Mars, Incorporated v Société Des Produits Nestlé S.A

[2014] APO 43

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Mars, Incorporated v Société Des Produits Nestlé S.A. [2014] APO 43

Patent Application:                2002321117   

Title:Chocolate flavour manipulation

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 - fair basis - the claims are fairly based - novelty - lack of novelty established - 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, Sydney

Opponent: Clive Elliott of Counsel, instructed by Colleen Kramer, Mars’ US Counsel

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2002321117

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 2, 5, 7 and 8 is not novel and lacks an inventive step.  Claims 5 and 6 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

1. Patent application 2002321117 (’117) was filed by Société Des Produits Nestlé S.A. (Nestlé) on 25 June 2002 via the PCT, claiming priority from basic document GB 0126026.4 filed on 30 October 2001.  After examination, the application was advertised as accepted on 4 December 2008.  On 4 March 2009, Mars Incorporated (Mars) served a notice of opposition to grant of a patent.  An amendment request on 20 March 2009 correcting a typographical error in the notice was allowed unopposed on 9 April 2009.

2. A statement of grounds and particulars (SGP) was filed on 4 June 2009 and evidence in support served on 2 February 2010.  Evidence in answer was completed 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 2002317849, requiring only one body of evidence to be filed for both oppositions. 

3. On 2 November 2010, Nestlé filed a request to amend the specification under section 104 and a corrected version on 20 January 2011.  The amendment request was advertised on 24 March 2011.  On 24 June 2011 Mars opposed the amendments, filing a SGP on 26 September 2011.  Before the matter was heard, on 5 June 2012 Nestlé filed a further request to amend the specification and, after comments from Mars, proposed further amendments on 30 July 2012.  In the absence of opposition, the amendments were allowed on 13 December 2012. 

4. Evidence in reply was served on 13 March 2013.  The same day, Mars requested leave to file further evidence and proposed amendments to the SGP to reflect the Nestlé’s amendments to the specification.  The amendments to the SGP were allowed on 28 June 2013.  Leave was granted for Mars’ further evidence on 12 April 2013.  Nestlé filed responding evidence on 12 and 13 August 2013. 

   5.       On 20 February 2014, Nestlé advised that it had prepared chocolate samples discussed in the evidence in answer (Stephen declaration at [7]) and filed two further declarations in this regard.  However, at the hearing Nestlé did not pursue a request filed on 31 March 2014 to admit the declarations and samples as further evidence. 

5. The matter was heard on 1 and 2 April 2014.  Mars filed submissions on 20 March 2014.  Nestlé filed a summary of submissions on 28 March 2013.

6. A request filed by Mars on 8 April 2014 to amend the SGP to add matter that was argued at the hearing but not particularised was allowed unopposed on 30 April 2014. 

   The Evidence

7. 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

8. 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

9. Evidence in reply consisted of declarations by:

   ·John Lee (JL#3) dated 4 December 2009 with exhibits JL-19 to JL-21

   ·John Lee (JL#4) dated 4 December 2009

   ·John Lee (JL#5) dated 7 March 2003 with exhibits JL-22 to JL-30

10. Mars further evidence consisted of declarations by:

    • John Didzbalis (JD) dated 12 March 2013 with exhibits JD-1 to JD-8
    • Christian Scheiber dated 13 March 2013 with exhibits CJS-1 to CJS-3

    12.     Nestlés 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

11. At the hearing, the grounds of opposition pressed by the opponent were manner of manufacture, novelty, inventive step, clarity and fair basis. 

    Onus of Proof

12. The request for examination in this case was filed on 6 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)

13. 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

14. 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).

15. The specification is titled “Chocolate flavour manipulation”.  Page 1 indicates that the invention relates to processes for chocolate flavour manipulation independent of the processes, formulations and ingredient origins used in preparing the chocolate. 

16. The opposed claims are as follows.  Claims 1-3 and 6-7 are independent.   

    1.A process for manipulating the flavour of a single mass of chocolate which comprises adding from 0.001% to 10% by weight based on the weight of the chocolate mass of a flavour attribute to the chocolate mass wherein the preparation of the chocolate mass comprises a conching step, wherein the flavour attribute is a malty crumb flavour or a malty flavour obtained by acid treatment of a cocoa liquor followed by a protease treatment.

    2. A process for manipulating the flavour of a single mass of chocolate which comprises adding from 0.001% to 10% by weight based on the weight of the chocolate mass of a flavour attribute to the chocolate mass wherein the preparation of the chocolate mass comprises a conching step, wherein the flavour attribute is a crumb flavour attribute and is added to a non-crumb chocolate mass in an amount of from 0.1% to 5%.

    3. A process for manipulating the flavour of a single mass of chocolate which comprises adding from 0.001% to 10% by weight based on the weight of the chocolate mass of a flavour attribute to the chocolate mass wherein the preparation of the chocolate mass comprises a conching step, wherein the flavour attribute is a caramel flavour attribute provided by the reaction of skimmed milk powder in a fat system at a temperature of 100°C to 150°C.

    4. A process according to claim 1 or claim 3 wherein the amount of flavour attribute added to the chocolate mass is from 0.001% to 5% by weight based on the weight of the chocolate mass.

    5.A process according to any one of the preceding claims when used for the preparation of chocolate having said flavour attribute associated with said chocolate other than to provide chocolate flavour enhancement or an overriding, dominant flavour different to chocolate and which said flavour attribute overcomes the variations in chocolate flavour obtained in the manufacture of chocolate using different processing conditions and/or ingredients.

    6.A chocolate product containing from 0.001% to 10% by weight based on the weight of the chocolate mass of a non-(cocoa/dairy) flavour attribute having a flavour associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate which flavour attribute overcomes the variations in chocolate flavour obtained in the conventional manufacture of chocolate using different processing conditions and/or ingredients, wherein said non-(cocoa/dairy) flavour attribute is selected from a malty crumb flavour or a malty flavour obtained by acid treatment of a cocoa liquor followed by a protease treatment, a caramel flavour attribute provided by the reaction of skimmed milk powder in a fat system at a temperature of 100°C to 150°C, and a crumb flavour attribute and is added to a non-crumb chocolate mass in an amount of :from 0.1% to 5%.

    7. A process for manipulating the flavour of a single mass of chocolate which comprises adding from 0.001% to 10% by weight based on the weight of the chocolate mass of a flavour attribute to the chocolate mass, wherein the preparation of the chocolate mass comprises a couching step, wherein the flavour attribute comprises one or more of the following:

    a.) a crumb flavour attribute and is added to a non-crumb chocolate mass in an amount of from 0.1% to 5%;

    b.) a malty crumb flavour obtained by acid treatment of a cocoa liquor followed by a protease treatment; and

    c.) a caramel flavour attribute provided by the reaction of skimmed milk powder in a fat system at a temperature of l00°C to 150°C.

    8.A single mass of chocolate having manipulated flavour prepared by a process according to any one of claims 1 to 5 or 7.

    9. A process for manipulating the flavour of a single mass of chocolate according to any one of claims 1-3 substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.

    10.A chocolate product containing from 0.001% to 10% by weight based on the weight of the chocolate mass of a non-(cocoa/dairy) flavour attribute according to claim 6 substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.

    11.A single mass of chocolate having manipulated flavour prepared by a process according to any one of claims 1 to 5 or 7 substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.

    Claims construction

17. The meaning of several terms in the claims was the subject of discussion at the hearing.  I have addressed the construction of these terms below.

    manipulating the flavour

18. 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 of these definitions are appropriate in the context of the opposed claims.   

    a single mass of chocolate, chocolate mass and wherein the preparation of the chocolate mass comprises a conching step

19. The description provides a dictionary definition for the term ‘chocolate’ which includes standard chocolate, as well as substitute chocolate such as compound, couvertures and ice cream coatings (page 1, lines 26-27).  A ‘single’ mass of chocolate means a single batch of chocolate (JL#3 at [13]; SD#1 at [25]).

20. Conching is a texture and flavour manipulation process that is common in standard chocolate making (JL#1 at [56]; SD#1 at [25]; CEH#1 at [11]).  Therefore, where the claims require a conching step substitute chocolates may be excluded (CEH#1 at 11).  However, in addition to conching of the chocolate mass, conching of ingredients such as cocoa liquor prior to addition to the chocolate mass is known in the art (JL#3 at [48]).  Both would fulfil a requirement in the claims for a conching step in the preparation of the chocolate mass.

21. Mr Dale and Dr Hansen construed the ‘single mass of chocolate’ as a manufactured or post-conched chocolate (SD#1 at [25]; CEH#1 at [93]).  In contrast, Mr Lee understood the ‘single mass of chocolate’ or ‘chocolate mass’ to come into being when the basic chocolate-making ingredients are combined (JL#3 at [11], [43], [58]).  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 (eg 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])

22. Mr Lee’s construction 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” (3^rd 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 manufacturing process and refers to a ‘chocolate paste’ being produced early in the process after the ingredients are mixed (pages 138-139).

23. 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]) 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 [56]-[57]; [72]).  Substitute chocolates may contain fat other than cocoa butter and/or sugar substitutes (Exhibit JL-9, Beckett, pages 261, 269, 274).

    a flavour attribute

24. On page 3, the description provides a dictionary for the term:

    “By “flavour attribute” in this invention, we mean a non-cocoa and/or milk/dairy consumer-recognisable flavour attribute associated with chocolate, and not a non-chocolate flavour for the mere enhancement of the chocolate flavour e.g. by adding vanilla, or for a different overriding, dominant flavour such as peppermint”. 

25. It is apparent from the balance of the specification, that the limitation ‘non-cocoa and/or milk/dairy’ as it appears in the dictionary should be understood as non-(cocoa and/or milk/dairy) (page 2 line 31 to page 3 line 3; page 3a lines 12, 16).  A non-(cocoa and/or milk/dairy) flavour attribute has a flavour that is not characteristic of cocoa or dairy products (JL#2 at [22]; SD#1 at [22]; SD#3 at [15]; CEH#1 at [10]).  However, it does not exclude the flavour attribute being prepared from cocoa or milk/dairy ingredients (SD#1 at [22]; SD#3 at [15]).

26. 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.  Examples of the claimed other than enhancing or different, dominating or overriding flavour attributes is provided on page 2 of the specification:

    “These flavour attributes may be, for example, roasted, sweet, bitter, crumb, caramel, fruity, floral, biscuit, bouquet, spicy, scented, baked, bready, cereal, popcorn, malty, astringent and praline.”

27. Insofar as the claims specify the weight of ‘flavour attribute’ to be added to a chocolate mass, in this context it means the addition of a flavouring agent or composition (JL#2 at [17], [64], and by inference from SD#1 at [19], [24]; CEH#1 at [10] and JD at [34]-[36]). 

    adding … a flavour attribute to the chocolate mass

28. The flavour attribute is added to an existent chocolate mass.  Given my construction of ‘chocolate mass’ above, the addition is not necessarily to post-conched chocolate.  

29. Nestlé submitted that the flavour attribute is added to the chocolate mass for reasons other than to provide (i) chocolate flavour enhancement or (ii) an overriding, dominant flavour different to chocolate.  However, it is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves (Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224 at [249]). Therefore, no features regarding the purpose or intent of the person carrying out the process can be read into the claims where this is not otherwise made a feature of the claims.

30. While claim 5 explicitly requires a flavour attribute in the chocolate product that is other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate, this is not a limitation that can be found in independent claims 1-3 or 6-7.  The plain meaning of claims 1-3 and 7 is that they each define a process involving the addition of an amount of a flavouring agent or composition having the specified flavour attribute.  This construction is supported by dependent claim 5, which would otherwise contain a redundant feature.  It follows from this construction, that the flavour attribute of the chocolate product produced by the processes of claims 1-3 or 7, and that of claim 6, would encompass any and all flavour attributes that would result from the addition of the specified flavouring agent or composition in an amount between 0.001% and 10% by weight based on the weight of the chocolate mass (w/w).  

31. I do not agree with the parties’ view at the hearing that the addition of flavour attribute must take place prior to tempering, since this is not expressly or by proper inference made a feature of the claims.  At page 11 of the description there is a statement that the “flavour attribute may be added to any of the ingredients of the chocolate mass and at any stage of the chocolate-making process before tempering”.  However, that statement does not provide a dictionary that would impose any limitation on the claims, particularly in view of the permissive word ‘may’.

    which flavour attribute overcomes the variations in chocolate flavour obtained in the [conventional] manufacture of chocolate using different processing conditions and/or ingredients

1. This feature appears in claims 5 and 6, with the word ‘conventional’ only in claim 6.  Nestlé submitted that the flavour attribute is used to overcome the limitations of existing manufacturing equipment and/or sources of chocolate making ingredients.  Insofar as Nestlé may have read an intention into the claims that is not expressly or by proper inference reproduced in these claims, such a construction is in error for the reason provided above.  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. 

2. Claims 5 and 6 are 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 addition of a relevant flavour attribute to the chocolate to manipulate its flavour overcomes these variations (page 3, paras 2-3).  This construction is consistent with the expert’s construction of the specification (JL#2 at [68], [104]); SD#1 at [19]). 

   Section 40

3. Section 40(3) of the Patents Act 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

4. 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 an act 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).

5. Mars submitted that the claims lack clarity due to the phrases ‘mass of chocolate’, ‘flavour attribute’, and ‘the preparation of the chocolate mass comprises a conching step’.  However, in construing the claims I have been able to give these terms a meaning.  Therefore the claims do not lack clarity on this basis.

   39.     Claims 5 and 6 contain the feature of a flavour attribute associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate. 

   40.     Mars submitted that the scope of these 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.

   41.     Nestlé confirmed that in using the feature 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. 

   42.     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])

   43.     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 continues:

   “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])

   44.     In that statement, 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 to which “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. 

   45.     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 transitions from merely enhancing 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. 

   46.     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 that this is a subjective test and opinions can vary.

6. 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, sensory analysis provides more than purely subjective judgements. 

7. “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). 

8. 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. 

9. 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 the merely enhancing and dominant, overriding flavours different to chocolate.

10. 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 claims 5 and 6 do not provide a workable standard suitable for the intended use.

11. I find claims 5 and 6 are not clear.

    Section 40(3):Fair Basis

12. Section 40(3) requires that the claim or claims in a patent specification must be fairly based on the matter described in the specification.

13. 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.”

14. Noting that at the filing date, the specification only referred to conching in the section detailing the background to the invention, Mars submitted that while conching was well known in the art and a conching step is usually present in making standard chocolate, it is not always performed, in particular with compounds, covertures and coatings.  Therefore the requirement in the claims for a conching step is not fairly based.

15. To provide the real and reasonably clear disclosure, Nestlé relied on the explicit references to conching on page 1 of the specification and its incorporation by reference into the opposed specification of the contents of the textbook “Industrial Chocolate Manufacture and Use”, edited by S.T Beckett, (Third Edition, 1999, Blackwell Science).  There was no dispute that Beckett contains information with respect to conching. 

16. Mars referred to the authorities: CCOM v Jejing [1994] FCA 1168, 28 IPR 481 at 497-499; the textbook “Patents, Trademarks & Related Rights” by Lahore at [15,035]; and Décor Corporation Pty Ltd v Dart Industries Inc (Décor v Dart) (1988) 13 IPR 385 at 398-399 to establish that while the specification must be read as a whole, the different parts have different functions.

17. In particular, in Décor v Dart 13 IPR 385 at 398-399, quoting from Halsbury’s Laws of England (3^rd Ed) Sheppard J describes the functions of the different parts of the specification.  Differentiating the body of the specification from the claims, the preamble in the body and the claims on the one hand, and the remainder of the body on the other, have quite different functions. 

    ·     The body of the specification, apart from the preamble, instructs those skilled in the relevant art in carrying out the invention. 

    ·     The claims define the monopoly. 

    ·     The preamble identifies the subject to which the invention relates, indicating the prior art and its deficiencies, stating the object of the invention and setting out the nature of the invention in general terms.  The preamble may be used to explain the claims and is treated as defining the results the patentee undertakes his invention shall achieve.  

18. I understand Mars’ submission to be that, since it is the body of the specification that provides instruction on carrying out the invention, features contained only in the preamble cannot provide the real and reasonably clear disclosure required for the claims to be fairly based.

19. In my view, the incorporation by reference of the contents of Beckett, even as a statement in the preamble, incorporates that information for the whole of the specification.  However, even if I am wrong, there was no dispute between the parties that the role and process of conching during chocolate making is part of the common general knowledge in the art.  Therefore, it is reasonable to conclude that the person skilled in the art would understand the information relating to chocolate making in the body of the specification to include that feature, despite the fact that outside the preamble, there is no explicit reference to it.  In either circumstance, the body of the specification contains a real and reasonably clear disclosure of a conching step. 

20. I find the claims are fairly based.   

    Novelty

21. 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”

22. 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 (1971) 1A IPR 121 at 138). 

23. Where the claim defines a combination of features, it is that 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])

24. Mars detailed submissions were essentially confined to the novelty of claims 1-3.  It submitted that the fate of claims 4-8 and omnibus claims 9-11 follow claims 1-3.

25. At the hearing, Mars pressed the case for novelty in respect of two documents:

    Beckett, S. T. “Industrial Chocolate Manufacturing and Use” Ed: (2nd Ed) published in 1994 by Blackie Academic and Professional, Chapman & Hall (UK)

    US 5393538 A (Chmiel, O. et al.) 28 February 1995 (US’538)

26. Both parties agreed that the information in the textbook Beckett formed part of the common general knowledge in the art at the priority date of the opposed application.  I note that Mars has not particularised either Beckett or the common general knowledge in the art for novelty purposes.  Nevertheless, since both parties have provided relevant evidence and submissions, I have considered the relevance of Beckett for novelty purposes.   

    Beckett 

27. Mars’ submissions were essentially that flavour-manipulation through the addition of a flavour attribute is well known in the art.  To establish that claim 1 is anticipated, Mars drew my attention to various passages in Beckett disclosing relevant steps in traditional chocolate-making, submitting that insofar as these features are common general knowledge they cannot form the basis for any legitimate monopoly.   

28. On page 3, Beckett discloses the steps in traditional chocolate making including, after preparation of cocoa beans, preparing the chocolate mass by combining sugar, cocoa material, cocoa butter and optionally milk powder, grinding (usually refining), addition of fat and conching.  On page 5, the document refers to the development of flavour and removal of volatiles by conching.  Beckett teaches three stages during which flavour development takes place:

    1.Fermentation to develop flavour precursors (page 102-105);

    2.Roasting to develop flavour by way of, among other things, pyrazines and Maillard reactions (pages 107-111): and

    3.Conching to modify the flavour (page 111-115)

29. Between pages 57-75, Beckett describes the preparation of cocoa mass from cocoa beans (Fig 5.2), capturing of steam condensates from cocoa liquor and interest in the volatiles (page 58), the effect of different roasting methods on chocolate flavour (Table 5.1 and following para), extraction of volatiles during roasting (pages 64-66) and the PDAT reactor (page 75). 

1. I agree that Beckett describes individual steps in the chocolate making process that are relevant to the opposed claims.  However, I have no evidence before me that establishes that Beckett provides clear and unmistakable directions to perform a process having a combination of features as presently claimed.  As noted in Apotex Pty Ltd v Sanofi-Aventis [2008] FCA 1194 at [91]:

   “Anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun.”

2. Nestlé’s experts both state that Beckett does not disclose the flavour attributes of the opposed claims (SD#1 at [29]; CEH#1 at [14]).  Mr Lee does not dispute this conclusion, responding instead that Beckett confirms his opinion that there is no technical impediment in choosing any flavour and adding it to a chocolate or compound mass. 

3. Mars has not established that Beckett provides clear and unmistakable directions to the combination of features as presently claimed.

   US’538

4. Mars submitted that US’538 anticipates claims 2 and 4-8. 

5. Patent application US’538 is titled “Preparation of a crumb-flavored milk chocolate”.  It discloses a process for making milk chocolate that avoids the crumb ripening process (JL#2 at [129], [134]; SD#1 at [39]).  

6. Mr Dale and Dr Hansen consider the document irrelevant to the opposed claims since it makes no mention of the three flavour attributes in the opposed claims (SD#1 at [38]; CEH#1 at [19]).  Mr Lee disputes this, considering the document particularly relevant to claim 2 and its dependent claims (JL#3 at [76]-[81]). 

7. The conventional process for making milk chocolate taught by US’538 combines sugar, cocoa powder, cocoa butter, whole milk powder and butter oil (column 2, lines 37-56).  This mixture is a “chocolate mass” for the purposes of the opposed claims.  During refining and conching of the mixture, 5.2% cocoa butter and 0.3% lecithin is added (column 2, lines 37-48).  Most relevantly, Examples 3 and 4 of US’538 describe the use of a lecithin lysate (lysolecithin) to replace 30% or 60% respectively of the 0.3% w/w standard lecithin normally added during processing (JL#3 at [77]-[78]), i.e. a 0.1% or 0.2% w/w addition of lysolecithin to the chocolate mass.  The standard chocolate does not have a crumb flavour but that made with lysolecithin has a pronounced crumb flavour (Example 6; JL#3 at [79]).  

8. Mr Lee concludes that the wording employed in opposed claims 2 and 4-8 “describes exactly what the US’538 describes” (JL#3 at [79]).  Mr Dale’s contrary view is based on his mistaken belief that the claims require the flavour compositions to be added to post-conched chocolate (SD#1 at [25], [38]).  Dr Hansen distinguishes US’538 because it “contains no discussion at all of the preparation or use of the 3 flavour attributes” as claimed (CEH#1 at [19]).  However, opposed claim 2 does not define the crumb flavour attribute in terms of its method of preparation.  Since Dr Hansen provides no reasons as to why Examples 3 and 4 of US’538 should be distinguished, I have given his evidence on US’538 less weight than Mr Lee’s reasoned conclusions. 

9. As indicated above, US’538 teaches the addition of lysolecithin to a chocolate mass.  The amount of added lysolecithin falls within the range required by claim 2 and results in a crumb flavour in a chocolate product that otherwise does not have a crumb flavour.  Consistent with Mr Lee’s evidence presented above, I see no reason why the flavouring agent lysolecithin should not be considered a “crumb flavour attribute” and the chocolate mass not having a crumb flavour a “non-crumb chocolate mass”.  The preparation of the chocolate mass comprises a conching step.  I conclude that US’538 discloses a processes for manipulating the flavour of a single mass of chocolate having all of the features of opposed claim 2.

10. The process of claim 7 using flavour attribute a) is of the same scope as claim 2 and therefore anticipated by US’538, as is the flavour-manipulated chocolate mass of claim 8 prepared by the processes of claims 2 and 7a). 

11. Claims 5 and 6 both contain the feature of a flavour associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate.  The flavour attributes as claimed are not capable of merely enhancing the base chocolate flavour (SD#3 at [18]), from which I conclude that lysolechithin provides a flavour associated with chocolate other than chocolate flavour enhancement.  It remains to be determined if lysolechithin provides other than overriding, dominant flavours different to chocolate.

12. Dependent claim 5 requires the chocolate product to have the other than overriding, dominant flavours different to chocolate.  US’538 is directed to the production of a milk chocolate product with a flavour close to that of a crumb-based chocolate (JL#2 at [129]; SD#1 at [82]; JL#3 at [77], [79]).  Crumb flavour is identified in the opposed specification as one of the consumer-recognisable intermediate flavour attributes as claimed.  In these circumstances, I consider it reasonable to conclude that the process of making crumb-flavoured chocolate set out in Examples 3-4 and 6 of US 538 necessarily results in a chocolate product with an intermediate flavour attribute as required by claim 5.

13. Claim 5 further requires the flavour attribute to overcome the variations in chocolate flavour obtained in the manufacture of chocolate using different processing conditions and/or ingredients.  I have found that this feature is satisfied by the addition of a flavour attribute to produce a flavour-manipulated chocolate product.  The addition of the crumb flavour attribute lysolecithin results in a crumb flavour in a chocolate that does not otherwise have a crumb flavour (Example 6; JL#3 at [79]).  I conclude that US’538 necessarily discloses the result required by claim 5.  It follows that claim 5 is anticipated.

14. Claim 6 requires the flavour attribute agent or composition to have the chocolate flavour attribute other than merely enhancing or overriding, dominant flavours different to chocolate.  There is nothing in evidence that establishes that, as a matter of fact, this flavour attribute is present in the lysolecithin disclosed by US’538.  Therefore claim 6 is novel in light of US’538. 

15. Claims 9-11 are omnibus claims defining the invention of the earlier claims by reference to the drawings and/or examples in the opposed specification.  There is no reference in the opposed specification to the use of lysolecithin as a flavour attribute agent, and Mars led no evidence to establish that the features of these claims lack novelty in light of US’538.

16. In conclusion, US’538 anticipates the subject matter of claims 2, 5, 7 and 8.

    Inventive step

17. Under the provisions of subsections 7(2) and 7(3) of the Patents Act 1990, an invention is taken to involve an inventive step when compared with the prior art base unless it would have been obvious to a person skilled in the art.  The invention must be obvious in the light of the common general knowledge as it existed in the patent area before the priority date, either on its own or together with information in a document, or combination of documents, that the person skilled in the art could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant and, where necessary, combined.  ‘Obvious’ means ‘very plain’ (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 at [51] - [52]; (2007) 72 IPR 447 at 461 [51] - [52]).

18. The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:

    “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.”

19. Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base:

    “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 … 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.” (Alphapharm at [41] following Minnesota Mining [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293)

20. The usual approach to obviousness is the problem-solution approach.  Once the problem has been formulated, and the common general knowledge or prior art base have been determined, the question of whether the claimed solution is obvious must be addressed. 

    The problem

21. Mars submitted that the problem addressed by the opposed claims is the manipulation of chocolate flavour.  Nestlé’s submissions do not address the problem.

22. The specification sets out the background to the invention.  On page 1, the invention relates to processes for the manipulation of chocolate flavour, independently of the processes, formulations and ingredient origins used in the preparation of chocolate. 

23. On pages 1-2 of the description, it is stated that local chocolates are often unique and contain flavour attributes that are important for the consumer and it has been known for many years to add flavour to chocolate.  This is done for two reasons firstly, modification or enhancement of the cocoa or dairy flavour eg. to give a rounded smoothness to the profile or to create a creamy note, which is usually done with a vanilla flavour, and secondly to impose a different, overriding, dominant but compatible flavour eg. by adding orange oil, peppermint oil, strawberry, raspberry etc.  

24. As indicated on page 2, it is well known that there are a large number of different consumer-recognisable flavour attributes associated with chocolate, other than merely enhancing or different overriding, dominant flavours, which vary around the world according to local consumer preferences.  These flavour attributes of chocolate products are determined by variations in the process and ingredients used in chocolate manufacture.  Some manufacturers produce chocolate using ingredients and a process which only gives one flavour attribute and a specific house flavour, and the manufacturing plants are only able to produce a limited variation around this flavour.  However, for a chocolate product containing chocolate and another ingredient, it is important to match the chocolate flavour attribute with the flavour intensity type of the other ingredient.

25. A desire in the art is identified on page 2, which appears to include elements of the Nestlé’s claimed solution:

    “It would be very desirable to be able to manipulate the flavour associated with chocolate produced by a single process to obtain a flavour attribute of one’s choice by adding the desired flavour attribute to a single chocolate mass irrespective of the process of preparation of the chocolate mass, the formulations and ingredient origins.  This would lead to the operation of a highly flexible chocolate plant.”

26. On page 3, the object of the invention is to overcome or ameliorate at least some of the disadvantages of the prior art, or to provide a useful alternative. 

27. In view of the state of the art and associated disadvantages identified in the description, I consider a reasonable formulation of the problem is the provision of a means to manipulate the consumer-recognisable flavour attributes associated with chocolate of the chocolate mass irrespective of the ingredients used or processes of manufacture.  This is consistent with the object of the invention and largely consistent with the parties’ submissions and evidence (SD#1 at [12], CEH#1 at [9]).

    The person skilled in the art

28. In general, the skilled person or addressee is the person who works in the art or science with which the invention is connected.  He or she is a person, or team, likely to have a practical interest in the subject matter of the invention.  While the skilled person may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive.  (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [71]-[72]; 49 IPR 225 at [71]-[72] referring to Catnic Components Ltd v Hill &Smith Ltd [1982] RPC 183 at 242 and General Tire [1972] RPC 457 at 485; Minnesota Mining [1980] HCA 9 at [115]; 144 CLR 253 at 293).

29. Given the problem I have identified above, I consider the hypothetical person skilled in the art in this case is a person or team who, at the priority date, had expertise in chocolate manufacture and flavouring.  It is clear that chocolate production is a diverse art and skilled persons in this field may be expected to have more or less expertise in different aspects of the process.  Contrary to Nestle’s submission, I do not consider that the hypothetical skilled person must necessarily be a flavour chemist, but rather a team including a flavour specialist. 

30. Mars and Nestlé each disputed that the other party’s experts were relevant skilled persons/addressees in this opposition.   

31. Mr John Lee was awarded a Bachelor degree in Chemical Engineering in 1967 (JL#1 at [10]-[11]).  After gaining experience with three companies associated with the food industry, in 1986 Mr Lee joined the Australian chocolate manufacturer and retailer Darrell Lea Chocolate Shops Pty Ltd as Operations Manager.  In 2000, he became Technical Manager (JL#1 at [12]-[15], [20]).  In his initial years as Operations Manager (i.e. before 2000), Mr Lee gained practical experience and familiarity with all aspects of the commercial manufacture and production of chocolate and chocolate products (JL#1 at [17]-[21]).  With a view to improving the flavour and texture of the company’s chocolate, Mr Lee undertook textbook research and collaborated with experts in Australia and overseas (JL#1 at [19]-[21]).  Mr Lee has no professional affiliation with either Mars or Nestlé, but has in the past carried out work on contract for Nestlé on non-chocolate products (JL#1 at [4]).  

32. Mr Lee acknowledged that he is not a specialist flavour chemist and would seek advice from such a person where necessary (JL#1 at [118]-[119]).  However, in view of Mr Lee’s involvement in the practical aspects of chocolate manufacture at Darrell Lea, I do not accept Nestlé’s submission that his expertise and primarily managerial experience means he is not a suitable skilled addressee in these proceedings. 

33. Dr Didzbalis holds a Bachelor degree in Chemistry, a Masters in Food Science and completed a PhD in Food Chemistry/Flavour Chemistry in 1999 (JD at [2]).  Based in the USA, for 12 years prior to 2000 Dr Didzbalis conducted flavour research for Best Foods/Unilever where he worked as a Principle Chemist (JD at [3]).  Since joining Mars in 2000 his responsibilities have been chocolate flavour research to address problems such as cocoa bean shortages, cocoa bean crop blights, and chocolate processing variations due to equipment and unit operation differences (JD at [3]-[8])  When he joined Mars, Dr Didzbalis’ research was directed to identifying the chemical compounds in cocoa contributing to the taste to facilitate consistent taste profiles in chocolate products made with various types of cocoa beans (JD at [16]).  Throughout his career Dr Didzbalis has liaised with flavour houses to direct the creation of flavours for confectionary products, including chocolate products (JD at [18]).   

34. Given that Dr Didzbalis refers to relevant research “when he joined Mars” i.e. in 2000, I do not agree with Nestlé’s submission that Dr Didzbalis’s relevant experience is necessarily after the 30 October 2001 priority date of the application. 

35. Mr Stuart Dale holds Ordinary and Higher National Certificates in Science and Physical Science and Chemistry, respectively, and gained a RSC Certificate in Applied Chemistry in 1988 (SD#1 at [1]).  From 1979 to 1994, Mr Dale was employed in the UK by Rowntree PLC (acquired by Nestlé S.A. in 1988) in a scientific and research role that included chocolate research (SD#1 at [2]).  At Nestlé Australia Ltd between 1995 and 2010, Mr Dale progressed from Senior Chocolate Technologist to Production Manager in Victoria, Australia (SD#1 at [2]).  During his employment with Nestlé, Mr Dale gained knowledge and experience in chocolate manufacturing techniques by visiting and providing technical assistance in a number of overseas markets (Exhibit SD-1).  I consider Mr Dale to be a relevant skilled person.

36. Dr Carl Hansen holds a Bachelors degree (Cand. Mag.), a Masters (Cand. Scient.) and completed a PhD in Biochemistry in 1986.  This was followed by a postdoctoral fellowship between 1986 and 1988 in a field unrelated to chocolate (CEH#1 at [1] and Exhibit CH-1).  Between 1988 and 2003, Dr Hansen worked as a Senior Research Scientist in the Food Enzyme Technology group at the Nestlé Research Centre in Switzerland investigating the role of endogenous enzymes in food quality (Exhibit CH-1).  Before the priority date, Dr Hansen participated in 6 years research on cocoa fermentation, flavour precursors, and enzymes in cocoa (CEH#1 at [8]).  This included research in the chemistry and methods to generate flavour precursors (e.g. by enzymes and fermentation) and the reaction of flavour precursors to generate process flavour concentrates, and trials related to incorporation of flavour concentrates into chocolate masses and the resulting sensory evaluation (CEH#1 at [4], [8]).  Accordingly, Dr Hansen is an inventor on the opposed application. 

37. Mars submitted that Dr Hansen’s evidence cannot be considered that of the person skilled in the art in Australia because the evidence does not establish that he understands and is properly informed in that field. However, three experts refer to international collaboration in the industry (JL#1 at [19]; JL#3 at [20]; JD at [19]-[21]; SD#1 at [3]). Dr Hansen does not dispute this, merely noting that commercial companies do not share proprietary information (CEH#2 at 6]-[7]). There was no dispute that the textbooks Beckett and Minifie, published in the USA and the UK provide the relevant common general knowledge in the art in Australia, as elsewhere. The evidence establishes that information is shared internationally by the use of common textbooks, international collaboration and attendance at international conferences (JL#1 at [39]-[43], [47]-[51]; JL#3 at [20], SD#1 at [3]; JD at [18]-[21]). I understand from this that the common general knowledge in the art in Australia is not substantially different to that overseas. Therefore, I am not satisfied that Dr Hanson’s evidence should be given little or no weight in this opposition, although I must bear in mind he has the capacity for invention.

38. While the four experts may have different areas of expertise in chocolate-making, I consider they all provide evidence that is relevant to this opposition.  All of the experts understood they were to provide evidence based on their knowledge and understanding as at the priority date of the application (JL#1 at [2]; SD#1 at [8]; JD at [13]; CEH#1 at [3]).  Although Dr Didzbalis at [13] identified that date as 31 October 2001 (one day later) nothing turns on this.  

39. Mars submitted that as Mr Dale and Dr Hansen are both Nestlé employees, and Dr Hansen is an inventor of the opposed application, they have a vested interest and are not independent witnesses.  Mars contended that at best their evidence is secondary in nature.  Mars further submitted that Nestlé’s experts do not provide reasons for their evidence.  While all of these circumstances may affect the weight accorded to aspects of an expert’s evidence, I have indicated this, where appropriate, in this decision.

    The common general knowledge in the art

1. A definition of common general knowledge was provided by Aitken J in Minnesota Mining [1980] HCA 9 at [115]; 144 CLR 253 at 292:

   “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.”

2. There was no dispute that the information in the Beckett and Minifie textbooks was common general knowledge in the art at the priority date.  Extracts from these textbooks are in evidence as Exhibits JL-2, -3, -4 and -9 (Beckett) and JL-8 (Minifie).

   Obviousness in light of the common general knowledge in the art

3. Mars submitted that the textbooks Beckett and Minifie and the expert evidence show that the manipulation of the flavour of chocolate through the addition of a flavour attribute to the chocolate mass was well-known in the chocolate industry prior to 2001.  Regarding the conching step in the opposed claims, there was no dispute that conching is common practice in traditional chocolate making. 

4. For the invention of the opposed claims to be obvious, it must be established that faced with the problem I have identified above, the person skilled in the art would have taken as a matter of routine the steps that led from the prior art to the claimed invention.  In particular, the selection of the flavour attributes specified in each claim must be shown to be obvious. 

   Claim 1

5. With respect to claim 1, Mars must establish the obviousness of adding to the chocolate mass a 0.001% to 10% w/w of a malty crumb flavour attribute or a malty flavour attribute obtained by acid treatment of a cocoa liquor followed by a protease treatment. 

6. Regarding the range of addition, Mars relied on Mr Lee’s evidence that there is nothing technically special or relevant about such a broad range, and he would consider that range entirely predictable and normal were he to add a flavouring substance to chocolate (JL#1 at [101]; JL#3 at [38]).  Regarding the particular flavour attribute, Mars submitted that admixing flavouring agent to achieve a flavour profile is a routine matter of choice for the skilled chocolate-maker.  Malty and malty crumb flavour attributes are desirable by consumers, and they can be added to chocolate mass (whether conched or otherwise).  Mars relied on Mr Lee’s evidence that there is no technical impediment in choosing any flavour of your liking and adding it to a chocolate or compound mass to achieve a particular flavour profile (JL#3 at [65]). 

7. Mr Lee was unaware that a malty flavour attribute could be obtained by acid treatment of cocoa liquor followed by protease treatment (JL#2 at [75]).  Mr Dale was unaware of any document that disclosed this reaction product at the priority date or any such commercially-available reaction product (SD#2 at [14])  Their evidence does not support a conclusion that the addition of this flavour attribute would have been a matter of routine at the priority date.  While Dr Didzbalis would have expected a malty crumb or malty flavour from acid treatment of cocoa liquor followed by a protease (JD at [34]), his evidence does not establish that faced with the problem, he would have selected this flavour attribute to a chocolate mass, as opposed to any other. 

8. At best, Mars experts establish that the person skilled in the art could have produced something within claim 1 before the priority date.  It does not establish that faced with the problem, and without the benefit of hindsight, the skilled person would have carried out a flavour manipulation process involving the flavour attributes of claim 1 as matter of routine. 

9. Mars has not established that claim 1 is obvious in light of the common general knowledge in the art.

   Claims 2 and 3

10. Claim 2 requires the addition of a crumb flavour attribute to a non-crumb chocolate mass.

11. Mars submitted that before the priority date crumb was a desired and well-known, subtle consumer-recognisable flavour note.  To establish claim 2 is obvious, Mars relied on Mr Lee’s answer to the question of whether he could make a crumb tasting chocolate not using a chocolate making facility that has a crumb making process/facility (JL#1 at [116]), and proceeded on the basis there was nothing remarkable in adding crumb.  Given that he knew what was to be achieved when he answered that question, Mr Lee’s evidence does not establish that the selection of a crumb-flavoured attribute was obvious at the priority date.

12. Claim 3 requires the addition of a caramel flavour attribute provided by the reaction of skimmed milk powder in a fat system at temperature of 100°C to 150°C.  Mars submitted that caramel flavour attributes are popular and desirable to consumers.  To establish obviousness, Mars relied on Mr Lee’s evidence, given as comments of the specification, that he was aware that caramel flavour attributes are created in the manner required by claim 3 and he would have created a caramel flavoured base for adding to a chocolate in a similar manner as described in the specification (JL#2 at [76]; JL#2 at [78]). 

13. Mars has led no evidence that establishes that faced with the problem, and without the benefit of hindsight, the person skilled in the art would, as a matter of routine, select the particular flavour attributes of claims 2 and/or 3 out of the many possibilities and carry out the process of these claims.  It follows that Mars has not established that claims 2 or 3 would have been obvious.

14. In summary, Mars has not established that the subject matter of claims 1-3 (or subsequent claims) is obvious in light of the common general knowledge.

    The published prior art

15. Section 7(3) provides that a document is prior art for the purposes of inventive step if the person skilled in the art could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, and regarded the document as relevant.

16. Mars cited the following documents to establish lack of inventive step:

    US 5393538 A (Chmiel, O. et al.) 28 February 1995 (US’538)

    US 5888562 A (Hansen, C. H. et al.) 30 March 1999 (US’562)

    US 3014802 (Hellman, N. and Baker, D. L.) 26 December 1961 (US’802)

    EP 0233378 B1 (Unilever NV) 10 May 1989 (EP’378)

    US 4081568 (Bracco, U.) 4 March 1976 (US’568)

    DE 3803180 A1 (Buehler, A) 3 November 1988 (DE’180)

    CH 644251 A5 (Buehler AG GEB) 31 July 1984 (CH’251)

17. All of the above documents were published before 30 October 2001.  It remains to be determined if they would have been ascertained, understood and regarded as relevant.

    Ascertained

18. “Ascertained” means discovered or found out (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (Lockwood (No 2))[2007] HCA 21 at [132]; (2007) 72 IPR 447 at 461 [132]).

    Patent documents generally

19. Nestlé submitted that the person skilled in the art would not have ascertained patent literature, based on evidence that its in-house searches only identified the “occasional” patent literature document (SD#3 at [7]-[8]).  .  

20. The evidence establishes that literature searches at Mars included patent documents and Dr Didzbalis had access to and read patents in the course of his work (JD at [21], [46]).  As acknowledged by Nestlé, patent literature was identified in literature searching at Nestlé, albeit in small numbers.  

21. Before the priority date, Mr Lee read a monthly industry magazine that published the abstracts of patent applications and while it was not Mr Lee’s practice to read patents, he would have done so if there was something of particular interesting in the abstract (JL#1 at [44]).  Since Mr Lee thought patent documents could be obtained from the Australian Patent Office, Nestlé submitted he would not have ascertained foreign patent specifications.  I do not need to decide this point. 

22. Since some persons skilled in this art utilised search strategies that identified patent literature documents, I consider it reasonable to conclude that an average skilled person seeking information in order to solve the problem, could be reasonably expected to ascertain patent documents. 

    Understood and regarded as relevant

23. “Understood” for the purposes of section 7(3) means that the skilled addressee would have comprehended the information or appreciated its meaning or import (Lockwood (No 2) at [132]).  In order to be “relevant” the prior art document should be relevant to solving the particular problem or long-felt want or need that the patentee claims to have done (Lockwood (No 2) at [152]).

24. Where a document is in English it is reasonable to conclude that the person skilled in the art would have understood the disclosure.  The question then is whether the documents are relevant. 

    US’538

25. Patent application US’538 is titled “Preparation of a crumb-flavoured milk chocolate” and discloses a process for making a crumb-flavoured milk chocolate by adding a crumb flavouring agent to a non-crumb chocolate (JL#2 at [129], [134]; JL#3 at [77]-[79]; SD#1 at [39]). 

26. None of the experts commented on the relevance of US’562 to the problem.  However, since it relates a process for making crumb-tasting milk chocolate that avoids the typical crumb-making process (JL#2 at [129], [134]; SD#1 at [39]), prima facie the document would have been considered relevant.

    US’562

27. US’562 relates to the enzymatic treatment of cocoa nib or liquor for improving its flavour precursor composition (column 1, lines 4-7), with the aim of overcoming the variability in the flavour composition of fermented cocoa beans to confer an optimum flavour (columns 1-2) (SD#3 at [91]; CEH#3 at [21]).  Chocolate quality is directly influenced by the type of cocoa beans, their source and treatment conditions (column 1, lines 11-14). 

28. None of the experts commented on the relevance of US’562 to the problem.  However, since it relates to overcoming the variability in chocolate flavour precursors irrespective of the source of cocoa ingredients used, prima facie, the document would be considered relevant to the problem.

    US’802

29. US’802 relates to a caramel malt confection and processes for its manufacture (US’802 Title and column 1, lines10-16; JL#5 at [41]; SD#3 at [59]; CEH#3 at [26]).  An object of the invention is to provide a caramel and chocolate confection (column 1 lines, 28-33). 

30. Mr Lee understands US’802 to describe the manufacture of a caramel malt confection which can be incorporated into chocolate or cocoa compositions to impart flavour (JL#5 at [41]), from which I infer he would have considered the document relevant to the problem I have identified above.  I conclude the document would be considered relevant.

    EP’378

31. Consistent with Dr Didzbalis’ evidence at [71]-[72]), EP’378 describes butter-like concentrates and bakery products containing such concentrates (column 1).  “Bakery products” are defined as “ingredients for baking like margarines and shortenings, as well as baked products like pastries, biscuits, croissants, gateaux etc.”  Although it contains the statement “other confectioners’ products like e.g. candy, caramels etc. are included”, there is no further reference to such products. 

32. Nestlé’s experts note that the document relates to bakery products and makes no mention of the use of the concentrate in chocolate (SD#3 at [99]; CEH#3 at [30]-[31]).  Mr Dale understands the field of bakery products is very different to chocolate processing and chocolate flavour manipulation any considers any suggestion that the concentrates of EP’378 could be used in chocolate is made with the benefit of hindsight (SD#3 at [99]).  The evidence of the other experts does not contradict this view. 

33. In the absence of evidence that the relevant person skilled in the art would look to the bakery field in order to solve the problem, I find that EP’378 would not have been considered relevant.   

    US’568

34. This patent is titled “Milk chocolate manufacturing” and relates to a method of making a milk chocolate with a very milky and lipolysed flavour (column, 1 lines 6-8). 

35. There is no suggestion, and Mars denies, that the “clean milky and lipolysed flavour” is itself a relevant flavour attribute.  While the document describes the production of “standardised milk powder”, Mr Lee understands US’568 to generally disclose a process for manufacturing a “flavour modified milk crumb” which can then be used in manufacturing milk chocolate (JL#2 at [165]; JL#3 at [90]).  There is no mention in the document of crumb flavours, and I have no evidence that the person skilled in the art searching for information to solve the problem would consider the document, on its face, to be relevant to the problem in this case.   

36. Mars has not established that US’568 would be considered relevant.

    DE’180

37. DE’180 is in German and does not contain an English language abstract.  Although an English translation is in evidence, it has not been established that a translation of the document was part of the prior art base.

38. Referring to the delegate’s reasoning in Euroceltique S.A. v Sandoz Pty Ltd (Euroceltique) [2009] APO 21 at [86], Mars submitted that if a document is likely to be relevant it is reasonable to expect that a translation would be obtained which would allow the document to be understood. A conclusion that the same principle applies in this field of art is supported by Dr Didzbalis’ evidence at [22]. Although Dr Hansen adds that the document must be highly relevant before a translation is ordered (CEH#2 at [8]), nothing turns on this.

39. Relevant to this opposition, the delegate in Euroceltique found that where a document is in German and does not contain an English-language Abstract, and no translation was part of the prior art base, there may be no motivation to obtain a translation if it is not apparent on the face of the document that its information is likely to be relevant (at [85]-[86]).

40. DE’180 is wholly in German.  Although a Figure is included in the Abstract it does not identify the document as relevant to the problem addressed by the opposed application.  None of the experts indicated that they considered the German language document sufficiently relevant that they would be motivated to obtain a translation.  It follows that Mars has not established that before the priority date DE’180 would have been understood and regarded as relevant by the person skilled in the art. 

    CH’251

41. CH’251 is a Swiss patent application in the German language.  An English translation of the Abstract is in evidence from the Derwent database dated 24 February 2013.  However, there is no evidence that the Derwent Abstract was published before the priority date.  Therefore, for the same reasons provided above for DE’180, Mars has not established that the person skilled in the art would have understood and regarded CH’251 as relevant. 

42. In summary, I have found that US’538, US’562 and US’802 would have ascertained, understood and regarded as relevant by the person skilled in the art at the priority date. 

    Obviousness in light of the common general knowledge and prior art documents

43. On the basis of the information in Beckett, Mars submitted that traditional chocolate making processes are known, which in combination with the cited prior art documents renders the claimed invention obvious.

    US’538

44. Mars submitted that claim 2 is obvious in light of US’538.

45. US’538 is titled “Preparation of a crumb-flavored milk chocolate” and discloses a process for making crumb-flavoured milk chocolate that avoids the crumb ripening process (JL#2 at [129], [134]; SD#1 at [39]).  During refining and conching of the chocolate mass, 0.1% or 0.2% w/w lysolecithin is added, producing chocolate having a pronounced crumb flavour it would not otherwise have had.

46. I have found above that US’538 discloses the processes of claims 2, 5 and 7a) and the product of claim 8.  In order to solve the problem in this case, all the person skilled in the art is required to do is follow the teaching of Examples 3 and 4 of U’538.  Since no more is needed, I am satisfied that this process would have been carried out as a matter of routine.  Therefore, the subject matter of claims 2, 5, 7 and 8 is obvious in light of the disclosure of US’802. 

47. It must now be determined whether the invention of claims 6 and 9-11 is obvious.  Independent claim 6 requires the flavour attribute agent or composition to have a flavour associated with chocolate other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate.  

48. In view of Mr Dale’s evidence that the crumb flavour attribute of the claims is not capable of merely enhancing the base chocolate flavour, I conclude that achieving other than chocolate flavour enhancement would be a matter of routine.  As to whether it would have been a matter of routine to prepare the lysolecithin flavour attribute composition with other than an overriding, dominant flavour different to chocolate, I have no evidence on this point.  Furthermore, Mars has adduced no evidence that establishes that in light of US’538 the specific embodiments of the invention in the examples and drawings would have been a matter of routine.  It follows that Mars has not established that the subject matter of claims 6 and 9-11 is obvious.

49. In summary, the subject matter of claims 2, 5, 7 and 8 does not involve an inventive step in light of US’538.  

    US’562

50. Mars submitted that claim 1 is obvious in light of US’562.  

51. US’562 describes the enzymatic treatment of cocoa nib or liquor for improving its flavour precursor composition (column 1, lines 4-7), with the aim of overcoming the variability in the flavour composition of fermented cocoa beans to confer an optimum flavour (columns 1-2) (SD#3 at [91]; CEH#3 at [21]).  The expert evidence establishes that in the flavour modified (i.e. flavour homogenised) cocoa liquor with improved flavour profile, US’562 discloses a composition having a flavour attribute obtained by acid treatment of a cocoa liquor which has also been subjected to a protease treatment (JL#4 at [19]; SD#3 at [91]-[92]; CEH#3 at [20]-[21]). 

52. Mr Lee’s evidence is essentially that US’562 establishes that flavour attribute imparting compositions were known before the priority date (JL#4 at [19]).  Dr Didzbalis expects the composition in US’562 to react upon roasting with carbohydrates in the cocoa to create malty notes (JD at [48]), a conclusion disputed by Nestlé’s experts (SD#3 at [96]; CEH#3 at [21]).  Mr Dale and Dr Hansen both consider the document irrelevant to the opposed claims (SD#3 at [95]; CEH#3 at [22])). 

53. Mars acknowledged that US’562 does not disclose: making a flavouring composition that can be admixed into chocolate; the use of the modified liquor to prepare a chocolate mass; a conching step; or the addition of the amounts specified in the claims.  However, it argued that these features are routine and part of the common general knowledge.    

54. Although individual features of the claims not explicitly taught by US’562 may have been common general knowledge at the time, the evidence does not support a conclusion that faced with the problem and having read US’562, the skilled person would, rather than could, have selected the composition of US’562 and performed a process having the combination of features as presently claimed as a matter of routine.

55. It follows that Mars has not established that the claim 1 is obvious in light of US’562.

    US’802

56. Mars cited US’802 to establish claim 3 is obvious.  Claim 3 defines a process involving the addition of a caramel flavour attribute provided by the reaction of skimmed milk powder in a fat system at a temperature of 100-150°C. 

57. US’802 describes a caramel malt confection and processes for its manufacture (Title, column 1, lines 10-16; JL#5 at [41]; SD#3 at [59]; CEH#3 at [26]). 

58. Relying on Examples I, II and VII, Mr Lee understands US’802 to describe a caramel malt confection which can be mixed in varying proportions into chocolate or cocoa compositions, in order to provide a confection (chocolate) having flavours ranging from a distinctive chocolate flavour to having a distinctive caramel malt flavour and anything in between, depending on the relative amounts of the chocolate and malt flavour constituents (JL#5 at [41]).  Example I describes the preparation of a malt-sugar-fat flavour reaction product (malt coating) which varies from a mild butterscotch-like flavour, through malt flavours to strong mocha flavours (Example I, column 5 line 63 and JL#5 at [42]).  Dr Didzbalis considers the butterscotch-like note to be in the caramel flavour spectrum (JD at [76]-[77]).  In Examples II and VII the preparation of Example I is mixed into commercial chocolate coatings.

1. Mr Dale and Dr Hanson state that US’802 does not describe a caramel flavour attribute provided by the reaction of skimmed milk powder in a fat system at a temperature of 100-150°C (SD#3 at [61]; CEH#3 at [27]).  I agree.  Mars’ expert evidence is essentially that an alternative product in the caramel flavour spectrum (i.e. that of US’802) could be used as claimed.  This does not support a conclusion that it would have been a matter of routine for the person skilled in the art to prepare the flavour attribute of claim 3 and perform a process involving the combination of features as presently claimed. 

2. Mars has not established that claim 3 is obvious in light of US’802.

   Manner of Manufacture

3. 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).

4. Mars submitted that the claimed invention constitutes a process of producing food by mere mixture of known ingredients, and as such it is not a manner of manufacture.  In response, Nestlé argued that the claims do not seek to claim flavour manipulation for conventional reasons and do not seek to claim known flavour attributes and merely admix them into a single mass of chocolate. 

5. The specification relates to a process for manipulating the flavour of chocolate independently of the process of preparing the chocolate mass, the formulations or the origin of the ingredients (page 1, lines 2-5, page 3, lines 9-13).  The claimed process and product of the process comprises manipulating the flavour of chocolate by adding a specified flavour attribute to a single mass of chocolate.  The process results in an artificially created state of affairs in that the chocolate product has a flavour 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.  Furthermore, it has not been established that the process or the product of the process is obvious on the face of the specification.

6. I find the claims define a manner of manufacture.

   CONCLUSION

7. Mars has been successful in its opposition.  The subject matter of claims 2, 5, 7 and 8 lacks novelty and an inventive step.  Claims 5 and 6 are not clear. 

8. 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

   176.     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.

   177.     It is normal in actions before the Commissioner for costs to 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. 

9. Subegulation 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.   

   179.     Mars’ summary of submissions was due on 18 March 2014 but was filed on 20 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.

10. 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