Mars, Incorporated v Société Des Produits Nestlé S.A
[2014] APO 44
•25 June 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mars, Incorporated v Société Des Produits Nestlé S.A. [2014] APO 44
Patent Application: 2002317849
Title:Manipulation of chocolate flavour
Patent Applicant: Société Des Produits Nestlé S.A.
Opponent: Mars, Incorporated
Delegate: Dr B. Akhurst
Decision Date: 25 June 2014
Hearing Date: 1 and 2 April 2014, in Sydney
Catchwords: PATENTS - section 59 - opposition to grant - clarity - claims defining flavours attributes in terms of disclaimed subject matter are not clear - full description - not established - fair basis- overcome by proposed amendments - novelty - no clear and unmistakable directions to the claimed combination - inventive step - lack of inventive step established - manner of manufacture ground not established - costs - no award of costs due to late filing of a summary of submissions
Representation: Patent applicant: Michael Zammit and Paul Harrison patent attorneys of Shelston IP
Opponent: Clive Elliott of Counsel, instructed by Mars’ in house Counsel Colleen Kramer
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2002317849
Title:Chocolate flavour manipulation
Patent Applicant: Société Des Produits Nestlé S.A.
Date of Decision: 25 June 2014
DECISION
The opposition is successful. The subject matter of claims 1-2, 13 and 15-18 lacks an inventive step. Claims 1-18 are not clear.
Nestlé has 2 months from the date of this decision to propose amendments to overcome the deficiencies in the claims.
No award of costs.
REASONS FOR DECISION
Background
Patent application 2002317849 was filed by Société Des Produits Nestlé S.A. (Nestlé) on 25 June 2002 via the PCT, claiming priority from basic document GB 0126025.6 filed on 30 October 2001. After examination the application was advertised as accepted on 4 December 2008. A notice of opposition to grant of a patent was served by Mars, Incorporated (Mars) on 4 March 2009, followed by a statement of grounds and particulars (SGP) on 4 June 2009.
Evidence in support was completed on 3 February 2010 and evidence in answer on 2 December 2010. With the parties’ agreement the delegate directed on 24 December 2010 that the evidentiary periods be aligned in this opposition and Mars’ substantive opposition to Nestlé’s similar application 2002321117, requiring only one body of evidence to be filed for both oppositions.
A request by Nestlé on 2 November 2010 to amend the specification under section 104 was advertised as allowed on 9 June 2011. Mars subsequent request to amend the SGP was allowed unopposed on 28 June 2013.
Evidence in reply was served on 13 March 2013, accompanied by a request by Mars for further evidence. Leave to file the further evidence was granted on 12 April 2013. Nestlé filed responding evidence on 12 and 13 August 2013.
On 20 February 2014, Nestlé advised that it had prepared chocolate samples and filed two further declarations. However, at the hearing Nestlé did not pursue a request on 31 March 2014 to admit the declarations and samples as further evidence.
The matter was heard on 1 and 2 April 2014. Mars filed submissions on 20 and 21 March 2014. Nestlé filed a summary of submissions on 28 March 2013.
A request to amend the SGP, to add matter that was argued at the hearing but not particularised, was filed on 8 April 2014 and allowed unopposed on 30 April 2014.
On 7 April 2014, after the hearing, Nestlé requested amendments to the specification. Leave to amend was advertised on 15 May 2014 and the opposition period ends on 15 July 2014. To date no opposition has been filed. This decision is made in relation to the claims as proposed to be amended on 7 April 2014.
The Evidence
The evidence in support consisted of declarations by:
·John Lee (JL#1) dated 4 December 2009 with exhibits JL-1 to JL-5
·John Lee (JL#2) dated 28 January 2010 with exhibits JL-6 to JL-18
Evidence in answer consisted of declarations by:
·Stuart Dale (SD#1) dated 1 November 2010 with exhibits SD-1 to SD-6
·Paula-Marie Stephen dated 1 November 2010
·Carl Erik Hansen (CEH#1) dated 30 November 2010 with exhibit CH-1
Evidence in reply consisted of declarations by:
·John Lee (JL#3) dated 4 December 2009 with exhibits JL-19 to JL-21
·John Lee (J#4) dated 4 December 2009
·John Lee (JL#5) dated 7 March 2003 with exhibits JL-22 to JL-30
Mars further evidence consisted of declarations by:
- Christian Scheiber dated 13 March 2013 with exhibits CJS-1 to CJS-3
- John Didzbalis (JD) dated 12 March 2013 with exhibits JD-1 to JD-8
Nestlé’s responding evidence consisted of declarations by:
· Stuart Dale (SD#2) dated 12 August 2013 with exhibits SD-7 to SD-8
· Carl Erik Hansen (CEH#2) dated 12 August 2013
· Stuart Dale (SD#3) dated 11 September 2013
· Carl Erik Hansen (CEH#3) dated 12 September 2013
Grounds of opposition
At the hearing, Mars pursued the grounds of opposition relating to manner of manufacture, novelty, inventive step, clarity, full description and fair basis.
Onus of Proof
The request for examination in this case was filed on 13 April 2006. Therefore, the substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, including subsection 60(3A) which allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition has been made out, do not apply to the present application. Instead, the onus of proof in this opposition proceeding lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426).
For the same reason, the substantive amendments to grounds of opposition that came into effect on 15 April 2013 do not apply to the present opposition. Instead the law that applies to the grounds of opposition in this case is that which stood immediately prior to 15 April 2013.
The specification and claims
The principles to be applied in construing a patent specification are well settled in law (Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [70] - [81]; (2001) 49 IPR 331 at 347 [70] - [81]; Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 at [247] - [250]; 68 IPR 1 at 52-54).
The specification is titled “Manipulation of chocolate flavour”. From page 1 of the specification, the invention relates to processes for the manipulation of the flavour of chocolate independently of the processes, formulations and ingredient origins used in the preparation of chocolate. The specification contains 22 claims, reproduced below. Claims 1, 16-17 and omnibus claims 19-22 are independent.
At the hearing Nestlé advised that the words “to the chocolate mass” were present in claim 1 at filing, but were inadvertently omitted during prosecution of the application. Nestlé has since proposed amendments that add these words to claim 1, and this decision is made with respect to the claims as proposed to be amended on 7 April 2014. These claims are reproduced below, with the additional text in claim1 in square brackets.
It was apparent at the hearing that the terms in the claims require careful construction in this opposition. I have construed the features of the claims largely in the context of claim 1 as proposed to be amended, with references to claims 16 and 17.
Claim 1
1. A process for manipulating the flavour of a single mass of chocolate which comprises first reducing or removing the natural flavour from the chocolate ingredients or the chocolate mass and then adding [to the chocolate mass] an effective amount of a composition having a flavour attribute associated with chocolate, other than chocolate flavor enhancement or an overriding, dominant flavour different to chocolate.
A process for manipulating the flavour …
The Macquarie dictionary relevantly defines the term ‘manipulate’ as “to handle, manage, or use, especially with skill, in order to achieve a desired effect” and “to adapt or change ... to suit one’s purpose or advantage”. Both definitions are applicable in this case.
… of a single mass of chocolate …
The description provides a dictionary for the term ‘chocolate’ which includes standard chocolate, as well as substitute chocolate such as compound, couvertures and ice cream coatings (page 1, lines 27-28). A ‘single mass of chocolate’ means a single batch of chocolate (JL#3 at [13]; SD#1 at [54]).
Mr Dale and Dr Hansen construed the term ‘single mass of chocolate’ or ‘chocolate mass’ as meaning a manufactured or post-conched chocolate (SD#1 at [54]; and by inference from CEH#1 at [37]). Mr Lee disagreed (JL#3 at [11], [106]), understanding the chocolate mass to come into being when the basic chocolate-making ingredients are combined. In particular:
“I understand the expression ‘mass of chocolate’ to be a composition which is present after all solid chocolate making ingredients and the bulk (but not necessarily all) of the fat (cocoa butter, etc.) are brought together and mixed, whether such is still a friable mass, pasty or liquefied, and whether such occurs in a conching device, a mixer, a tank or other. Importantly, I do not use and equate the term with a ‘mass of finished chocolate’, which would incorporate the final recipe of all ingredients, including emulsifiers (e.g. lecithin) and flavouring agents such as vanilla etc. Equally, I do not equate it with a ‘mass of conched (or tempered) chocolate’ …” (JL#3 at [11])
Mr Lee’s construction of the term is consistent with the textbooks Beckett, S. T. “Industrial Chocolate Manufacturing and Use” (2nd Ed) published in 1994 by Blackie Academic and Professional, Chapman & Hall (UK) (Beckett) and Minifie, B. W. “Chocolate, Cocoa and Confectionery: Science and Technology” (3rd Ed) published in 1989 by Van Nostrand Reinhold, New York. (Minifie). Extracts from both texts are in evidence. It can be inferred that the chocolate mass exists prior to the conching step from the statement in Beckett that “conching allows the chocolate mass to be further mixed” (Exhibit JL-3, page 11, emphasis added). Consistent with Mr Lee’s reference above to a ‘pasty’ chocolate mass, Minifie outlines the chocolate manufacturing process and refers to a ‘chocolate paste’ being produced early in this process after the ingredients are mixed (Exhibit JL-8, page 138‑139).
In view of the evidence, I consider a reasonable construction of the terms ‘mass of chocolate’ and ‘chocolate mass’ is that provided by Mr Lee (JL#3 at [11]), reproduced above, i.e. the chocolate mass exists once the basic chocolate ingredients are mixed. For standard chocolate these ingredients include sugar, cocoa butter and cocoa solids (either cocoa powder or in cocoa liquor or mass) and optionally, for milk chocolate, milk or milk fractions (JL#1 at [33]; [72]). Substitute chocolates may contain fat other than cocoa butter and/or sugar substitutes (Exhibit JL-9, Beckett, pages 261, 269, 274).
… which comprises first reducing or removing the natural flavour from the chocolate ingredients or the chocolate mass …
In its plain meaning, the term ‘natural flavour’ encompasses any flavour that is naturally present in a chocolate-making ingredient or in the chocolate mass. Mr Lee and Mr Dale understand the term to include flavours that are developed in an ingredient or the chocolate mass during processing, which flavours are attributable to the raw ingredients used (JL#2 at [29], [37]; SD#1 at [50]).
It was apparent from the parties submissions that Mars’ construed the natural flavour of the chocolate ingredients or mass to encompass chocolate flavour precursors (i.e. compounds that have the potential to contribute flavour), while Nestlé limited it to existing rather than potential flavours. In my view the ‘natural flavour’ of an ingredient or the chocolate mass does not encompass flavour precursors. Mars’ broader construction is not supported by the expert evidence, which refers to natural flavours present or developed in the ingredients or chocolate mass (JL#2 at [29], [37]; SD#1 at [50]). Accordingly, the ‘flavour stripping’ methods on page 4 of the description include pre-treatment of cocoa but not before the flavour-developing step of roasting.
Nestlé’s experts construed ‘natural flavour’ to exclude undesirable flavours (SD#1 at [50]; CEH#1 at [28]), while Mars’ experts understood it to mean both desirable and undesirable flavours (JL#3 at [101]; JD at [42]). I see no reason to construe the claims in the limited manner pursued by Nestlé. In its plain meaning, the term ‘natural flavour’ encompasses both desirable and undesirable natural flavours.
The words ‘reducing’ and ‘removing’ take their plain and unambiguous meaning. On this basis, I accept Mars’ submission that the phrase “reducing or removing the natural flavour” in claims 1, 16 and 17 encompasses both minor and major flavour reduction.
Mars submitted that the claims do not necessarily require a processing step that actively reduces or removes pre-existing flavours from ingredients or the chocolate mass. The claims are ambiguous in this regard. Where an expression in the claims is not clear, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claims (Interlego AG v Toltoys Pty Ltd [1973] HCA 1 at [14]; (1973) 130 CLR 461 at 479).
Regarding flavour reduction or removal, the description on page 4 states:
“The natural chocolate flavour … may be reduced or removed from the chocolate mass, for example, by stripping using the following methods:
a) by pretreating cocoa during or following roasting with water which is later evaporated and takes with it the flavour. …
b)adding water to liquid chocolate as it is processed by a high shearing/drying machine eg. a Petzomat machine. …
c) avoiding the use of commercially available high heat-treated milk powders which possess strong cooked “Maillard” flavours.
d) other known techniques for removing volatiles, …
From these examples, it is clear that reduction or removal of natural flavour encompasses treating the chocolate ingredients or the chocolate mass to reduce or remove flavour, in addition to avoiding the use of flavour-intensive ingredients. Given this last, I agree with Mars that the claims do not necessarily require a processing step that actively reduces or removes flavour.
Nestlé submitted that the step of reducing or removing the natural flavour is in addition to the common unit operations in chocolate manufacture, in accordance with the following statement on pages 4-5 of the description:
“It should be understood that these methods of reducing or removing natural chocolate flavour are carried out in addition to the common unit operations carried out during normal chocolate manufacture, but may be a continuation of the normal process, e.g. conching initially removes unwanted acidic flavours, but if extended can produce a very bland chocolate.”
I accept this statement provides a dictionary of sorts that places a limitation on the reduction/removal processes of the claims. However it raises questions regarding what constitutes a ‘common unit operation’ and ‘normal chocolate manufacture’ among other things. I will address these questions as necessary in this decision.
… and then adding [to the chocolate mass] an effective amount of a composition having a flavour attribute associated with chocolate, other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate.
The words ‘and then’ require the flavour attribute composition to be added to the chocolate mass after the flavour reduction or removal step has taken place. Given my construction of ‘chocolate mass’ above, the addition is not necessarily to post-conched chocolate.
The description provides a dictionary for ‘flavour attribute’ on pages 2-3 as follows:
“By “flavour attribute” in this invention, we mean a consumer-recognisable flavour attribute associated with chocolate, and not the mere enhancement of the chocolate flavour, e.g. by adding vanilla, or a different overriding, dominant flavour such as peppermint.”
Dr Hanson understood the term ‘flavour attribute associated with chocolate’ to mean “a flavour which is adaptable, or particularly well suited to being combined with chocolate” (CEH#1 at [23]). Mr Dale described the flavour attributes as “those flavours selected from the universe of known flavours which are typically associated with chocolate”, such as those derived from the standard ingredients (e.g. cocoa, milk, sugar) and those that can be developed from the standard processing steps of roasting, mixing, conching and from chocolate crumb manufacture (SD#1 at [51]). Mr Dale understands the ‘flavour attribute associated with chocolate’ to provide a subtle hint or flavour note to the chocolate, which is not a different, overriding or dominant flavour (like peppermint oil) or enhancement of the chocolate flavour by giving a rounded flavour (like vanilla) (SD#1 at [51]).
The precise nature of the claimed flavour attributes remains ambiguous. Resort to the description reveals on page 2 that it is well known that there are a large number of different consumer-recognisable flavour attributes associated with chocolate, other than the merely enhancing or different, overriding dominant flavours. Further information regarding the nature of the composition, and examples of the consumer-recognisable flavour attributes are provided on page 5:
“The flavour attributes may be obtained by adding cocoa and/or milk/dairy flavours or by adding non-cocoa/dairy flavours to a single mass, e.g. natural, natural identical, artificial or plant extract flavours.
…
The flavour attributes may be any of the following: roasted, sweet, bitter, crumb, caramel, fruity, floral, biscuit, baked, bready, popcorn, cereal, malty, astringent or praline. The flavour attribute may be a single ingredient or a mixture of ingredients, e.g. a bottle flavour or an extracted flavour, or it may be a reaction flavour formed from a mixture of flavour precursors.”
Mr Dale viewed the invention as confined to the addition of a flavour attribute associated with chocolate in the form of flavour precursors which are not themselves the ‘flavour’ produced by their use (SD#1 at [51]). However, to construe the claims in this narrow manner is not consistent with the words used in the independent claims or even the way the invention is described in the specification. Consequently, I agree with Mars’ submission that the flavour attribute composition of claims 1 and 16-17 encompasses any composition of one or more compounds which together produce the required consumer-recognisable flavour attribute associated with chocolate in the chocolate product.
Independent claim 16 explicitly requires the chocolate product to have the flavour attribute associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate. From the plain words of claims 1 and 17, it is the flavour attribute composition per se that has this flavour attribute. However, claims 1 and 17 require an ‘effective amount’ of the flavour attribute composition to be added to the chocolate mass. The claims are ambiguous as to the ‘effective amount’. Resort to the description reveals on pages 2-3 that the flavour attribute composition is used to manipulate the flavour of chocolate products such that the product has the required flavour attribute associated with chocolate. On this basis, I construe the “effective amount of a composition having a flavour attribute associated with chocolate, other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate” in claims 1 and 17 as an amount of flavour attribute that will produce a flavour-manipulated chocolate product having the required flavour attribute.
other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate
Nestlé submitted that the flavour attribute is used for other than conventional reasons; conventional reasons being flavouring to provide chocolate flavour enhancement or to provide an overriding, dominant flavour different to chocolate. I agree that the processes of independent claims 1, 16 and 17 must produce a flavour-manipulated chocolate mass having that flavour attribute. However, no further features regarding the purpose or intent of the processes can be read into the claims that are not expressly or by proper inference reproduced in the claims themselves (Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224 at [249]).
In Mr Lee’s opinion the term ‘enhancement’ has little meaning beyond making flavours naturally present in cocoa and dairy fractions stronger or weaker (JL#1 at [67]). When used to enhance chocolate flavour, vanilla provides a rounded smoothness to the profile or creates a creamy note (SD#1 at [51]; JL-5 at [6]; JD at [31]; para bridging pages 1-2 of the description).
Claim 2
2.A process according to claim 1 wherein the flavour attributes associated with chocolate are obtained by adding cocoa and/or milk/dairy flavours or by adding non-(cocoa/dairy) flavours to a single mass and provide any of the following attributes: roasted, sweet, bitter, caramel, fruity, floral, biscuit or cookie, toffee, buttery, baked, crumb, bready, popcorn, cereal, malty, astringent, praline or combinations thereof.
Mars construed the term ‘a single mass’ in claim 2 as distinct from the ‘single mass of chocolate’ in claim 1. Dependent claim 2 relates to obtaining the flavour attributes. This encompasses obtaining the relevant flavour attribute in the chocolate product and preparation of the flavour attribute composition per se. Therefore, insofar as the flavour attribute composition per se may involve a single mass, I agree that the single mass of claim 2 is not necessarily the single mass of chocolate identified claim 1.
A cocoa/dairy flavour attribute is a consumer-recognisable flavour which the consumer would perceive as associated with those usually obtained from the cocoa bean or from cow’s milk (SD#1 at [22]; SD#3 at [16]). Cocoa flavours include bitterness, astringency, floral and fruity, while dairy/milk flavours include milky, creamy and buttery (SD#3 at [16]). A non-(cocoa/dairy) flavour attribute has a flavour that is not characteristic of cocoa or dairy products e.g. popcorn, bready and biscuit flavours (JL#2 at [22]; SD#1 at [22]; SD#3 at [15]; CEH#1 at [10]). However, a non-(cocoa/dairy) flavour attribute may be prepared from cocoa or milk/dairy ingredients (SD#1 at [22]; SD#3 at [15]).
Claims 3-22
3.A process according to claim 1 or claim 2 wherein the natural chocolate flavour is reduced or removed from the chocolate mass by pretreating cocoa during or following roasting with water which is later evaporated and takes with it the flavour.
4. A process according to claim 1 or claim 2 wherein the natural chocolate flavour is reduced or removed from the chocolate mass by adding water to liquid chocolate as it is processed by a high shearing/drying machine.
5. A process according to claim 1 or claim 2 wherein the natural chocolate flavour is reduced or removed from the chocolate mass by using spinning discs, PDAT reactors (Carle & Montanari) with inert gas, or scraped surface heat exchangers with forced air or vacuum applied.
6.A process according to claim 2 wherein the compositions having cocoa/dairy flavour attributes associated with chocolate added to the chocolate mass are cocoa and/or chocolate products, distillates, solvent extracts, CO2 extracts, and a cocoa aroma/flavour obtained by cryogenic aroma capture from aroma gas which evolves during the processing of cocoa, natural, plant extract, artificial or nature identical compounded flavours labeled as chocolate, milky, dairy, cream, cocoa, cocoa/chocolate reaction flavours, dairy product extracts or biogenerated flavours.
7. A process according to claim 2 wherein the composition having a non-cocoa/dairy flavour attribute associated with chocolate added to the chocolate mass is a concentrate formed by adding a mixture of flavour precursors comprising (A) proline, ornithine or protein hydrolysate, and (B) rhamnose, fructose or fucose, to a fat-based medium and heating the mixture to about 100-140°C for about 10-120 minutes.
8. A process according to claim 2 wherein the composition having a non-cocoa/dairy flavour attribute associated with chocolate added to the chocolate mass is a Maillard reaction between defined mixtures of amino acids and sugars in chocolate compatible fat systems, roasted using cocoa liquor technology in the presence or absence of water.
Claim 8 defines the flavour attribute as a chemical reaction. A reasonable construction of this claim is that the flavour attribute composition is the product of the specified Maillard reaction.
9. A process according to claim 2 wherein the composition having a non-cocoa/dairy flavour attribute associated with chocolate added to the chocolate mass is an enzymatic hydrolysate of cocoa polysaccharides.
10.A process according to claim 2 wherein the composition having a non-cocoa/dairy flavour attribute associated with chocolate added to the chocolate mass is a malty flavour obtained by acid treatment of a cocoa liquor followed by a protease treatment.
11.A process according to any one of the preceding claims wherein the composition having a flavour attribute associated with chocolate is a crumb flavour attribute, the crumb flavour attribute being added to a non crumb chocolate mass in an amount of from 0.1% to 5%.
12.A process according to any one of claims 1 to 10 wherein the composition having a flavour attribute associated with chocolate is a caramel flavour attribute provided by the reaction of skimmed milk powder in a fat system at an elevated temperature.
13. A process according to any one of the preceding claims to provide a chocolate having a flavour attribute other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate and which flavour attribute overcomes the variations in chocolate flavour obtained in the manufacture of chocolate using different processing conditions and/or ingredients which comprises first reducing or removing the natural flavour from the chocolate ingredients or the chocolate mass and then adding to the chocolate mass an effective amount of a composition having an appropriate flavour attribute associated with chocolate and obtained by adding cocoa and/or milk/dairy flavours or by adding non-(cocoa/dairy) flavours to a single mass.
Claim 13 requires the flavour attribute to overcome the variations in chocolate flavour obtained in the manufacture of chocolate using different processing conditions and/or ingredients.
Nestlé submitted that the flavour attribute is used to overcome the limitations of existing manufacturing equipment and/or sources of chocolate making ingredients. However, no purpose or intention can be read into the claims where it is not expressly or by proper inference reproduced in the claim itself. Mr Lee describes this feature as “trying to define a flavour attribute by the function or result” (JL#2 at [94]). I agree. This feature defines the result that must be achieved by the addition of flavour attribute during the manufacturing process. That result may be intentional or inherent to the process used.
Claim 13 is ambiguous as to what is required in order that the variations in chocolate flavour are overcome. On page 2 of the description, the consumer recognisable flavour attributes associated with chocolate other than the merely enhancing or dominant, overriding flavours different to chocolate are determined by variations in the process and the amounts of normal ingredients used in manufacturing the chocolate (para 2). The removal of some of the natural chocolate flavour and then adding a relevant flavour attribute to the chocolate mass to manipulate its flavour overcomes these variations (page 3, para 3). This construction is consistent with the expert’s construction of the specification (JL#2 at [94]); SD#1 at [48]).
14.A process according to any one of claims 1 to 12 to provide a specific house flavour in a chocolate however manufactured which comprises first reducing or removing the natural flavour from the chocolate ingredients or the chocolate mass and then adding to the chocolate mass an effective amount of a composition having an appropriate flavour attribute associated with chocolate and obtained by adding cocoa and/or milk/dairy flavours or by adding non-(cocoa/dairy) flavours to a single mass to the chocolate mass.
15.A process according to any one of claims 1 to 12 to provide a specific consumer recognisable flavour associated with chocolate, other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate, in a chocolate however manufactured which comprises first reducing or removing the natural flavour from the chocolate ingredients or the chocolate mass by stripping and then adding to the chocolate mass an effective amount of a composition having an appropriate flavour attribute associated with chocolate and obtained by adding cocoa and/or milk/dairy flavours or by adding non-(cocoa/dairy) flavours to a single mass to the chocolate mass.
As indicated above, flavour ‘stripping’ in claim 15 refers to processes for the reduction or removal of natural flavour.
16.Use of a composition having an appropriate flavour attribute associated with chocolate for the preparation of chocolate having a flavour attribute associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate to overcome the variations in chocolate flavour obtained in the manufacture of chocolate using different processing conditions and/or ingredients which comprises first reducing or removing the natural flavour from the chocolate ingredients or the chocolate mass and then adding to the chocolate mass an effective amount of a composition having an appropriate flavour attribute associated with chocolate and obtained by adding cocoa and/or milk/dairy flavours or by adding non-(cocoa/dairy) flavours to the chocolate mass.
17. Use of a flavour attribute for manipulating the specific flavour of chocolate produced by a single process to obtain a desired flavour, which comprises first reducing or removing the natural flavour from the chocolate ingredients or the chocolate mass prepared by the single process and then adding an effective amount of a composition having a flavour attribute associated with chocolate, other than chocolate flavor enhancement or an overriding, dominant flavour different to chocolate, and obtained by adding cocoa and/or milk/dairy flavours or by adding non-(cocoa/dairy) flavours to the chocolate mass.
18. A single mass of chocolate having manipulated flavour prepared by a process according to any one of claims 1 to 15.
19. A process for manipulating the flavour of a single mass of chocolate, substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying examples.
20. Use of a composition having an appropriate flavour attribute associated with chocolate, substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying examples.
21. Use of a flavour attribute, substantially as herein described with reference to anyone of the embodiments of the invention illustrated in the accompanying examples.
22. A single mass of chocolate having manipulated flavour, the chocolate prepared by a process substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying examples.
Section 40
Section 40(2) of the Patents Act relevantly requires that a complete specification must (a) describe the invention fully, including the best method known to the applicant of performing the invention and (b) end with a claim or claims defining the invention. Section 40(3) requires that the claim or claims in a patent specification must be clear and succinct and fairly based on the matter described in the specification.
Section 40(3): Clarity
A patent operates as a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood (Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91 at [7]; (1961) 106 CLR 588). A claim is lacking in clarity if a third party could not ascertain whether or not what he or she proposes to do would fall within the scope of the claim (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60). However, a lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use (Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (Minnesota Mining) [1980] HCA 9 at [46]; (1980) 144 CLR 253 at 274).
Mars identified a number of terms in the claims as lacking clarity, including those relating to the single mass, adding flavour attribute, and natural flavour. However, in construing the claims I have been able to give meaning to these terms. Therefore, the claims are clear in that regard.
Claims 1, 16 and 17 each recite processes that produce a flavour-manipulated chocolate product defined as having a flavour attribute associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate.
Mars submitted that the scope of the claims is unclear because terms such as ‘overriding’ or ‘dominant’ is a function of amount and not solely the nature of the flavour attribute. Mars described the flavour spectrum as a continuum with no clear boundaries between the ‘intermediate’ flavour attributes claimed by Nestlé and the disclaimed enhancing flavours at one end of the spectrum and the overriding/dominant flavours at the other. Mars submitted that the methods of evaluating chocolate flavour using trained taste-testers are subjective and opinions can vary. As a consequence, Mars argued that there is no empirical method for determining the boundaries between the ‘intermediate’ flavour attributes of Nestlé’s claims, and those explicitly disclaimed.
Nestlé confirmed it claims the ‘intermediate’ flavour attributes. Basing its statements on Mr Dale’s evidence (SD#3 [9]-[11]), Nestlé submitted that at one end of the flavour spectrum are the merely enhancing flavour attributes and at the other flavour attributes which give a strong or sharp different, overriding or dominant flavour. In between, the claimed ‘intermediate’ flavour attributes are consumer-recognisable, are incorporated in a quantity sufficient to provide a subtle note or hint of the flavour, and yet do not override the chocolate flavour, and do not merely enhance the base chocolate flavour.
Mr Lee described the term ‘flavour attribute’ as imprecise in that it gives qualitative rather than quantitative information, but notes it is used in the chocolate industry to identify different organoleptic and/or gustatory sensations (smell and taste) had by a trained tasting person when eating different ‘types’ of chocolate (JL#1 at [69]; JL#2 at [15]). The following evidence by Mr Lee supports Mars’ submission that the boundaries between the intermediate flavour attributes and the disclaimed flavour attributes are indistinct:
“… the question of when an added flavouring agent, be it a natural one or one that mimics natural substances, like vanillin and ethyl vanillin, respectively, imparts an overriding flavour attribute as compared to modifying flavour attributes that result naturally in the course of the different steps involved in chocolate manufacture without added additives, is a question of the amount of flavouring agent added and its concentration degree.” (JL#1 at [111])
“… the terms ‘enhancement’ and ‘manipulation’ in the context of flavour pose difficulties. I think it is perhaps a matter of degree only whether in a process of making chocolate using conventional and non-conventional methods known back in the year 2001 you are ‘enhancing’ an existing flavour attribute already present in a mass of chocolate making ingredients, either by admixing a compatible flavouring agent into the chocolate mass or by bringing an inherent, already present flavour note more to the forefront, or whether you are ‘manipulating’ the flavour of the chocolate mass to make such flavour attribute even stronger … . Being a matter of degree, it is difficult if not impossible to draw a line or distinction between ‘enhancement’ and ‘manipulation’… .” (JL#2 at [12]; and consistent with JL#1 at [67])
After explaining that in use the claimed intermediate flavour attributes impart a flavour tone associated with chocolate mass, and are not intended to impart merely enhancing or dominant, overriding flavours, Mr Dale states:
“At first sight one may think that we are talking about virtually indistinguishable variations here rather than actual perceptible differences; however, this is not the case. The trained person, and even the untrained person, can easily distinguish the flavours or flavour tone generally found in a chocolate mass and as compared with a chocolate mass to which a different, very recognisable, and in some cases overpowering, distinct dominant flavour has been added.” (SD#1 at [20])
In that passage, Mr Dale distinguishes the claimed invention from “virtually indistinguishable variations” because any person can easily distinguish a flavour generally found in a chocolate mass from one with “a different, very recognisable, and in some cases overpowering, distinct dominant flavour has been added”. However, that a person could distinguish markedly different flavours was not in dispute.
The question at issue is, in the absence of a precise definition of the consumer-recognisable ‘intermediate’ flavour attributes, do the claims provide a workable standard suitable to the intended use of the invention. Critically in this case, for skilled persons to determine whether something they propose to do or make would fall within the scope of the claim they must be able to differentiate between, not only markedly different flavour attributes, but also minor quantitative variations in each ‘flavour attribute associated with chocolate’ in order to establish, with precision, the positions (boundaries) on the flavour spectrum (if any) at which any given flavour attribute in the chocolate product transitions from chocolate flavour enhancement to the consumer-recognisable ‘intermediate’ flavours, and where consumer-recognisable ‘intermediate’ flavour transitions to an overriding, dominant flavour different to chocolate. For example, where a flavour attribute is capable of both, skilled persons must be able to consistently identify a point at which “a subtle note or hint of the flavour” (SD#3 at [11]) becomes dominant and different to chocolate.
There was no dispute that chocolate manufacturers use panels of trained taste testers to rate the flavour characteristics of chocolate (JL#1 at [70]; JL#5 at [39]; SD#3 at [12]). Mr Dale describes the use of a hedonic scoring system (SD3# at [13]) consistent with taste testing involving sensory evaluation (JL#1 at [70]; SD#3 at [34]). Mars submitted this this is a subjective test and opinions can vary.
Minifie, at pages 460-471 has a section on flavour assessment including sensory testing methods. On page 460-461, Minifie states that modern sensory tests using scientifically designed methods involving, among other things, correct statistical analysis, a full understanding of the purposes of the test and precise experimental design of test conditions, provides more than purely subjective judgements.
“Ranking and rating tests” to establish relative values of, for example, intensity or flavour strength are usually used where there are more than minor differences to be established (Minifie,pages 462-463). However, even then, this test is dependent on the experience of the assessors and requires reference samples to determine fixed scales (Minifie, para bridging pages 463-464). Alternatively, a “flavour profile method” consists of a combined qualitative and quantitative, descriptive method of flavour analysis and is based on single odour taste and mouthfeel characteristics that can be detected; the intensity of these characteristics; and the overall impact and quality of the test material (Minifie, page 465). With a correctly trained panel, this method is reproducible and informative, but descriptive terms must be delineated to ensure uniformity and a disadvantage is that the scales used are of limited value and lack precision (Minifie, pages 465-466).
The person skilled in the art using the information provided in the opposed specification is working simply with the descriptive information that the flavour attribute must be ‘associated with chocolate’, ‘consumer-recognisable’ and ‘other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate’. Although the description identifies relevant flavour attributes, the list is not exhaustive. The specification provides no information on suitable reference material and no clear delineation of Mars’ broad definitions. The information in Minifie does not support a conclusion that persons skilled in the art could with any degree of precision set boundaries for the intermediate flavour attributes using sensory testing.
As indicated above, Mr Lee considers it difficult if not impossible to draw a line or distinction between chocolate flavour enhancement and the manipulated intermediate flavours (JL#2 at [12]). Mr Dale’s evidence that at “first sight one may think that we are talking about virtually indistinguishable variations here rather than actual perceptible differences …” is also relevant in this context since, as indicated above, his subsequent distinguishing remarks do not in any way address the question of whether persons skilled in the art could establish clear boundaries on the flavour spectrum between the claimed ‘intermediate’ flavour attributes and overriding, dominant flavours.
I conclude that based on the information in the opposed specification, persons skilled in the art would not be able make other than purely subjective judgements with regards to the position of a flavour attribute on the flavour spectrum. For this reason, they would not be able to consistently distinguish between the claimed ‘intermediate’ flavour attributes and the merely enhancing or dominant, overriding flavours, to determine for all intensities of any given flavour attribute whether or not it falls within the scope of the claims. It follows that the claims do not provide a workable standard suitable for the intended use. For this reason claims 1, 16 and 17 are not clear. Dependent claims 2-15 and 18 do not remedy this defect and also lack clarity.
Omnibus claims 19-22 define the invention by reference to the examples. Examples 1-20 provide precise instructions for the preparation of reaction flavour attributes and their use in chocolate products, and do not define the flavour attribute by way of disclaimed regions of the flavour spectrum. Therefore a person could determine whether what they propose to do would fall within the scope of these claims. Consequently, claims 19-22 are clear.
Section 40(2)(a): Full Description
The High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25]; (2001) 207 CLR 1 at 17 explained the test for full description as:
“The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
Mars’ submissions under this ground were essentially that the limited disclosure in the description is not commensurate with the broad scope of the claims. Specifically, given the broad scope of the flavour attribute composition, the claims are not enabled over their full scope by the disclosure of the specification, which would require the skilled person to carry out a research programme.
Mars led no submissions or evidence that the disclosure does not enable the skilled addressee to produce something within each claim. The description provides examples describing the preparation of flavour attribute compositions. Further examples describe the reduction/removal of natural flavour from compound chocolate, and the addition of flavour attributes. I consider this disclosure sufficient to enable the preparation of these products at least.
Mars has not established that the claimed invention is not fully described.
Section 40(3):Fair Basis
Section 40(3) requires that the claim or claims in a patent specification must be fairly based on the matter described in the specification.
Regarding the consideration of fair basis, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (Lockwood) [2004] HCA 58 at [69]; (2004) 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
“… the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
Mars’ opposed claim 1 for lack of fair basis due to the removal of the requirement that the flavour attribute composition is added “to the chocolate mass” during prosecution of the application. Nestlé has since proposed amendments to reintroduce this feature into claim 1 which, if allowed, will address Mars’ concerns on this basis.
Mars’ concerns that the claims do not make it abundantly clear that the flavour composition is added after the chocolate mass has been deflavoured will also be overcome by the proposed amendment.
I find the claims as proposed to be amended on 7 April 2014 are fairly based.
Novelty
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 in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 137 CLR 228 at 235:
“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”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; (1990) 91 ALR 513 at 517). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention. However, if 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 such a way that would not do so, the patentee’s claim will not be anticipated (Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [145], referring to General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (General Tire) (1971) 1A IPR 121 at 138).
It is the claimed combination that must be tested against the prior art:
“a prior publication does not amount to an anticipation of an invention claimed as a combination if it discloses some, but not all, of the integers of that combination” (Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd [1999] FCA 898 at [22]; (1999) 44 IPR 481 at 491 [22])
Mars cited the following documents for novelty purposes:
US 4440797 (Berkes, K. et al.) 3 April 1984 (US’797)
DE 3803180 A1 (Buehler, A) 3 November 1988 (DE’180)
US 5676993 (Watterson, J. J. et al.) 14 October 1997 (US’993)
US 3769030 (Kleinert, J.) 30 October 1973 (US’030)
US 2835585 (Rusoff, I. I.) 20 May 1958 (US’585)
US 2899309 (Rusoff, I. I.) 11 August 1959 (US’309)
US 2954293 (Rusoff, I. I.) 27 September 1960 (US’797)
WO 00/22935 A1 (Kraft Jacobs Suchard R & D, Inc.) 27 April 2000 (US’797)
The priority date was not in dispute. Each of the above documents was published before 30 October 2001 and consequently forms part of the prior art base for the purposes of section 7(1) of the Act. DE’180 is in German, but is in evidence with an English translation.
US’797
Mars submitted that claim 1 lacks novelty in light of US’797.
US’797 is titled “Method for continuous production of chocolate mass”. Mr Lee’s summary of the disclosure, which is not directly disputed by Nestlé’s experts, is as follows:
“The US ’797 document describes a method for producing chocolate in a device in which non-refined cocoa mass, which still contains undesired aromatic substances and moisture, mixed with sugar, is finely ground to a degree required by the final recipe, and from where it is delivered to a finishing tank or hopper where added fat, emulsifiers and ‘aroma’ are incorporated to final recipe. The methodology of continuous production of the refined chocolate mass precursor from the non-refined cocoa mass and sugar in the ‘plasticator’ … includes a deodorising and dehumidification stage.
A preheated air stream is mixed into the ingredients, which are subjected to shearing stresses during which the mass becomes plasticised and fluidised (the fluidity of the mass can be increased by addition of an emulsifier). The hot air acts similar to a scrubbing agent for removing moisture and undesired aromatic substances. These are vented with the air from the sugar-cocoa liquor mass prior to the latter being then conveyed to a weighing hopper which is equipped with an agitator to stir the mass. Weighed doses of cocoa butter and additional fats are added to the refined chocolate mass in the weighing hopper and the final recipe is adjusted as required, including addition of ‘aroma’ as illustrated in Figure 7. The completed chocolate mass is homogenised and directed for further processing.” (JL#5 at [45]-[46])
For novelty purposes, Mars relied in particular on Figures 1 and 7 and the associated text in columns 6-7. Figure 1 is a schematic layout of a device for continuous production of chocolate mass. Figure 7 is a flowchart setting out the entire method for producing chocolate mass. These parts of US’797 disclose preparation of a raw chocolate mass by combining cocoa butter, cocoa mass, and other ingredients (column 7 lines 39-43). After fine grinding, raw chocolate mass is processed in three stages using the device of Figure 1. Relevantly, the stages identified in Figure 7 are as follows:
a)Gas admixture, plasticization and degassing (which dehydrates the raw mass and removes undesirable aromatic substances see US’797 column 3, lines 30-37);
b)Set up of the final recipe (during which cocoa butter, aroma and “foreign fat” is added); and
c)Homogenisation.
Stage 1 of the process includes the removal of undesired aromatic substances (volatiles) from the chocolate mass (SD#3 at [65]; JL#5 at [46]). As noted above, the flavour-stripping methods exemplified in the specification include known techniques for removing volatiles. Therefore, US’797 fulfils the requirement in claim 1 for a step of reducing the natural flavour from the chocolate mass.
The addition of ingredients such as ‘aroma’ and cocoa butter may vary the flavour of the chocolate mass to some degree. The question is whether the document discloses a flavour attribute associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate.
Nestle argued that US’797 discloses no relevant flavours, in that it adds an unspecified ‘aroma’ and contains no disclosure of an ‘effective amount’ of a flavour attribute composition. Mars submitted that as the object of the invention of US’797 is to provide a chocolate which is no different from chocolate manufactured by conventional methods (see column 5, lines 25-34), it is inevitable that the aroma added to the raw chocolate mass will be a flavour attribute associated with chocolate.
For an adverse novelty finding on the basis of inevitable result, the prior publication must contain a direction which, if carried out, will inevitably result in something being made or done which, if the claims were valid, would constitute an infringement of the claims under consideration (Jessup J in Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [177], referring to the principles set out in General Tire [1972] RPC 457, emphasis in original). Justice Jessup explained further at [187]:
“In my view, the General Tire approach, if taken at all, may be taken only with respect to the whole of any claim asserted to have been anticipated. The “precise destination” at which the flag must have been planted is one which includes every integer of the claim. … In the present context, what this means is that, to the extent that the appellants’ case is based on General Tire, it is not sufficient that they be able to point to passages in the [earlier document] from which it would appear to the skilled addressee that [a particular feature] was contemplated or intended by the earlier inventors. It is necessary that they show that, if [the information relied on] were worked as directed, it would inevitably, as a matter of hard fact, have involved [that feature].”
Mars’ submission that addition of the emulsifier lecithin during the process would add a relevant flavour attribute was not supported by Mr Lee’s evidence that lecithin itself is not tasty and does not contribute a flavour attribute or note to chocolate when used in normal quantities (JL#2 at [133]).
Mars further submitted the addition of cocoa butter would add a relevant flavour attribute. Noting the exemplified process in column 7, in which the fat content of the raw chocolate mass is increased from 23-25% to 31%, Mars argued that the addition of up to 8% cocoa butter would result in a flavour attribute associated with chocolate. That example refers to the addition of cocoa butter and “other fat substances” (column 7, lines 9-12, column 8, lines 5-10). The question is whether the person skilled in the art following the directions in US’797 and adding these ingredients would inevitably, as a matter of fact, perform a process comprising all of the features of claim 1.
Contrary to Mars’ submission, I do not consider Mr Lee’s evidence determinative of the matter. Mr Lee considers US’797 to confirm his view that before the priority date aroma and flavouring substances were available and that he could and would have used them to adjust the flavour profile of a chocolate mass without difficulty (JL#5 at [47]). However, critically, nothing in the US’797 specification or the evidence establishes that in following the directions in the document, the person skilled in the art would add an effective amount of a flavour attribute that would, as a matter of fact, produce a flavour-manipulated chocolate mass having a flavour attribute associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate.
Mars has not established that US’797 anticipates claim 1.
DE’180
Mars opposed claims 1-3, 5-6, 8, 13-18 for lack of novelty in light of DE’180.
DE’180 is titled “Procedure for the heat treatment of kernel material that forms at least partly volatile aromatic substances on heating”. The experts agree that DE’180 discloses a procedure involving heat treatment of cocoa kernel material to form aromatic (volatile) substances which are isolated, after which desired aromatic substances such as pyrazine are recovered and reintroduced during material processing (JL#2 at [147]-[150], [153]; SD#1 at [67]; CEH#1 at [34]).
DE’180 states the purpose of the invention is to exercise more control over the formation of flavour (page 5, para 2). In his second declaration, Mr Lee provided a summary of the DE’180 process which is not disputed by Nestlé’s experts (SD#1 at [67]; CEH#1 at [34]):
“147.The DE180 translation describes, among other aspects, a method of recovering aromatic, volatile substances that are generated in particular during cocoa bean roasting and which otherwise would simply be vented and lost. Undesired fractions of volatiles are scrubbed from the condensed gas stream whereby a selective binder is used to recover desired aromatic substances, in particular pyrazine. The binder substance is a fat suitable for chocolate manufacture, such as cocoa butter. See page 5 and 6.
148. Pyrazine is said to be a substance that imparts a desirable ‘roasting’ flavour attribute to chocolate, which is also well known to me. Pyrazine is obtained by reacting part of the protein building blocks (amino acids) with naturally occurring sugars present in cocoa beans under the influence of heating.
149. The recovered aromatic substances (e.g. Pyrazine) can then be incorporated into a chocolate mass to increase the flavour associated with the aromatic compound that was recovered. If a conching stage is contemplated, one would preferentially add the separated binder containing the aromatic substances during conching. See page 7
150. On page 8 is stated that the recovered, volatile aromatic (or flavour imparting) substance is to be returned preferably late into the chocolate making process, in particular during conching, because otherwise they will be partly lost during processing steps prior to conching.”
Mars submitted that DE’180 anticipates claim 1 by disclosing a method of manipulating the flavour of a chocolate mass by first reducing the natural flavour from the chocolate ingredients (the aromatic substances, including pyrazine) and then adding a flavour attribute imparting composition (recovered pyrazines bound in cocoa butter).
Consistent with the evidence(JL#2 at [147]; SD#1 at [41]), Nestlé submitted that (i) DE’180 is focused on the recovery of aroma normally lost during cocoa roasting and its use to improve the aroma of chocolate by later addition of the recovered material; and (ii) that the removal of volatiles as taught by DE’180 is irrelevant to the claims since the step is not carried out in addition to the common unit operations during normal chocolate manufacture as required by the claims. However, on page 4 of the description, the exemplified flavour stripping methods include “other known techniques for removing volatiles”. Therefore, Nestlé’s submission at the hearing that known techniques are ‘common unit operations’ and necessarily excluded from the claims is not sustainable. None of the experts distinguish the specific process taught by DE’180 because it describes common unit operations in normal chocolate manufacture, and Dr Hansen confirms that DE’180 describes the removal of natural chocolate flavours (CEH#1 at [34]).
Nestlé contended that DE’180 fails to teach all of the essential features of the opposed claims because “the roasting stage is not carried out with the purpose of removing or decreasing the natural flavour of chocolate ingredients (cocoa kernel); it is actually an inevitable consequence of standard processing that some of the aromas are lost, and it is the purpose of the invention in [DE’180] to avoid such loss”. However the purpose or intent of the earlier process cannot distinguish the opposed claims where, as Nestlé has acknowledged, the reduction or removal of the natural chocolate flavour is an inevitable consequence of the roasting process taught by DE’180 (Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [144] applied).
The question now is whether the later addition of recovered flavour satisfies the requirement for adding an effective amount of a composition having a flavour attribute associated with chocolate, other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate.
In US’892 the flavour attribute is added to “a bland chocolate mass”. Nestlé submitted that the document does not disclose or suggest flavour reduction/removal, consistent with Mr Dale’s and Dr Hansen’s evidence (SD#3 at [6], [54]; CEH#3 at [6], [25]). Most relevantly, Mars submitted that the “bland chocolate mass” must have been made by flavour-stripping in some way or other and therefore this feature is inherent and inevitable.
US’892 provides no details whatsoever regarding the preparation of the bland chocolate paste, and as such does not disclose a step of reducing or removing the natural flavour from the chocolate ingredients or the chocolate mass. The question is whether faced with the problem, and having read US’892, the person skilled in the art would perform a process including this step as a matter of routine.
Dr Didzbalis understands the commercial chocolate of bland taste is likely to be a finished chocolate or compound coating and would likely be milk or crumb chocolate with relatively low cocoa content (JD at [70]). Mr Dale disputes that milk or crumb chocolate is bland and he is unaware of any bland-tasting commercial chocolate pastes (SD#3 at [57]). Mr Dale believes the ‘bland’ chocolate of US’892 refers to a commercial chocolate with low intensity (SD#3 at [57]).
I have found above that reduction or removal of natural flavour encompasses treating the chocolate ingredients or the chocolate mass to reduce or remove flavour, in addition to avoiding the use of flavour-intensive ingredients. Mr Lee describes this last as “selection of ingredients that have inherently muted flavour attributes” (JL#2 at [32]), which I understand to mean a process involving the substitution of flavour-intensive ingredients with low flavour alternatives. A chocolate simply made with less cocoa, does not fall into this category. Therefore, the mere selection of ‘bland’ or low intensity chocolates, without regard to how they were made, does not render the subject matter of the opposed claims obvious.
In the context of conching and flavour development, Mr Lee states that he has used extended conching to make a ‘bland’ chocolate from a chocolate mass that had a more characteristic or defined flavour profile (JL#1 at [89]). I understand it would be a matter of routine for Mr Lee to use this strategy to prepare the bland chocolate starting material required by US’892. Extended conching is explicitly identified in the specification as a method carried out in addition to the common unit operations during normal chocolate manufacture (para bridging pages 4-5). Having, done so, Mr Lee need only follow the directions in Example 5 to add the ‘test’ caramel flavour attribute the bland chocolate mass to proceed directly to the invention of claim 1. Therefore, I find US’892 renders the subject matter of claim 1 obvious to the person skilled in the art.
The test composition of US’892 provides a caramel flavour attribute to the chocolate product which is one of those specified in claim 2, which claim is also obvious. I have found above that the addition of flavour attribute to produce a flavour-manipulated chocolate product necessarily overcomes the variations in chocolate flavour obtained in the manufacture of chocolate using different processing conditions and/or ingredients. Consequently, claim 13 is obvious.
Claim 15 contains no additional features that would render the claim other than obvious. The caramel flavour attribute of US’892 fulfils the requirement in claim 15 to provide an undefined “specific” consumer-recognisable flavour attribute. Consequently, for the reasons already provided the subject matter of this claim is obvious.
Mars submitted that the obviousness of claims 16-18 follows claim 1. Independent claims 16 and 17, drafted as the use of a composition or a flavour attribute, for the specified purposes contain no further limitations that could render these claims other than obvious. Since I have found the processes of claims 1-2, 13 and 15-17 would have been obvious in the light of US’892, the product of this process at claim 18 is also obvious.
In summary, I find the subject matter of claims 1-2, 13 and 15-18 lacks an inventive step in light of US’892.
US’797
Regarded as relevant
US’797, titled “Method for the continuous production of chocolate mass”, is summarised above.
Mr Dale and Dr Hansen understand US’797 to disclose a method for the production of a chocolate mass that avoids or reduces the duration of the traditional conching step (SD#3 at [64]; CEH#3 at [28]). Based on this understanding, Mr Dale states that it is not in the field of chocolate flavour manipulation and he would not look to this document as a starting point if he were trying to develop chocolate formulations which would lead to the operation of a highly flexible chocolate plant (SD#3 at 67). The problem identified by Mr Dale focusses on chocolate formulation, rather than a process for manipulating chocolate flavour irrespective of the ingredients used or processes of manufacture. Nevertheless, it is reasonable to conclude that Mr Dale would also not have considered the information in US’797 relevant to the problem I have identified above.
Dr Hansen and Dr Didzbalis did not directly comment on the relevance of US’797 to the problem. Mr Lee understands the document to describe a chocolate production method that involves a deodorising step to remove undesired aromatic substances, followed by addition of fat and ‘aroma’ to the chocolate mass (JL#5 at [45]-[46]). Mr Lee concludes that US’797 confirms his view that “the point of addition of ‘aroma’ and flavouring substances after a chocolate mass has come into existence can be done without any problems by selecting one of the available options I would and could have employed prior to October 2001 in adjusting the flavour profile of a chocolate mass” (JL#5 at [47]). I understand from Mr Lee’s statements that he would have considered US’797 relevant to the problem.
One skilled person would have considered US’797 relevant. On its face the document describes a method of chocolate production that involves supplementing the final recipe with potentially flavoursome fats and aroma. I conclude that US’797 would have been regarded as relevant.
Consideration of obviousness
In the context of novelty, I have found that US’797 discloses the removal of undesired aromatic substances from the chocolate mass, but not the addition of a relevant flavour attribute associated with chocolate.
For the claimed invention to be obvious, Mars must establish that the person skilled in the art, faced with the problem and having read US’797, would, as a matter of routine add an effective amount of a flavour attribute such that the chocolate product of the process has a flavour attribute associated with chocolate other than chocolate flavour enhancement or an overriding flavour different to chocolate.
In this regard Mr Lee goes no further than stating that US’797 confirms his view that aroma and flavouring substances can be added after a chocolate mass has come into existence and, before October 2001, he would have selected one of the available options to adjust the flavour profile of a chocolate mass (JL#5 at [47]). Mr Lee does not expand on which of the ‘available options’ he would select or the adjustments he would make to the flavour profile. Mr Dale notes that US’797 refers to an unspecified aroma, and describes it as providing no teaching or suggestion which would motivate the skilled person to arrive at the opposed claims (SD#3 at [67]-[68]). Drs Hansen and Didzbalis provide no relevant evidence on this point.
Mars has not established that the claims are obvious in light of US’797.
Further prior art documents
To establish the features of each claim where commonplace and routine at the priority date, Mars identified a number of prior art documents that disclosed individual features in the claims. For example for the features of claim 1, Mars cited seven documents that disclose deflavouring processes (US’030, US’993, US’590, US’592, US’593, WO’935, US’797); six documents disclosing flavouring compositions (three already cited US’590, US’592 and US’593, and in addition US’538, US’490, US562); three additional documents disclosing relevant flavour attribute compositions (CH’251, US’892, US’802) and two to establish that deflavouring and adding was part of making chocolate (US’797 already cited for deflavouring and DE’180).
In the absence of relevant evidence, the information in patent documents cannot be considered to be common general knowledge in the art (Minnesota Mining [1980] HCA 9 at [114]; 144 CLR 253 at 292).
Mars has adduced no evidence to establish that in seeking information to solve the problem, the person skilled in this art could be reasonably expected to have ascertained, understood and regarded each document as relevant and could be reasonably expected to have combined the information in any two or more of these documents and from there proceeded to the claimed invention by routine steps. It follows that Mars has not established that the subject matter of any claim is obvious in light of any combination of the above documents, with or without the common general knowledge in the art.
Claims 2-15 additional documents
Mars raised a number of additional documents to establish that the invention of dependent claims 2-15 was obvious (US’585, WO’935, DE’180, US’293, US’309, US’293, US’490, US’590, US’592, US’593, US’427, US’030, US’993, US’562, US’438, CH’251). However, claims 2-15 each import all of the features of claim 1 at least, so if Mars did not consider these documents relevant to the obviousness of claim 1, it is difficult to see how they could be relevant to the dependent claims.
In this regard, I note that Mars’ submissions rely on the additional documents either alone or in combination with the common general knowledge to establish that particular features of the dependent claims are known or obvious in light of the documents alone or in combination with the common general knowledge.
However, Mars has not established that each of these documents would have been ascertained, understood and regarded as relevant and, insofar as the information in the additional documents may need to be combined with that of the documents cited against claim 1, that the skilled person could reasonably be expected to have done so. As Mars’ submissions do not adequately address the obviousness of the entire combination of features in each of claims 2-15, I have had no further regard to these additional documents for inventive step purposes.
Manner of Manufacture
Section 18(1)(a) requires that an invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. Manner of manufacture is assessed by asking whether the claimed invention lacks the necessary quality of inventiveness on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 at [9]; (1995) 183 CLR 655). In order to be held patentable a process must result in an artificially created state of affairs and offer a material advantage in the field of economic endeavour (National Research Development Corporation [1959] HCA 67 at [22], [25]; 102 CLR 252 at 275, 277).
Although Mars submissions concluded with the statement that one or more of the claims does not define a manner of manufacture, it made no submissions relevant to this ground.
The specification relates to a process for manipulating the flavour of chocolate independently of the processes, formulations and ingredient origins used in the preparation of the chocolate (page 1, lines 4-6, page 3, lines 6-11). The claimed process comprises manipulating the flavour of chocolate by reducing the natural flavour from the chocolate ingredients or the chocolate mass and then adding to the chocolate mass an effective amount of a specified flavour attribute. The process results in an artificially created state of affairs in that the chocolate product has a flavour attribute that it would not otherwise have had. The material advantage of the process is identified on page 3 of the specification, that a single manufacturing plant will become more flexible and able to produce a full range of flavours. This is clearly relevant to its economic utility. The process or the chocolate product of the process is not obvious on the face of the specification. I find that the claims define a manner of manufacture.
CONCLUSION
Mars has been successful in its opposition. Claims 1-18 are not clear. Claims 1-2, 13 and 15-18 lack an inventive step. It is possible to overcome the deficiencies I have identified by amendment of the claims. I therefore allow Nestlé 2 months from the date of this decision to propose such amendments.
COSTS
Mars submitted that costs should follow the event. However, Nestlé submitted that it should be awarded costs irrespective of the outcome of the opposition because it had been prejudiced by Mars late filing of it summary of submissions.
It is normal in actions before the Commissioner that costs should follow the event. However, subregulation 5.20(6) permits the conduct of the parties in filing their summary of submissions to be taken into account in awarding costs.
Subregulation 5.20(4) specifies the time that each party must file a summary of submissions. This timeframe applies to the parties regardless of the actions of the other party. For instance, an applicant is expected to file their summary of submissions on time even if the opponent is late in filing their summary. Where the opponent’s summary is late, an applicant should prepare a summary responding to the case set out in the opponent’s SGP, and address any additional points at the hearing.
Mars’ summary of submissions was due on 18 March 2014 but was filed on 20 and 21 March 2014. Nestlé’s summary was due on 25 March 2014 but received on 28 March 2014. While Mars has been successful in this opposition and I would ordinarily award costs in their favour, I can take into account their delay in filing the summary of submissions. While the delay was due to an “oversight” in calculating the due date, this is not a sufficient explanation. It is appropriate to make no award of costs.
In accordance with the discretion in reg 5.20(6), I make no award of costs due to the parties’ failure to file a summary of submissions within the timeframe set out in reg 5.20(4).
Dr B. Akhurst
Delegate of the Commissioner of Patents
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