Mars U.K. Limited v Merck & Co., Inc
[1997] APO 22
•28 May 1997
official notice
decision of a delegate of the commissioner of patents
Application : No. 577431 in the name of MARS U.K. LIMITED
Title: Gel system
Action: Opposition under section 59 of the Patents Act 1952 by MERCK & CO., INC.
Decision: Issued
Abstract
The opposition fails other than on a minor section 40 ground. The major grounds failed because
i) Novelty: The ratio of the components of the composition was determined to be an essential feature, and the citations did not disclose this feature.
ii) Obviousness: The invention was not obvious because it could not have been predicted beforehand whether it was likely that the compositions would possess the desired properties. It was not enough that with hindsight it was not surprising that they had the properties that they did.
iii) Manner of manufacture: The composition was not a collocation as there was inventive merit in the unexpected properties of the composition. This is not a situation of analogous use, since although gellan is a substitute for agar, it was not established that analogous compositions containing agar were known.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 577431 by MARS U.K. LIMITED and opposition by MERCK & CO., INC. under section 59 of the Patents Act 1952
background
Patent application 51312/85 was lodged on 13 December 1985 by Mars G.B. Limited. The application claimed priority from UK application number 8431699 which was filed on 14 December 1984. Application number 51312/85 was advertised accepted on 22 September 1988 and assigned the serial number 577431. On 22 December 1988 a notice of opposition to the grant of a patent was lodged by Merck & Co., Inc. (hereafter referred to as Merck).
The service of evidence was completed on 8 July 1994. The applicant filed amendments to the specification on 20 October 1995. The amendments were allowed without opposition on 22 May 1996. After the hearing, the applicant was changed to Mars U.K. Limited (hereafter referred to as Mars) under the provisions of section 113.
The matter was heard in Sydney on 23 October 1996. Mars was represented by Mr L.Dyson, patent attorney of Watermark, Sydney. Merck was represented by Dr A.Bennett of counsel, assisted by Mr J.O'Connor, patent attorney of Spruson & Ferguson, Sydney.
grounds of opposition
The notice of opposition lists as the grounds of opposition the grounds in section 59(1)(c) to (i) of the Patents Act 1952.
evidence
The evidence in support by Merck consists of declarations by John Laidler, Tony Downer, Philip Henry Jackson (referred to as the first Jackson declaration), Paul Anthony Power and John David O'Connor (referred to as the first O'Connor declaration).
The evidence in answer by Mars consists of declarations by Keith Buckley, Barry V. McCleary and Simon Strauss.
The evidence in reply by Merck consists of declarations by John David O'Connor referred to as the second O'Connor declaration), John K. Baird, George R. Sanderson and Philip Henry Jackson (referred to as the second Jackson declaration).
The evidence is quoted where relevant in this decision.
submissions
Dr Bennett made submissions on the following matters:
· the invention defined in all claims is not novel in the light of certain documents;
· the invention defined in all claims is not a manner of new manufacture;
· the invention defined in all claims is obvious;
·the specification does not comply with section 40 in that claims 1 and 6 are unclear, claims 1, 2, 4, 6, 7 and 8 are not fairly based, and the specification does not fully describe the invention; and
· the award of costs.
Mr Dyson made submissions on all of these matters.
decision
The relevant law
Patent application 577431 was lodged on 13 December 1985, advertised accepted on 22 September 1988 and the notice of opposition was lodged on 22 December 1988. By virtue of subsections 234(2) and 234(3) and regulation 23.3 of the Patents Act 1990, the opposition is determined under the provisions of Part V of the 1952 Act and Division 1 of Part XIV of the former Regulations.
In patent oppositions the onus of justifying their case lies upon the opponent, who must establish that it is clear that a valid patent cannot be granted (Stamp v W.J.Powell Pty Ltd (1918) 24 CLR 339, Henry Berry & Co. Pty Ltd v Potter (1924) 35 CLR 132).
Matters to be decided
The matters that have to be decided in this opposition are:
i) novelty
ii) obviousness
iii) manner of manufacture
iv) section 40
v) costs
Before considering the substance of the opposition I will discuss the specification.
The specification
The specification relates to gels that are suitable for use in food products. The aim of gel producers is to produce gels having the desired elasticity and strength for the particular type of product. The present specification is concerned with gels that have a strong elastic composition with a texture comparable to that produced from gelatin [page 1a].
It is admitted that certain combinations of polysaccharide gums will produce gels, whereas other combinations will not form gels. This effect is observed regardless of whether the individual gums will form gels by themselves.
The specification refers specifically to a substance known as gellan, which is a polysaccharide derived from Pseudomonas elodea. This substance is first described in EP patent application number 12552, which has a priority date of 4 December 1978. Gellan is commercially available in its native form (fully acetylated) and in a wholly or partially deacetylated form. The specification also refers to xanthan gum, which The Merck Index (Eleventh edition) describes as "Polysaccharide gum produced by the bacterium Xanthomonas campestris" which has an identified use of "In foods, non-foods, and cosmetics as stabiliser and emulsifying agent."
The specification does not contain a consistory statement (this statement was removed by amendment during examination). Instead the broadest description of the invention is as follows:
"The gellan used according to the invention may be either high or low acetyl gellan but is preferably a low acetyl gellan, either wholly or partially deacetylated. Partially deacetylated gellan preferably has at least 20%, and more preferably at least 50% of the acetyl groups removed.
Preferably, the total amount of gums in the gel is from 0.1-5% by weight based on the weight of the aqueous phase and preferably the ratios of gellan:xanthan gum; galactomannan or glucomannan gum:xanthan; and gellan:galactomannan or glucomannan gum each lie within the range of from 5:1 to 1:5. Particularly good gels have been found to be formed at a ratio of gellan:xanthan:carob or cassia or konjac gum of within the range of 1:1 to 2:1 to 2 and especially approximately 1:1.5:1.5. When tara gum is used a somewhat higher proportion is desirable and the preferred ratio of gums is 1:1.5:2 to 3.7."
[page 3]
The properties of these gels are stated to be:
"A synergistic effect has been found with certain polysaccharide gums whereby adding a non-gelling gum to a gelling gum a significant increase in gel strength is obtained."
[page 1a]
The specification gives four examples of the invention, which demonstrate the following gels within the scope of the invention as claimed (there are also examples of compositions outside the scope of the invention as claimed):
The breakstrength and elasticity of the resulting gels in quantitative or qualitative terms is specified in the examples.
The specification ends with 8 claims, which read as follows:
1. A gellable composition comprising a mixture of (1) low acetyl gellan, (2) xanthan gum and (3) a galactomannan and/or glucomannan gum capable of forming a gel with xanthan gum, characterised in that the ratios of gellan:xanthan gum:galactomannan or glucomannan gum lie in the ranges 1:1 to 2:1 to 2.
2. A composition according to claim 1, incorporating a glucomannan gum and wherein the glucomannan gum is a glucomannan derived from an Amorphophallus species.
3. A composition according to claim 2, wherein the glucomannan gum is konjac gum.
4. A composition according to claim 1, incorporating a galactomannan gum and wherein the galactomannan gum is carob gum or cassia gum.
5. A composition according to claim 1, comprising gellan, xanthan gum, and carob, cassia or konjac gum in a ratio of substantially 1:1,5:1,5.
6. A composition according to any one of claims 1 to 5, wherein the gellan and other gums are present in the composition in natural form.
7. An aqueous gellable system comprising a composition according to any one of claims 1 to 6 in a total amount of from 0.1 to 5% by weight based on the weight of the aqueous phase.
8. A pet food incorporating as gelling agent a gellable composition according to any one of claims 1 to 6.
The features of the invention defined by claim 1 are:
i)the material that is claimed is a "gellable" composition. This means that the composition is able to form a gel, but is not itself a gel. To determine whether a composition is gellable, it is necessary to heat it and observe whether it forms a gel.
ii)the composition is defined as "comprising" a mixture of certain materials. The primary and natural meaning of "comprising" is "consisting of", which in this context gives a sensible and workable meaning (note Asahi Kasei Kogyo Kabushiki Kaisha v W.R. Grace & Co (1991) 22 IPR 491).
iii)the mixture is of three components, (1) low acetyl gellan, (2) xanthan gum and (3) a galactomannan and/or glucomannan gum.
iv)"capable of forming a gel with xanthan gum". Dr Bennett submitted that it was not clear whether the gel is formed by adding xanthan to the three components already identified. I think that this expression is a limitation on component (3), and that the galactomannan and/or glucomannan must be one that is capable of forming a gel with xanthan gum. This is also the view of Merck's own declarant, Mr Jackson (para 23 of the first Jackson declaration).
v)the ratios of gellan:xanthan gum:galactomannan or glucomannan gum are 1:1 to 2:1 to 2.
Novelty
Dr Bennett submitted that the invention defined by all claims is not novel in the light of the following documents:
i)Japanese patent application 59-88051. This document and an English language translation were provided as an exhibit to the first Jackson declaration. The Japanese patent was open to public inspection in Australia on 6 August 1984 (second O'Connor declaration).
ii)a journal article titled "Useful Incompatibility of Xanthan Gums with Galactomannans" by Peter Kovacs, published in Food Technology, volume 27, No 3, at page 26 et seq. The article was published in Australia on 16 May 1973 (Laidler declaration).
iii)an article titled "Gellan Gum" by George R.Sanderson and Ross C.Clark, published in Food Technology, volume 37, No 4, at page 63 et seq. The article was published in Australia on 17 June 1983 (Laidler declaration). I will refer to this article as the first Sanderson and Clark article.
iv)an article titled "Gellan Gum, A New Gelling Polysaccharide" by G.R.Sanderson and R.C.Clark, in Gums and Stabilisers for the Food Industry 2 (edited by G.O.Phillips et al) at page 201 et seq. The article was published in Australia on 24 October 1984 (Downer declaration). I will refer to this article as the second Sanderson and Clark article.
a) The relevant law
The test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 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 the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at page 517; 16 IPR 545 at page 549).
b) The essential features
It is well established that patent claims are to be given a purposive construction, and that the initial assumption is that all features of the independent claims are essential (Catnic Components v Hill & Smith Ltd [1982] RPC 183). A feature can be regarded as not essential if it does not appear to make any difference to the inventive concept.
The features of the invention defined by claim 1 are:
i) a composition capable of forming a gel, containing:
ii) . low acetyl gellan;
iii) . xanthan gum; and
iv). a galactomannan and/or glucomannan gum which is itself capable of forming a gel with xanthan gum;
v) wherein the ratio of the components is 1:1 to 2:1 to 2.
Dr Bennett suggested that the ratio of the components is not an essential feature as this feature is an extraneous and unsupported feature. In deciding whether the ratio is an essential feature, the question I have to answer is whether the ratio does not (as distinct from might not) affect the way that the invention works. Dr Bennett advanced her argument in two ways.
First, Dr Bennett made much of the fact that the broadest claim had changed during the prosecution of the application, and that the ratio was not present in claim 1 as accepted, and only arose in claim 7 as accepted. It is clear that the applicant has had to considerably redraft the claims of the present application to overcome issues raised during examination and by the evidence of the opponent. This raises some question as to whether the ratio materially affects the way that the invention works, or whether it is an arbitrary limitation added solely to overcome citations. It is apparent from the specification that some compositions prepared outside the ratio do not possess the desirable properties of the invention. It was suggested at the hearing that the desirable properties may have been due to causes other than the ratio, for instance, the total gum concentration. This might be so, but no evidence was led to substantiate the hypothesis. Consequently, this line of analysis does not support a finding that the ratio is not essential.
Secondly, Dr Bennett pointed out that the breakstrength and elasticity of the gels of the invention as exemplified are no better than some examples outside the scope of the invention as presently claimed. For example:
Conc Breakstrength Elasticity
(%) (g) (mm)
High acetyl gellan 0.3 818 7.62
Carob 0.45
Xanthan 0.45
[seventh example in Table 1; not an example of the invention]
Low acetyl gellan 0.3 1106 6.95
Xanthan 0.45
Tara 1.1
[ninth example in Table 1; not an example of the invention]
Low acetyl gellan 0.3 559 7.2
Konjac 0.45
Xanthan 0.45
[third example in Table 2; an example of the invention]
I agree that this proves that the desired combination of breakstrength and elasticity properties are not unique to the compositions presently claimed, and that the ratio of the components is not the only factor involved in achieving a desirable gel. While this is a basis for speculating that the ratio might not be essential, it is not sufficient evidence that it does not affect the way that the invention works. Consequently I do not have sufficient evidence to rebut the presumption that the ratio of the components is an essential feature.
c) Disclosure of the citations
The Japanese patent
The disclosure of the Japanese patent relates to the use of gellan (otherwise referred to as "S-60") as a gelling agent in foodstuffs. Specifically, the document discloses:
"It has now been found that the extracellular polysaccharide from Pseudomonas elodea, gellan gum, is a unique gelling agent ... and can be used without great difficulty in a wide range of gelled or structured food products. ... As used herein, 'gellan gum' refers to all three forms of S-60 (native, deacetylated unclarified, and deacetylated clarified) unless otherwise indicated.
The gel strengths of deacetylated gellan gum gels vary with the ionic concentrations or calcium, magnesium, sodium and potassium ions, respectively. ... Other factors besides ionic strength and ion type influence gel strength. For example, as gum concentration is increased gel strength or gel hardness increases. Also, gel hardness maxima occur at approximately the same calcium ion concentration for each gum level studied. The same trends are observed with varying gum levels in the presence of magnesium, sodium and potassium ions respectively. Thus, the gel hardness can be increased by raising the gum level without the need to change the ionic strength. ... In most applications gellan gum will produce stable gels that show no weeping. However, in certain cases, syneresis may be a problem. In these cases a small amount of another gum can be added as a water control agent. Xanthan gum has been found to work well in most cases. In some applications, guar gum or locust bean gum also work. ... The following is a brief summary of the ways to alter hardness and brittleness of deacetylated gellan gum gels. ...
To decrease brittleness:
1. use a low level of sodium as the gelling cation
2. sequester divalent ions
3. add starch or dissolved solids
4. add other hydrocolloids (xanthan/LBG very good)
... The similarities between gellan gum gels and other gels used in foods enable gellan gum to be widely used as a replacement or partial replacement for current, commercial gelling agents, as exemplified below."
Partial replacement of a binary gelling system would produce a tertiary gel. The most relevant example is Example 7, which demonstrates an agar noodle prepared from the following ingredients:
Wt %
Tap water 99.19
Deacetylated, clarified gellan gum 0.4
Locust bean gum 0.2
KELTROLâ F, xanthan gum 0.2
Magnesium chloride 0.01
I was also referred to two of the claims of this document:
1. A gelled food composition comprising 0.05-1.5 wt % gellan gum.
5. A food of Claim 1, further comprising one or more hydrocolloids selected from the group consisting of locust bean gum, xanthan gum, low methoxy pectin, high methoxy pectin, guar, alginate, kappa or iota carrageenan, starch, agar, gelatin, methyl cellulose, tamarind, tara, furcellaran, gum arabic, gum ghatti, gum karaya and gum tragacanth.
The Japanese patent clearly teaches the use of gellan as a gelling agent for use in foodstuffs. Additionally, the use of gellan in combination with another material is indicated. Specifically, the use of "xanthan/LBG" to decrease the brittleness of the gel is taught. Dr Bennett submitted that the meaning of the expression "xanthan/LBG" is a mixture of xanthan and LBG (as against either xanthan or LBG). From the usage of similar expressions in other prior art documents on file, I am satisfied that this is the correct interpretation of this expression. I consider that the teachings of other combinations, for instance in claim 5, are too vague to be a technical disclosure.
The Kovacs article
The Kovacs article relates to the properties of mixtures of xanthan gum with galactomannans, particularly xanthan/LBG mixtures (referred to as XLB). On the third page of the citation it is stated:
"The highly elastic texture of the XLB gel can be modified by introducing starches or several other gel-forming or viscosity-modifying colloids to a 1% XLB gel with equal colloid ratio, as shown in Figure 9.
One of the most interesting points of this figure is that the addition of the above polysaccharides transforms the XLB gel stress-strain relationship into a linear function. Carrageenan and agar have a significant effect on the texture of the XLB gel system, while the influence of the modified waxy maize starch or unmodified corn starch is less apparent.
The effect of guar gum on the XLB gel is also very interesting. As mentioned earlier, guar gum also exhibits a synergistic increase in viscosity with xanthan gum. This synergistic effect is apparently able to transform the XLB combination from a highly elastic gel to a slightly brittle gel."
Later, in an example of canned tomato aspic, it is stated that "Starch is used to modify the cohesive texture of the gel". The composition prepared contains 0.20% xanthan, 0.15% LBG, 1.00% modified starch.
This document clearly discloses a tertiary gel composition, and specifically tertiary gels containing xanthan and locust bean gum.
The first Sanderson and Clark article
The first Sanderson and Clark article relates to uses of gellan. The article concludes that:
"the key properties of gellan gums are as follows. The high acetyl material forms soft, non-brittle gels similar to those obtained with xanthan gum/locust bean gum, while low acetyl gellan gum, with or without clarification, produces gels with properties similar to those from carrageenan and agar. ... The similarities between gellan gum gels and other gels used in foods enable gellan gums to be widely used as a replacement or partial replacement for current, commercial gelling agents, as exemplified below. Perhaps of greater significance is the fact that, in many cases, gellan gum can be used at levels substantially below those required with conventional hydrocolloids. ... In some products, it may be desirable to use gellan gum in combination with other food hydrocolloids such as xanthan gum, locust bean gum, guar gum, carboxymethylcellulose, or modified starches to obtain optimal product texture and stability."
[pages 65 to 66]
The second Sanderson and Clark article
The second Sanderson and Clark article also relates to uses of gellan gum. The key parts of the article are as follows:
"As is common practice in the formulation of acceptable gelled products, modification of gel texture can also be achieved by using additional hydrocolloids, including high acetyl gellan gum, in conjunction with low acetyl gellan gum. Conversely, gellan gum can be used as an additive to modify the textures obtained with other gelling or structuring agents. ... Low acetyl gellan gum shows greatest potential as a gelling and structuring agent for foods. ... Successful use of gellan gum in more than thirty products which currently use agar, carrageenan, gelatin, pectin, algin, starch or a related gelling or structuring agent clearly demonstrates the versatility of this new material."
[page 206 to 209]
d) The question of novelty
The citations disclose gels made from gellan. Gellable compositions are not specifically described. However, as a gel is necessarily made by gelling a gellable composition, I consider that if any of the citations disclose a gel that would be formed by gelling a composition of claim 1, then the citation of necessity also discloses the gellable precursor of the gel.
The Japanese patent
The Japanese patent discloses gelled compositions made from deacetylated gellan/xanthan/LBG. The three components come from the three categories of claim 1 of the present application. However, the citation does not discuss, in general terms, the ratio of the components. In Example 7 the ratio actually used is gellan/xanthan/LBG of 2:1:1, which is outside the ratio specified in claim 1. As the essential feature of the ratio of the components is not disclosed by the document, it follows that it does not anticipate the present application.
The Kovacs article
Kovacs discloses XLB compositions modified by the addition of starches. Consequently, this document clearly discloses tertiary gels. However, the use of gellan with an XLB is not clearly disclosed. As gellan is an essential feature of the invention as claimed, it follows that this article does not anticipate the claimed invention.
The first Sanderson and Clark article
This document clearly discloses use of gellan in foods. In particular, the use of gellan as a partial replacement for existing gelling agents is disclosed. Consequently, tertiary gels containing gellan are taught by this document. However, the ratio of the three components is not disclosed, and I can see no basis for believing that a 1:1 to 2:1 to 2 ratio is disclosed. Consequently, this document does not anticipate the claimed invention.
The second Sanderson and Clark article
This document discloses use of gellan in foods to modify the texture of the product. The ratio of gellan to other components is not clearly disclosed to fall in the essential range of the claimed invention. Consequently, this document does not anticipate the claimed invention.
Obviousness
Dr Bennett submitted that the invention defined in all claims was obvious. Mr Dyson limited his submissions to the curious submission that the opponent had only provided a declaration from one expert, and as a consequence I could not find the invention to be obvious. I do not know of any authority to support this proposition, and I consider it to be incorrect in the present circumstances. I will now consider the submissions of Dr Bennett in relation to obviousness.
a) The relevant law
The approach to considering obviousness under the Patents Act 1952 was set out in Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust.) Ltd (1980) 144 CLR 253 and summed up by Aickin J in The Wellcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 at 270 in the following terms:
"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."
The normal approach is to consider the problem solved by the claimed invention, and to ask whether that is an obvious solution in the light of the relevant common general knowledge. This analysis can be considered as a problem-solution approach. The problem used in this analysis is one that can reasonably be inferred on the basis of the specification as a whole and surrounding facts (see my discussion of the principles in Application by Rhone-Poulenc Rorer S.A., Patent Office decision, 25 August 1995, patent application number 12264/92, unreported).
The question of what is obvious in the light of the common general knowledge is assessed using the following approach:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
(Wellcome Foundation Limited v V.R. Laboratories (Aust.) Pty Ltd, supra, at page 286)
The likelihood of success necessary to render a routine investigation obvious was considered in Beecham Group Ltd's (Amoxycillin) Application [1980] RPC 261 at 290:
"It is clearly established that, for a particular step or process to be obvious for the purpose of either section, it is not necessary to establish that its success is clearly predictable: Johns-Manville Corporation's Patent [1967] RPC 479 at 494. It will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile: Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346, per Lord Reid at 355 and 356; Johns-Manville, supra, per Diplock LJ at 493 and 494; Tetra Molectric Ltd v Japan Imports Ltd [1976] RPC 541 at 581, 583-4."
b) The problem
The first issue is to determine the problem that that is addressed by the application. In the present case the problem is to prepare a strong elastic gel, i.e. a gel having the improved properties of superior strength and elasticity.
c) The common general knowledge
The following common general knowledge appears to be agreed by the declarants for the parties:
i)varying the composition of a gel will produce changes in the properties of the gel [Buckley declaration, para 22; Sanderson declaration, para 6]
ii)the properties of a gel composition cannot be predicted merely from a knowledge of the components of the composition [Sanderson declaration, para 6; second Jackson declaration, para 13; Buckley declaration, para 22]
d) The obviousness question
Dr Bennett submitted that in the light of this knowledge it is not surprising that the claimed compositions demonstrate improved properties. This is not the correct way to consider obviousness. The proper question is whether it would have been considered well worth trying a particular composition to see whether it possessed the desired properties. Given that there was no way to predict the properties of any composition until it had been made and tested, I cannot see that there was any reason to believe that success was more likely than failure. Without a reasonable basis for predicting success, the gelable compositions of the present invention would not be "worthwhile" trying (in the words of Beecham's (Amoxycillin) Application). Consequently, I consider that it has not been established that the invention is obvious.
Manner of new manufacture
Dr Bennett submitted that the invention as claimed in all claims is not a manner of new manufacture for two reasons:
i) the claimed invention is an analogous use; and
ii) the claimed invention is a collocation of known integers.
a) The analogous use argument
In Commissioner of Patents v Microcell (1959) 102 CLR 232 the High Court considered an application for a patent relating to the use of reinforced plastics for rocket projectors. The Full Court unanimously held that the application was not directed to a manner of new manufacture, and encapsulated its reasons as follows:
"We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do."
[page 251]
Dr Bennett submitted that the present case involves the analogous use of gellan as a substitute for agar in known gel compositions. The evidence for the known properties of gellan as an agar substitute are:
"Deacetylated gellan gums gels ... as alternatives to the traditional agar gels"
[Japanese patent, page 7]"Gellan gum is particularly useful in certain Japanese jellies and flexible gel products traditionally prepared with agar"
[Japanese patent, page 17]"One of the most promising applications of gellan gum is as an agar replacer in microbiological media ... Successful use of gellan in more than thirty products [the products identified being food products] which currently use agar, carrageenan, gelatin, pectin, algin, starch or a related gelling or structuring agent clearly demonstrates the versatility of this new product"
[second Sanderson and Clark article, page 209]"Agar and Gellan are not similar in all ways ... Gellan, by itself, can only form a gel in the presence of cations"
[McCleary declaration, para 18]"agar and gellan are not similar in all ways"
[Strauss declaration, para 11]"Agar and gellan are not chemically similar but to a food formulator, the addressee of the opposed application, they would appear to have similarities of a textural and rheological nature that would allow substitution to a greater of lesser extent depending on the intended product, the method of production etc." [second Jackson declaration, para 5]
The question I need to answer is whether gellan and agar were known as equivalents in the food art. I consider that the evidence establishes that gellan was recognised in the food art as a product similar (though not identical) to agar, which could be used as a substitute for agar, at least in some products.
The claimed invention will be no more than an analogous use of gellan if the evidence establishes that analogous gels incorporating agar were previously known. I have not been able to find any evidence that gels of agar/xanthan/galactomannan and/or glucomannan in the ratio of 1:1 to 2:1 to 2 were known. In this situation, I conclude that it has not been established that the claimed compositions are an analogous use.
b) The collocation argument
It is well established that a mere collocation of known integers is not a manner of manufacture (for instance, see British Celanese, Ld v Courtaulds, Ld (1935) 52 RPC 171). Dr Bennett referred me to the recent decision of the Full Bench of the Federal Court in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1996) AIPC 91-226; 34 IPR 256. The Ramset case appears to be authority for the following propositions:
(i)a manner of manufacture requires an element of inventive merit beyond what is already well known(AIPC at 37,325 and IPR at 271, 272); and
(ii)in considering whether a patent relates to a collocation of known integers, an integer is well known if it has been published in Australia (AIPC at 37,325 and IPR at 272).
All the components of the compositions claimed in the claims are known in the sense that they have been published in Australia - this is clearly admitted by the specification itself. The critical question is whether there is an element of inventive merit in the composition. I consider that this question is answered by considering whether there is an unexpected result obtained by placing the components together. The common general knowledge discussed under obviousness does not suggest that it could have been predicted that the specific combination claimed would possess the properties found. I consider that there is inventive merit in the composition, and thus the claimed invention is a manner of manufacture.
Section 40
a) Clarity
Dr Bennett submitted that claim 1 is not clear due to the phrase "capable of forming a gel with xanthan gum". In my discussion of the specification above I came to the conclusion that this phrase is a qualification of component (3), and the claim is clear in this regard.
Dr Bennett also submitted that claim 6 is not clear because it is in conflict with claim 1. Claim 6 restricts the gellan to a natural gellan, which is by definition a high acetyl gellan rather than a low acetyl gellan as set down in claim 1. Mr Dyson agreed with this submission. I agree that claim 6 is not clear.
b) Fair basis
When considering the issue of fair basis, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is claimed in the claims (CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 ALR 415; 28 IPR 481).
Dr Bennett argued that the range of ratios in claim 1 is not disclosed. There is no simple statement in the specification that identifies the ratio in question. The following is the most general statement in relation to the ratios:
"preferably the rations of gellan:xanthan gum; galactomannan or glucomannan gum:xanthan; and gellan:galactomannan or glucomannan gum each lie within the range of from 5:1 to 1:5. Particularly good gels have been found to be formed at a ratio of gellan:xanthan gum:carob or cassia or konjac gum of within the range of 1:1 to 2:1 to 2 and especially approximately 1:1.5:1.5. When tara gum is used a somewhat higher proportion is desirable and the preferred ratio of gums is 1:1.5:2 to 3.7."
[page 3]
When I read this passage in conjunction with the ratios demonstrated in the actual examples (i.e. 1:1:1 and 1:1.5:1.5), I consider that it is reasonable to consider that the ratio of 1:1 to 2:1 to 2 has a basis in the description.
Dr Bennett submitted that claim 2 is not fairly based as there is no basis for claiming any glucomannan from Amorphophallus. Konjac is clearly disclosed as a glucomannan for use in the invention. Konjac is an Amorphophallus derived glucomannan, so I consider that there is a basis for claiming glucomannans from Amorphophallus.
Claim 4 was also objected to. However, carob and cassia gums are clearly disclosed in the description, so there is clearly basis for this claim. Claims 7 and 8 were said to fall with the other claims, however it follows from what I have already said that they stand with the other claims.
Fair basis objection was also taken to claim 6 on the basis that there is no support for a composition containing natural form gellan. This is not correct. There are several references to the use of high acetyl gellan, and an example of the use of high acetyl gellan is given in Table 1. However, the invention does not lie in the use of high acetyl gellan, so the real problem with claim 6 is that it does not define the invention. Claims 7 and 8 suffer the same problem due to their appendancy to claim 6.
c) Sufficiency of description
Dr Bennett submitted that the specification is inadequate as it does not teach how to get the gelable composition and how to find those capable of forming gels. The argument presented was that it is either totally routine and thus not capable of founding an invention, or it is not fully described. I do not have any evidence before me that a person could not work the invention from the information provided. Consequently, it has not been established that the description is insufficient.
Conclusion
I have found that the opposition fails other than with regard to minor section 40 matters.
This deficiency can be overcome, so I allow 60 days for Mars to propose amendments.
Costs
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Co. v W.R. Grace & Co.-Conn (1994) AIPC 91-063; 29 IPR 292).
Merck has only been successful on minor section 40 matters, so it is appropriate that costs should be awarded against them. However, I note that Mars amended the specification after the completion of evidence in reply, and that this amendment resulted in a new set of claims substantially different to those accepted (the feature of the ratio of the components was previously not a feature of claim 1). I consider that Merck should be regarded as justified in its opposition up until the time of amendment, and costs up to this time should be awarded against Mars. Costs after this point should be awarded against Merck.
I award costs according to Schedule 8 against Mars for actions up until the filing of amendments on 20 October 1995, and costs according to Schedule 8 against Merck for actions after the filing of amendments on 20 October 1995.
Dr S.D.Barker
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark, Sydney
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
0
11
0