Societe Des Produits Nestle S.A. v Cadbury Holdings Limited
[2011] APO 35
•31 May 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Societe des Produits Nestle S.A v Cadbury Holdings Limited [2011] APO 35
Patent Application: 2001295187
Title:Confectionary Product having an enhanced cooling effect
Patent Applicant: Societe des Produits Nestle S.A.
Opponent : Cadbury Holdings Limited
Delegate: Karen Ayers
Decision Date: 31 May 2011
Catchwords: PATENTS – final decision – amendments overcome by amendment – application directed to sealing
Representation: Patent applicant: Shelston IP, Sydney
Opponent :Griffith Hack, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2001295187
Title:Confectionary Product having an enhanced cooling effect
Patent Applicant: Societe des Produits Nestle S.A.
Opponent : Cadbury Holdings Limited
Date of Decision: 31 May 2011
DECISION
I find that the amendments overcome the deficiencies found in the interim decision and the application can proceed to sealing. I direct this to occur within 1 month of the date of this decision.
REASONS FOR DECISION
Background
Patent Application 2001295187 was filed in the name of Societe Des Produits Nestle S.A (Nestle) on 2 April 2001 under the provisions of the PCT claiming priority from an EP application (00201596.4) filed on 3 May 2000. The Australian application entered national phase on 6 November 2002 and was published accepted on 7 December 2006.
On 7 March 2007, a Notice of Opposition was filed by Cadbury Holdings Limited (Cadbury) who served their Statement of Grounds and Particulars on 7 June 2007. Evidence stages were completed by 25 November 2009 and a hearing was held in Canberra on 24 March 2010. The applicant was represented by Mr Paul Harrison, patent attorney from Shelston IP, Sydney and the opponent was represented by Mr Ben Fitzpatrick of counsel instructed by Griffith Hack patent attorneys, Melbourne.
A decision (the ‘interim’ decision) was issued on 24 June 2010 (Societe des Produits Nestle SA v Cadbury HoldingsLimited [2010] APO 9. This decision found that the intended invention resides in a confectionary product containing a hard casing surrounding a powdered monosaccharide polyol where the casing was configured for “early release” of the powdered centre such that it would progressively release at least part of the filling within a few seconds in the mouth while leaving the casing substantially intact.
However, it concluded that none of the claims properly construed were limited to this concept. This meant that claims 1-8, 9-12 (in part), 13-17. 18-19 (in part), 20-22 were not novel in light of a prior art document known as “Kurata”. One of the options defined in claims 9-12, 18 and 19 defined a casing which contains a hole of a size that allows the filling to exit the casing when the confectionary is placed in the mouth. This inherently defines the intended invention (an early release casing) which has not been disclosed by Kurata and hence these claims (in part) are all novel with regard to that option.
In the interim decision, I considered that there was patentable subject matter in the patent application and allowed the applicant 60 days in which to propose suitable amendment to overcome the above problems. The applicant proposed amendments on 16 August 2010. These were subsequently allowed on 28 March 2011. I note that the opponent did not provide any written submissions to the Commissioner concerning the allowability of the amendments nor did they oppose the amendments.
After the amendments were allowed, the matter referred back to me for final determination. Both parties were invited to provide written submissions or to advise whether they wished to be heard on the final determination. Neither party requested a hearing but the opponent provided a number of written submissions to be considered in the final determination.
Post interim decision amendment
There are 22 claims in the claim set as amended. The key claim is claim 1 which defines as follows
“A confectionary product comprising a casing of a protective confectionary material and a filling included within the casing, with the filling comprising a major amount of a monosaccharide polyol in a crystalline anhydrous powder form chosen from among polyols having a cooling effect, wherein the casing is configured with at least one portion to permit early release of the powdered filling after a few seconds in the mouth and without having to wait for a substantial portion of the shell to dissolve or without having to chew or bite the casing”.
As the opponent concedes, this wording of the amended claims mirrors the findings in the decision at paragraph 34. The same wording is repeated in the other main independent claims (claims 18 and 20).
Do these amendments overcome the interim findings?
In their submissions, the opponent has argued that the patent claims should be further limited to an option where the confectionary casing contains a hole of a size that allows the filling to exit the casing when the confectionary is in placed in the mouth. This option was defined in accepted claims 9-12, 18 and 19. In my interim decision, I found this was an embodiment of the invention rather than the invention itself. It is not open at this stage of proceedings for the opponent to argue that the claims should be narrowed further. If the opponent disagreed with the interim findings, they needed to have appealed the decision to the Federal Court.
As noted by Merkel J in Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 49 (6 February 2002):
“In my view it is at least implicit, if not explicit, in the authorities to which I have referred that, to the extent that those issues have been determined by aninterim decision in a manner that it is unfavourable to the interests of either party, it is incumbent upon that party, if it so desires, to appeal the decision. If it fails to do so then it is not open to that party to appeal, whether directly or indirectly, against the interim decision of the Commissioner out of time without leave of the Court.”
The opponent also suggested that the phrase “or without having to chew or bite the casing” is merely an option and that the claims still allow an embodiment in which the casing can be chewed “to permit early release of the powdered filling after a few seconds in the mouth”. According to the opponent, this means that the claims do not overcome the deficiencies noted in the original decision.
The opponent however appears to misconstrued the claim. The words “without having” provide a negative context to what follows in the claim. In that context, the conjunction “or” is used to negate two things at the one time. An every day example of this type of construct would be “I don’t have milk or sugar in my coffee”. This means I don’t have either option not that they are alternatives (as the opponent has suggested). In the claim, the phrase without having to wait for a substantial portion of the shell to dissolve or without having to chew or bite the casing” means that both conditions have to be satisfied for the claims to be infringed. Contrary to the opponent submissions, the options are not alternatives and the amendments therefore overcome the deficiencies noted in the interim decision.
The opponent has also alleged a number of clarity and fair basis problems with the claims as amended. However, while the terms the opponents referred to in their submissions may be relative, I do not believe that the skilled worker would have any difficulty in understanding the terms or in construing the claims.
In my view, the amendments have overcome the deficiencies found in the interim decision and the application can proceed to sealing. I direct this to occur within 1 month of the date of this decision.
Karen Ayers
Delegate of the Commissioner of Patents
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