to be made; or (ii) it encompasses every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention.[22] As noted in Fuel Oils/EXXON, if a technical feature is described and highlighted in the description as being essential features of the invention, but not being included in the claims then the claim will extend beyond the technical contribution to the art.[23]
[22] Biogen Inc. v Medeva Plc [1997] RPC 1 at 51.
[23] Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 at 659-660.
47. In Generics v Lundbeck,[24] the invention related to a product claim. The Court held that the product (which was novel and inventive) formed the technical contribution to the art. The process of making the compound formed the inventive concept. In reaching this conclusion, Lord Walker made the following observations on the difference between the “inventive concept” of a claimed invention and the “technical contribution to the art” made by the invention:
“‘Inventive concept’ is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 169 paras 112-113) which entitles the inventor’s achievement to be called inventive. The invention’s technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.”
[24] Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13.
48. Lord Neuberger further stated that:
“There is a difference between the ‘inventive step’ or ‘inventive concept’, on the one hand, and the technical contribution to the art”, on the other hand. I respectfully agree with the explanation of the difference between the two concepts given in para. 29 to 31 of Lord Walker’s opinion. When considering the validity of a simple product claim (such as is under scrutiny on this appeal), it may be that concentrating on the identification of the inventive step rather than the technical contribution can lead to error. “Inventive step” suggests how something has been done, and, in the case of a product claim at any rate, one is primarily concerned with what has been allegedly invented, not how it has been done. On the other and where the claim is for a process or (as in Biogen [1997] RPC 1) includes a process, the issue of how the alleged invention has been achieved seems more in point.”
49. The Opponent argued that several features were essential features of the invention, but were not included in the claims: refining and conching at 50°C or less (Claims 7 and 10 to 19); refining and conching at a sufficiently high temperature to allow for the release of the water of hydration (Claims 1 to 6, 10, 11 and 13 to 19); thermo-curing (Claim 1 and 4 to 19); obtaining 1 to 15 wt.% dextrose from 1 to 15 wt.% dextrose monohydrate (Claims 7 to 10, 12 and 14 to 16); and no disclosure of determining free water from the hydrated salts, sugars and/or sugar alcohol (Claims 7 to 10, 12 and 14 to 16). They argued that the technical contribution to the art does not lie in the provision of chocolate products per se, but in the method of preparing those products.[25]
[25] Opponent submissions at [86].
50. The Applicant submitted that the technical contribution to the art lies in the release of water from 1-15% dextrose monohydrate during production to provide a heat resistant chocolate product.[26] The Applicant considered that the Opponent’s reliance on Fuel Oils/EXXON requires that the relevant technical features must be described and highlighted in the specification as being an essential feature of the invention – in other words the argument ought to be borne out squarely by the terms of the specification and not from an expert’s speculation as to its importance.[27] Furthermore they argued that the description clearly sets out each of the components that can be included in the chocolate product, as well as processes for manufacturing the claimed product.
[26] Applicant submissions at [70].
[27] Applicant submissions at [68].
51. For convenience I will discuss what the specification indicates is the contribution to the art first.
The contribution to the art
52. The specification states under the Summary of the Invention that:
The invention generally relates to a process for the manufacture of a chocolate product comprising the steps of refining, conching and optionally tempering a chocolate mass which comprises
(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.%,and
(B) one or more of hydrated salts, hydrated sugars and hydrated sugar alcohols, wherein the total amount of hydrated salts, hydrated sugars and hydrated sugar alcohols is 1 to 15 wt.%,
wherein the temperature of the chocolate mass during refining, conching and optional tempering does not exceed 50°C.[28]
[28] Specification at page 3, lines 3 to 18.
53. The specification then describes two aspects of the invention: a process and a product. The first aspect, the process, is consistent with the general description of the invention given above, but is limited to the use of dextrose monohydrate as all, or part, of component B. The specification also states that:
Without wishing to be bound by theory, it is contemplated that component (B) acts as an agent providing moisture to the system during processing of the chocolate mass. In particular, it is theorized that there is localized heating during refining and/or conching or later during thermo-curing, resulting in the controlled release of water of hydration from the compounds encompassed by component (B), thus generating "free water", i.e. water not chemically associated. The free water will dissolve the hydrated sugar(s) and other hydrated compounds in the chocolate mass, thus serving to propagate the dissolution of further sugar(s) and other hydrated compounds and liberation of further water of hydration, to dissolve even more of such hydrated sugars/compounds in a domino-like effect. It is contemplated that the dissolved sugars/compounds form a super-saturated solution which then re-crystallizes and forms an amorphous structure linking the sugars/compounds together so as to form a continuous network, simultaneous (sic) creating heat resistance of the resulting chocolate product.[29]
[29] Specification at page 10, line 26 to page 11, line 8.
54. This suggests that the manner in which the water of hydration is released is important to achieving the heat resistant chocolates of the invention. The second aspect relates to a heat resistant chocolate product. The specification states that:
The chocolate product according to the second aspect of the invention generally comprises (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.%, and (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.%.[30]
[30] Specification at page 11, lines 11 to 20.
55. The specification states that the proportion, constituents and proportions of constituents of component A “generally” are as defined for the first aspect of the invention. Similarly, the compounds constituting component B’ “generally correspond” to the non-hydrated compounds encompassed by component B as used in the process of the first aspect of the invention. The second aspect of the invention concludes that:
The chocolate product obtained in the first aspect of the invention and/or in accordance with the second aspect of the invention is preferably a heat-resistant product.[31]
[31] Specification at page 13, lines 16 to 20.
56. This suggests to me that compositions and processes using the general hydrated salts, sugars and alcohol sugars and conditions do not necessarily provide heat-resistant chocolate products. However my understanding is that 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 provides the heat resistant chocolate product. In particular, the conditions under which the controlled release occurs involves refining, conching and optional tempering at a temperature the does not exceed 50°C. Consistent with the statements of Lord Walker in Generics v Lundbeck, the inventive concept – the idea or principle of more or less general application – lies in the manner in which the heat-resistant chocolate products are prepared.
57. The technical contribution – how far forward it has carried the art – at first blush appears to lie in the heat-resistant chocolate products per se, comprising components A and B’ as set out in the specification. This is consistent with the guidance provided in Generics v Lundbeck, wherein the disclosure of only one method of making a single product was considered to provide an enabling disclosure for a claim to the product per se.
58. However as noted by Lord Neuberger in Generics v Lundbeck (referencing Biogen v Medeva), in the case of a process or a claim that includes a process (such as a product by process) the issue of how the alleged invention has been achieved seems more in point.[32]
[32] Generics (UK) Limited and others v H Lundbeck A/S ibid.
59. In the present case, it is not the particular constituents that provide the heat-resistant chocolate products of the invention – as mentioned above the heat-resistant chocolate products are obtained via 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. With the exception of the hypothesis of the manner in which the hydrated materials release their water of hydration during processing to provide a “continuous network” that provides heat resistance to the chocolate products, there are no features of the heat resistant chocolate products that could be considered generally characteristic other than the manner in which they are prepared.
60. I therefore consider that the contribution to the art 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 provides the heat resistant chocolate product. In this case the contribution corresponds to the inventive step.
61. Having determined the contribution to the art, I will now construe the claims and determine whether they are supported.
Claim 1 - support
62. Claim 1 defines a process of making a heat resistant chocolate product. The steps in the process are fairly self-evident. Components A and B are mixed to form a chocolate mass, refined and conched. The temperature is kept at or below 50°C during the processing steps. Component B must comprise at least 1 wt.% (based on the total chocolate mass) of dextrose monohydrate.
63. The Opponent’s submissions in relation to Claim 1 were directed at (i) the omission of the essential feature of refining and conching the chocolate at a high enough temperature to allow release of the water; and, (ii) omission of the essential feature of thermo-curing.
Conching
64. The first point made by the Opponent appears to relate to clarity and the recognised meaning of the term conching. In this regard none of the experts appeared to have any difficulty with this term and contrary to the submissions made by the Opponent at hearing the experts considered it necessary to define only the upper temperature limit at which the process could be performed. No specific issue was raised concerning the lower temperature. Mr Steven Lee stated that conching generally consists of three phases – dry conching, the pasty phase and the liquid phase. Localised heating during conching causes the cocoa butter to gradually melt and for the solid particles (sugar, cocoa solids) to stick together and become pasty. Eventually as the cocoa butter continues to melt a liquid form is achieved.[33] The specification states that the conching step provides a chocolate mass which, at the conching temperature, is liquid.[34] Ms Zsigmond understood this to mean that:
“The inventors…found 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 but the mixture may still be processed using standard equipment. This solved one of the largest and most widely-known problems with incorporating added moisture into chocolate compositions.”
[33] Steven Lee at [3.23].
[34] Specification at page 9, lines 21 to 22.
65. 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. I do not consider that it is necessary that a lower temperature be defined. However, I have determined that the technical contribution to the art is based on the feature of the dextrose monohydrate releasing water of hydration during the processing. In particular the refining, conching and optional tempering steps need to be done under conditions in which the water of hydration is released. While Claim 1 defines that dextrose monohydrate is present in the chocolate mass, it does not clearly define that the conditions under which the processing is performed releases the water of hydration nor is this implicit in the claim as presently drafted. On that basis I consider Claim 1 exceeds the technical contribution to the art and is not supported. Claims 2 to 6, 10, 11 and 14 to 19 are dependent on Claim 1 and do not provide any further features that would address this deficiency. Therefore these claims also lack support.
Thermo-curing
66. The Opponent’s submission in relation to thermo-curing was based on the statement in the specification that:
“For establishing heat resistance of the chocolate mass and, thus, producing a heat resistant chocolate product, the optionally tempered and optionally molded and/or packaged chocolate mass is thermo-cured, as is conventionally known in the art.”
67. The Applicant argued that thermo-curing is not described as an essential process step in the specification and the Opponent had provided no evidence to show that this was essential to achieve heat resistance. They noted that Mr Steven Lee stated after reading the specification that “it would be a useful additional step to perform thermo-curing to enhance the heat resistance of the chocolate product through stabilisation of the structure.”[35] Mr Steven Lee further stated that:
“I do not think that thermo-curing is an essential step for conferring heat resistance to the chocolate product described that has been made with the described ingredients and conching/refining temperature. I do consider that thermo-curing would enhance the heat resistance of a chocolate. As I discussed above at paragraph 3.28, thermo-curing involves maintaining a finished chocolate product at a constant temperature between about 30° to 35°C for a duration of time, usually one or more weeks, to help maintain the crystal structure of the cocoa butter in the stable type V crystal form and stabilise the chocolate product. In my view, thermo-curing would help to maintain the heat resistant properties of the chocolate conferred prior to this step.”[36]
[35] Steven Lee at [4.12].
[36] Steven Lee at [4.30].
68. Mr Glazier stated that Mr Steven Lee’s use of the terms “maintain” and “enhance” here was inconsistent with the term “establishing” as used in the specification. He considered that:
“The term ‘establish’ typically means to initiate or create. So, on my reading of the specification, I take the term ‘establishing’ to mean that the thermo-curing step is needed for the heat-resistance to be imparted to the chocolate.”[37]
[37] Glazier at [1.39].
69. On balance I find the Applicant’s submission on this point to be persuasive. The specification generally states that this is an optional step, and while the specification indicates that thermo-curing “establishes” heat resistance, the evidence of Mr Steven Lee points towards this being in the nature of improving the duration of heat resistance. While Mr Glazier has provided definitions for this term (to initiate or create), my understanding is that other definitions exist for this term. For example, an alternative meaning is to set up on a firm or permanent basis.[38] This definition would be consistent with the evidence of Mr Steven Lee that suggests that thermo-curing helps to maintain the crystal structure of the cocoa butter in the stable type V crystal form. Mr Glazier did not dispute the technical aspects of Mr Steven Lee’s evidence on this point but rather questioned the consistency of Mr Steven Lee’s terminology. I find these submissions of little assistance on this point. On balance I am satisfied that thermo-curing is not an essential feature of the invention.
[38] The Concise Macquarie Dictionary
Claim 7- support
70. Claim 7 is a product claim, but includes features linked back to the process as follows:
·0.05%-2.25% water from hydrated salts, hydrated sugars, and/or hydrated sugar alcohols;
·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.
71. I understand this to impose a limitation of the product claim as to the ingredients used in the process of making that product.
72. Component B’ is “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.%”. Both Mr John Lee and Mr Steven Lee understood this definition to refer to the dehydrated forms of the corresponding hydrated compounds which have lost their water of hydration during processing.[39] The claim further requires 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’ (in an amount of 1 to 15 wt.% of the total chocolate product), or alternatively that other hydratable materials may be used in combination with at least 1 wt.% dextrose, in an amount of up to the remainder of the 15 wt.% total hydratable material.
[39] John Lee at [1.81], Steven Lee at [4.34]..
73. The claim also defines that the product also contains “0.05%-2.25% water from hydrated salts, hydrated sugars, and/or hydrated sugar alcohols”. This range appears to have been calculated from the typical content of water in hydrated materials which is given in the specification as being 5-15 wt.% of component B.[40] However Mr John Lee stated that:
“From the specification it is not clear whether the water ‘from’ the hydrated materials is water that is released by the hydrated materials (and is therefore a component of the free water) or contributed by the hydrated materials (and is therefore a component of total water, including both free and associated water).”[41]
[40] John Lee at [1.83].
[41] John Lee at [1.82].
74. I agree with this assessment. The claim defines that the total amount of hydratable salts is from 1 to 15% and that the water is “from” the corresponding hydrated materials. There is no clear limitation that no hydrated material is present in the chocolate product, nor that the entire amount of the precursor hydrated material is dehydrated to give the hydratable materials.
75. Similarly, 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. In my opinion this does not require that the dextrose monohydrate release all of the water of crystallisation during production to form dextrose, but there is a requirement that at least 1 wt.% is released.
76. As noted above the claim incorporates process steps – in effect it is a product by process. Therefore the issue of how the alleged invention has been achieved is a consideration in determining the issue of support. While the claim defines that the dextrose in the composition is derived from dextrose monohydrate by the release of water during the production stages, there is no definition of the conditions under which this occurs, and in particular the refining, conching and optional tempering at a temperature at or below 50°C in a manner that releases the water of hydration. As noted above, these conditions are part of the technical contribution to the art.
77. Claim 7 therefore does not correspond to the technical contribution in the art set out in the description and lacks support. Dependent Claims 8 to 10, 12 and 14 to 16 similarly lack support because they do not add features that address this issue.
78. For completeness, the Opponent also raised the issue that Claim 7 lacks support for two additional reasons.
79. Firstly, the claim defines that that the chocolate product comprises 1 to 15 wt.% dextrose that comes from the incorporation of 1 to 15 wt.% of dextrose monohydrate during production of the chocolate product. I have already found that this feature lacks clarity and there is no need to further consider this point.
80. Secondly the Opponent also submitted that Claim 7 defines that the composition contains 0.05% to 2.25% water from hydrated salt, sugars and/or sugar alcohols but there was no disclosure of a method for determining free water from these materials, and therefore the skilled person would not be able to determine whether or not they have worked the alleged invention. I consider that this is not strictly an issue under the ground of support, but rather under sufficiency, essentially being a question of sufficiency by ambiguity, and will address it under that ground.
Claim 13 - support
81. Claim 13 is another product claim, but in contrast to Claim 7 there is no reference to the process steps:
13. A heat resistant 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,
wherein the chocolate product contains at least 1.1 wt.% of total moisture, as determined by Karl Fischer titration.
82. Notably the claim defines the inclusion of dextrose monohydrate, but does not define any particular amount of this component. Dextrose, in an anhydrous form, is present in an amount of 1 to 15 wt.%. There is no explicit or implicit relationship defined between the two components – in contrast to Claim 7, for example, the claim does require that the dextrose is formed by the release of water from dextrose monohydrate during processing.
83. Furthermore the chocolate product also contains 1.1 wt.% of total moisture, but there is no definition of the form of the water (free or bound). The total moisture defined does not necessarily include any free water that has been released during the processing of a dextrose monohydrate-containing chocolate mass.
84. As noted previously I consider the technical contribution to the art lies in 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 provides the heat resistant chocolate product. Admittedly Claim 13 does define a heat resistant chocolate product, and as a product claim the technical contribution would ordinarily lie in the product per se. However the product is characterised only by the components (notwithstanding the absence of any limit on the amount of dextrose monohydrate in the composition), and there is no indication that these features themselves, without the particular production process, provide the heat resistant properties in the chocolate product. As noted by Lord Hoffmann in Biogen v Medeva: [42]
“It is not whether the claimed invention could deliver the goods, but whether the claims cover other ways in which they might be delivered: ways which owe nothing to the teaching of the patent or any principle which it disclosed.”
[42] Biogen Inc. v Medeva PLC (1997) 38 BMLR 149, [1997] RPC 1, [1996] UKHL 18 at [70].
85. In this case the claim encompasses all heat resistant compositions that comprise the defined ingredients. I consider that the breadth of Claim 13 exceeds the contribution to the art and includes heat resistant chocolate products that would owe nothing to the teaching of the invention. Claims 14 to 19 similarly lack support as these define no further features that would overcome the issue raised in respect of Claim 13.
Conclusion on support
86. Claims 1 to 19 lack support.
Sufficiency
87. Subsection 40(2)(a) of the Act requires that a complete specification disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. As expressed by Jacob LJ:
“The heart of the test is: ‘Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill.’”[43]
[43] Novartis AG and Cibavision AG v Johnson & Johnson Medical Limited [2010] EWCA Civ 1039 at [74].
88. The provisions of section 40(2)(a) have recently been considered in detail in CSR[44] and Evolva.[45] In CSR the delegate adopted a three-step test for determining whether the specification provided a clear enough and complete enough disclosure of the claimed invention as follows:
- What is the scope of the invention as claimed?
- What does the specification disclose to the skilled person?
- Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims?
[44] CSR Building Products Limited v United States Gypsum Company [2015] APO 72.
[45] Evolva SA [2017] APO 57.
89. An expanded approach was taken in Evolva, wherein the third consideration of enablement was assessed according to the following criteria:
- Is it plausible that the invention can be worked across the full scope of the invention?
- Can the invention be performed across the full scope of the claims without undue burden?
90. The Opponent’s submissions on this ground were much the same as those made under support. I will deal with each of these in turn.
Conching at 50°C or less
91. The gist of the Opponent’s argument was that Claims 7 and 10 to 19 were not limited to a method in which refining and conching was carried out at or below 50°C. They argued that the specification only enabled the use of this temperature range. I have found that these claims are not supported, so this is largely a moot point since amendments responsive to the issue under support will most likely address this issue. I therefore do not consider it necessary to further consider this issue.
Conching at a high enough temperature to release water of hydration
92. The Opponent’s submissions on this point were much the same as those made under support: namely that the only method described in the specification for imparting heat resistance requires a sufficiently high temperature to release the water of hydration from dextrose monohydrate. However the Opponent’s submissions also went to the heart of the experimental evidence provided in support of the claims.
93. In particular, Mr John Lee stated that:
“The Applicant further hypothesises that the "free water" dissolves sugars and other compounds in the chocolate mass, allowing the formation of a continuous network that provides heat-resistance in the resulting chocolate product. As discussed above, it was well-known to refine and conch chocolate containing hydrated materials at low temperature to prevent the release of water of crystallisation, contrary to the Applicant’s hypothesis. It may be plausible that the low temperature during refining and conching prevents mass-migration of moisture from the hydrated materials, but allows instead a slow release. However, I see no evidence in the opposed specification, such as free water measurements, to support this theory. Strangely, the Applicant has gone to the trouble of providing a method for measuring free water (see page 14, lines 12-22) that presumably could have been used to support their theory, but have not actually used that method to do so. Therefore, the possible presence of "free water" in the Applicant’s chocolate products and its relationship to heat-resistance is simply conjecture.”[46]
[46] Mr John Lee at [1.73].
94. Notably Mr John Lee acknowledges the plausibility of the hypothesis that low-temperature conching provides a controlled release of the water of hydration. His concern here was that there was no evidence in the way of testing for free water in support of the hypothesis – this is dealt with further below. Mr Steven Lee also considered this hypothesis to be plausible:
After reading the Accepted Specification, I can see how it would be that there is controlled release of water during the process, particularly during the refining and conching steps, which imparts heat resistance of the final chocolate product. I understand that conducting refining and conching at a low temperature, at 50°C or lower, would generally prevent any mass liberation of water from the hydrated component (B). I follow the theory that localised heating caused by frictional heat generated between particles during refining and conching (particularly during the dry conching phase of conching) would lead to slow and controlled liberation of water from the hydrated component (B) to allow a continuous network to form, conferring heat resistance to the chocolate product.
95. As noted previously, neither expert stated that it was necessary to define a lower temperature for the conching process. I also note that both experts acknowledged that the low-temperature conching process to release water of hydration was plausible. I have no evidence before me to suggest that determining a temperature for conching would present an undue burden of experimentation for the skilled person. I therefore consider this ground has not been made out.
Thermo-curing
96. This issue has been discussed above under the ground of support. The Opponent’s submission on sufficiency essentially repeated the same submissions, arguing that the only method described in the specification employed thermo-curing, that this was an essential feature of the invention and that it would be an undue burden on the skilled person to determine how to impart heat resistance to products where thermo-curing was not performed.
97. I have determined that thermo-curing is not an essential feature of the invention. The key issue appears to be related to whether the products would possess heat-resistant properties in the absence of a thermo-curing step. In this regard I note that, as discussed above, Mr John Lee considered it plausible that low temperature conching of the chocolate mass could release the water of hydration in a controlled manner to provide for the formation of a continuous network that in turn provides heat-resistance in the resulting chocolate product. The evidence of Mr Steven Lee indicates that the additional thermo-curing step provides for a change to the structure of the chocolate as a result of the formation of the stable type V crystal form. Thus the thermo-curing step provides an additional level of heat resistance to that provided through the heat resistance purportedly provided by the formation of a continuous network during the processing.
98. I therefore do not consider that the Opponent has made out this ground.
Enablement of 1 to 15 wt.% dextrose from 1 to 15 wt.% dextrose monohydrate
99. The Opponent’s arguments on this point were the same as those under Clarity for Claim 7. I do not consider it necessary to further consider this point.
Method for determining free water from the hydrated salts, sugars and/or sugar alcohols
100. The gist of the Opponent’s submissions on this point was that Claim 7 defines the inclusion of 0.05%-2.25% water from hydrated salts, hydrate sugars and/or hydrated sugar alcohols, but as stated by Mr John Lee, in order for the skilled person to determine this feature they would need to know how much of the total free water in a product was from the hydrated materials (including the dextrose monohydrate) and how much was from other components such as proteins.[47] Mr Steven Lee stated that he had no difficulties with the explanation given in the specification, and that the test procedures were a workable technique for determining the particular forms of water in the product.[48]
[47] John Lee at [1.74].
[48] Steven Lee at [4.25].
101. The Opponent considered this did not address the issue raised by Mr John Lee, and further argued that the methods described in the specification would not be able to differentiate between water released by dextrose monohydrate and water released by any other hydrated material, and that the evidence does not establish that a means for determining the amount of free water released from hydrated materials is part of the common general knowledge. However there was no specific evidence provided as to the extent to which these issues would impact. I note that the onus lies with the Opponent to establish, on the balance of probabilities, that the specification is not clear enough and complete enough for the skilled person to work the invention. I do not consider that the Opponent has discharged this onus. The specification provides means of determining the free and bound water content, and while there may be circumstances where these would be impacted by other hydrated ingredients, the evidence of Mr Steven Lee suggests that the skilled person can calculate the water content of any ingredient.[49] There is no evidence to establish that this is not plausible or that it would represent an undue burden on the skilled person to determine the free and bound water content. Accordingly this ground has not been made out.
Conclusion on sufficiency
[49] Steven Lee at [4.34].
102. In summary the Opponent has not established that the specification is not clear enough and complete enough for the skilled person to perform the invention.
Novelty
103. Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim.
104. 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 Aicken J:
“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.”[50]
[50] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at 235.
105. This test is satisfied if the alleged anticipation discloses all the essential features of the invention claimed.[51] Furthermore a prior publication may not explicitly disclose all of the features of the invention, but could still deprive the claimed invention of novelty if the missing information or feature is inherent:
“If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but 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, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.”[52][51] Nicaro Holdings Pty Ltd v Martin Engineering Company [1990] FCA 40; 16 IPR 545 at 549.
[52] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited supra at 485 to 486.
106. The Opponent raised two documents in relation to novelty: US 3,218,174 (D4) and US 2010/0183772 (D12). For convenience I have retained the reference to these documents as D4 and D12. I will deal with each of these in turn.
Novelty of Claim 1 in view of D4
107. D4 discloses a process for preparing a heat resistant chocolate comprising the steps of mixing together (a) a first mass of sweetened, non-conched chocolate of which at least the greater part of the sugar is in amorphous form and (b) a second mass of conched chocolate containing sugar in a crystallized form; moulding and packing the product in a hermetic wrapper and finally heat treatment wherein the chocolate is held at a constant temperature of between 20 and 35°C for between 10 and 60 days. A key point in relation to D4 is that it involves the preparation of two separate chocolate masses – one being conched and the other being non-conched. The first (non-conched) chocolate mass may contain dextrose monohydrate, but the second (conched) chocolate mass contains only sucrose.
108. The Opponent highlighted various features of the claim as being disclosed in D4 but I consider there are simply no clear and unmistakable directions to the present invention as defined in Claim 1. To this end the Opponent’s submissions were largely based around an argument that there is a “continuum” between mixing and conching,[53] and when the two separate masses were combined and mixed that this would represent a conching step. Notably the Opponent argued that the refining step was disclosed by D4, but this is in relation to only the first chocolate mass and not to the combined mass prior to the purported conching step.
[53] Glazier at [1.46].
109. On balance I do not find the Opponent’s submissions persuasive. Even if I were to accept the argument that the process of conching was indistinguishable from mixing, the process of Claim 1 defines a series of steps in which all of the ingredients are first combined, then refined and finally conched. This is not the same process as the one disclosed in the citation.
Novelty of Claim 7 in view of D4
110. The Opponent submitted that D4 disclosed heat resistant chocolates that possessed all of the features of Claim 7. I will address each of the features of Claim 7 in turn.
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 in a total amount of 15 to 35 wt.%
111. D4 specifically discloses a total fat content of about 36%. Mr John Lee construed this as being “36% or slightly below” since D4 warns against exceeding this percentage. The example comprises Cocoa butter in an amount of 14.6% and liquid cocoa in an amount of 14%. These appear to meet the requirements of component A in Claim 7.
A total amount of hydratable salts, hydratable sugars and hydratable sugar alcohols of 1 to 15 wt.%;
112. Mr John Lee stated that the process of boiling the sugar syrup would release the water of hydration from the dextrose monohydrate, thereby forming a hydratable sugar.[54] He also provided calculations estimating the dextrose monohydrate as 4.2% which would provide about 3.79% of anhydrous dextrose in the final product.[55] I consider that this feature of Claim 7 is disclosed by D4.
0.05%-2.25% water from hydrated salts, hydrated sugars, and/or hydrated sugar alcohols
[54] John Lee at [1.122]
[55] Exhibit JL-9.
113. Mr Steven Lee stated that there would be no moisture in the final product from the dextrose monohydrate due to the boiling of the sugar syrup prior to addition to the first chocolate mass.[56] This is consistent with Mr John Lee’s evidence immediately above to the extent that the boiling step would result in hydratable sugars. However the Opponent noted that D4 discloses that the boiled syrup retains 1-2% moisture. Mr Glazier stated that:
“A heat resistant product having 0.05%-2.25% water from dextrose monohydrate is no different to a heat resistant product having 0.05%-2.25% water from some other source if no limitation is placed on the rate of release of the water of hydration… Therefore, I do not see that the source of the water makes any real difference when comparing Claim 7 and the chocolate products of D4.”[57]
[56] Steven Lee at [5.28] to [5.29].
[57] Glazier at [1.59].
114. The Opponent therefore argued that even if Mr Steven Lee was correct that there would not be any moisture in the final chocolate product from the dextrose monohydrate, the inclusion of water from some other source would not materially affect the way the invention works and would represent an inessential feature that cannot confer novelty on Claim 7.
115. I do not find this submission persuasive. The background evidence provided suggests to me that the source of water in a chocolate product is an important consideration as it can impact on the manner in which the product is processed. For example, Mr John Lee stated that:
For some chocolate, part or all of the sugar was replaced with a sugar-substitute, such as polydextrose or a polyol (e.g. lactitol), to create a sugar-free or low calorie chocolate. Either lactitol monohydrate or anhydrous lactitol could be used as a substitute in chocolate. However, as is the case for dextrose and lactose, the hydrated form of lactitol was typically preferred because it is less hygroscopic.”[58]
[58] John Lee at [1.47].
116. Mr John Lee also stated that it was “well-known” that materials having a water of crystallisation required a lower conching temperature to avoid release of water and agglomeration.[59] In view of the evidence I consider, contrary to the statements of Mr Glazier and the submissions of the Opponent at hearing, that the source of the water in a chocolate product would potentially have a material effect on the invention and therefore cannot be considered inessential.
[59] John Lee at [1.72].
117. The evidence establishes that the boiling step used in the preparation of the amorphous sugar product would result in the formation of anhydrous dextrose. There is therefore no disclosure of the feature of 0.05% to 2.25% water being from hydrated salts, hydrated sugars, and/or hydrated sugar alcohols in D4.
Wherein the chocolate product comprises 1 to 15 wt.% of dextrose… 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.
118. Mr John Lee calculated the dextrose content of the final chocolate product as 3.79%.[60] This falls within the range of dextrose defined by the present claim.
[60] Exhibit JL-9.
119. However as discussed, above the evidence indicates that the boiling step used in the preparation of the amorphous sugar results in anhydrous dextrose. In my opinion the key issue here lies in the limitation that is provided by the term “during production of the chocolate product”, and whether this includes the preparation of the amorphous sugar which is used in the initial steps of preparing the first chocolate mass.
120. I do not consider this to be the case. The present process of preparing a chocolate product involves the treatment of a chocolate mass comprising the various ingredients. I consider this step constitutes the production of the chocolate product. In a similar manner D4 discloses the initial production of two chocolate masses. These two masses are then combined and mixed to provide the chocolate product. The first chocolate mass is prepared by combining and mixing various ingredients, including an amorphous sugar component. The description in D4 provides a clear distinction between the step of preparing the product and the initial steps of preparing the chocolate masses.
121. I therefore consider that the feature of the dextrose being formed by release of water from dextrose monohydrate during production of the chocolate product is not disclosed in D4.
122. As an aside, and while it is a moot point in view of my determination that there is no disclosure of this feature, I note that D4 states that the syrup “is prepared, on the basis of the dry matter, with 82% sucrose and 18% of reducing sugars such as those present, for instance, in a syrup of invert sugar or in commercial dextrose monohydrate.” This description indicates that dextrose monohydrate may be suitable for use in this process but the example given in D4 does not identify the specific reducing sugar used. As a consequence, even though there is a general disclosure of dextrose monohydrate, there is a question of whether D4 provides the necessary clear and unmistakable directions to use dextrose monohydrate when it is at least as likely that an invert sugar would be used.
123. Given my determinations above, I do not consider that D4 discloses the invention defined in Claim 7.
Novelty of Claim 13 in view of D4
124. The Opponent submitted that all of the features of Claim 13 were disclosed by D4. I have already considered several of the features in my discussion of Claim 7, and in particular the fat component and the inclusion of 1 to 15 wt.% of dextrose. I consider these features are disclosed by D4. I will therefore concentrate on the other features of Claim 13.
Dextrose monohydrate
125. The Opponent submitted that the presence of dextrose monohydrate in the product defined by Claim 13 indicated that only partial release of water of hydration had occurred, which was contrary to the requirement for controlled release. This led them to conclude that it was an inessential feature and/or parameteritis, and therefore the feature could not contribute to the novelty of the claim.
126. I see no basis for such a conclusion. Inasmuch as the invention described in the specification, and particularly the technical contribution to the art, involves controlled release of the water of hydration, I note that this has been dealt with under the ground of support. The issue here is whether the claim as defined lacks novelty in view of D4 and in particular whether there is a disclosure of all of the essential features of the claim. No evidence has been adduced to show that the presence of dextrose monohydrate would have no material effect on the working of the invention as defined. I therefore consider the feature of dextrose monohydrate to be an essential feature of the claim.
127. The evidence has indicated that the process described in D4, wherein the sugar syrup is boiled, would result in dextrose monohydrate being dehydrated to give anhydrous dextrose. There is no explicit disclosure of any remaining dextrose monohydrate, nor is there any evidence before me to establish, on balance of probabilities, that there would be residual dextrose monohydrate in the final chocolate product. This feature has not been disclosed by D4.
At least 1.1 wt.% of total moisture, as determined by Karl Fischer titration
128. Similarly, the Opponent submitted that the feature of 1.1 wt.% of total moisture was inessential and/or parameteritis because there was no limitation that the water was released in a controlled manner. However there is no evidence before me that establishes that the total moisture does not materially affect the working of the invention. However I do consider that the manner in which the total moisture content is determined (Karl Fischer titration) would not materially affect the working of the invention, and as a consequence I consider that a disclosure of this level of water content, regardless of the manner by which it is determined, would be sufficient.
129. D4 does not explicitly disclose the water content of the final chocolate product. Mr Steven Lee considered that the moisture content of the chocolate products disclosed in D4 would be less than 1%, this being the typical water content of a chocolate product.[61] This evidence was not specifically disputed. I therefore conclude that the feature of at least 1.1 wt.% of total moisture, as determined by Karl Fisher titration, is not disclosed by D4.
Novelty in view of D12
[61] Steven Lee at [5.30].
130. I consider that the consideration of novelty in view of the disclosure in D12 can be dealt with fairly briefly. D12 relates to the preparation of granola comprising chocolate pieces. These suffer separation and smearing problems during preparation of the granola product. D12 solves this problem using chocolate containing dextrose in an amount of 2% to 6%. D12 states that dextrose monohydrate is most commonly used because of its low cost, availability and suitability for food products. No details are provided of the specific content of the chocolate used in D12 other than the dextrose content, and no details are given as to the processes by which the chocolate products are made.
131. However, the Opponent argued that a number of the missing features were well known in the art[62] and the defined range of fat was typical of chocolate products of this type.[63] I do not consider these submissions persuasive.
[62] Glazier at [1.33(d)].
[63] Glazier at [1.33(c)].
132. I can deal with Claim 1 briefly. The citation does not provide any disclosure of the process steps defined in this claim. This ground has not been made out for Claim 1.
133. In the case of Claim 7, D12 does not disclose the features of the fat content of the chocolate product, the water content in the final product from hydrated salts, hydrated sugars and/or hydrated sugar alcohols, nor the presence of dextrose in the final product being provided by dextrose monohydrate through the release of water during the production of the chocolate product. Mr Glazier acknowledged that D12 does not disclose the fat content of the present claim, but noted that commercial products used for chips and chunks “typically” have a lower fat content than block chocolate, citing a reference on industrial chocolate manufacture.[64] I do not consider that the evidence in relation to the “typical” content provides the sufficiently clear and unmistakable direction required for D12 to be considered a disclosure of the invention defined by Claim 7.
[64] Exhibit BG-6.
134. Similarly, in the case of Claim 13, D12 does not disclose that the chocolate product prepared by the addition of dextrose monohydrate contains both dextrose monohydrate and dextrose, nor is there any basis on which I could conclude this is an inherent feature of the products disclosed in D12. Furthermore, D12 does not disclose the moisture content of the chocolate product. The Opponent asserted that these features were not essential and/or it is a case of parameteritis but I do not consider there was any evidence adduced to support these assertions. I therefore do not consider that D12 discloses the invention defined by Claim 13.
Conclusion on Novelty
135. The claims are novel in view of citations D4 and D12. The ground of novelty has not been made out by the Opponent.
Inventive Step
136. An invention is taken to involve an inventive step unless it would have been obvious to the person skilled in the art in the light of the common general knowledge, either considered alone or together with the prior art. The prior art is information that the skilled person could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant.[65]
[65] Subsections 7(2) and 7(3), Patents Act 1990.
137. The test for whether an invention is obvious 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.”[66]
[66] Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; 148 CLR 262 at 286.
138. In Alphapharm,[67] the High Court accepted the approach taken by Graham J in Olin Mathieson,[68] where he posed the reformulated Cripp’s 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 combination] in the expectation that it might well produce a [useful or better result]?”
[67] Aktiebolaget Hassle v Alphapharm Pty Ltd supra at [53].
[68] Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187].
139. Where the invention involves a combination of integers, obviousness is to be determined by reference to the combination as a whole and not each integer individually. As stated in Alphapharm at [41]:
“The claim is 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 Alphapharm 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.”
140. The Opponent made submission on obviousness in view of the common general knowledge combined with each of D4, US 5,474,795 (D5), and D12.
Common General Knowledge
141. The inventive step determination requires a consideration of the common general knowledge:
“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.”[69]
[69] Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at 292.
142. It is not sufficient that a document is publically available for it to be considered part of the common general knowledge in the art. There must be evidence of its general acceptance and assimilation by the person skilled in the art.[70] This was expressed in the following way by Luxmoore J in British Acoustic v Nettlefold:[71]
“In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.”
[70] Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411 at [31].
[71] British Acoustic Films Ld v Nettlefold Productions (1936) RPC 221 at 250.
143. Some aspects of the common general knowledge do not appear to be disputed by the parties. These include:
Chocolate products include a fat component. All chocolate products contain cocoa butter. Milk and dark chocolate also contain cocoa mass and milk powder, while white chocolate contains no cocoa mass.[72] Some of the cocoa butter component of chocolate may be replaced with cocoa butter alternatives.[73]
[72] John Lee at [1.43], Steven Lee at [3.8] to [3.9].
[73] John Lee at [1.46], Steven Lee at [3.9].
Chocolate generally contains about 50% sucrose. Sugar substitutes such as polydextrose or polyols were used in place of sucrose for sugar-free or low calorie chocolates.[74]
[74] John Lee at [1.47], Steven Lee at [3.10].
The inclusion of dextrose in chocolates was known. Mr John Lee stated that the inclusion in chocolates of sugars having a water of crystallisation was well known at the priority date, citing a standard text, Beckett.[75] The Applicant did not dispute that dextrose had been used in chocolate products, but Ms Zsigmond stated that in small amounts dextrose gives a cooling mouth feel, but in larger amounts this is extremely noticeable and detracts from the standard flavour and mouthfeel and as a result was avoided. This is consistent with the entry in Beckett, which states that while there have been many attempts to prepare chocolates with dextrose, they have not been popular because their taste characteristics differ from the standard product.
Various methods have been employed to prepare heat resistant chocolates. Mr John Lee stated that these included the replacement of cocoa butter with high melting point fats, the choice of cocoa butter source, and the inclusion of water.[76]
Water emulsified in the fat phase has been shown to affect the melting properties of the fat, thus imparting heat resistance to chocolate. Additional water has been included in the chocolate as a stabilised water-in-oil emulsion and applying less energy during conching (using a lower temperature or shorter conching time), or by making chocolate from amorphous sugar and allowing the chocolate to adsorb moisture in a heat-curing (‘tropicalizing”) step.[77] The Applicant did not dispute that these processes were part of the common general knowledge but stated that it was also known that there were attendant problems with the addition of water, including the rapid increase in the viscosity of the chocolate during conching.[78]
It was routine practice to refine and conch the chocolate mass during chocolate production. Conching is generally carried out at a temperature of about 60°C over a period of 6 to 17 hours.[79] It was known in the art to conch materials having water of hydration at lower temperatures to avoid the release of the water and formation of agglomerates.[80]
What is the problem to be solved?
[75] Beckett, S. T. (Ed) Industrial Chocolate – Manufacture and Use, 4th Ed., Wiley Blackwell, 2009, section 3.72.
[76] John Lee at [1.63] to [1.65].
[77] John Lee at [1.65].
[78] Zsigmond at [17], Steven Lee at [3.30].
[79] Steven Lee at [3.24].
[80] John Lee at [1.72].
144. The parties differed as to what they considered to be the problem to be solved. The Opponent submitted that no reference should be made to the claims in determining the problem since this risked the application of ex post facto reasoning. However, I do not find this a particular concern – most specifications will describe both a problem and a solution, so the same issue as has been described by the Opponent would arise even if the claims were to be disregarded.
145. The Opponent referred to the object statement in the specification as stating the problem which the invention seeks to address:
“It is an object of the present invention to provide a process which can, at similar or reduced efforts and with conventional machinery, provide a chocolate product, such as chocolate in tablet (block) form or as a coating, with improved heat resistance, shelf stability at elevated temperatures and sensory characteristics, or a balance thereof.”
146. They noted that this was also the promise of the invention for the purpose of assessing utility. They phrased the problem to be solved as being the provision of a process for preparing a chocolate product, and a chocolate product produced thereby, having each of the following characteristics: (i) improved heat resistance, (ii) improved shelf-stability at elevated temperatures; and (iii) improved sensory characteristics.
147. In contrast the Applicant submitted that the problem addressed by the application is the incorporation of additional water into chocolate products to achieve heat resistance in a process that may be performed with conventional machinery.
148. In AstraZeneca v Apotex, the Full Bench of the Federal Court held that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or as information that is available under subsection 7(3).[81] The specification states that the invention is directed to a process for the manufacture of a heat resistant chocolate product and a heat resistant chocolate product. These are said to be of particular interest for consumers in countries with a hot climate where conventional chocolate products become soft and sticky when temperatures exceed 30°C.
[81] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 107 IPR 177.
149. None of the experts identified a specific problem to be solved. Mr John Lee considered it clear that the specification related to heat resistant chocolates, and discussed what the specification indicated was essential to provide them, but did not identify any specific problem that was being solved.[82] Similarly Mr Steven Lee did not identify a specific problem to be solved, but was directed to and asked to comment on whether the object of the invention had been achieved. He commented that he considered the objects had been achieved by the process and products described.[83] Mr Glazier did not identify a particular problem, but merely argued the statements made by Mr Steven Lee in relation to the objects of the invention.[84]
[82] John Lee at [1.68] to [1.78].
[83] Steven Lee at [4.17]
[84] Glazier at [1.41] to [1.43].
150. Ms Zsigmond stated that it was known that water could increase the heat resistance of chocolate but this increased the viscosity so that standard commercial processing equipment could not be used for such products.[85] She stated that the inventors had discovered that a more processable heat resistant chocolate could be manufactured using dextrose monohydrate.[86] The conditions by which the water was slowly released meant that heat resistance could be achieved while still using standard equipment. She stated that this “solved one of the largest and most widely-known problems with incorporating added moisture into chocolate compositions.”
[85] Zsigmond at [17].
[86] Zsigmond at [21].
151. On balance I consider the problem articulated by the Applicant is preferable, namely that the problem addressed by the application is the incorporation of additional water into chocolate products to achieve heat resistance in a process that may be performed with conventional machinery.
Inventive step in view of D4 and the common general knowledge
152. The process of D4 has been discussed previously. The Opponent’s submissions on this citation were much the same as their submissions on novelty – that various features were inessential or arbitrary and therefore cannot contribute an inventive step. They added that the common general knowledge showed that conching of dextrose monohydrate needs to be conducted at lower than 50°C to avoid formation of agglomerates.
153. The Applicant submitted that the process described in D4 was completely different and noted that:
D4 teaches the use of dextrose as a reducing sugar to stabilise the sucrose in an amorphous form. This is completely different to how the dextrose is used in the present process.
D4 does not teach or suggest conching a mass containing dextrose monohydrate (noting that the amorphous sugar syrup is boiled prior to use in the first chocolate mass, and the evidence indicated that there would be no dextrose monohydrate present in the mixture).
The first chocolate mass is not conched.
D4 teaches the use of low temperatures to avoid the release of water. Even if dextrose monohydrate were present in the mixture, the chocolate product would not contain any water that is released during the process.
154. I find the Applicant’s submissions persuasive. The process described in D4 results in a product in which the non-fat components provide a degree of heat tolerance to the product. In particular, the amorphous sugars build up a structure in which the particles adhere to each other when they are subjected to heat treatment and form within the chocolate a type of “skeleton” that is more resistant to the collapse of the chocolate mass when the temperature exceeds the melting point of the fatty substances. While the present invention involves a “network” of sugar, this is formed via a different mechanism where water is released during conching in order to form a supersaturated solution which then recrystallizes to form the network. This is a different mechanism of action that is undesirable in D4, which uses low temperature processes to avoid release of water in this manner.
155. I therefore consider that Claim 1 is inventive in view of D4.
156. Similarly, Claim 7 defines the incorporation of dextrose monohydrate in order to release water during the processing and form dextrose. This runs counter to the teaching of D4 which besides not using dextrose monohydrate, avoids the release of water during processing..
157. Finally, Claim 13 defines that the chocolate composition comprises at least 1.1 wt.% total water. The Opponent’s submissions in relation to Claim 13 were that there is no requirement that the water defined in Claim 13 be released by dextrose monohydrate, but that it can be added in any form. I agree with this submission and note that, as previously discussed, Claim 13 does not require that the water is released at all – the defined water content may be bound or free water – or that the water is not from another source other than the dextrose. However I do not agree that the moisture in the product has no material affect on the working of the invention and therefore cannot confer an inventive step. The Applicant argued that the skilled person would not be motivated to prepare a chocolate product of relatively high moisture content given the directions in D4 to avoid exposure of the sugar syrup to moisture, and the conditions selected to avoid release of water. Given the problem to be solved lies in the incorporation of additional water into chocolate products to achieve heat resistance in a process that may be performed with conventional machinery, the disclosure provided by D4 teaches away from the invention defined by Claim 4.
158. In summary I do not consider that the claims are obvious in view of D4.
Inventive step in view of D5.
159. D5 discloses reduced fat chocolate products which are prepared using a sucrose fatty acid polyester or a blend of sucrose fatty acid polyesters in place of the conventional cocoa butter constituent. Dextrose, or a blend of dextrose and sucrose is used as a sweetener. Dextrose monohydrate is a preferred form of dextrose. Anhydrous dextrose can be used if additional water is added to the mixture, but the molar amount of added water should not exceed the molar amount of anhydrous dextrose.
160. D5 describes that the water associated with the dextrose monohydrate is released by conching. This released water (or the water added if anhydrous dextrose is used) may interact with the sugars to facilitate recrystallisation of the sugar. This forms a series of fracture planes within the solid sucrose fatty acid polyester matrix. The examples describe conching at a temperature of about 75°C. The products prepared in D5 are said to be darker, snapped more easily and cleanly and were more easily released from a mold than comparable products containing sucrose.
161. Mr John Lee stated that use of a lower fat content was one means of improving heat resistance in chocolates.[87] The Opponent submitted that it was therefore well known that low-fat chocolate products exhibit heat resistance, and that the skilled person would be led to consider D5 when seeking a chocolate product having improved heat resistance, shelf stability and sensory characteristics.
[87] John Lee at [1.50].
162. However, I do not understand the evidence as meaning that low-fat chocolate products necessarily have increased heat resistance, but rather that one strategy for increasing heat resistance of chocolate has been to decrease the fat content of the chocolate. I also note that D5 uses a fat-replacement, and there was no evidence in relation to the specific replacement and whether or not it was known to provide increased heat resistance. Moreover if the skilled person were to have regard to low-fat chocolate products as a means of increasing the heat resistance then presumably the teaching from this line of research would be to reduce the fat content rather than incorporating hydrated materials as a means of introducing water. The submissions by the Opponent in this regard appear based on hindsight.
163. In any case, none of the experts appears to have considered that low-fat chocolate products of D5 would necessarily possess heat-resistance. Mr John Lee did not comment on the heat resistance of the products disclosed in D5.[88] Mr Steven Lee noted that there was no reference to heat resistant chocolates in D5, and considered that in fact samples A, B and C showed significantly lower firmness and snap compared to control and commercial products, which indicates lower heat resistance.[89] Mr Glazier did not dispute Mr Steven Lee’s evidence on this point, but stated that methods for producing heat resistant chocolate products were known and it would have been a simple matter of applying one of those methods to the product of D5 to achieve heat resistance.[90]
[88] John Lee at [1.125] to [1.133].
[89] Steven Lee at [5.33] to [5.38].
[90] Glazier at [1.66].
164. Ms Zsigmond noted that D5 states that dextrose incorporated into conventional (full fat) products generally gives very poor quality, so that a person working in the chocolate industry at that time would not have viewed D5 as suggesting the incorporation of dextrose monohydrate in any other chocolates.[91] This appears to teach away from the use of dextrose with the fat component of the present invention.
[91] Zsigmond at [36] to [39].
165. On balance I am not satisfied that the skilled person would be led in view of D5 to the process of the present claims in order to obtain heat resistant chocolate products comprising dextrose. I therefore consider the claims are inventive in view of D5.
Inventive step in view of D12.
166. D12 has been discussed above under Novelty. As previously discussed D12 provides little detail of the constituents of the heat-resistant chocolate product other than the dextrose content.
167. Further to the submissions made in relation to novelty, and in particular the inessential or arbitrary features defined by the claims, the Opponent submitted that the fat content of the present chocolate products are typical in the art for chocolate chips and chunks, that the steps of refining and conching are standard in the art,[92] and that it is well known in the art that dextrose monohydrate needs to be conched below 50°C to prevent [sic] release of the water of hydration and formation of agglomerates.[93]
[92] Glazier at [1.33].
[93] Opponent’s submissions for hearing at [439].
168. The Applicant submitted that there was no motivation in D12 to refine and conch the chocolate at a temperature that achieves controlled release of the water of hydration. They argued that Mr Glazier’s evidence to the extent that refining and conching of the chocolate products would be performed at temperatures that allow the water to be released from the dextrose monohydrate goes against the common general knowledge and is made with the benefit of hindsight.[94]
[94] Applicant’s submissions for hearing at [286].
169. On balance I am not satisfied that the skilled person would be led to use the process defined in Claim 1 in view of the disclosure given in D12. There is also no teaching that I consider would lead the skilled person to the chocolate compositions defined by Claims 7 and 13, and in particular the dextrose, dextrose monohydrate component and water content defined in each. In short I consider the claims are inventive in view of D12.
Conclusion on inventive step.
170. The claims are inventive in view of D4, D5 and D12.
Utility
171. According to section 18(1)(c) 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. Section 7A, which was introduced by the Raising the Bar Act, also requires that the invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification, the disclosure must be sufficient for such use to be appreciated by the skilled person, and that this further requirement does not otherwise affect the meaning of the word useful in the Act.
172. The basic principles to be applied in deciding whether the claimed invention is useful were summarised by Greenwood J in Artcraft Urban v Streetworx.[95] Some of the key principles identified by Greenwood J are:
[95] Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29 at [120]-[121].
The basic principle of inutility is that if an invention does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention.
What the invention is intended to do is a matter to be gathered from the title and the whole of the specification.
Put another way, firstly what is the promise of the invention derived from the whole of the specification? Secondly, by following the teaching of the invention, does the invention, as claimed in the patent, attain the result promised for it by the patentee?
Everything that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee.
173. The Opponent submitted that the present claims did not achieve the promise of the invention because the claims did not include all of the essential features of the invention. The submissions on this point were mainly the same ones that were raised under clarity, support and sufficiency. The Applicant questioned how this particular line of argument related to usefulness under section 18(1)(c). They considered the arguments to essentially be re-purposed allegations that would have sat under the previous ground of fair basis before the Raising the Bar amendments.
174. There is merit in the Applicant’s arguments. But in any case, the Opponent’s submissions on this point are to all intents and purposes moot in view of my determinations on the Section 40 issues. I see no need to further address these submissions.
175. The remaining issue raised by the Opponent related to whether or not the claimed invention met the promise of the invention. The identification of the promise of the invention has recently been considered by the Full Bench of the Federal Court in ESCO v Ronneby Road.[96] The Court accepted that if a patent application, “properly understood having regard to the whole of the Specification including the claims, contains a ‘composite’ promise for the described invention, a failure to attain any one of the elements of the composite promise in any claim defining the invention renders the invention so far as claimed in any claim, inutile.”[97]
[96] ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46.
[97] Ibid at [239].
176. To this end the Opponent submitted that the promise of the invention is the provision of a process for preparing a chocolate product, and a chocolate product, having all of the following characteristics: (i) improved heat resistance, (ii) improved shelf-stability at elevated temperatures and (iii) improved sensory characteristics. This was based on their interpretation of the statement in the specification at page 2, lines 30 to 36 that:
“It is an object of the present invention to provide a process which can, at similar or reduced efforts and with conventional machinery, provide a chocolate product, such as chocolate in tablet (block) form or as a coating, with improved heat resistance, shelf stability at elevated temperatures and sensory characteristics, or a balance thereof.
177. The Applicant argued that:
“Those promises, in our submission, are to be read disjunctively as characteristics to which the invention may relate, and there is certainly no unequivocal statement that all of the recited advantages must be found in a single product. By referring to heat resistance, shelf stability, and improved sensory characteristics "or a balance thereof," the specification presents all features being balanced in a single product as one alternative. Outside of the isolated sentence relied on by the Opponent, the Application does not seek to come to grips with describing aspects of the invention that capture each and every one of the features recited. If those features were truly seminal promises for the invention, the paragraphs would seek to come to grips with doing so. That emerges from a consideration of the Application as a whole.”
178. The Applicant submitted that the promise of the invention is found in the opening two lines of the specification – namely that the invention relates to heat-resistant chocolate products and processes for their preparation. While I consider that this is an accurate description of the nature of the invention, I do not consider that this is necessarily the promise of the invention. In order to determine utility regard must be had to the specification as a whole. To this end the specification provides separate aspects of the invention: the process and the products. These are each described in some detail in the specification but with the exception of the statement at page 2, lines 30 to 36 of the specification there are no statements that I consider could be considered to be objects of the invention.
179. I also understand the statement at page 2, lines 30 to 36 to require that all three characteristics of improved heat resistance, improved shelf-stability and improved sensory characteristics compared with the chocolate products of this type that are generally known in the prior art. However the reference to “balance” in the objects statement suggests to me that the different properties may be met to differing extents compared with what is known in the prior art. The subsequent consideration is whether these objectives have been met by the invention.
180. Mr Steven Lee, when asked whether the object of the invention had been met by the invention, referred to the “Results” section at page 16, lines 5 to 14, and stated that:[98]
‘The results of the various tests tell me that the chocolate base mass of Example 1 exhibited heat resistant properties and shelf-stability at temperatures of 35°C to 50°C, as the chocolate retained its shape at these high temperatures and in particular for a prolonged period at 50°C. In addition, since no off-flavour was detected and the chocolate was similar to a reference sample containing only sucrose, the chocolate appears to have favourable sensory characteristics. Taking these results together, I consider that the chocolate of Example 1 achieves a balance of improved heat resistance, shelf-life and sensory characteristics.”
[98] John Lee at [4.19].
181. He considered that variations within the claims such as higher dextrose content could be made and that he expected they would still provide heat resistant chocolate products.[99] Mr Glazier disputed Mr Steven Lee’s evidence. He considered that the use of the terms “and” and “balance” in the phrase “heat resistance, shelf stability at elevated temperatures and sensory characteristics, or a balance thereof” required that all three properties were achieved. To this end he noted Mr Steven Lee’s reference to “favourable sensory characteristics”, which in his view indicated that this object was not achieved:
“In my view, "favourable sensory characteristics" are not the same as "improved sensory characteristics". A product can have favourable sensory characteristics without there being any improvement in sensory characteristics compared to other known products.
In any case, I note that there is no mention of improved sensory characteristics in the claims, nor is there any mention in the claims of improved shelf-stability at elevated temperatures. While the claimed products must be "heat-resistant", there is no requirement that the heat resistance be improved (i.e., better than what is already known), nor is it evident that the products of the examples possess improved heat resistance compared to other heat-resistant chocolate products. It therefore does not appear that either the products of the claims or the products of the examples achieve any of the stated objects, let alone all of them.”
[99] John Lee at [4.21].
182. I do not find this evidence persuasive. My understanding of the term “favourable” is that the characteristics are in some way beneficial or advantageous, with the comparison being made with prior art products. Given the evidence provided in relation to dextrose-containing chocolate products, and in particular the disadvantage they have in differing in taste characteristics from standard chocolate products,[100] this conclusion by Mr Steven Lee would suggest an improvement in these properties over those existing products. Moreover Mr Glazier appears to consider that the improved properties given objects of the invention should be assessed against not only other heat resistant products, but all other heat resistant products. I see no basis for such an approach. The objects are not framed relative to a specific product, but in the absence of an explicit reference I consider that the standard product described in the examples represents a reasonable reference.
[100] Exhibit JL-8
183. The evidence of Mr Steven Lee given above suggests to me that the objects of the invention have been met. On balance I am satisfied that the invention meets the requirement of utility.
Conclusion
184. The opposition is successful.
185. Claims 7, 8, 10, 12 and 14 to 16 lack clarity. Claims 1 to 19 lack support.
186. The claims are otherwise novel and inventive, and have utility. These grounds have not been made out by the Opponent.
187. I consider that the issues may be overcome by amendment. I allow the Applicant 2 months from the date of this decision to propose appropriate amendments to the specification.
Costs
188. Costs generally follow the event. The Opponent has been successful in their opposition. I therefore award costs according to Schedule 8 against the Applicant, Kraft Foods R & D, Inc.
Leslie F. McCaffery
Deputy Commissioner of Patents
Annex: 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.
2. The process according to claim 1, which further comprises a thermo-curing step at a temperature not exceeding 40°C.
3. The process according to claim 2, wherein the thermocuring step is carried out at a temperature in the range of from 30 to 40°C, wherein the chocolate product can be load bearing or not.
4. The process according to any one of claims 1 to 3, wherein the temperature of the chocolate mass in the process does not exceed 40°C.
5. The process according to any one of claims 1 to 4, wherein the refining step and conching step are conducted as a combined step.
6. The process according to any one of claims 1 to 5, wherein the conching step is conducted for a time not exceeding 120 minutes.
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 dextrose component upon release of water from dextrose monohydrate during production.
8. The chocolate product according to claim 7, which has been refined, conched and optionally tempered at a temperature not exceeding 50°C.
9. The chocolate product according to claim 7 or claim 8, which is obtained by the process as defined in any one of claims 1 to 6.
10. The process or chocolate product according to any one of claims 1 to 9, wherein the chocolate product is a block molded chocolate or chocolate coating.
11. The process according to any one of claims 1 to 6, wherein the chocolate mass comprises 5 to 15 wt.% of dextrose monohydrate as component (B) or part thereof.
12. The chocolate product according to any one of claims 7 to 9, which comprises 5 to 15 wt.% of dextrose as component (B’) or part thereof.
13. A heat resistant 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,
wherein the chocolate product contains at least 1.1 wt.% of total moisture, as determined by Karl Fischer titration.
14. The chocolate product according to any one of claims 7 to 13, wherein the chocolate product contains from 1.3 to 3 wt. % of total moisture as determined by Karl Fischer titration.
15. The chocolate product according to any one of claims 7 to 13, wherein the chocolate product contains at least 2 wt. % of free moisture, as determined from the difference of associated moisture determined by thermogravimetric analysis and total moisture.
16. The chocolate product according to any one of claims 7 to 15, wherein the chocolate product exhibits a penetration force of 100 g or higher after being maintained at 50°C for at least 2 hours.
17. The process of any one of claims 1 to 6, wherein the chocolate mass comprises 25 to 35 wt. % of component (A).
18. The process of any one of claims 1 to 6, wherein the chocolate mass comprises 28 to 30 wt. % of component (A).
19. The process of any one of claims 1 to 6, 17 or 18, wherein the chocolate mass comprises 8 to 12 wt. % dextrose monohydrate.
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