National Starch and Chemical Investment Holding Corporation v Goodman Fielder Limited
[1999] APO 41
•9 July 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 664327 in the name of National Starch and Chemical Investment Holding Corporation
Title: Method for Increasing the Expansion and Improving Texture of Fiber Fortified Extruded Food Products
Action: Opposition under S.59 of the Patents Act 1990 by Goodman Fielder Limited
Decision: Issued .
Abstract
The evidence of an academic may be considered in establishing common general knowledge in an art. Although his personal knowledge may go beyond that of a person skilled in the art, it is possible at least in principle for him to distinguish between his personal knowledge and what he believes to be known by an ordinary worker in the art. The strict rules of evidence which apply in the courts are not part of the rules of natural justice which apply to matters before the Commissioner.
A provisional specification discloses what the person skilled in the art reads it as disclosing. A claim fairly based on such a disclosure would have the priority date of the provisional application.
The specification does not comply with section 40. There is inconsistency between the asserted benefits to be achieved by the invention and the results illustrated by the embodiments. The claims lack clarity, the invention is not fully described and some claims lack fair basis.
The invention claimed in claims 1 to 5 and 10 is not novel in the light of EP 512247.
The invention as described and claimed is not a patentable invention following the decision in N V Phillips v Mirabella International Pty Ltd (1993) 26 IPR 513. The disclosure of the specification itself together with that of other prior publications establishes that the invention is “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” Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 (26 March 1998), 34 IPR 256 was distinguished.
The application is refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 664327 by National Starch and Chemical Investment Holding Corporation, opposition under S.59 of the Patents Act 1990 by Goodman Fielder Limited
BACKGROUND
Patent Application 664327 was filed in the name of National Starch and Chemical Investment Holding Corporation (NATIONAL STARCH) on 23 March 1994, claiming priority from US patent application no. 036603 filed on 24 March 1993. It was advertised accepted on 9 November 1995.
Goodman Fielder Limited (GOODMAN FIELDER) filed Notice of Opposition on 9 February 1996. The statement of grounds and particulars was served on 9 May 1996. Evidence-in-Support was served on 9 October 1996. The applicant filed requests to amend the complete specification under section 104 of the Patents Act 1990 on 9 January 1997 and on 17 February. The amendments were advertised allowed on 27 November 1997. Evidence-in-Answer was completed on 24 October 1997. Evidence -in-Reply was served on 23 January 1998.
The matter was heard in Canberra on 17 September 1998. The patent applicant was represented by Mr Barry Hess of counsel, assisted by Ms Carmela Monger of Griffith Hack. The opponent was represented by Ms Julia Baird of counsel, assisted by Dr Trevor Davies, patent attorney, of F B Rice & Co. Messrs Ian Brown and Ken McNaught of Goodman Fielder were also present.
FURTHER EVIDENCE
During the course of the hearing Mr Hess, for the applicant, raised the issue of the relevant priority date of certain information disclosed in one of the citations, Australian Patent 657443, and sought to introduce the document, Australian Provisional Specification PL 6537, from which it claimed priority. Mr Hess made representations on the priority issue at the hearing. With the agreement of the parties I undertook to consider the issue and inform them, subsequent to the hearing, of how I intended to proceed.
I invoked sub-regulation 5.11(1) of the Patents Regulations to inform myself, by reference to provisional specification PL 6537, which is available in the Patent Office, of the facts relating to the priority dates of the disclosures of AU 657443 and so informed the parties on 28 September 1998. In accordance with that regulation, I allowed the parties time to consider PL 6537 and provide evidence or make representations with respect to the priority dates of the disclosures of AU 657443.
The opponent filed submissions and evidence, and also served copies on the applicant, on 28 October 1998. After further representations from the applicant, taking into account the nature of the opponent's submissions and evidence and the applicant's location in the United States, I allowed the applicant one month to respond to the opponent's representations and evidence on the issue. The applicant requested a further one month to respond. The opponent objected and I granted an extension of two weeks to 12 December 1998. The applicant filed submissions and evidence, and also served copies on the opponent, on 30 November 1998.
On 8 December 1998 the opponent filed submissions objecting to the applicant's submissions and evidence filed on 30 November 1998. On 15 December 1998, the parties were informed that unless either of the parties requested to be heard on the matters raised in the opponent's objections, I would proceed to determine the opposition taking into account both these objections and the material filed by the applicant on 30 November 1998. Both the applicant and the opponent provided further written submissions on 23 December 1998 and on 31 December 1998, respectively. On 12 January 1999 in response to the concerns expressed by the opponent, and taking account also of the applicant’s explanations, I informed the parties that any matters raised subsequent to the hearing and outside the scope of my direction would be awarded no weight in determining the substantive opposition. As neither party had requested to be heard, I also informed both parties that I would proceed to determine the substantive opposition.
THE STATEMENT OF GROUNDS AND PARTICULARS
The grounds of opposition and supporting particulars are, in summary:
· "The invention as claimed in claims 1 to 13 is not a patentable invention because it does not comply with paragraph 18(1)(a) in that the invention so far as claimed in any of those claims is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies" in that:
"The steps of the methods of claims 1 to 11 fall within the scope of the known art. It is not a manner of new manufacture with [sic] the meaning of the Act to claim a known method to achieve a known and expected result. Claims 12 and 13 directed to the products produced by known methods are also not a manner of manufacture within the meaning of the Act."
· "The invention as claimed in claims 1 to 13 is not a patentable invention because it does not comply with paragraph 18(1)(b)(i) in that the invention so far as claimed in any of those claims is not novel when compared with the prior base as it existed before the priority date of the claims." Twelve patent documents and ten non-patent documents are listed. (Of these only AU 657443, EP 512249 and WO 90/15147 were the subject of submissions at the hearing).
· "The invention as claimed in claims 1 to 13 is not a patentable invention because it does not comply with paragraph 18(1)(b)(ii) in that the invention so far as claimed in any of those claims does not involve an inventive step when compared with the prior art base as it existed before the priority date of the claims" in that:
"the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date (24 March 1993) of the claims"; and
"the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date (24 March 1993) of the claims together with any one or more of the listed twelve patent and ten non-patent documents.
· The specification filed in respect of the complete application does not comply with the requirements of subsection 40(2) or (3) in that:
1.Various terms and phrases used in the claims are not clear and/or are indefinite. These are “resistant starch”, “predetermined shape and size”, “sufficient temperature and pressure”.
2.The claims are not fairly based because they are not directed to “fibre fortified food products”; the step that recites the flakes are toasted for a short time, generally several minutes, at temperatures from 100o to 220oC to give a final moisture content of less than 3% by weight as disclosed in the description on page 4 is omitted from the relevant claims; the processes defined in the relevant claims do not result in the desired result of an increase in expansion as embodied in example 1 of dough mix A or clearly improved texture as embodied in dough mix C.
EVIDENCE
The Evidence-in-Support consists of a statutory declaration by Michael Wootton, accompanied by eight exhibits. Professor Wootton is an associate professor in the Department of Food Science and Technology at the University of New South Wales. He states that he has "over thirty tears experience in research and teaching, principally dedicated to cereal science and technology"; and has been "particularly involved with the cereal industry in Australia." He has spent one year, while on sabbatical leave, working with Goodman Fielder Maize Products, and another working with Nabisco (Fairlawn, NJ, USA). He also spent two years as a research chemist with Arnotts Biscuits, Pty, Ltd. He has six years involvement with the NSW and National Food Industry Training Councils.
The Evidence-in-Answer consists of statutory declarations by Paul A. Altieri and Adam Dreiblatt accompanied by a number of exhibits. Mr Altieri is one of the inventors of this application. He is a Program Manager for Starch Processing at the National Starch and Chemical Company, the applicant company, where he has worked for 10 years, "primarily in the field of extrusion processing of specialty starches." He has listed 12 US patents amongst his publications. Mr Dreiblatt is President of Extrusioneering International, Inc, "a consulting service specialising in food extrusion technology." He has about 9 years experience in extrusion technology. His publications include a number on twin screw extruders as well as on apparently broader aspects of extrusion technology. He has 3 patents, including two for starch based compositions.
The Evidence-in-Reply consists of a further statutory declaration by Michael Wootton accompanied by a single exhibit, and a statutory declaration by Ian Brown accompanied by seven exhibits. Ian Brown is Technical Director - Hi-maize, Starch Australasia Limited. He was employed by Goodman Fielder Ingredients Limited from 1993 to 1996. His experience is primarily in research and he has listed 9 patent applications directed variously to starches and processes occurring in the gastrointestinal tract. He has a large number of publications covering related topics and provided training in starch production for the bread and cereal based industries.
Further evidence for the opponent consists of a statutory declaration by Lyndon Francis Ryder accompanied by a single exhibit; and for the applicant a statutory declaration by Paul A. Altieri. Lyndon Ryder is Core Technology and New Business Development Manager of The Uncle Tobys Company Limited, Research and Development Centre. From 1986 to 1997, he was "heavily involved in the development of a number of cereal food products produced by extrusion processes." These include ready to eat breakfast cereals and extruded cereal products.
THE SPECIFICATION
The specification is directed to a method for increasing the expansion or improving the texture of food products that are prepared by extrusion cooking techniques and that are fortified with dietary fibre. The problem it seeks to address is that it has been difficult using extrusion techniques to make a "satisfactory" food product that has high fibre content. The addition of dietary fibre tends to negatively affect the desirable texture and crispness properties. These are linked to expanded volume and reduced bulk density of the product. Factors which are known to affect the expanded volume include "barrel temperature, screw configurations, nozzle size and shape, screw speed, and moisture content prior to thermal processing." The protein, lipid and starch contents of the raw materials also have an effect.
The specification asserts that the addition of "resistant starch" has been found to "yield a fiber fortified food product that has increased expansion" and improved texture. "Resistant starch" is defined as "starch that is resistant to amylase digestion and is considered to be dietary fibre as analysed by the AOAC method of determining dietary fibre (Association of Official Analytical Chemists). Resistant starch may be of different types: RS1 is resistant starch that is "physically inaccessible", RS2 is a "granular starch", RS3 is a "retrograde, non-granular or crystalline starch." An RS3 resistant starch may be prepared by "gelatinizing a slurry of starch that contains amylose in an amount greater than 40%, treating the gelatinized starch with a debranching enzyme for sufficient time to effect essentially complete debranching, deactivating the enzyme, and isolating the resistant starch product by drying, extrusion, or precipitation by the addition of salt." A process for gelatinization and debranching to produce a starch containing 15% to 30% resistant starch is described in detail. Debranching is disclosed as being carried out enzymatically and the preferred enzyme is pullulanase. As a result of amendments during opposition the invention was limited to the use of resistant starch prepared by gelatinisation and debranching.
Starches which may be used in preparing amylase resistant starch include starches derived from corn, potato, sweet potato, wheat, rice, tapioca, waxy maize and sorghum. The preferred starting starch is one containing greater than 40% amylose, for example, "HYLON V, a cornstarch containing about 50% amylose, or HYLON VII, a corn starch containing about 70% amylose, both products of National Starch and Chemical Company, Bridgewater, New Jersey."
Preferred embodiments described in detail are two extruded cereal foods and an extruded expanded flaked cereal food. Their properties are compared with equivalent products without resistant starch.
The specification ends with twelve claims which are directed to two different processes in both of which “resistant starch… in an amount up to 45% by weight of the uncooked dough mix, said resistant starch being prepared by gelatinization and debranching a starch” is added. Two claims are to the products of these processes.
THE CLAIMS
Claims 1 and 6 are independent. The claims are:
A method to increase the expansion of extruded food products comprising
(a) providing an uncooked cereal dough mix,(b)adding resistant starch to the cereal dough mix in an amount up to 45% by weight of the uncooked dough mix, said resistant starch being prepared by gelatinization and debranching a starch,
(c)adding sufficient water to the cereal dough mix obtained from (b) to attain a moisture content of 14 -22% by weight,
(d)processing the cereal dough mix obtained from (c) in an extruder having an exit die of a predetermined shape and size at sufficient temperature and pressure to yield an expanded dough extrudate,
(e) drying the extruded dough to a final moisture content of less than about 3%.
The method according to claim 1 in which the uncooked cereal dough mix comprises one or more cereal ingredients selected from the group consisting of oat bran, oat flour, wheat bran, wheat flour, unmodified corn starch, cornflour, corn meal, corn bran, rice flour and barley flour.
The method according to claim 1 in which the resistant starch is present in an amount from 10-25% by weight of the uncooked dough mix.
The method according to claim 1 in which the cereal dough mix is cooked in an extruder through varied temperature ranges of 60o-170oC at pressures within the range of 2x106-4.3x106 N/m2(Pa).
The method according to claim 1 in which the expanded dough extrudate in step (d) has moisture content of 8-11% by weight.
A method to improve the texture of extruded food products comprising
(a)providing an uncooked cereal dough mix,
(b)adding resistant starch to the cereal dough mix in an amount up to 45% by weight of the uncooked dough mix, said resistant starch being prepared by gelatinization and debranching a starch,
(c)adding sufficient water to the cereal dough mix obtained from (b) to attain a moisture content of about 30% by weight,
(d)processing the cereal dough mix obtained from (c) in an extruder having an exit die of a predetermined shape and size at sufficient temperature and pressure to yield pellets of dough extrudate having a moisture content of about 30% by weight,
(e) tempering the pellets to a moisture content of 25 - 30% by weight,
(f) compressing the pellets into flakes, and
(g) drying the flakes to a final moisture content of less than about 3%."
The method according to claim 6 in which the uncooked cereal dough mix comprises one or more cereal ingredients selected from the group consisting of oat bran, oat flour, wheat bran, wheat flour, unmodified corn starch, cornflour, corn meal, corn bran, rice flour and barley flour.
The method according to claim 6 in which the resistant starch is present in an amount from 10-25% by weight of the uncooked dough mix.
The method according to claim 6 in which the cereal dough mix is cooked in an extruder through varied temperature ranges of 60o-170oC at pressures within the range of 1.7x106-2.2x106 N/m2(PA).
An extruded food product containing resistant starch made by the method of claim1.
An extruded food product containing resistant starch made by the method of claim 6.
PRELIMINARY SUBMISSIONS
Mr Hess for the applicant raised objections to the status of Michael Wootton as a person skilled in the relevant art, and consequently to the admissibility of his evidence. These objections centred round the declarant's position as an academic and teacher of food technologists rather than as a non-inventive worker in the food industry in Australia. Specific parts of the declarant's evidence were criticised as being statements of the declarant's belief as to what someone else, ie the non-inventive skilled worker in the art, knew at the relevant time. The argument was put that only a non-inventive skilled worker could give evidence as to his state of knowledge.
Ms Baird for the opponent countered this with argument that in this field there was no "magic divide" between academia and the industry in general, that there was considerable exchange of knowledge between academia and the industry. She also argued that Mr Wootton had both personal experience in the industry and that his teaching was directed to practitioners in food technology, not merely academics. This experience was in Australia. As a teacher he was able to state what his students knew as opposed to what was his own knowledge as an academic. She further argued that the subject matter of the application is not directed to a base level technician but to a technologist. She further made the point that a hearing before the Commissioner is not bound by the strict rules of evidence applying in a court and that evidence in the form of a statement of belief as to what, on the basis of his own experience of the people in the art, those persons knew was admissible and had probative value, whose weight would be determined by the hearing officer on the basis of the available evidence.
Mr Hess's arguments regarding someone giving evidence as to the knowledge of another are based on the strict rules of evidence applying in courts. This matter is dealt with in Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666, Smithers, Evatt and Deane, J.J.:
"These technical rules of evidence, however, form no part of the rules of natural justice. The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material, which as a matter of reason, has some probative value in the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue."
The other issue regards Professor Wootton's credibility as a person skilled in the relevant art. I think the following from my decision in Nalco Chemical Company v W.R. Grace and Co.-Conn, [1998] APO 65 (23 November 1998) is pertinent:
"Although he is a professor and may have personal knowledge beyond that of the ordinary worker in the art, I do not think that makes it impossible for him, at least in principle, to distinguish between what he knows as a researcher, what he expects his students to know when they enter an industry and what he has observed to be the knowledge of workers in the field when he has carried out industrial consultancies."
I find Professor Wootton’s evidence is capable of having probative value and is admissible. The actual weight to be assigned to it is for me to decide after taking all relevant matters, including submissions and the evidence of other declarants, into account.
SUBMISSIONS AT HEARING
Ms Baird for the opponent made detailed submissions on the issues of manner of new manufacture, lack of inventive step, lack of novelty and section 40 issues, in particular, lack of fair basis. She cited the following prior art documents: EP 512249, WO 90/15147, AU 657443. In particular she argued that EP 512249 disclosed the whole of the invention claimed. She referred me to a large number of decisions, in particular, in the context of manner of new manufacture: NV Phillips v Mirabella International Pty Ltd (1993) 44 FCR 239, 263; (1993) 26 IPR 513,537 and (1995) 183 CLR 665; Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 (26 March 1998), 34 IPR 256.
Mr Hess for the applicant argued that there was no evidence presented to support the assertions made that the application lacked inventive step. He cited Ramset (supra) to counter the opponent’s arguments on manner of new manufacture. He also argued that there was no evidence that RS3 starches were “known” and applied in the field in Australia, nor were their properties and characteristics known. Regarding lack of novelty, he based his arguments on the claims being directed to combinations which none of the citations disclosed. On the issue of section 40 matters he noted that neither of the opponent’s declarants had raised any difficulties with the amended specification.
Submissions and evidence on priority dates of disclosures of AU 657443
Submissions on this matter were made during and, in writing, subsequent to the hearing. At the hearing, Mr Hess for the applicant argued:
The disclosures which are relevant to this case were made in the complete specification and were not fairly based on the provisional. Consequently they were only entitled to the priority date of the complete specification, ie 24 December 1993, and were not able to be included in the prior art for this specification.
Specifically, the relevant disclosures are of “extruded flaked” products but the provisional specification discloses only formulations made into cereal flakes using “conventional methods for making cereal flakes.” (page 6, line 28 ff)
Further the complete specification (page 5, lines 10 and 32) distinguishes flaked cereals from extruded flake cereals and other extruded cereals.
Thus the provisional makes no disclosure of extruded flakes as claimed in claim 6 of the application and its dependent claims and the relevant disclosures at page 6, line 10 to page 7, line 35 in the complete are not entitled to the earlier priority date.
Further evidence
The direction I gave following the hearing on September 17, 1998, allowed both parties time in which “to provide evidence or make representations with respect to the priority date(s) of the disclosures of AU657443 or with respect to PL 6537.” In the event the submissions and evidence filed by the applicant on 30 November 1998 included matters outside the scope of this direction and either repeating or extending the arguments on matters dealt with at the substantive hearing. On 8 December 1998, the opponent objected to the presence of these matters in the further evidence and submissions. On 23 December 1998 the applicant filed submissions seeking to set out the circumstances in which the serving of further evidence was allowed as a basis for all the submissions and evidence of 30 November to be admitted. These submissions included reference to certain paragraphs which “merely summarise the applicant’s position (and evidence)” as presented at the substantive hearing on the issue of the type of starch disclosed in AU657443. At least this matter is outside the scope of my direction, even if it might be considered merely superfluous. On 12 January 1999 in response to the concerns expressed by the opponent, and taking account also of the applicant’s explanations, I informed the parties that any matters raised subsequent to the hearing and outside the scope of my direction would be awarded no weight in determining the substantive opposition. Neither party has objected and that is the path I will follow in dealing with the further submissions and evidence.
Opponent’s further evidence and submissions
The submissions filed on 28 October 1998 were accompanied by a declaration from Lyndon Francis Ryder and a single exhibit. These were directed to establishing what the person skilled in the art would have read the provisional specification in question as disclosing. Ryder’s “Exhibit 1" sets out his extensive experience in developing extruded cereal processing methods, in particular “Oatflakes” and “Nutfeast” flakes. Based on this heavy involvement, from 1986 to 1997, “in the development of a number of cereal food products produced by extrusion processes”, he states that as of December 1992:
“8. From the ingredients used and/or the required final processed food product it is my experience that it can usually be ascertained what manufacturing processes have been used or would be required in the manufacture of a particular processed food product. Thus it can usually be ascertained from this information whether extrusion processes have been used or are required.
“9. From my reading of the Provisional Specification, I believe that the food product examples provided in Formulations 2556/1 and 2459/2 on page 7 showing incorporation of resistant starch (Starch A958) were produced by an extrusion process.
“10. While it might have be (sic) possible to manufacture a cereal flake using the formulations given in the provisional specification without the use of an extruder, I think it would be highly unlikely.
“11. From reading Formulation 2556/1, I do not believe it would be possible to manufacture a cereal flake using Formulation 2556/1 by processes other than some form of extrusion due to the high level of gluten in the formulation. For the gluten to remain functional as usually required in such food products, I note that a low temperature operation such as cold forming extrusion would have been required. In this regard a cold forming extruder would be most suitable to reduce the cooked dough to “grits” suitable for flaking.
“12. I believe Formulation 2459/2 would be the same situation as Formulation 2566/1. From reading Formulation 2459/2, I believe a cold forming extruder would probably be required to shape the dough for flaking……..
“16. In summary, I believe from reading the Provisional Specification that some form of extrusion process would have been a necessary part of the process required to manufacture cereal flakes from Formulations 2556/1 and 2459/2. I further believe that this would also be apparent to persons skilled in the art of food processing in Australia as of 24 December 1992.”
He also states that his belief is reinforced by the fact that the same formulations were in fact described in the complete specification as being processed into flakes using extrusion processes.
In their written submissions, the opponent argued that it is “inherent from the examples provided in the provisional specification that the food products are made by extrusion.” On Mr Ryder’s evidence, “It is apparent that a person skilled in the art, when reading the provisional specification, appreciates that extrusion processes were used to produce the food examples from Formulations 2556/1 and 2459/2.” Thus:
“there is a real and reasonably clear disclosure of a food product including dietary fibre in the form of resistant starch produced by extrusion processes in PL6537. Furthermore as AU 657443 includes the same examples provided in PL6537 and claims priority from PL6537, it is submitted that AU 657443 is fairly based on PL 6537 and therefore entitled to the priority date of 24 December 1992 with regard to the disclosure of extruded food products including dietary fibre in the form of resistant starch derived from high amylose starches.”
Response from applicant
The applicant responded on 30 November 1998, with submissions and another declaration by Mr Altieri. The submissions include, inter alia, submissions on the priority dates relevant to disclosures in AU 657443, in particular:
“3.4 Provisional PL 6537 is concerned with food compositions [Pages 1 to 6] relevantly including Breakfast Cereals [Pages 6 to 8]. The only disclosure in Provisional PL 6537 is for Breakfast Cereals, using conventional methods for making cereal flakes [Page 6 lines 28-29]. At page 7 three formulations are given [2556/1, 2562/1 and 2459/2] but there is no description at all of ‘Conventional Methods’. Some unexpected physical properties are described at page 8, lines 1 to 9.”
In his declaration Mr Altieri’s pertinent statements are:
“12. In my opinion the cereal examples in PL 6537 were made using the more conventional non-extrusion method. PL 6537 states that there is only 15% water in the cereal mix. Unless there is a high percent water in the ingredients, such formulation would not work with an extruded half product as it would be brittle and not fare well when calendered.
“13. In addition AU 657443 specifically states ‘cereal flakes, extruded cereal flakes,…’ (see page 5, last paragraph), showing that Goodman Fielder considered these two different cereal types.
“14.Even if Mr Ryder’s interpretation was correct, PL6537 would not anticipate the application.
“15. In a cold forming extrusion process such as that described by Mr Ryder, the cooked cereal dough is generally mixed and extruded out in the form of small pellets. During such extrusion process, there is no significant heat applied (low temperature process), no cooking of the cereal, and certainly no significant expansion.
“16. The cold forming extrusion process described by Mr Ryder differs considerably from the inventions of the Application.
“17. The expanded invention of claims 1-5 ‘provides an uncooked cereal dough’ (step a) and processes ‘the cereal dough in an extruder…at sufficient temperature and pressure to yield an expanded extrudate’ (step d). Thus, it is clear that the extruder process is not a cold forming extrusion, but a process in which heat is added to cook the cereal dough and expand the extrudate. Such expanded extrudate has the structure of a puffed cereal piece and would not flake well due to the developed cell structure. As stated in the specification, the dough is cooked in an extruder through varied temperature zones, usually ranging from 60-170oC which is clearly not a cold-forming extrusion.”
DECISION:
Disclosures of AU 657443
As discussed above, the applicant challenged the availability of certain disclosures of AU 657443 to form part of the "prior art base", ie to be used as a "whole of contents" citation. The issue was whether certain disclosures in the complete were fairly based on the provisional specification. I was referred to a number of decisions relating to whether an invention as disclosed in a complete specification was fairly based on the disclosure in its associated provisional application: CCOM Pty Ltd and Another v Jiejing Pty Ltd and Others (1994) 28 IPR 481, (CCOM), Sartas No.1 Pty Ltd v Koukourou & PartnersPty Ltd and Another (1994) 30 IPR 479 (Sartas) and Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 28 IPR 383, 128 ALR 14, (1994) AIPC 91-076 (Rescare).
Fundamentally, what is at issue is whether the relevant information is the kind of information set out in Section 7(c) of the Patents Act 1990:
“prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of “prior art base” in Schedule 1.”
In Schedule 1, “prior art base’ is defined as:
“(b) in relation to deciding whether an invention is or is not novel:
(i)…..
(ii)information contained in a published specification filed in respect of a complete specification where:
(A)if the information is, or were to be, the subject of a claim of the specification, the claim has or would have, a priority date earlier than that of the claim under consideration; and
(B)the specification was published after the priority date of the claim under consideration; and
(C)the information was contained in the specification on its filing date and when it was published.”
There are a number of matters I must determine. Firstly, AU 657443 was made open to public inspection on 19 July 1994. This is after the priority date, 24 March 1993, of the instant application. Thus requirement (B) is met.
Secondly, was the relevant information contained in the specification on its filing date and when it was published? The document on file is the specification as accepted. The relevant information is contained in the body of the description. No specific evidence has been filed to identify whether any of the pages of the description were amended after filing. Inspection of the copy of the document on file indicates that the claim pages had been subject to amendment within the Australian Patent Office and that a “Substitute Sheet (Rule 26), Fig. 1”, which was a graph depicting a relationship between dietary fibre and amylose content, had been incorporated by the Receiving Office. In addition, there is no reference on the cover page of the specification to any amendments having been made before the application entered the national phase. I note the finding by a delegate of the Commissioner in Laboratoires Prographarm v FH Faulding & Co Ltd [1998] APO 63 (19 November 1998) to which I was referred by the opponent. In that case the published document had some substitute pages, which suggested to the delegate that the filed version had been different. In the present case, I am satisfied, on balance, that the information contained in the description in this specification was contained in it both on its filing date and when it was published. Thus it meets requirement (C).
Finally if the relevant information were the subject of a claim of the complete specification would the claim have a priority date earlier than the claims of the current application?
The relevant law is as set out in CCOM, Sartas and Rescare, (supra).
In CCOM, the court was looking for “a real and reasonably clear disclosure”. (page 503)
In Rescare, Lockhart, J. at paragraph 83:
“All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out….…..It is not intended to be a complete description of the invention but simply to disclose the invention fairly, though in its rough state.”
Gummow, J. in Sartas, in the paragraph bridging pages 499 and 500, discusses the situation where a ”provisional specification contains no disclosure in terms of the use of vertical reinforcing partitions in the cardboard boxes, as claimed in claims 3 and 5. It does however, specify that the box elements shall include ‘such internal partitions as is necessary to provide for lost form work for the pouring of concrete foundations for buildings.’ Reinforcement of containers such as the cardboard boxes is a fairly conventional matter, and I do not find a lack of fair basing in respect of claims 3 and 5.”
I think the present situation is similar to that in Sartas. The provisional describes the production of a flaked cereal product in rather general terms, by specifying the formula for the dough mix to be processed using “conventional methods”. Mr Ryder, whose experience in Australia in extrusion processing of cereal products gives him some credibility, declares that in his view the formulations described were ones that would require a cold extrusion step before being formed into flakes; that in his experience it would “be highly unlikely” that flakes would be formed from these formulations without an extrusion step. He also refers to the fact that the same formulations were used to form an extruded flaked product in AU657443.
I note Mr Altieri’s comments concerning the water levels required for successful calendering of an extruded product. The water level disclosed in PL 6537 is “% on wet weight basis, water content about 14%” in the formulation. In AU 657443 these same formulations but without specific disclosure of water levels are used to form an extruded flaked product. However the presence of water is implicit in that the product requires to be dried out (page 6, line 30) and in that overnight tempering of “the moist pellet” is described. (page 7, lines 19-20)
Taking all these factors into account, I find that the provisional specification discloses the use of formulations including resistant starch to produce cold extruded cereal flakes.
Consequently if the information regarding the use of resistant starch in cold extruded flaked cereal products were to be the subject of a claim of the complete specification it would be entitled to a priority date of 24 December 1992. Thus requirement (A) has been met. As the priority dates for other aspects of the relevant disclosures in AU 657443 have not been questioned, I will not extend my analysis to those matters. However, I note that there was no specific disclosure in the provisional specification of any extruded cereal product such as the "Wheat bites" cereal described in AU 657443. There was also no evidence to show that the person skilled in the art would have read the provisional as disclosing such a product.
In conclusion, I find the information disclosed in AU 657443, concerning the use of resistant starch to produce cold extruded cereal flakes, to be part of the “prior art base” for the current application.
Section 40:
Various arguments were presented on behalf of the opponent that the application did not comply with section 40 of the Patents Act 1990. The main focus of these was that there was a lack of consistency between the improvements which the invention aimed to achieve and those which the preferred embodiments disclosed. The applicant's arguments were that any difficulties had been resolved by the amendments made, and that the opponent's declarants had not disclosed any problems in their evidence in reply.
Clarity of claims
In construing the claims I have encountered some difficulties. It is possible to read the claims two ways. The first is as a combination of process steps which are delimited by the result desired to be achieved, either an increase in expansion of the extruded product (claim 1) or an improvement in texture of the extruded and flaked product (claim 6). The second is as a combination of process steps which inherently lead to the desired result. Both constructions give rise to difficulties.
If the claims are to be limited by the desired result, then that result needs to be able to be clearly defined. Although the words themselves have a clear theoretical meaning, we are dealing with a practical art in which distinctions such as "increased" and "improved" usually need to be quantified. Alternatively it could be that the increase or improvement is simply what a practical person would consider it to be. However, in this case difficulties arise because the results described in the specification do not provide clear demonstrations of when the desired increase in expansion or improvement in texture can be said to have been achieved.
One issue is what is the defined increase in expansion or the improvement in texture measured relative to? I think it would be absurd to construe this as meaning an increase relative to any other possible extrusion product. The description in this case provides the following possibilities: that it is relative to products without added dietary fibre or relative to those fortified with other forms of dietary fibre such as oat bran. At page 2A, lines 9 to 19, of the specification what is described is that the products with resistant starch should be improved relative both to the products with no added fibre and to those with other dietary fibre added. Thus I construe the claims as requiring improved results relative to both the other classes of formulations.
In the accepted specification the increase in expansion was described broadly as being for high fibre extruded foods and resulted when resistant starch was used as a high dietary fibre additive in a mix without added fibre or to replace other high dietary fibre cereal components. After amendment, the definition of resistant starch was expanded to disclose that there were three types of resistant starch, RS1, RS2 and RS3. The claims were restricted to using starches of the RS3-type, in particular those prepared by gelatinisation and debranching. This reflected the disclosure in the accepted specification where only the preparation of RS3-type starches was described in detail and only a single RS3-type starch, based on a high (> 70%) amylose corn starch, was used in the preferred embodiments. The resultant "increased expansion" and "improved texture" were compared with results achieved when using either no added high fibre component or a high fibre component which was not a resistant starch.
However the results achieved by the preferred embodiments do not provide a clear delineation between the results for products of the invention and the comparative examples. In the case of “increased expansion”, ie for extruded products which are not flaked, for dough mix A, an increase of as little as 1% in expansion against only one of the comparative examples (the product with oat bran) is reported, with no expansion result reported against the other comparative example (the product with no added fibre). Thus it has not been demonstrated that all the dough mix A embodiments achieve the desired result. For dough mix B the increase is 58.9% against the no added fibre mix and 87.7% against the mix with oat bran. In the case of the flaked products the assessment reported is a purely subjective one of “superiority” in “texture quality” with no quantification of the degree of “superiority” and no real disclosure of what constitutes "texture quality". From other parts of the description, it appears that what constitutes a desirable texture may be dependent on the specific end use of the product in question. (page 2A, line 24 to page 3,line 1) In any case, subjective results are inherently difficult to reproduce and the absence of any reference to the degree of "superiority" adds to the difficulty. In both cases a person wishing to avoid infringement would find it difficult to determine the bounds of the claims and thus avoid infringement.
I note Mr Altieri has sought to show that the use of RS3 in the process does, in fact, result in improved expansion relative to RS2 starches. His evidence in exhibits 2 and 3 demonstrates that in two particular dough formulations, when 25% RS2 starch is replaced with 25% RS3 starch the process of the invention gives increased expansion. Although they seem to confirm that RS3 may give improved results over RS2 starches, of itself the evidence does not show unambiguously that it is the presence of the RS3-type starch which determines increased expansion levels. The particular dough formulations also have different ratios of corn flour to oat flour and one includes wheat flour. In any case, Mr Altieri’s evidence goes beyond merely clarifying the disclosure of the present specification. It seeks to add material which has no basis in the specification. Thus Mr Altieri’s evidence does not clarify the scope of the claims.
I also note Mr Brown’s evidence in IB.7 which seeks to demonstrate that RS2 type resistant starches are also able to provide increased expansion and improved texture in line with that asserted for RS3 type starches. This evidence is also inconclusive.
In the second reading where the defined process steps should inherently lead to the desired result, the embodiments also cause some difficulties in interpretation in that implementation of the process steps defined, as already discussed, leads to inconclusive results.
As neither construction leads to clarity, I find that the claims lack clarity and do not comply with Section 40 of the Patents Act 1990. For the purpose of this action I will interpret the defined results as requiring that at worst the addition of resistant starch should be without adverse effect on the desirable properties achieved in products based on dough mixes without added fibre or with added dietary fibre of other types. In my decision I will construe the claims as a series of process steps further limited by the desired result.
The clarity of some terms used in the claims was the subject of submissions by the opponent. It was argued that “expansion” was limited to changes in bulk density and did not relate to the diameter of an extruded product. However in the description it is the difference between the diameters before and after extrusion which is reported as indicative of expansion. It was argued that “method to” was non-limiting in terms of the increase or improvement defined. I think this is mere semantics. The substantive difficulties arising in the claims in determining the scope of the increase or improvement have already been discussed. The scope of “resistant starch” as used in the claims was questioned, in particular the level of debranching required. I think it is clear from the description that gelatinisation and debranching will produce RS3 type starch, and the level of debranching merely determines the yield of converted starch. This merely goes to the efficiency of conversion rather than there being a different result in the type of starch produced. Taken in context I do not find any of these terms to cause substantive difficulties in clarity.
Invention fully described
As discussed above there is a lack of consistency between the stated aims of the invention and the results disclosed by the preferred embodiments. This creates uncertainty in determining the essential features of the invention.
It is clear that independent claims 1 and 6 diverge both in terms of the process steps defined and in the desirable results, however imperfectly, defined. The use of resistant starch, prepared by gelatinisation and debranching, in an amount up to 45% in an extrusion process for cereal food products is common to both. However as will be shown below, this feature of itself is not novel.
The applicant has argued that the process of the invention is essentially a combination of process steps and thus each step defined is essential to the invention. However only features 1(a), 1(b), 1(e) and 6(a), 6(b), 6(g) are common to both independent claims and thus it could be argued that it is only these three features that are essential. Alternatively it is possible to consider that there are, in fact, two inventions involving different combinations of process steps to achieve different results.
Example I, with dough mixes A and B, (page 6, line 6 ff) is clearly intended to include embodiments of claim 1. However these embodiments do not include a drying step such as defined in claim 1(e). Their expansion is also measured without any drying step. Thus it appears clear that feature (e), despite being included in the statement of invention (page 2, line 25 ff), is a merely optional or inessential feature in achieving the invention. This conclusion is further supported by both Mr Altieri and Mr Dreiblatt, who state at paragraphs 14 and 18, respectively, “The invention of the Application does not rely on this post-drying puffing step to improve the texture, but solely upon direct expansion of the extrudate as it exits from the extruder die…….when RS3-type starches are utilized”.
At page 3, line 26, the water content required prior to extrusion for the dough to be used to produce a flaked product is “sufficient water to attain a moisture content of about 30% by weight, although lower moisture content may be used.” The broad statement of this aspect of the invention at page 2A, lines 2 to 8, omits this requirement, leaving the water content at 14-22%. Thus it appears that the 30% defined in claim 6, feature (c) is also not essential. However, it is clear that some moisture is required and I find, on balance, that the lower limit is 14%.
At page 3, lines 19 to 20, it is stated that "For expanded food products, the extrusion parameters are chosen so that the extrudate exits the extruder with a moisture content of approximately 8-11% by weight.” This reads as if it should be an essential feature but it is not a feature of claim 1, nor is it included in the broad statement of invention. I find it not to be essential.
On the basis of the inconsistencies and lack of clear definition of certain features, I find that the invention is not fully described.
Fair basis
Ms Baird for the opponent has argued that claims 1 to 5 are not fairly based because the “simple addition of the resistant starch according to the description does not result in increase of expansion of the food product.” Specifically if the results described for example I are considered, it is only when resistant starch is included in dough mix B that there is a significant increase in expansion. For dough mix A, the presence of resistant starch when compared with the use of oat bran gives only about a 1% increase and no result at all is reported for dough mix A without added fibre. On the basis of the results disclosed it was argued that it was the changed proportions of oat flour and corn flour which gave rise to the increase in expansion achieved with dough mix B, not the presence of resistant starch. It was also argued that the results claimed for the embodiment illustrating claims 6 to 9 and their assertion of improved texture were similarly inconclusive.
The applicant submitted that the appropriate test for fair basis was whether "the body of the specification contains a real and reasonably clear disclosure of the invention claimed." and referred me to Patent Gesellschaft AG v Saudi Livestock Transport and Trading Company (1997) 37 IPR 523 at 530.
Another generally accepted test for fair basis is that set out in Mond Nickel’s Application (1956) RPC 189. This has three parts all of which must be met for a claim to be fairly based:
(a)Is the invention as claimed broadly, or generally, described in the specification?
(b)Is the description of the invention inconsistent with the claims?
(c)Does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?
I think these tests really amount to the same thing. In particular if there is inconsistency, the disclosure is unlikely to be "reasonably clear." As I have already found that the invention is not fully described and the claims are not clear it will be difficult to determine whether the invention claimed is fairly based. However I will apply the Mond Nickel test:
(a)In the present case, both the claims and the description are directed to the use of resistant starch prepared by gelatinization and debranching, in the preparation of extruded food products while increasing desirable eating properties. The independent claims diverge in their definition of properties which relate to desirable eating properties but this is explained at page 1A, lines 20-25 of the specification. That is in some extruded foods the crispness and texture of the food is related to its “expanded volume and bulk density” whereas in flaked products the “addition of dietary fibre adds density and reduces favorable texture and overall eating quality.” Mr Altieri at paragraph 27 of his first declaration confirms this: “Sufficient expansion is critical in extruded foods because the crispiness and texture of such foods is related to their expanded volume and bulk density. Thus by increasing the expansion of the extruded food product, the texture, particularly the crispiness is also improved." The flaked products are described as requiring some variation in the final steps of the method. Thus the invention claimed may be described as being generally described in the specification.
(b)The opponent has argued that the results defined in the claims are not fully supported by the results achieved by the embodiments described. As I have already discussed above, the results reported are incomplete in that for dough mix A, no results at all are reported for the formulation with no added dietary fibre (it is not in fact exemplified.) and that no density results are reported for dough mix B. For the products which should have an increase in expansion, the description disclosed a clear increase in only two of eight possible comparisons. In my view in the context of industrial production of food products the third reported increase of ~1% is unlikely to be significant or consistently reproducible. Thus the description is inconsistent with the claims directed to an increase in expansion. For the claims directed to improved texture there is no actual inconsistency but a single subjective example only provides minimal support for the result defined in the claim.
Claim 6 defines a moisture content of 30% prior to extrusion. The broad statement of this aspect of the invention at page 2A, lines 2 to 8, omits this requirement, leaving the water content at 14-22% as defined in claim1. However the preferred embodiment has a moisture content of 30% and at page 3, line 26, as discussed above, it is stated to be about 30% but could be lower.
As discussed above, the extruded moisture content for the expanded product should be 8 to 11%. However this is omitted from claims 1 to 4 and only included in claim 5.
Thus the description is inconsistent with claims 1 to 5 and 10 and these claims are not fairly based. Despite some inconsistencies and inadequacies within the description, and within the claims, as discussed above, I find claims 6 to 9 and 11 are fairly based.
It was argued for the opponent that the absence in the claims of reference to the product being “fibre fortified” made them lack fair basis. However, this property is I think inherent in that feature (b) provides for the addition of dietary fibre in the form of resistant starch prepared by gelatinisation and debranching and this has been shown to result in products with higher levels of fibre.
Novelty
The parties agreed that the test for novelty is the “reverse infringement” test which asks whether an allegedly anticipatory publication would constitute an infringement of the claim in question: Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228. Also a prior disclosure will infringe a claim if it possesses "each and every one of the essential integers" of the claim: Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at 391. Alternatively, this has been expressed as "the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented": General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457. I was also referred inter alia to the principle that “mechanical equivalents” may be substituted for inessential integers, and that “ordinary methods of trial and error” may be applied to a disclosure to achieve a practical result: RD Werner & Co Inc v Bailey Aluminium Products (1989) 13 IPR 513; Nicaro Holdings v Martin Engineering Co (1990) 16 IPR 545; and that photographic novelty is not required: Hoechst Celanese Corp v BP Chemicals Ltd [1998] FSR 58.
I was also directed to the following passages from C. Van der Lely v Bamfords Ltd (1963) RPC 61:
“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 at least be as likely to be carried out in a way that would not do so, the patentee’s claim will not be anticipated”;
and
“But I can see no practical difference between a definite statement of fact and material from which the skilled man would clearly infer its existence…………that the ordinary skilled man would have had good grounds for reaching the conclusion.”
I will consider the two independent claims separately in assessing novelty.
Disclosures of EP 512249
The publication date on the face of this document is 11 December 1992.
General
This document (page 2, paragraphs 1 to 7) clearly identifies that soluble high amylose starches are useful to provide improved organoleptic properties in dry extruded foods. In particular they are recognised as providing improved expansion properties and the possibility of increased fibre content without loss of crispness and textural properties (page 2, line 30). Gelatinised, enzymatically debranched starches are examples of such starches which are of particular use in "low water activity, extruded foods (eg cereals, snacks, breadcrumbs, pet foods)" (page 2, lines 35-36). "Among the extruded foods which are improved herein are ready-to-eat, flaked, puffed and expanded cereals. The soluble high amylose containing cereals have improved expansion volume, a crisp eating texture, acceptable mouth feel and acceptable bowl life in milk. Soluble high amylose starches prepared by any method disclosed herein may be used in improved, extruded cereals. Of the debranched starches, crystalline short chain amylose is preferred."(page 6, lines 35-39)
Disclosure of resistant starch:
EP 512249 discloses in the preparation of extruded food products an enzymatically debranched soluble starch, gelatinised by jet cooking and debranched using pullulanase. There is close similarity between the specific methods for preparation of this RS3 type starch disclosed at page 4, line 32 to page 6, line 4 of the application and in EP 512249 at page 3, line 54 to page 5, line 50, and in the examples prepared by methods of examples 3A and 3 B (page 10 of EP 512249). In both cases the starting material is a starch containing amylose at high levels, preferably high amylose corn starch.
Thus the starch disclosed in EP 512249 is clearly within the scope of the resistant starch defined in feature (b) of independent claims 1 and 6 of the instant application. That is EP 512249 discloses the use in the preparation of extruded food products of resistant starch prepared by gelatinisation and debranching.
In the application feature (b) of claims 1 and 6 defines the resistant starch as up to 45% by weight of the uncooked dough mix. This is preferably 10-25%. (page 3, line 6). In EP 512249 it is up to 75% by weight of high amylose starch. Examples 4 and 7 have 10% and 25% by weight, respectively. (pages 11 and 16)
Thus EP 512249 clearly discloses feature (b) of claim 1.
Other features:
The instant application provides in feature (a) of claim 1, for a basic dough mix described at page 2, line 28, as an uncooked cereal dough mix which may include, for example, “oat bran, oat flour, wheat bran, wheat flour, unmodified corn starch, corn flour, corn meal, corn bran, rice flour and barley flour” (page 2A, lines20-24), as well as “sugar, malt, salt, flavor extracts and the like”. It discloses that the proportions of these ingredients may be varied “depending on the taste and texture desired in the end product, and these proportions are within the expertise of one skilled in the art.” Examples A and B provide embodiments which are compared with products without resistant starch. The basic dough mixes are A with 50% corn flour, 10% oat flour, 10% wheat flour, 4% sugar, 1% salt, 25% oat bran; and B with 20% corn flour, 70% oat flour, 10% sugar (page 6) In A the oat bran was replaced with 25% resistant, debranched HYLON VII (a high amylose) starch; and in B, part of the oat flour and cornflour were replaced with 25% oat bran or 25% resistant, debranched HYLON VII, starch.
It is clear that a wide range of dough mixes is envisaged as suitable, only limited by “the expertise of one skilled in the art.” The specific dough mixes disclosed in examples 4 and 7 of EP 512249 are:
Example 4: corn flour 60%, oat flour 15%, wheat flour 10%, sugar 4%, salt 1% and 10% by weight of an enzymatically, debranched, solubilised high (> 65%) amylose starch;and
Example 7: corn flour 25%, oat flour 40%, sugar 10% and 25% of an enzymatically, debranched, solubilised high (>65%) amylose starch.
These clearly fall within the scope of feature (a) of claim 1. Thus EP 512249 clearly discloses feature (a) of claim 1.
In feature (c) of claim 1 of the application, a moisture content for the unprocessed dough of 14-22% is defined. In EP 512249, the required moisture level is 1-15% (claim 1 and page 6, line 7) and for specific examples 4 and 7 is 6.7%. The general disclosure overlaps with the claimed range but there is no specific disclosure of an embodiment which has moisture within the range claimed in the instant application in combination with the use of RS3-type starches. However, reading the disclosure of EP 512249 as a whole, there is no suggestion that specific combinations require specific narrower moisture ranges within the general range of 1% and 15%. In fact, in claim 6, which is directed to the use of an RS3-type starch, the moisture requirement remains at 1-15%.
The question is whether the person skilled in the art in Australia would have read the disclosure of EP 512249 as giving directions that would have led to his using a moisture level falling within the range claimed. Wootton in his first declaration at paragraph 17 states that EP 512249 discloses this claimed feature which he further declares at paragraphs 13 and 15 to be well known in the art in Australia at the priority date of the application. In his second declaration, at paragraph 8, he further states that this feature inter alia was ”well known to the art of extruded food production and each feature acts in a known and expected manner to perform the function to which the feature is normally used.” From this it appears that the person skilled in the art in Australia would have read EP 512249 at least as telling him to carry out a process which even when an RS3-type starch was involved included using a range of moisture levels which overlapped with that claimed in the instant application.
I find that EP 512249 discloses a range of moisture content which overlaps with that defined in feature (c).
Feature (d) defines processing conditions for an extruder, ie “ an exit die of a predetermined shape and size at sufficient temperature and pressure to yield an expanded dough extrudate”. The instant application recognises that expansion can be optimised by varying screw configurations, temperature and time parameters. (page 3, lines 10-11; page 6, lines 23-24) Further “this optimization is within the expertise of one skilled in the art.”(page 3, line 11) Comparable conditions and equipment are used in both the application and EP 512249. In particular the application (page 3, line 8 ff) states that the dough is “cooked in an extruder through varied temperature zones, usually ranging from 60o-170oC.” The pressure “typically ranges from 1.38x106-6.2x106N/m2 (PA)(200-900psi)” (line 14), and “usually…2x106-4.3x106N/m2 (PA)(line 10). In EP 512249, the food is extruded at “a temperature of up to 160oC and a pressure of up to 35.2 Kg/cm2 (500psi)” (page 6, lines 9-10 and claim 1). These clearly fall within the scope of those envisaged in the application. These extrusion steps generally result in expansion. (The expansion levels are discussed below.)
Thus I find that feature (d) of the application is disclosed in EP512249.
Feature (e) defines that the extruded dough should then be dried to a final moisture content of less than about 3%. In EP 512249, example 4 has a moisture content of 6.7% going in to extrusion and is then toasted at 200-210oC for 2-6 minutes. Example 7 was processed the same way. No post-toasting moisture levels are specifically disclosed. I note that in Mr Altieri’s evidence-in-answer, in the experiments described in Exhibits 2 and 3, samples which went into the extruder with a moisture content of 17.0% were then toasted at 200-210oC, for 3-5 minutes but no final moisture levels are reported. As these experiments were intended to demonstrate the invention, it seems likely that this toasting step was intended to produce a final moisture content of “less than about 3%”. Consequently it would seem most probable that the toasting step disclosed in EP 512249 would also produce a final moisture content in the range defined.
However, I do not think that it is necessary to rely on such speculation in this instance. As discussed above, this feature is not essential.
Resultant properties:
Claims 1 to 5 of the application define the method as being one “to increase the expansion of extruded food products.” The resultant expansion, when resistant fibre was included, was compared with expansion achieved using a base dough mix with 25% oat bran, or a base dough mix with either no dietary fibre or with 25% oat bran.
The results disclosed in the instant application are: bulk density dropped from 3.65 kg/cm3 for a product with 25% oat bran to 3.60 kg/cm3 for a product with 25% RS3-type starch (~1% increase in expansion); and for a product with 25% RS3-type starch, there was an expansion of +58.9% compared with –28.6% for a product with 25% oat bran, both expansion results relative to a base line of zero for a product with no dietary fibre.
EP 512249 discloses in Table III, gelatinised and debranched, “crystalline waxy maize” with an expansion of 23.0%; and gelatinized and debranched “spray dried waxy maize” with an expansion of 15.0%. This is in comparison with a range of –11.0% to 15% for products using a range of other high (>70%) amylose corn starches which are not gelatinized and enzymatically debranched; or using no starch. The no starch product has an expansion of 13%.
In summary, the embodiments of the application show, variously measured, either 1% or 88.5% increase in expansion relative to a high fibre (oat bran) containing product or, for one basic dough mix, 58.9% relative to a no fibre product. In comparison EP 512249 shows increases of 10% and 2% relative to a no fibre product, and a range from 34% to zero relative to other high amylose, non RS3-type products. In neither case do the results show a consistent improvement for RS3-type starches relative to other starches or no starch. Thus it appears that both processes provide similar results. Although in one instance the application achieves a substantial gain relative to the best achieved in EP 512249, in another it is significantly less. Notably while both sets of results are inconclusive but overlapping they do not show consistent increases in expansion for the product. Thus the invention claimed in claim 1 cannot be distinguished on the basis of providing consistently superior results over these examples in EP 512249.
It was argued on behalf of the applicant that EP 512249 does not teach the advantages to be gained by using RS3 in preference to RS2 type starches. However, although the instant application asserts at page 8, lines 7 to 11, that the process provides inter alia improved expansion relative to other resistant starches, the results exemplified do not illustrate this because the comparisons made are not with products incorporating RS2-type starches. Even the broad statements in the specification do not make claims to RS3 type starches providing a better result than other types of resistant starch. All that is stated is that the addition of resistant starch results in improvements over products "that do not contain resistant starch or that are fortified with other forms of dietary fibre" (page 2), and the dietary fibre is exemplified as oat bran (page 2A). The proposition that RS3 type resistant starch provides improved results over RS2 type resistant starch is nowhere suggested in the specification and is not in substance disclosed. Thus this “advantage” cannot be used to distinguish the present application from EP 512249. (See also the discussion above of Mr Altieri’s experiments comparing products made using RS2 and RS3 type starches.)
In conclusion, I have found all the essential features of claim 1 disclosed in EP 512249. However claim 1 is a process which is a combination of process steps which have a working interrelationship. Thus it is not sufficient that I have found all these features independently. It is necessary that they be found in combination
Combination of features
In EP 512249, example 4 results in a product which has 13% more expansion than a product with no starch, and a maximum of 34% more than products with other, non-RS3-type high amylose corn starches. In brief, the process steps for example 4 are set out on page 11 of EP 512249 as follows: providing an uncooked cereal dough mix including 10% of a resistant starch prepared according to example 3A, (page 10), ie by gelatinizing and debranching; extruded using an input moisture level of 6.7%; measured for expansion and then toasted at 200-210oC for 2-6 minutes. Example 7 results in a product with the same expansion as a product with no starch, and a maximum of 26% more than products with other, non-RS3-type high amylose corn starches. The process steps are set out on page 16 as follows: providing an uncooked cereal dough mix including 25% of a resistant starch prepared according to example 3B (page 10), ie by gelatinising and debranching; extruding using a moisture level of 6.7%; measured for expansion and then toasted at 200-210oC for 2-6 minutes. All the essential process steps of the claimed invention are disclosed in combination in both examples 4 and 7. Thus EP 512249 contains “clear and unmistakable directions to do what the patentee claims to have invented.”
In conclusion, I find that the invention as claimed in claim 1 is not novel in the light of EP 512249.
Other claims
Claim 2 adds the feature “that the cereal ingredients may be selected from the group consisting of oat bran, oat flour, wheat bran, wheat flour, unmodified corn starch, corn flour, corn meal, corn bran, rice flour and barley flour.” Examples 4 and 7 of EP 512249 contain, respectively, corn flour 60%, oat flour 15%, wheat flour 10%; and cornflour 25%, oat flour 40% and clearly fall within the scope of this claim.
Claim 3 adds the feature that “the resistant starch is present in an amount from 10-25% by weight of the uncooked dough mix.” Examples 4 and 7 contain, respectively, 10% and 25% of resistant starch and clearly fall within the scope of this claim.
Claim 4 adds the feature that the mix is “cooked in an extruder through varied temperature ranges of 60o-170 oC at pressures within the range of 2x10 6- 4.3x10 6N/m2 (Pa).” In EP 512249, the disclosed temperature is “up to 160o C” and the pressure is “up to 500psi”. Both of these fall within or overlap the ranges defined and thus examples 4 and 7 fall within the scope of this claim.
Claim 5 adds the feature that “the expanded dough extrudate in step (d) has a moisture content of 8-11% by weight.” The description, as discussed above, suggests that this feature is essential even though it has not been included in claim 1. It is not disclosed in EP 512249. However, Professor Wootton declares that, “This range of moisture is optimal for standard extrusion process and again is not new." This statement has not been disputed by the opponent’s declarants. Thus I find claim 5 is not novel in the light of this document.
Claim 10 is directed to the product of the method of claim1. Examples 4 and 7, the products of a process falling within the scope of claim 1, clearly fall within the scope of this claim.
The process defined in claim 6 and its dependent claims is directed to extruded, flaked cereal products. EP 512249 makes only one specific reference to extruded, flaked products at page 6, line 35. Features (c), (d), (e) and (f) differ from those defined in claim1 and are not disclosed in EP 512249. I found above that the requirement in feature (c) for 30% moisture is not essential but that a minimum of 14% was required. Thus the process defined in claims 6-9 and the product defined in claim 11 are novel in the light of EP 512249.
In summary, the invention as claimed in claims 1 to 5 and 10 is not novel in the light of EP 512249.
The disclosures of WO 90/15147
The publication date on the face of this document is 13 December 1990. The applicant suggested that it could not be relied on by the opponent because it was the applicant in the evidence-in-answer who brought it into evidence. I note that it was cited in the statement of grounds and particulars. Also the amendments made to the specification could result in the opponent being given an opportunity to bring in further evidence. In any case, once it is brought into evidence it is open to either party to make submissions or provide evidence as to its construction. The applicant’s intention in raising it is not limiting. I will proceed to consider it.
This document discloses resistant starch products suitable to provide dietary fibre in food products (page 20) and their preparation:
In particular it discloses preparation of resistant starch from high amylose starting products by gelatinisation (page1, lines16-18) followed by enzyme treatment (page 2, line 34), preferably with bacterial alpha-amylase (page 6, line 3 ff). Thus it discloses the resistant starch defined in feature (b) of claims 1 and 6.
“The purified resistant starch products can be added in varying amounts, for example 0-20% of the food product, more preferably 5-10% of the food product.” (page 20, lines 28-30), 4% in Japanese Udon noodles (page 21, example 12) and 3, 5 or 7% in cookies (page 21, example13). This is within the scope of the quantity defined in feature (b), ie “up to 45%”.
The high amylose sources preferably have an amylose content greater than 50% or more preferably greater than 70%. (page 4, lines1-2) Suitable starches include amylomaize VII starch, high amylose pea starch, and high amylose barley starch as well as starches from other sources such as cereals, legumes and tubers.”(page 4, lines 2-5)
The products have high levels of resistant starch, high purity and excellent shelf life” (page11, lines1-20), “greater heat stability” (page 11, lines 35) and “can be used in relatively high temperature food processing applications wherein the food is exposed to short-term heat and act as a temperature moderator; for example, extrusion cooking at not too high temperatures.”(page12, lines 33-36). Thus feature (d) is broadly disclosed. However, despite the die shape, size, processing temperatures and pressures to be used in the process of the claims being all described in the specification as “within the expertise of one skilled in the art” (page 3, lines10 to 13), there is no clear disclosure in WO 90/15147 of water levels required to ensure expansion. Thus a person skilled in the art could be expected on reading the citation to be able to carry out feature (d) requiring, at most, “ordinary methods of trial and error” to achieve a practical result.
“In addition to their effect as dietary fibre or low calorie food additive, the novel purified resistant starches of this invention can at the same time be used as a hydrating agent to absorb water in various food products to adjust the processing of such products, such as in cooking, cooling, and other facets of food processing…… For example, the water absorbance of the purified resistant starches is high (4g water/g product). Accordingly the concentration of RS can be adjusted either during purification or by blending after purification to achieve a particular level of hydrating capacity.” (page 20, line11 ff)
Examples of foods in which the resistant starch can be used include bread, cookies, pasta, baked goods, dairy products, beverages, puddings, fillings and others. (page 21, examples 12 and 13)
Japanese Udon noodles made using this resistant starch were found to have a higher combined score with regard to colour of raw noodles, colour of cooked noodles, texture of cooked noodles and yield. (page 21, lines10 to 13)
This document thus discloses using “up to 45%” of resistant starch, prepared by gelatinisation and debranching, in cereal food products, ie noodles and cookies. Thus feature (b) of claims 1 and 6 is disclosed. Implicitly feature (a), an uncooked cereal dough is also disclosed. However there is no disclosure of specific levels of moisture content as required by feature (c) although it does disclose that the starch may be “used as a hydrating agent to absorb water in various food products to adjust the processing of such products (page 20, lines12 to 15).” “Extrusion cooking at not too high temperatures” is described and Wootton in his second declaration at paragraph 23 states “I note that cookies and pasta are extruded food products and therefore there is a clear teaching in WO 90/15147 for one to use a gelatinised and debranched starch product containing enhanced dietary fibre in extruded food products." However, there is no suggestion in WO 90/15147 either that the extrusion step is carried out at temperatures and pressures which “yield an expanded dough extrudate” as required by feature 1(d), nor of any increase in expansion relative to other formulations. Thus there are no “clear and unmistakable directions to do what the patentee claims to have invented” as defined in claim 1 and its dependent claims.
Similar arguments apply to independent claim 6 and its dependent claims.
Thus I find that the invention as claimed is novel in the light of WO 90/15147.
The disclosures of AU 657443
I found above that the provisional specification associated with this application disclosed the use of formulations including resistant starch to produce cold extruded cereal flakes. Consequently if the information regarding the use of resistant starch in cold extruded flaked cereal products were to be the subject of a claim of the complete specification it would be entitled to a priority date of 24 December 1992.
This document discloses the use of resistant starch to add dietary fibre to food products including extruded flaked cereal products which are prepared using a cold extrusion process.
The fibre used may be derived from “a starch having an amylose content of at least about 50%” (page 2, line 34). The resistant starches may be produced by “extensive processing involving repeated cooking and cooling of starch pastes.”(page 2, lines 7-9). This is not a resistant starch prepared by gelatinisation and debranching. The document does not distinguish between RS1, RS2 and RS3 starches. Altieri states at paragraph 12 of his first declaration that this starch is of the RS2 type and falls outside that claimed in the present application. He has provided experimental evidence, exhibits 2 and 3, which attempts to show that RS3 starch produces different results from RS2 type starch. However the results are inconclusive. Brown in his evidence, exhibit IB-7, attempts to demonstrate experimentally that the “Hi-maize – high amylose” starch used in AU 657443 when it undergoes extrusion processing achieves similar results to the RS3 type starch used by Altieri in his experiments. However Brown’s expansion results are also inconclusive and the texture results do not show a clear improvement over the product without resistant starch. As discussed above, the present application itself does not adequately describe or clearly define this aspect of the invention.
The cold extrusion process is not described in detail. Implicitly the techniques needed are known. This is confirmed by Wootton in his second declaration (paragraph 18), where he states that AU 657443 shows that “dietary fibre in the form of resistant starch can be included into extruded food products to provide acceptable or even improved products using standard techniques.”
The exemplified extruded flake formulations (page 6, line 10ff.) have resistant starch levels ranging from 8.4% to 43.1% resistant starch based on the dry weight of the dough components.
The basic process described is “rotary cooking, cold form pelleting, flaking and toasting”. The last three steps are broadly equivalent to steps (d), (f) and (g) of claim 6. I note step (d) does not exclude cold extrusion.
One alternative of the process adds overnight tempering and another adds drying at 70oC for 30 minutes prior to flaking. Overnight tempering of the moist pellet increased the total dietary fibre content significantly and resulted in a final moisture content of 4.3%. (page 8, Table 2). This is very different from the 25-30% defined after the tempering step in claim 6.
No moisture levels are disclosed for the earlier process steps.
The cereal products, including the flaked extruded products, were found to “extrude well, display moderate to high expansion, yielding a final product with a medium to coarse cell structure. The products are unusual in that they have a light airy texture whilst containing a relatively high level of total dietary fibre.”
In summary, while equivalent results are achieved by AU 657443, it does not disclose resistant starch made by gelatinization and debranching or the moisture levels into and out of the extrusion process, nor the tempered moisture content. Thus it does not disclose all the essential features of claim 6.
As discussed above, the disclosure of an extruded cereal product in AU 657443 is not part of the prior art base. Even if it were, it would still suffer, at least, from the deficiency that resistant starch made by gelatinising and debranching was not disclosed. Thus it also does not disclose all the essential features of claim1.
I find the invention as claimed novel in the light of AU657443.
Inventive step
At the hearing the opponent chose not to pursue the ground of lack of inventive step.
MANNER OF MANUFACTURE
The question of a patentable manner of manufacture has been discussed by the Full Bench of the High Court in Phillips v Mirabella (supra) and in Advanced Building Systems v Ramset (supra). Both parties directed me to these decisions, amongst others.
In the Patents Act 1990, section 18(1)(a) relevantly states:
“…...a patentable invention is an invention that, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statue of Monopolies.”
Schedule 1 of the Act defines invention:
“invention” means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.
In Phillips v Mirabella the majority view of the High Court at page 453 was that that these must be read together with the result that section 18(1)(a) should be read as defining a threshold requirement for a patentable invention that exists independently of the specifically defined matters of novelty and inventive step. This requirement is that a patentable invention must comply with the definition of “invention”, that is “any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies”. The Court went on to state:
“It simply means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.”
The Court, in reference to arguments concerning the words “manner of manufacture” in section 18(1)(a) also stated at page 456:
“…it would border upon the irrational if a process which was in fact but a new use of an old substance could be a “patentable invention” under s.18 if, but only if, that fact were not disclosed by the specification.”
In Ramset (supra) the majority of the High Court (paragraph 40) found that the Federal Court “was in error in considering under the ground of revocation in s 100(1)(d) matters that could have arisen under other grounds, namely obviousness and lack of novelty, but which either did not arise or were put to one side.” They found that the case was governed by the Patents Act 1952 which defined for revocation separate grounds of novelty, obviousness and “invention”. As “invention”, the ground defined in s 100(1)(d), had not been made an issue in the action, the court should not have considered these matters under that section. However the High Court did not specifically overturn the methodology used by the Federal Court in determining the issue of "invention".
The present matter is, like Phillips v Mirabella (supra), an action under the Patents Act 1990. The relevant grounds for opposition are set out in section 59(b):
"that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b)."
Thus in the present case, it is open to the opponent to raise the issue of whether the claims are directed to a patentable invention as distinct from the issues of lack of novelty and obviousness.
Ms Baird for the opponent has made submissions that the claims do not define a patentable invention as they are directed to a process which is merely the use of a known material, resistant starch, in a prior known process to produce a result which is expected from the inclusion of that material. As stated in Phillips v Mirabella (supra) at page 457:
“the effect of the conclusion that the relevant process in the present case was no more than a new use of a particular known product was that it was not a ‘manner of manufacture’ for the purposes of s.18 (1)(a) and, consequently, not a ‘patentable invention’".
Thus if the opponent’s assertion is shown to be correct, I must find that the claims in question are not directed to a “patentable invention.”
The concept embodied in the words “no more than a new use of a particular known product” has also been expressed as “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”, Dixon CJ in Commissioner of Patents V Microcell Ltd (1959) 102 CLR 232 at 251, quoted in Phillips v Mirabella (supra). In the present case I must therefore determine whether the material in question is known, whether the process used to manufacture certain articles is known and whether the articles themselves are known. In determining what is known, as discussed above, I am not limited to what is admitted on the face of the specification. Nor am I limited to publications which are common general knowledge. The Full Bench of the Federal Court in Ramset (supra) found it appropriate to consider, in determining what was new, publications which did not form part of the common general knowledge. As discussed above, this part of their decision was not overturned in the appeal to the High Court in that case.
In addition it is necessary to show that in applying the material to this use there was no need to apply inventive ingenuity to overcome practical difficulties, if there were any, arising from that application: Gadd & Mason v Mayor of Manchester (1892) 9 RPC 516. It can then be found to be "no more than" or "nothing but" a new use.
Firstly, is the material in question known? The relevant material in this case is resistant starch, and more particularly resistant starch prepared by gelatinisation and debranching, that is a resistant starch of the RS3 type. As discussed above both EP 512249 and WO 90/15147 disclose a resistant starch of the RS3 type which is prepared by gelatinisation and debranching processes which are very close to those described in the present application. The present application discloses that the gelatinisation process “may be effected by any of the methods known in the art”. Although there is no specific statement that the debranching process described is also known, there is no suggestion that the process described is new. In addition, it must be noted that EP 512249 shares both the applicant, National Starch and Chemical Investment Holding Corporation, and an inventor, Mr Altieri, with the present application. Thus the absence in the present specification of any reference to this process being known should not be seen as evidence of newness but rather, perhaps, as a mere oversight or accident of drafting.
Secondly, are its properties known? The relevant properties in this case are that this resistant starch will provide increased dietary fibre and that it may be used in extruded cereal products at worst without adversely affecting desirable properties. As discussed above, the resistant starch prepared by gelatinisation and debranching in EP 512249 is capable of resulting in an extruded food product which both provides increased dietary fibre and desirable properties at a level comparable with that required by claims 1 to 5 and 10 of the present application. WO 90/15147 discloses that this resistant starch can be used in “extrusion cooking at not too high temperatures”.
The present specification recognises that resistant starch is known to act as a dietary fibre and that three different kinds of resistant starch are known. I note that there is no explicit disclosure of properties suitable for flaked, extruded products. However, the discussion of the problem to be overcome in the present application is focussed on the effect of the presence of added dietary fibre on the properties after extrusion so that it appears that there is no further problem associated with the additional flaking step.
Thirdly, is the process of manufacture known? The relevant process is extrusion producing an expanded food product or extrusion followed by flaking to produce a product with improved texture. EP 512249 discloses an extrusion process with a product which meets the increased expansion criterion as well as the present application does. WO 90/15147 envisages the use of the resistant starch in extrusion processes. The present application refers to the extrusion process for the expanded food products and the parameters which affect its optimization as “within the expertise of one skilled in the art.” (page 3, lines 11 and 13) Similarly, it states that the “optimization of extrusion parameters is within the expertise of those skilled in the art” for extrusion leading to flaking. The latter clearly implies that extrusion followed by flaking is also known in the art.
Fourthly, are the articles, or products, known? The present application describes both expanded food products produced by extrusion and extruded flaked products as known – “the food products prepared by extrusion techniques are typically ready-to-eat cereal and snack foods, crisp breads, pasta and noodles.” (page 1A, lines 9 to 10). Flaked, extruded products are referred to at page 1A, line21 to 25. EP512249 clearly discloses expanded food products of the kind envisaged, including a reference to extruded, flaked products at page 6,line 35. WO 90/15147 discloses examples of uses which “include bread, cookies, pasta, baked goods, dairy products, beverages, puddings, fillings and others.”
Finally, is this “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”?
The present specification discusses the difficulties that arise in attempting to provide added dietary fibre to extruded food products. In general addition of fibre is found to make it difficult for such products to expand. This also affects crispness and texture which are “related to their expanded volume and bulk density.” (page 1A, lines 21 to 25) However these are difficulties associated with high fibre additives which are not resistant starch. The ensuing description does not disclose any difficulties in modifying known extrusion and flaking processes to take advantage of the properties of resistant starch, more particularly resistant starch prepared by gelatinization and debranching, which allow it to be used in what are known extrusion and flaking processes to achieve the defined results. While the broad description of the invention includes some specific parameters, such as adding starch in amounts up to 45 % by weight and adding water to attain a moisture of 14-22% by weight, there is no discussion of why these particular values have been specified, or that they have any unexpected result beyond that to be achieved in optimization of the process, as could be achieved “within the expertise of one skilled in the art”, as discussed above. In fact, the general tenor of the ensuing detailed description is that the decisions to be made in carrying out the process are “within the expertise of one skilled in the art”.
In other words in reading the description, one would come to the conclusion that the inventive concept resides in the recognition that resistant starch of a particular type (RS3) could be used to achieve the desired results and that once its suitability was recognised it only required the application of known techniques, without needing to overcome any difficulties, to put it into practice. As I have already shown that it was known that the particular resistant starch was known and was known to have the required properties, then the invention claimed may be described as “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”. I note that in determining what is known, it was only necessary to go outside the present specification to determine that resistant starch prepared by gelatinisation and debranching was known and that this resistant starch had the property that, when processed by extrusion, it could produce a satisfactory product. EP 512249 provides the evidence that this starch and this property, to the extent that the present application defines it, were “known”.
In conclusion I find that the invention as claimed is not a patentable invention within the meaning of section 18(1)(a) of the Patents Act 1990.
SUMMARY
I have found that the specification does not comply with section 40 in that the claims are not clear, the invention is not fully described and claims 1 to 5 and 10 are not fairly based. I have found that claims 1 to 5 and 10 are not novel in the light of EP 512249. I have also found that the invention as described and claimed in all claims is not a manner of new manufacture.
The opposition succeeds. In my view there is no patentable subject matter in the specification and I, therefore, refuse this application.
COSTS
Mr Hess for the applicant made submissions that there should be a cost penalty against the opponent because the case finally argued was narrower than that put forward in the statement of grounds and particulars. If the opponent succeeded, the award of costs should also take into account the grounds upon which the opponent succeeded relative to those in which they failed. He referred me to the decision in Patentgesellschaft AG v Saudi Livestock Transport and Trading Company (1997) 37 IPR 523 in which costs were borne equally because the challenge was successful on only one point
Ms Baird for the opponent submitted that the applicant’s amendments which were filed some 3 months after the evidence in support had rendered many of the documents cited by the opponent of less importance. Thus whatever the result of the opposition, costs prior to that amendment should be borne by the applicant.
In matters before the Commissioner costs usually follow the event. I have found for the opponent on the majority of the matters before me. The parties’ submissions thus lead in the same direction as accepted practice. I therefore award costs against the applicant, National Starch and Chemical Investment Holding Corporation.
Wanda Gunawardana
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Griffith Hack, Melbourne
Patent attorneys for the opponent: F.B. Rice & Co, Sydney
2
0