Orora Packaging Australia Pty Ltd
[2021] APO 40
•01 October 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Orora Packaging Australia Pty Ltd [2021] APO 40
Patent Application: 2020203141
Title:Packaging Wine in a Metallic Container with an Internal Coating
Patent Applicant: Orora Packaging Australia Pty Ltd
Delegate:R Subbarayan
Decision Date: 01 October 2021
Hearing Date: Written submissions filed on 30 April 2021
Catchwords: PATENTS – divisional case management – examiner objections – whether the proposed amendments are allowable – whether the amendments overcome objections of lack of clarity, lack of support, lack of novelty and lack of inventive step – claims lack novelty and inventive step – observations regarding support and inventive step – applicant afforded opportunity to respond to adverse findings – application to be refused if no response is filed
Representation: Patent attorney for the applicant: Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2020203141
Title:Packaging Wine in a Metallic Container with an Internal Coating
Patent Applicant: Orora Packaging Australia Pty Ltd
Date of Decision: 01 October 2021
DECISION
Objections 1, 2 and 3 of the examination report have been overcome by amendment and/or submissions in rebuttal.
I find that claims 1, 6 & 9-12 lack novelty and that all the claims lack an inventive step.
I give the applicant a period of 3 months from the date of this decision to propose suitable amendments that would overcome the adverse findings. If suitable amendments are not filed, the application will be refused.
REASONS FOR DECISION
BACKGROUND
Patent application AU 2020203141 in the name of Orora Packaging Australia Pty Ltd (the “applicant”) was filed on 13 May 2020 as a divisional application of AU 2019204461 in a long line of divisional applications that first originated from application AU 2006230815 (the “first application”), the other ancestor divisional applications being AU 2012227193, AU 2015255231, AU 2017216538 and AU 2019204461.
The ‘first application’ was filed on 07 Apr 2006 as a PCT application (PCT/AU2006/000467) in the name of Amcor Limited and claims an earlier priority date of 07 Apr 2005. The present application also therefore claims this earlier priority date.
The PCT application was searched and examined by this office in the international phase and culminated in the issuance of an International Preliminary Report on Patentability (IPRP2) that was completed on 25 June 2007. The IPRP2 included adverse findings on clarity, novelty and inventive step.
Examination in the national phase of this ‘first application’ was requested on 18 February 2010 and a first examination report issued on 20 December 2010 that maintained the adverse findings of the IPRP2 and also raised an objection that claim 1 was not fairly based on the matter described.
The applicant did not respond to the examination report but filed a divisional application (AU 2012227193) with identical claims and allowed the ‘first application’ to lapse due to failure to gain acceptance.
The same process followed for the string of divisional applications that followed, with the office issuing an adverse examination report and the applicant not responding to the report but instead filing another divisional application with the same claims and allowing the application to lapse. However, for the previous divisional application AU 2019204461 from which the present application is divided, the Commissioner adopted her divisional case management strategy and gave the applicant only 3 months to respond and when the applicant still did not respond, refused the application.
Along the way, the applicant became Orora Packaging Australia Pty Ltd by way of assignment.
In relation to the present application, the Commissioner decided to again adopt a divisional case management strategy and the first examination report that issued on 31 March 2021, in addition to repeating the objections raised in previous examination reports on the parent applications, also included the following note.
“My report above includes objections that are equivalent to objections raised in the
examination of the related parent application which is directed to the same or essentially the same subject matter. As there has now been several adverse reports in relation to this subject matter, the application will be referred to a Hearing Officer to consider whether to accept or refuse the application under s49 or to direct amendment under s107. If you wish to be heard on this matter, you have 1 month from the date of this report to request a hearing. Fee item 230 applies”.
The applicant responded on 30 April 2021 with proposed amendments to the claims and submissions as to why the application is now in order for acceptance.
10. In line with the divisional case management strategy, the application has now been assigned to me to decide the fate of this application taking into account the proposed amendments and issue a written decision.
RELEVANT LAW
11. Although the ‘first application’ and the first divisional application were filed prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“Raising the Bar Act”), the present application is governed by the Raising the Bar Act. The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of objection to the grant of a patent exists, I may refuse the present application.
SPECIFICATION
12. The present invention relates to a process for packaging wine in metallic containers and “particularly to the impact of sulphur dioxide (SO) on packaging wine in metallic containers”.[1]
[1] Specification page 1, lines 31-32
13. The specification briefly discusses the practice of addition of SO₂ during winemaking.
“Wine is produced by the yeast fermentation of the juice of grapes and occasionally other fruits. As part of the control processes for the fermentation and handling of wine, SO and/or analogues such as metabisulphite is often added to wine for reasons including "the killing and growth inhibition of unwanted bacteria and yeast, the inhibition of phenoloxidase activity, the interaction with wine phenols in the competitive oxidation, the reaction of sulphite with peroxide, the binding of aldehydes and anthocyanin pigments and the delay of brown pigment development". In addition, SO can also be advantageous at the time of packaging wine as a means of allowing winemakers to quickly stabilise wine so that it is suitable for packaging”.[2]
[2] Specification page 1, line 34 – page 2, line 10
14. The specification also notes that the SO₂ in the wine exists as both bound SO₂ and free SO₂ and that free SO₂ can cause adverse effects on wine that is packed in metal containers.
“It is well known, and the applicant has confirmed, that the reaction of free SO₂ with metal is the key reaction causing adverse reaction in packaging wine in metal containers. This is a redox reaction where SO₂ is reduced to hydrogen sulphide, which taints wine, and the metal is oxidized to metal ions in solution and thereby corrodes the container. This reaction is known to occur with aluminium and its alloys, steel and tin, which are the common metals used in the packaging. It is likely that the reaction occurs with other metals, but this has not been specifically investigated by the applicant”.[3]
[3] Specification page 3, line 29 – page 4, line 2
15. The specification then discusses the disclosure of prior art AU 2002304976.
“Australian patent application 2002304976 in the name of Barokes Pty Ltd describes and claims a process for packaging wine in aluminium cans.
Claim 1 of the Barokes patent application defines a process of packaging wine in a two-piece aluminium can having an internal corrosion resistant coating. The claimed process comprises the steps of:
(a) preparing wine characterized in that the wine has less than 35 ppm of free SO₂, less than 300 ppm of chlorides and less than 800 ppm of sulfates;
(b) filling a two-piece aluminium can body with the wine; and (c) sealing the can with an aluminium closure such that the pressure within the can is at least 25 psi.
The Barokes patent application describes that the above-mentioned maximum levels of free SO₂, chlorides, and sulfates are necessary in order to minimise corrosion of the packaged cans and minimize tainting of the packaged wine in aluminium containers”.[4]
[4] Specification page 3, lines 2-27
16. Although not specifically mentioned, a perusal of AU 2002304976 reveals that the internal corrosion resistant coating is “typically an epoxy resin combined with a formaldehyde based cross-linking agent”.[5]
[5] AU 2002304976 page 6, lines 19-21
17. A known method of packing beverages such as soft drinks in metal containers is then discussed.
“Cans are commonly used to package a range of beverages. In recent years it has become common to coat the inside of beverage cans with an amine epoxy coating which is sprayed onto the interior of the can during can making. The particular coating used by the applicant is manufactured by Valspar Corporation and marketed under the trademark Ecodex”.[6]
[6] Specification page 4, lines 4-10
18. While not specifically mentioned, it would appear from the specification that the ‘range of beverages’ mentioned above does not include wine.
19. The specification then notes that the inventors of the present application have discovered that metal cans coated with the above-mentioned amine epoxy coating can also be used for packing wines including wines which have free SO₂ levels greater than 35ppm (parts per million), which is generally the acceptable level that has been considered safe for packing in metal containers in the prior art (such as AU 2002304976) without the adverse effects of corrosion and tainting.
“The applicant has found, surprisingly, that it is possible to package wine that has concentrations of any one of the constituents free SO₂, chlorides, and sulfates that is above the above-mentioned maximum concentrations in metallic containers that have the above-mentioned amine apoxy (sic) coating on an internal surface of the containers without creating issues with respect to corrosion of the containers and tainting of wine in the containers.
More particularly, the applicant has found, surprisingly, that it is possible to package wine that has concentrations of free SO₂ in wine that are above the limits that are generally regarded as acceptable from the viewpoints of corrosion and wine tainting in metallic containers that have the above-mentioned particular coating.
The applicant has determined that the coating is an inhibitor of the Al/SO₂ reaction discussed above and thereby minimizes the reaction”.[7] (emphasis added)
[7] Specification page 4, line 23 – page 5, line 6
20. The specification also then notes that a polymer coated steel can also be used for making the cans.
“An alternative method of making cans is to coat the metallic plate used to make the cans with a polymer such as polyethylene terephthalate (PET) or other polyesters, and then form the metallic container from the coated metal plate, known as the Polymer Coated Steel (PCS). No further polymer coating is applied during the can making process. It should be understood that the present invention is intended to cover metallic containers made from PCS as well as metallic containers coated during the can making process”.[8]
[8] Specification page 4, lines 12-21
21. The specification provides a broad summary of the invention as follows:
“According to the present invention there is provided a process of packaging wine in a metallic container having an internal coating that inhibits reactions between the metal of the container and free SO₂ in the wine that result in container corrosion and wine tainting, which method includes the steps of:
(a) preparing wine that has a concentration of free SO₂ that is greater than 35 ppm;
(b) filling a metallic container, as described herein, with the wine; and
(c) sealing the metallic container such that the pressure within the container is at least a predetermined limit at a relevant temperature.According to the present invention there is also provided a process of packaging wine in a metallic container having an internal coating that includes the steps of:
(a) preparing wine that has a concentration of free SO₂ that is greater than a limit that is generally regarded as acceptable from the viewpoints of container corrosion and wine tainting;
(b) filling a metallic container, as described herein, with the wine;
(c) sealing the container such that the pressure within the container is at least a predetermined limit at a relevant temperature; and (d) treating the wine after the container has been filled and sealed and reducing the concentration of free SO₂ to be below the limit generally regarded as acceptable from the viewpoints of container corrosion and wine tainting”.[9]
[9] Specification page 5, line 10 – page 6, line 15
22. The specification then describes four experiments that were conducted with wine packed in “aluminium beverage cans, normally used for the packaging of soft drinks” and having an internal coating of amine epoxy “manufactured by Valspar Corporation and marketed under the trade mark Ecodex”[10]. The conditions of the experiments were as follows:
[10] Specification page 8, lines 27-31
Prior to filling the wine in the cans, the free SO₂ in the wine was adjusted to 60 ppm +/- 10 ppm by adding a stock solution of sodium metasulphite.
Temperature of filling was ambient.
The air in the headspace of the cans was removed by undercover gassing with an inert gas immediately before sealing to remove the oxygen in the can.
Cans were pressurized with liquid nitrogen to an uncontrolled pressure between 5 and 30 psi immediately prior to sealing the cans for the purpose of providing mechanical stability to the can.
The cans were stored for 3 months at 30°C and the levels of free SO₂, total SO₂, dissolved aluminium and hydrogen sulphide in the wine were measured initially and at various intervals to determine the level of corrosion of the can and wine tainting.
Experiment 1
23. In the first experiment, the amine epoxy coating of the cans was removed before filling with the wine. The increased levels of dissolved aluminium and hydrogen sulphide and decreased levels of free and total SO₂ that was observed during the storage period, established that there was significant corrosion of the cans due to reaction with the SO₂ and tainting of the wine.
Experiment 2
24. This experiment was carried out with the cans having the ‘Ecodex’ amine epoxy coating. The levels of dissolved aluminium and hydrogen sulphide, free SO₂ and total SO₂ observed during the storage period showed a very positive effect in that there was very little corrosion or wine tainting. According to the specification, “the decrease in SO₂ from 60 ppm down to 30 ppm indicates that there was some reaction occurring that reduced the concentration of SO₂” and that the “results indicate that the coating formed a chemical and a physical barrier to SO₂ contacting the aluminium can”.[11]
[11] Specification page 12, lines 23-27
Experiment 3
25. This was identical to experiment 2 except for the fact that the amine epoxy coating was scratched to see what effect this had if some of the cans had some manufacturing defects. The results showed no consistent differences between the scratched and un-scratched cans suggesting that “the coating does not merely act as a physical barrier between the aluminium can and the wine, but also by possibly directly reacting with the SO₂ in the wine, possibly absorbing or adsorbing with it”.[12]
[12] Specification page 14, lines 22-25
Experiment 4
26. This was a repeat of experiment 1 but without gas flushing to remove oxygen from the can. While there were significant drops in free and total SO₂, there was however substantial increase in hydrogen sulphide indicating significant tainting and that the wine was therefore “commercially unacceptable”.[13]
[13] Specification page 17, line 1
27. While all of the experiments were conducted with amine epoxy coated cans, the specification also notes that other coatings can also be used.
“The coating may be any suitable coating that inhibits and thereby minimises reactions between free SO₂ and the metal of the container that result in container corrosion and wine tainting”.[14]
[14] Specification page 6, lines 17-20
28. The specification ends with 13 claims as follows:
1. A process of packaging wine in a metallic container having an internal coating that inhibits reactions between the metal of the container and free SO₂ in the wine that result in container corrosion and wine tainting, which method includes the steps of:
(a) preparing wine that has a concentration of free SO₂ that is greater than 35 ppm;
(b) filling a metallic container, as described herein, with the wine; and
(c) sealing the metallic container such that the pressure within the container is at least a
predetermined limit at a relevant temperature.
2. A process of packaging wine in a metallic container having an internal coating that includes the steps of:
(a) preparing wine that has a concentration of free SO₂ that is greater than a limit that is generally regarded as acceptable from the viewpoints of container corrosion and wine tainting;
(b) filling a metallic container, as described herein, with the wine;
(c) sealing the container such that the pressure within the container is at least a predetermined limit at a relevant temperature; and
(d) treating the wine after the container has been filled and sealed and reducing the concentration of free SO₂ to be below the limit generally regarded as acceptable from the viewpoints of container corrosion and wine tainting.
3. The process defined in claim 2 comprises treating the wine after the container has been filled and sealed and reducing the concentration of free SO₂ to be less than 35 ppm.
4. The process defined in claim 2 or claim 3 wherein treatment step (d) includes selecting the coating of the container so that it can absorb free SO₂ from the wine into the coating or can react with the wine to reduce the free SO₂ concentration to be below the limit generally regarded as acceptable from the viewpoints of container corrosion and wine tainting.
5. The process defined in any one of the preceding claims wherein the coating is an amine epoxy coating.
6. The process defined in any one of the preceding claims further includes a step of gas flushing the container with an inert gas, such as nitrogen, after step (b) of filling the container.
7. The process defined in claim 6 includes gas flushing the wine with a gas that contains oxygen content.
8. The process defined in claim 7 wherein the oxygen containing gas is oxygen.
9. The process defined in any one of the preceding claims wherein step (c) includes sealing the metallic container such that the pressure within the container is sufficient to provide the mechanical stiffness required for handling of the container in a supply chain.
10. The process defined in any one of the preceding claims wherein step (a) includes preparing wine that has at least 40 ppm free SO₂.
11. The process defined in claim 10 wherein step (a) includes preparing wine that has at least 45 ppm free SO₂.
12. A wine container that has been packaged in accordance with the process defined in any one of the preceding claims.
13. The process defined in any of claims 1 to 4 where a polymer coated steel is used to form the wine container, without an additional polymer coating step during the can making process.
The Proposed Amendments
29. There is only one proposed amendment and that seeks to replace all of the claims with a new set of claims. The claims as proposed to be amended are as follows:
1. A process of packaging wine in a metallic container having an internal coating that inhibits reactions between the metal of the container and free SO₂ in the wine that result in container corrosion and wine tainting, which method includes the steps of:
(a) preparing wine that has a concentration of free SO₂ that is greater than 35 ppm;
(b) filling a metallic container with wine prepared in step (a); and
(c) sealing the metallic container.
2. A process of packaging wine in a metallic container having an internal coating that includes the steps of:
(a) preparing wine that has a concentration of free SO₂ that is greater than a limit that is generally regarded as acceptable from the viewpoints of container corrosion and wine tainting;
(b) filling a metallic container with the wine prepared in step (a);
(c) sealing the container; and
(d) treating the wine after the container has been filled and sealed and reducing the concentration of free SO₂ to be below a limit generally regarded as acceptable from the viewpoints of container corrosion and wine tainting.
3. The process defined in claim 2 comprises treating the wine after the container has been filled and sealed and reducing the concentration of free SO₂ to be less than 35 ppm.
4. The process defined in claim 2 or claim 3 wherein treatment step (d) includes selecting the coating of the container so that it can absorb free SO₂ from the wine into the coating or can react with the wine to reduce the free SO₂ concentration to be below the limit generally regarded as acceptable from the viewpoints of container corrosion and wine tainting.
5. The process defined in any one of the preceding claims wherein the coating is an amine epoxy coating.
6. The process defined in any one of the preceding claims further includes a step of gas flushing the container with an inert gas, such as nitrogen, after step (b) of filling the container.
7. The process defined in claim 6 includes gas flushing the wine with a gas that contains oxygen content.
8. The process defined in claim 7 wherein the oxygen containing gas is oxygen.
9. The process defined in any one of the preceding claims wherein step includes sealing the metallic container such that the pressure within the container is sufficient to provide the mechanical stiffness required for handling of the container in a supply chain.
10. The process defined in any one of the preceding claims wherein step (a) includes preparing wine that has at least 40 ppm free SO₂.
11. The process defined in claim 10 wherein step (a) includes preparing wine that has at least 45 ppm free SO₂.
12. A wine container that has been packaged in accordance with the process defined in any one of the preceding claims.
13. The process defined in any of claims 1 to 4 where a polymer coated steel is used to form the wine container, without an additional polymer coating step during the can making process.
Are the Amendments Allowable?
30. As mentioned earlier, this is the first time that the applicant has responded to any of the examination reports for the present or the ancestor applications. As the proposed amendments accompanying this response have not been subject to examination, it is appropriate that I first consider whether the proposed amendments are allowable.
31. A marked up copy independent claims 1 and 2 is reproduced below that show the changes that have been made to these claims (highlighted in blue) with the strikethrough identifying deletions and the underlining identifying additions.
1. A process of packaging wine in a metallic container having an internal coating that inhibits reactions between the metal of the container and free SO₂ in the wine that result in container corrosion and wine tainting, which method includes the steps of:
(a) preparing wine that has a concentration of free SO₂ that is greater than 35ppm;
(b) filling a metallic container, as described herein,withthewine prepared in step (a); and
(c) sealing the metallic containersuch that the pressure within the container is at least a predetermined limit at a relevant temperature.2. A process of packaging wine in a metallic container having an internal coating that includes the steps of:
(a) preparing wine that has a concentration of free SO₂ that is greater than a limit that is generally regarded as acceptable from the viewpoints of container corrosion and wine tainting;
(b) filling a metallic container, as described herein,with the wine prepared in step (a);
(c) sealing the containersuch that the pressure within the container is at least a predetermined limit at a relevant temperature; and
(d) treating the wine after the container has been filled and sealed and reducing the concentration of free SO₂ to be belowthea limit generally regarded as acceptable from the viewpoints of container corrosion and wine tainting.
32. It is clear from the above that the main changes of the amendments are the deletion of the words “as described herein” and “such that the pressure within the container is at least a predetermined limit at a relevant temperature” and the additions of the words “prepared in step (a)”.
33. The allowability of the amendments is governed by section 102(1) which states that an amendment is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond the complete specification as filed.
34. The addition of the words “prepared in step (a)” is further clarifying that the wine that is filled in the container is that prepared in step (a). It clearly does not add matter that would extend beyond the disclosure of the specification as filed.
35. The deletion of the words “as described herein” is a bit more problematic. First, I need to construe this term and then decide whether the deletion of this term would make the amended claim extend beyond the scope of the original disclosure.
36. Although the examination report states that claims 1 and 2 have been examined despite not complying with the requirements of Subsection 40(3A) of the Patents Act because they recite "filling a metal container, as described herein" and therefore rely on references to descriptions or drawings which are not absolutely necessary to define the invention, there is no explicit indication as to how they have construed the term ‘as described herein’, for the purposes of assessing the novelty and inventive step of these claims. However, on reading the novelty objection and the lack of full definition objection in the IPRP2 it appears that this term has been construed broadly as a metal container that has an internal coating as defined in the respective preambles of these claims. In other words, in claim 1 it has been construed as a metal container that has an internal coating that inhibits reactions between the metal of the container and free SO₂ in the wine and in claim 2 it has been construed as a metal container that has an internal coating.
37. Although one would normally construe a term that includes words like ‘as described herein’ or ‘as hereinbefore described’ by reference to a specific definition given in the body of the specification, there is no such specific or clear definition of what further limitations should be given to the internal coating of the metal container. It is therefore reasonable to adopt the aforementioned construction given by the examiner in the examination reports.
38. Given this construction of the term ‘as described herein’, the deletion of this term from independent claims 1 and 2 would not change the scope of these claims and hence the amended claims would not, as a result of the amendment, extend beyond the disclosure of the specification as filed.
39. I am also satisfied that the deletion of the words “such that the pressure within the container is at least a predetermined limit at a relevant temperature” is also an allowable amendment as all it does is delete a reference to an unspecified pressure and an unspecified temperature. It is also clear from the description that the pressure to which the container is pressurised and at what temperature are not critical to the invention and can vary. Hence the deletion of the reference to the pressure and temperature would not make the claims extend beyond the disclosure of the specification as filed.
40. In summary, I am satisfied that the proposed amendments to the claims are allowable amendments under sub-section 102(1).
Claim Construction
41. While claim 1 specifically defines the concentration of free SO₂ as greater than 35ppm, claim 2 merely defines the concentration of free SO₂ as greater than “a limit that is generally regarded as acceptable from the viewpoints of container corrosion and wine tainting”.
42. Hence it is important to construe what is the scope of the term “a limit that is generally regarded as acceptable from the viewpoints of container corrosion and wine tainting”.
43. The body of the specification provides some guidance in this regard.
“The upper limit for free SO₂ that is generally regarded as acceptable from the viewpoints of container corrosion and wine tainting will vary from container to container and is a function of a number of factors including, by way of example, the metals from which the containers are formed and the compositions of the internal coatings.
In general terms, the upper limit for free SO₂ to avoid corrosion and tainting of the wine is thought to be around 50 ppm, more preferably 35 ppm, for metallic containers, such as aluminium containers and steel containers. More specifically, Metal Box plc and others in the 1960's and 1970's showed that steel cans did not corrode appreciably when containing wine having upper limits of free SO₂ of between 25 and 50 ppm. In particular, as a consequence of this work, it was thought that 25 ppm is the upper limit for SO₂ for aluminium cans”.[15]
[15] Specification page 6, line 26 – page 7, line 6
44. Hence according to the description, the acceptable upper limit for free SO₂ in the product to be packaged could vary depending on the metal used for making the container and the composition of the internal coating and that generally for the commonly used metals like steel and aluminium, the upper limit should be no more than 50ppm, although it is preferred to limit it to about 35ppm.
45. It is therefore clear that claim 2 rather than specifying a specific value for the acceptable upper limit for free SO₂ as in claim 1, is seeking to define the upper level of free SO₂ as one which can vary based on various factors such as the material of the can and the composition of the internal lining, but which according to the specification would generally be in the range of 35-50ppm. This is the construction that I will therefore adopt.
Do the proposed amendments and submissions overcome the examiner’s objections?
46. I will now look at each of the examiner’s objections and consider whether these objections have been overcome by the proposed amendments and the submissions in response.
SECTION 40
1. Claims 1-13 do not comply with Subsection 40(3A) of the Patents Act because both
independent claims 1-2, and consequently their dependent claims, recite "filling a metal
container, as described herein" and therefore rely on references to descriptions or drawings
which are not absolutely necessary to define the invention.
47. Objection 1 concerns the use of the term ‘as described herein’ in the claims. This term has now been removed from the claims by amendment. It follows that this objection has been overcome by the proposed amendments.
2. Claims 1-2, and their dependent claims, are not clear because they make reference within
their definition to the pressure being within a 'pre-determined limit at a relevant temperature',
however there is no disclosure of how these limits are determined or typical pressure limits
within the specification as a whole.
Furthermore, it is considered that as a result of this definition, the complete specification does
not provide a clear enough and complete enough disclosure of the invention defined by claims
1-13, because it lacks sufficient information to enable the person skilled in the art to perform
the invention over the whole scope of the claims without undue burden or the need for further invention. There is no disclosure within the complete specification of typical pressure limits within the container or otherwise an appropriate means for determining these pressure limits.
48. Objection 2 concerns the inclusion of the requirement of the pressure being within a 'pre-determined limit at a relevant temperature'. As this requirement has been removed in the amended independent claims, it follows that this objection is now moot.
3. The invention defined by claims 1, 5-13 (when read in light of claim 1) lacks support because
the body of the specification does not provide sufficient information to enable the skilled
addressee to perform the invention over the full scope of the claims.
This is because there is no indication from the definition of the claim 1 how the invention solves the problem of storing wine with a concentration of free SO₂ that is greater than 35ppm as it includes only the steps that have been outlined in the prior art (see column 2 lines 6-21 of the current application) which is only capable of storing wine with a concentration below 35ppm. It is understood, from reading the specification, that a treatment step is required as outlined in page 7 (of the current application).
49. My understanding of this objection is that the feature of treating the wine after the container has been filled and sealed in order to reduce the concentration of free SO₂ to be below the limit generally regarded as acceptable from the viewpoints of container corrosion and wine tainting is essential to the invention and by not including this feature the claim is not supported by the invention described.
The Law in relation to Support
50. Subsection 40(3) of the Act requires that the claim or claims must be supported by matter disclosed in the specification.
51. Burley J explored the requirement of support in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck Sharp) at [546]- [547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed”.
Consideration
52. The applicant has submitted that the claims are supported, and their response is as follows:
“With regard to item 3 of the report, we submit that the specification provides sufficient information to allow the skilled person to perform the invention over the full scope of the claims. In this regard, page 4, line 23 to page 5, line 2 of the specification explains that the applicant has found that it is possible to package wine that has concentrations of free SO₂ and other constituents that is above accepted industry maximum concentrations for these constituents. The specification then explains that there are two approaches found by the applicant. One approach, as defined in claim 1, is to use metallic cans that have “an internal coating that inhibits reactions between the metal of the container and free SO₂ in the wine that result in container corrosion and wine tainting”. The other approach, as defined in claim 2, is to perform a method step of “treating the wine after the container has been filled and sealed and reducing the concentration of free SO₂ to be below a limit generally regarded as acceptable from the viewpoints of container corrosion and wine tainting”. The specification discusses both approaches in some detail and includes Examples that illustrate both approaches. In the circumstances, we submit that the skilled person, on reading the specification, would be able to perform the invention across the scope of the claims without undue experimentation”.[16]
[16] Applicant’s submissions of 30 April 2021
53. The thrust of the applicant’s submission is that the specification has described embodiments in which the additional treatment step is not required and therefore as the invention defined in claim 1 is directed to such embodiments, it does not lack support.
54. I am inclined to agree with the applicant. As I have discussed earlier, the specification notes that the results of the experiments suggest that there is a chemical reaction between the internal coating and the SO₂ in the wine that leads to a decrease in the level of free SO₂.
“In addition, the decrease in SO₂ from 60 ppm down to 30 ppm indicates that there was some reaction occurring that reduced the concentration of SO₂. Thus, the results indicate that the coating formed a chemical and a physical barrier to SO₂ contacting the aluminium can”.
“These results are all very similar to the result of Experiment 2, with no consistent differences between the scratched and un-scratched cans having the coating. This suggests the coating does not merely act as a physical barrier between the aluminium can and the wine, but also by possibly directly reacting with the SO₂ in the wine, possibly absorbing or adsorbing with it”.
55. It is therefore clear that when the internal coating is an amine epoxy coating as in the described experiments, the internal coating itself inherently provides the treatment step that the examiner asserts is an essential step of the claimed invention. No additional treatment step is required after filling and sealing of the container.
56. I am therefore satisfied that claim 1 or its dependent claims do not lack support because of the lack of a discrete treatment step. This objection of the examiner cannot therefore be maintained.
NOVELTY AND INVENTIVE STEP
4. Claims 1-3 & 6-12 are not novel and lack an inventive step in light of the prior art documents
D1-D5 as cited in the ISR completed 29 June 2006 for ancestor WO 2006/105610. Note, the claim set for the current application and the national phase entry of this PCT application are
identical.
While the objection regarding these documents was not made under Australia law, I agree with the reasons given in that report and consider that they support a corresponding objection against the Australian claims.
Novelty
57. The corresponding Novelty objections in the IPRP2 reads as follows:
Dl: JP 2-076565 A
D2: JP 62-014777 A
D3: AU 2004210603 Al
D4: EP 1264869 A2
D5: WO 2003/029089 Al
D6: JP 07-232737 ANovelty (N): Claims 1, 2, 6, 7, 9-12 (NO)
The invention of claim l relates to a process of packaging wine in metallic containers having an internal coating wherein prepared wine has a concentration of free SO₂, greater than 35 ppm. Independent claim 2 relates to a process of packaging wine in a metallic container having an internal coating with steps (a) to (d). It is noted that Claim 2 is not limited by (i) the functional properties of the coating, (ii) the concentration of the free SO₂, nor (iii) what treatment to the wine as part of step ( d) is undertaken as it is not specifically defined.
The document D2, JP 62-014777, discloses packaging of wine in aluminium cans having a protective coating wherein the concentration of free SO₂ is greater than 35 ppm. The protective coating is made of a conventionally known coating composition which resists corrosion to the metal can by the sulphurous acid. The concentration of free SO₂ is supported in document D2 by the wine containing 300ppm of a sulfite (eg sodium sulphate). Sulphur dioxide exists in wine in both free and bound forms. The free form consists of molecular or un-ionised sulphur dioxide, the bisulphite anion and the sulphite anion. D2 uses sodium sulphite which is a salt of sulphur dioxide, and when added to juice or wine it liberates approximately 50 per cent of its weight of sulphur dioxide. If the wine contains 300ppm of sulfite then it is inherently expected to have about 150 ppm of free sulphur dioxide. Therefore the wine in the can of D2 has a free sulphur dioxide content which is greater than 35ppm as defined in the present claims, and hence the invention of claim 1 is not novel.
Document D2 also discloses the step of gas flushing the head space with an inert gas such as N2 and CO2.
Document D3 discloses the process of packaging wine in aluminium cans having an internal coating and that an inert gas such as N2 or CO2 is added during the canning operation. The addition of inert gas inherently discloses that the can has increased mechanical stiffness. As noted above, there are no specific features defining the treating step and no features defining how the reduction of the concentration of free SO₂ is achieved. The mere storage of the wine for a period of time will "treat" the wine (ie step (d)), and reduce the concentration free SO₂ (known as ageing of wine). Hence the invention of claim 2 is not novel in light of these documents.
Therefore the invention as defined in claims 1, 2, 6, 7 and 9-12 is not novel in light of these documents D2 & D3.
D2: JP 62-014777 A
58. The applicant’s submissions in response to the objection based on D2 is a single sentence that reads as follows:
“D2 is a general teaching that does not disclose or make obvious the combination of features defined in amended claims 1 and 2”.
59. This submission is hardly helpful as it does not address the examiner’s detailed reasoning or the assumptions that the examiner has used in arriving at the level of free SO₂ of the wine of D2.
60. D2 is directed to solving the same problem as the present invention. Passages from the machine translation of this document that was relied upon by the examiner are reproduced below (with my added emphasis).
Conventionally, as canned beverages, canned beverages filled with various contents such as carbonated beverages, fruit juice beverages coffee, beer, and Japanese liquor have been supplied to the market, but in recent years, conventional fruit juice beverages such as wine cocktails and wine coolers have been supplied. Canned alcoholic beverages with wine, such as soft drinks plus wine, are also available on the market. However, in wine, a trace amount of sulfites, such as potassium metabisulfite and sodium sulfite, are usually added as sulfite generating components in order to prevent oxidation of the contents, stop fermentation, and prevent the growth of various germs. Therefore, there is no particular problem when such wine or a beverage based on this is packed in a glass bottle or the like, but in the case of canned wine, a small amount of sulfurous acid in the contents passes through the inner protective coating film when stored. However, when it reaches the metal surface, it corrodes the part, and in a remarkable case, it causes pitting corrosion and the like, which has a problem of deteriorating the quality of the can. (my emphasis)
It is an object of the present invention to provide a canned product having excellent container performance and a method for producing the same, which does not cause corrosion, pitting or the like. Another object of the present invention is to provide a canned product having excellent quality retention without changing the flavor and hue of the contents even when the alcoholic beverage is canned and stored for a long period of time, and a method for producing the same.
In the present invention, these problems are solved by adding ascorbic acid, erythorbic acid, or a water-soluble salt thereof, but when the amount of the sulfurous acid-generating component is extremely large, it is necessary to increase the amount of addition, which is cost-effective. However, it is also not preferable in that it changes the flavor of the contents. The present invention is particularly suitable for alcoholic beverages containing sulfites in the range of 300 ppm or less. As a canning container for sealing and filling such an alcoholic beverage, an aluminium can having a protective coating on the inner surface side of the can, which has been conventionally used, is the most common. Cans can also be used, and as the can lid, aluminium, wiping, or TFS cans having a protective coating on the inner surface side can be used. The canned food of the present invention is not limited to a container made of metal for both the body and lid of the canned container, but is a container for sealing and filling an alcoholic beverage containing wine, such as the body, bottom, and lid of the container. A part of the container includes a canned container using a metal member such as aluminium, steel, and a wipe, for example, a container having a plastic body and a metal can lid, and especially a can material and a protective cover such as an easy open can lid. The effect is exhibited in a sealed container using a metal member such that the FM layer has undergone processing deformation.
Conventionally known can inner surface coating compositions as a protective coating layer for a can body and a can lid made of a metal member of such a can container, for example, an epoxy / phenol resin coating composition, an epoxy / urea resin coating composition, vinylchloride. Epoxy resin-based coating compositions, vinyl chloride resin-based organosol coating compositions, etc. can be used, and it is desirable to select and use the optimum one so as to maintain corrosion resistance and not affect the flavor properties of the contents. When the alcoholic beverage containing wine is filled in such a canned container and stored, sulfite based on a trace amount of sulfite in the beverage passes through the inner coating surface of the can or the defective portion of the coating film and causes corrosion of the metal can material, especially easy.
Ascorbic acid, erythorbic acid, or their water-soluble hydrochloric acid is extremely effective against the problem of canning beverages using sulfurous acid-containing wine. Generally, it is known that such a component has an antioxidant effect and is added to foods to prevent oxidation and alteration of foods in the presence of oxygen, has a large headspace, and replaces air. It is also known that it has the effect of preventing corrosion due to oxygen in the residual air in canned foods that cannot be sufficiently performed, but it also has a significant effect on
preventing corrosion of canned foods based on trace sulfite, and as a result, the contents. It is not known to be effective for flavor retention
61. It is clear from the above passages that D2 is directed to solving the same problem as the present invention, namely can metal corrosion and wine tainting. The solution provided is to add an optimum amount of ascorbic acid or erythorbic acid to the wine before being packaged and sealed in the can. The examiner is of the view that as sodium sulphite when added to juice or wine liberates approximately 50 per cent of its weight of sulphur dioxide, if the wine contains 300ppm of sulfite as in D2, then the wine will inherently end up with around 150 ppm of free SO₂ at the time of packaging in the container.
62. As the applicant has not contested this reasoning of the examiner and as I have no other reason to doubt the examiner’s inference that the wine of D2 will inherently have free SO₂ greater than 35ppm, I am satisfied that this feature is disclosed by D2.
63. As all of the features of claim 1 are disclosed, it follows that claim 1 lacks novelty over D2. It is also clear that the additional features of dependent claims 6 and 9-12 are disclosed by D2 and therefore these claims are also not novel over D2.
D3: AU 2004210603 Al
64. D3 in the name of Barokes Pty Ltd relates to an improvement to the Barokes patent AU 2002304976 which I have referred to earlier as being an admitted prior art in the present application. The improvement relates to modifying the composition of the atmosphere above the wine in the can such that the level of CO₂ is below 5% w/w. This is done in order to avoid the problem of fizz and bubbles when the wine in the can is poured into a glass. The parameters of the wine that is packaged in the container is generally the same as their earlier patent, in that the quantity of free SO₂ is controlled to be below 35ppm.
65. The examiner’s view is that the mere storage of the wine will reduce the concentration of free SO₂ over a period of time and hence the treatment step is inherently disclosed in D3, which therefore anticipates claim 2.
66. The applicant has not addressed D3 in their submissions. While it could be argued that this could be taken as an admission that they agree with the examiner’s objection, I am not convinced that the examiner’s objection can be maintained as I will explain below.
67. D3’s teaching is that the wine to be packaged in the container should have free SO₂ levels below 35ppm, which according to the specification is the level that is considered acceptable in terms of corrosion prevention and wine tainting. Claim 2 clearly requires that the wine at the time of packaging in the container has a concentration of free SO₂ that is greater than a limit that is generally regarded as acceptable from the viewpoints of container corrosion and wine tainting, which as mentioned earlier is preferably 35ppm. Clearly this feature is not disclosed in D3. It follows that claim 2 does not lack novelty over D3.
Inventive Step
68. The corresponding inventive objection in the IPRP2 reads as follows:
Document Dl discloses a process of packaging wine wherein the wine has a concentration of free SO₂ to be below 50 ppm (ie greater than 35ppm) at canning (ie filling). While D1 may not disclose the use of an internal coating it is clearly considered that the addition of this feature lacks an inventive step. The use of an internal coating as a protective coating between the wall of the can and the contents of the can to inhibit any reactions is well known in the packaging art. This observation is supported by the statements provided in the present specification on page 4, lines 6 to 10 and 12 to 21. For example, at lines 5 to 10 it states "In recent years it has become common to coat the inside of beverage cans with an amine epoxy coating which is sprayed onto the interior of the can during can making. The particular coating used by the applicant is manufactured by Valspar Corporation and marketed under the trade mark Ecodex".
Hence the invention of claims 1 and 2 lacks an inventive step over document D 1.
69. The applicant’s submissions regarding this objection is as follows:
The clear teaching of D1 is to use low concentrations of free SO₂. The invention teaches that this is not necessary with the appropriate selection of an internal coating of a metallic container or a post-filling treatment. There is no basis to conclude that amended claims 1 and 2 lack novelty and inventive step on this basis.
D1: JP 2-076565 A
70. The English abstract of D1 as obtained from Espacenet reads as follows:
PURPOSE: To obtain canned wine without causing can corrosion and flavor deterioration while containing sulfurous (sic) acid necessary for wine aging by reducing the concentration of free sulfur (sic) dioxide in wine packing so as to fall within a specified range.
CONSTITUTION: When a can is to be packed with wine by a conventional method, the concentration of the free sulfur (sic) dioxide in the wine is reduced to <=50ppm, esp. <=30ppm.
71. As submitted by the applicant the teaching of D1 is to use low concentrations of SO₂, namely below 50ppm and preferably below 35ppm in order to avoid corrosion and wine tainting. The examiner’s contention is that as D1 contemplates free SO₂ levels up to 50ppm, if the invention D2 were to be performed with free SO₂ in the range of 36-50ppm it would anticipate the claimed invention. While I accept that this would be true if one were to give a literal interpretation to the disclosure of D1, however in my view, this would not be the proper interpretation that a skilled addressee would give to the disclosure of D1. As noted by the applicant, the clear teaching of D1 is to adjust the free SO₂ levels of the wine to be canned to be below the generally accepted upper limit of free SO₂ to avoid corrosion and wine tainting and that this can vary between 35-50ppm depending on the metal of the container and the composition of the internal coating. Hence the teaching in D1 is no different to the teaching in the Barokes patent in that the free SO₂ limit should be chosen to be a value that is appropriate for the material of the container. The teaching in D1 is to keep the free SO₂ low, preferably to a value below 30ppm. I am therefore not satisfied that the feature of free SO₂ being greater than the limit generally considered acceptable from the point of corrosion and wine tainting or even more specifically greater than 35 ppm is clearly taught in D1. Even if the addition of an internal coating was common general knowledge in the art as asserted by the examiner, the claimed invention would not be obvious over the teaching of D1.
72. This objection cannot therefore be maintained.
Claim 5:
73. In relation to claim 5 which specifically defines the internal coating is an amine epoxy coating, the examiner has stated that “the characteristics and properties of the amine epoxy coating are well known and that its selection for its known properties does not involve an inventive step over the above documents D1 to D3”.
74. The applicant has not addressed this claim in their submissions.
75. I have found that claim 1 is not novel over D2 and as it is directed to solving the same problem as the claimed invention, it also follows that the claim 1 also lacks an inventive step over D2.
76. D2 as noted earlier discloses that the internal coating can be of epoxy resin. The specification admits that it was common to package beverages in metal cans lined with an amine epoxy coating. Therefore, while D2 does not specifically mention an amine epoxy internal coating, the use of the known amine epoxy coating in the teaching of D2 would be no more than an obvious design choice. I agree with the examiner that claim 5 lacks an inventive step over D2 and the common general knowledge in the art.
Claims 2-4
77. Although I have found that claim 2 does not lack novelty over D3, I am of the view that claim 2 lacks an inventive step over D2 and the common general knowledge in the art.
78. As I have noted earlier, the treatment step (d) is no more than an inherent outcome of the use of the amine epoxy internal coating. I have found that claim 5 which defines the coating as an amine epoxy coating lacks an inventive step over D2 and the common general knowledge. It therefore follows that when D2 is implemented with an amine epoxy coating, it would inherently lead to a reduction in free SO₂ from the initial level above the acceptable limit to a level below the acceptable limit as a consequence of the reaction of the amine epoxy coating with the free SO₂. Claim 2 therefore lacks an inventive step in the light of D2 and the common general knowledge in the art.
79. Dependent claims 3 and 4 are also a consequence of the use of an amine epoxy coating. It follows that these claims also lack an inventive step over D2.
Claims 7, 8
80. Regarding the feature of gas flushing with a gas containing oxygen, the examiner is of the view that the addition of oxygen “is merely a workshop improvement or relates to an arrangement that is merely a matter of design choice when the general knowledge about the state of the art is used and therefore cannot contribute to providing a patentable inventive step”. The applicant has not responded to this assertion of the examiner, and I have no reason to come to a different view. Claims 7 and 8 lack an inventive step. I would also note that while the addition of oxygen may reduce the level of free SO₂ by oxidising it to SO4, according to the specification this would lead to increased levels of hydrogen sulphide making the wine commercially unacceptable (see fourth experiment). Hence the purpose of these dependent claims is not clear.
Claim 13
81. In relation to dependent claim 13, the examiner has relied on document D4 (EP 1264869 A2) which discloses the use of a resin composition (e.g. epoxy acrylic copolymer) to coat the interior surface of a variety of metal container including steel containers and that such polymer coated containers can eliminate corrosion of the container by sulphurous acid gas contained in wine beverages. There is therefore clear motivation to incorporate the teachings of D4 with that of D2. The applicant has not disputed the views of the examiner. I am satisfied that claim 13 also lacks an inventive step over the combined disclosures of D2 and D4.
OTHER OBSERVATIONS
Support
82. Although I have found that the examiner’s objection for lack of support cannot be maintained, I am of the view that both independent claims 1 and 2 may lack support for different reasons that I will explain below. I do however note that I am not making any formal finding in this regard.
What is the technical contribution to the art?
83. In line with the test for support as approved by Burley J in Merck Sharp, I first need to determine what is the technical contribution to the art.
84. As discussed earlier, the specification acknowledges that packing wine in metal containers with an internal corrosion resistant coating is known from AU 2002304976, but that it requires that the wine that is to be packaged should have less than 35 ppm of free SO₂. The specification then notes that the inventors have discovered that metal cans coated with amine epoxy coating can be used for packing wines which have free SO₂ levels greater than 35ppm.
“The applicant has found, surprisingly, that it is possible to package wine that has concentrations of any one of the constituents free SO₂, chlorides, and sulfates that is above the above-mentioned maximum concentrations in metallic containers that have the above-mentioned amine apoxy (sic) coating on an internal surface of the containers without creating issues with respect to corrosion of the containers and tainting of wine in the containers.
More particularly, the applicant has found, surprisingly, that it is possible to package wine that has concentrations of free SO₂ in wine that are above the limits that are generally regarded as acceptable from the viewpoints of corrosion and wine tainting in metallic containers that have the above-mentioned particular coating”.
The applicant has determined that the coating is an inhibitor of the Al/SO₂ reaction discussed above and thereby minimizes the reaction”.[17]
[17] Specification page 4, line 23 – page 5, line 6
85. All of the experiments carried out were with metal containers having an internal coating of amine epoxy manufactured by Valspar Corporation and marketed under the trademark Ecodex. As I noted earlier, the specification notes the dramatic positive effect of this amine epoxy coating based on these experiments.
86. It would therefore appear that the use of the amine epoxy coating is at the heart of the invention. This is also the feature that distinguishes the described invention from the admitted prior art of AU 2002304976. Although the specification does mention that the internal coating “may be any suitable coating that inhibits and thereby minimises reactions between free SO₂ and the metal of the container” and also specifically mentions polyethylene terephthalate (PET) or other polyesters, the only coating that has been described in detail and would seem to be enabled through the experiments is the amine epoxy coating. Furthermore, it is also clear from prior art AU 2002304976 which uses epoxy resins as the internal coating but still requires the free SO₂ content of the wine to be below 35ppm to prevent corrosion and wine tainting, that not every epoxy resin or other polymer will allow packaging of wine with free SO₂ above 35ppm. Hence without further details of experiments carried out with PET or other coating materials or further guidance as to how to choose other suitable polymers that will allow wines with greater than 35ppm to be packaged in metal containers without resulting in corrosion and wine tainting, there would appear to be no enablement of internal material coatings other than amine epoxy.
87. Therefore in my view, it would seem that the technical contribution to the art of the invention described is the use of an amine epoxy for the internal coating of metal containers in order to package wine that can have free SO₂ levels higher than what was generally considered to be acceptable in terms of corrosion prevention and wine tainting.
Are the claims supported?
88. Claim 1 as proposed to be amended, defines that the metal container has an internal coating that inhibits reactions between the metal of the container and free SO₂ in the wine that result in container corrosion and wine tainting. Claim 2 as proposed to be amended defines that the metal container has an internal coating but not the further limitation of inhibiting reaction between the metal and free SO₂.
89. As discussed above, it would seem from the body of the specification that the use of the amine epoxy coating is the technical contribution to the art. However, neither claim 1 nor claim 2, include this limitation and as a consequence, they include within their scope internal coatings other than amine epoxy coatings. However, as I have noted earlier, the only internal coating that appears to have been enabled is the amine epoxy coating. Although the specification mentions that PET or any suitable material polymer that inhibits reactions between the metal of the container and free SO₂ in the wine can be used, no other polymer has been enabled. Furthermore, as there are thousands of polymers, it would appear not to be a matter of routine experimentation for a skilled addressee to find out which polymers would work with wines having greater than 35ppm free SO₂ and which polymers would not. I am therefore of the view that amended claims 1 and 2 may not be supported by matter disclosed in the specification as they are not enabled across their full breadth.
90. Apart from dependent claim 5, none of the other dependents claims 3-13 includes the limitation of the coating being an amine epoxy coating. Dependent claims 3, 4 and 6-13 would also therefore appear to lack support. Again, I stress that I am not making any formal determinations in this regard with respect to any of the claims lacking support on this basis.
Inventive Step
91. I also note that it would appear that the search carried out during search and examination of the ‘first application’ did not focus much on the amine epoxy material of the internal coating. While this is understandable given that neither independent claim includes this limitation, as noted above, it appears that this specific coating is the technical contribution to the art and which should therefore also be reflected in the independent claims. A quick search of a patent database revealed that metal cans with an amine epoxy internal coating were known to be used for packaging alcoholic beverages such as beer, see for example WO 03/076530 (Valspar Sourcing, Inc) and US4283428 (Birkmeyer). In my view, it would have been a matter of routine for the person skilled in the art to try such containers for the packaging of other alcoholic beverages such as wine and in doing so would have experimented with different levels of free SO₂ in the wine. The claimed invention would therefore prima facie lack an inventive step over these documents. The existence of these documents also suggests that further searching may be warranted. However, I stress that I am not making any formal determinations with regard to lack of inventive step of any of the claims on this basis.
CONCLUSION
92. Objections 1, 2 and 3 of the examination report have been overcome by amendment and/or submissions in rebuttal.
93. I have found that claims 1, 6 & 9-12 lack novelty and that all the claims lack an inventive step.
94. While it is open to me to refuse the application on the basis that a ground of objection to the grant of the patent still exists, the fact that the applicant has finally decided to respond to the examination reports and also propose amendments that have overcome at least some of the objections, suggests that they may be willing to make an earnest attempt to get the application in order for acceptance.
95. In the circumstances, I give the applicant a period of 3 months from the date of this decision to propose suitable amendments that would overcome the adverse findings. If suitable amendments are not filed, the application will be refused.
96. Any amendments that are proposed should also address my new lack of support and lack of inventive step observations that I have explained under the heading of “Other Observations”.
R Subbarayan
Delegate of the Commissioner of Patents
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