Societe Des Produits Nestle S.A. v Cadbury Holdings Limited
[2010] APO 9
•24 June 2010
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2001295187 in the name of Societe Des Produits Nestle S.A.
Title: Confectionary Product having an enhanced cooling effect
Action: Opposition under section 59 by Cadbury Holdings Limited
Decision: Issued 24 June 2010.
Abstract
Opposition partly successful.
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. However none of the claims (properly construed) were limited to this concept and hence all claims (at least in part) were found to lack novelty in light of Kurata.
Certain claims included an option where the casing contains a hole of a size that allows the filling to exit the casing when the confectionary is placed in the mouth. This option was found to inherently encompass the intended invention (an early release casing). As this had not been disclosed by Kurata, these parts of the claims were novel.
None of the claims failed for want of inventive step, lack of fair basis, clarity or full description or manner of manufacture.
The specification was therefore found to have patentable subject matter and the applicant was allowed 60 days in which to propose suitable amendment to overcome the above problems.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 2001295187 by Societe Des Produits Nestle S.A. and Opposition under section 59 by Cadbury Holdings Limited
BACKGROUND
1. 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.
2. 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.
DECISION
Specification
3. The specification as filed concerned a sugar-free confectionary product. According to the specification, it was known to use polyhydric alcohols (or polyols) as sugar substitutes in confectionary. These compounds have the advantages of containing less calories than sugar and causing less tooth decay. A few polyols (e.g. xylitol or erythritol) were also known to have refreshing (or cooling properties) due to their high negative heat of solution.
4. Xylitol had previously been used in candy shells. However this type of confectionary tended to clump and lose its refreshing power over time because the polyol is thermodynamically unstable and hygroscopic. The prior art overcame this difficulty by incorporating a fatty substance (such as cocoa butter) into the shell. While this stabilised the confectionary, it also reduced the cooling effect of xylitol and the “freshness” of prior art confectionary became limited to a “relatively cool, solid taste of the coating which melts slowly in the mouth”.[1]
[1] See accepted specification page 2, lines 12-17
5. The invention described in the current specification is said to overcome these disadvantages by having a powdered anhydrous crystalline form of the polyol incorporated into the core of the confectionary. A hard casing (shell) protects the polyol from the environment preserving its cooling efficiency over time. Surprisingly, it was found that that when the crystalline powder filling is released from the protective casing (either at chewing or after the casing has melted sufficiently) the powder had a unique “liquid and fresh mouthfeel” which differentiated it from the solid taste of polyols in the prior art. [2]
[2] Accepted specification page 3, lines 4-16
6. According to the specification, when the crystalline filling contacts saliva in the mouth, the thermodynamic reaction of the anhydride polyol with the saliva occurs instantaneously with solubility conferring the impression that the powdered filling is a fresh “liquid”.[3] the preferred polyols are xylitol, sorbitol and erythritol[4]. The fresh “liquid” effect was dependent on the free flowing properties of the powder when leaving the casing. The quicker the powder can discharge in the mouth (and come into contact with the saliva), the greater the “exploding” fresh liquid effect is perceived. If the polyol is agglomerated then the release is delayed conferring a more “solid” taste of the prior art.
[3] Accepted specification page 3, lines 28-32
[4] Accepted specification page 4, lines 20-22
Claims
7. The specification as accepted ends with 22 claims (including 2 omnibus claims). A complete set of the claims is attached as annex B. The 3 main independent claims (claims 1, 18 and 20) are outlined in full below:
Claim 1: 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 which enables the filling to be released out of the casing when in the mouth without having to wait for a substantial portion of the shell to dissolve or without having to chew or bite the casing.
Claim 18: 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 which comprises (a) at least one zone of reduced thickness which dissolves in the mouth before the remainder of the casing to progressively free the filling or (b) a hole of a size that allows the filling to exit the casing when the confectionary is placed in the mouth.
Claim 20: A method for providing a refreshing cooling effect in the mouth during consumption of a confectionary product, which comprises providing the confectionary product in the form of a casing of a protective confectionary material and a filling included therein, with the filling comprising a major amount of a monosaccharide polyol in a crystalline anhydrous form chosen from among polyols having a cooling effect, wherein the casing is configured with at least one portion which enables the filling to be released out of the casing when in the mouth without having to wait for a substantial portion of the shell to dissolve or without having to chew or bit (sic) the casing, and consuming the confectionary product to release the cooling effect polyol into the mouth to provide the cooling effect.
Novelty
Relevant Law
8. The question of novelty is determined under the provisions of subsection 7(1) of the Patents Act (Cth)[5]. The test for novelty has been discussed relatively recently in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (see paragraphs 311 et seq) and Bristol-Myers Squibb Company v FH Faulding & Co Limited [2000] FCA 316 (2000) 97 FCR 524. As noted in both decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries [1977] HCA 19; (1977) 137 CLR 228 at page 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid, constitute an infringement."
[5] Outlined in annex A
9. Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).
10. However, as Pfizer noted it is not sufficient for a citation to contain all the essential features of the claim, there must be “clear and unmistakable” directions to the claimed invention. In that regard, the Full Court referred to three key decisions:
(a) Canadian General Electric Co v Fada Radio Limited [1930] AC 97:
“...it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakeable directions to use it.”
(b) General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 45:
“a signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”
(c) ICI Chemicals v Lubrizol Corp [2000] FCA 1349; (2000) 106 FCR 214
‘... skilled addressees are not required to rummage through the prior patentee’s "flag locker" to find a "flag which the [prior patentee] possessed and could have planted".’
11. Lack of novelty can however be found where a feature is not explicitly mentioned but nonetheless present as an inherent feature as an inevitable result of the disclosure. As noted in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [supra]at page 486:
"if in carrying out the directions contained in a prior inventor's publication will inevitably result in something being made or done which, if the claim of the opposed specification were a claim of a valid patent, would constitute an infringement of that claim, then that claim would have been anticipated".
12. However as also observed by the same Court:
“ If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated."
13. In addition, as noted in the Pfizer decision, a citation to deprive a claim of its novelty must be the same as the claimed invention for the purposes of “practical utility”. In other words, the citation has to “enable” the skilled worker to produce the invention from the written disclosure. The basic principle is explained in Hill v Evans (1862) 4 De G F & J 288; 45 ER 1195be where the court noted
“...the antecedent statement must be such that a person of ordinary knowledge in the subject would at once perceive, understand, and be practically able to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery that affords sufficient room for another valid patent”.
What are the essential features of the independent claims?
14. The 2 key independent claims are claims 1 and 18. The opponent identified 6 essential integers in claim 1:
1.a confectionary product containing a casing of a protective confectionary material;
2.a filling included within the casing;
3.with the filling comprising a major amount of a monosaccharide polyol;
4.in a crystalline anhydrous form;
5.chosen from among polyols having a cooling effect;
6.wherein the casing is configured with at least one portion which enables the filling to be released out of the casing when in the mouth without having to wait for a substantial portion of the shell to dissolve or without having to chew or bite the casing.
15. Claim 18 has the same initial five integers as claim 1 but a different integer 6 outlined as follows:
6.wherein the casing is configured with at least one portion which comprises (a) at least one zone of reduced thickness which dissolves in the mouth before the remainder of the casing to progressively free the filling; or (b) a hole of a size that allows the filling to exit the casing when the confectionary is placed in the mouth.
Closest Prior Art
16. The closest prior art relied on by the opponent is:
Japanese patent application JP 02-222649 in the name of Kanebo Ltd and published on 5 October 1993 (exhibit RS-1). This is referred to by the parties in terms of its inventors Mr Yasuo Kurata et al (Kurata).
17. All page references in this decision relate to the translation of this document provided by the opponent as exhibit RS-1A.
18. Kurata discloses a hard coated candy with a powdered crystalline core, the main component of which was the monosaccharide polyol, sorbitol. Both parties agreed that this citation disclosed essential integers 1-5 of the claims. The key issue in dispute is whether Kurata also disclosed integer 6 of claim 1 (a casing configured with at least one portion which enables the filling to be released out of the casing when in the mouth without having to wait for a substantial portion of the shell to dissolve or without having to chew or bite).
19. The applicant argued that Kurata was primarily concerned with improving the hardness of the casing to avoid breakage of the candy. Kurata had noted that powdered sorbitol was porous and when it was used in the centre as a filling, it led a cavity which greatly diminished the strength of the hard candy. Kurata’s solution was to replace a portion of the saccharide composition of the outer hard candy layer with a sugar alcohol such as sorbitol. This solution meant that the operating temperature of the batch roller could be reduced and the candy would become less brittle. Such candies were less likely to fracture under impact during manufacture and distribution than normal hard candies. According to the applicant, if the outer casing was strong (as taught by Kurata), the consumer would then likely need to suck the candy for a significant time to effect release of the filling.
20. The applicant argued that this disclosure differed from their invention because the configured casing defined in the current claim 1 disintegrated quickly in the mouth (after a few seconds) releasing the filling (without chewing or biting into the casing) while leaving the casing substantially intact.[6]
[6] Applicant’s submissions at [47] and [48]
21. The applicant’s construction of the claim relied on a passage in the accepted specification[7] which states that the zones of reduced thickness and/or the small holes are such that
“larger passages are left after a few seconds in mouth which finally allow at least part of the filling to be progressively freed before the rest of the casing has significantly melted.” (applicant’s emphasis)
[7] Accepted specification at page 11, lines 2-7:
22. However while it might be the applicant’s intention from this passage to describe an “early release” casing, the passage doesn’t restrict the scope of the claims. As Hely noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 (2000) IPR 331:
“Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of the monopoly as fixed by a claim by adding glosses drawn from other parts of the specification. If a claim is clear, it is not to be varied, qualified or made obscure by statements found elsewhere in the document”.
23. The claims as currently drafted define a casing configured with at least one portion which enables the filling to be released without having to wait for a substantial portion of the casing to dissolve. The applicant has suggested that this means the casing has to remain substantially intact on release of the filling. However, the term “substantial” relates to the portion of the shell that has dissolved before the filling is released rather than the portion of the shell that remains afterwards. A proper construction of the claim is simply a casing where up to a large (substantial) portion could dissolve before the filling is released.
24. Kurata provided 3 figures which were cross sectional views of their hard candies:
25. Two of the three figures (figures 2 and 3) show the powdered core as “off centre” in the candy casing where the core is closer to one edge over the other. In those zones, the casing walls are clearly narrower than other parts of the coating which means that the centre would be released more quickly in those regions as the outer coating dissolves. Further, given the relative proportions of the narrow zones to the total dimensions of the casing, release of the filling would clearly occur before a large portion of the casing had dissolved.
26. Although Kurata suggested that the filling would be released when the “candy is chewed” (see page 2, lines 20-21)[8], the phrase “or without having to chew or bite the casing” in claim 1 is defined as an option in the claim rather than a limitation and hence does not distinguish the claims from Kurata.
[8] Mr Ward Evidence in Answer [28] and [29]
27. In my view, each of integers 1-6 is disclosed in Kurata. As a consequence, claim 1 (as currently drafted) is not novel in light of this citation. The citation also discloses a method of consuming this type of candy product (claim 20) and hence this claim also lacks novelty.
28. The other remaining major independent claim is claim 18. This claim includes a feature where the casing has at least one zone of reduced thickness which dissolves in the mouth before the remainder of the casing. The candies depicted in figures 2 and 3 with their off centre fillings both have zones where the casing is narrower compared with other areas of the areas. Hence Kurata also deprives this claim of its novelty.
29. Claims 2-8, 13-17, 19 introduce further integers to the main independent claims. Attached in annex C is a novelty table comparing the additional features with the citation. As the table indicates, each of the features of claims 2-8, 11-12, 13-17, 19 are disclosed in Kurata.
30. Claim 9 defines:
“Confectionary product according to any one of the preceding claims, wherein the casing comprises at least one zone of reduced thickness and/or small hole capable to form at least one passage communicating with the filling of a size effective to allow at least part of the filling to be progressively freed before the casing has significantly melted in the mouth”.
31. This claim requires the progressive release of the filling before the casing has significantly melted. The applicant argued that the term “significantly melted” meant that release occurred with the coating substantially intact. However, I believe that a more reasonable construction is that release of the filling occurs before a significant (ie large) portion of the casing dissolved. Again, this would include figures 2 and 3 of Kurata and hence this claims (and its dependent claim 10) lacks novelty in light of this document.
32. I note that claims 9-12 and 18 include an option where the casing contains a hole of a size that allows the filling to exit the casing when the confectionary is placed in the mouth. This feature would inherently allows release of the central core material immediately when in the mouth which is the applicant’s intended invention. I accept that this has not been disclosed in Kurata and hence claims which include this feature are novel at least in regard to that option.
33. Claims 21 and 22 are omnibus claims limited to the examples and drawings of the specification. The examples do not provide enough specific detail on the manufacture of the “early release” casings to limit these claims to the applicant’s intended invention. These claims therefore encompass the prior art and are not novel in light of Kurata.
34. In summary, Kurata deprives claims 1-8, 9-12 (in part), 13-17. 18-19 (in part), 20-22 of their novelty as these claims are currently drafted. Kurata does not disclose the applicant’s intended invention (the early release casing which would progressively release at least part of the filling within a few seconds in the mouth while leaving the casing substantially intact). 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. As noted above, this feature has not been disclosed by Kurata and hence these claims are all novel with regard to that part of the claims.
Inventive Step
Relevant Law
35. The question of inventive step is determined under the provisions of subsections 7(2) and 7(3) of the Patents Act (Cth)[9]. For applications filed before 1 April 2002, a claimed invention will lack an inventive step if it is obvious in the light of:
(a)common general knowledge; or
(b)common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
[9] Outlined in annex A.
36. There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
37. More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd 56 IPR 129 at 142-143 referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the `Cripps question' by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
`Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'
That approach should be accepted."
38. The High Court in Alphapharm also warned against the misuse of hindsight noting that the danger of such misuse will be “particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known”. In that regard, the court referred with approval to Lord Diplock’s comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd ([1972] RPC 346 (at 362)]:
"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."
39. While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
Application of the law
40. I note that all the novelty problems referred to above relate to how the claims are currently drafted. I accept that the applicant’s intended invention (ie the “early release” casing described above) is novel. As the claims were intended to include this concept and since both sides provided submissions on this inclusion, I will assume that the claims include the intended invention for the purposes of analysing inventive step.
41. There was no suggestion in the opponent’s evidence or submissions that Kurata was a document which the skilled worker would ascertain, understand and regard as relevant. The document was considering a completely different problem than the current specification and there was no evidence to show that it was part of a class of documents which the skilled worker would normally have regard to. Both sides therefore accepted that this document was not covered by the definition provided in section 7(3) of the Patents Act (1990) Cth and is therefore not part of prior art base for inventive step. It means that while Kurata deprives the claims of their novelty, it is not relevant for inventive step.
42. The opponent’s inventive step argument was instead based entirely on common general knowledge. The opponent argued that the following features were part of the common general knowledge in Australia at the earliest priority date of the claims (3 May 2000):
(a) centre filled hard boiled confectionary products comprise a casing (or shell) and a powdered centre made of sugar of sugar alcohols (see Krnic #1 [2.6] – [2.14]
(b) manufacturing equipment and process parameters for producing the above comprise batch rollers, centre filling pipes, rope sizers and die formers (see Krnic #1 [2.10]-[2.12], Ward#1 [27])
(c) sherbet lemons is an example of the above confectionary manufactured by the above equipment and process parameters (Krnic #1 [2.9], [3.17]).
(d) polyols such as sorbitol, xylitol and erythritol were widely used as ingredients in confectionary products in Australlia and were well known to provide a cooling effect (Krnic #1 [4.4])
(e) variations in the parameters of the manufacturing process such as the temperature of the filling, centring of the filling mass and shape of the confectionary were known to result in confectionary that had holes of areas of reduced thickness (Krnic #1 [3.7.1]-[3.7.13]).
43. According to the opponent, the skilled person who wanted to enhance the cooling effect by early release of the centre filling would have, as a matter of routine, operated the conventional manufacturing process to produce holes and/or zones of reduced thickness in the casing.
44. I accept that once the skilled worker had been directed to produce a confectionary product with a early release casing, there would be no invention is using conventional process parameters to achieve this result. Any inventive step therefore has to reside in the idea of producing an early release casing. The key question then is whether this step was obvious from the common general knowledge. In their submissions, the opponent suggested that the skilled person would want to enhance the cooling effect by early release. However in providing this specific direction to configure an early release casing, the opponent has simply engineered the solution into the problem. This is ex post facto analysis. There is actually no evidence to suggest that the skilled worker would recognise that an early release would enhance the cooling effect at the earliest priority date and be specifically motivated to produce a confectionary product which falls within the scope of the claims.
45. The opponent suggested that “lemon sherbets” confectionary could also deprive the claims of their inventive step. These lollies have been a successful commercial product from around early 1990s[10]. They contain a “fizzy” powdered centre surrounded by a hard casing. The lollies are manufactured by a crimping process which pinches the ends of the leaving small holes at each end from where the fizzy powder could be released with the casing remaining substantially intact. The opponent argued that it would be routine to apply the “lemon sherbet” manufacturing model to other powdered centres (including the powdered crystalline monosaccharide polyol).
[10] See Krnic #1 [2.9]
46. However, despite the long commercial success of the lemon sherbet confectionary, there is no evidence before me suggesting that it has been applied to any other forms of powdered centres. This means that it may not be routine to apply the model to other forms of powder as the opponent argued. It also appears from the evidence that not all lemon sherbet lollies have small holes at each end[11] and are thought to be a by product of the manufacture process. This is distinct from the current invention where there is a deliberate intention to include them in the product. Finally, given the known hygroscopicity problems of polyols, it seems entirely possible that the skilled worker would be taught away from a “weakened” case because it might allow moisture ingress which would destabilise the powdered centre.
[11] See Krnic #1 [2.12]
47. In opposition proceedings before the Commissioner, the onus rests with the opponent to clearly establish its case and the standard of proof required is the civil standard of proof on the balance of probabilities (Dunlop Holding’s Ltd’s Application [1979] RPC 523). Moreover the Commissioner must be “clearly satisfied that the patent, if granted, would not be valid”. Where questions of fact such as obviousness and existence of invention are involved “the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out” (as per Hoffman la-Roche AG v New England Biolabs Inc (2000) 50 IPR 305 at 67).
48. In this case, there does not appear to be any specific motivation from the common general knowledge which would induce a skilled worker to produce a confectionary product with early release casing containing powdered polyol (the applicant’s intended invention). I am therefore not clearly satisfied that claims which encompass this concept would lack inventive step. This ground of opposition therefore fails.
Section 40
Sufficiency [section 40(2)]
49. Both sides provided submissions on sufficiency based on the applicant’s intended invention rather than the claims as they are currently drafted. I will therefore assume that the claims include the intended invention for the purposes of analysing sufficiency.
50. The opponent noted that the specification failed to provide any specific examples where the shell is intentionally “weakened” so that it can disintegrate quickly in the mouth without chewing. According to the opponent, the one example in the specification describes what appears to be conventional confectionary manufacturing techniques without any discussion about how these conditions would need to be varied to achieve the claimed result.
51. The opponent referred to parts of the applicant’s evidence where the applicant appeared to suggest that “certain process control parameters” (my emphasis) were required to produce the zones of reduced thickness.[12] According to the opponent, the specification had not identified any critical control parameters to achieve the claimed casings and hence it was not fully described.
[12] Ward #1 at [16], [26], [27], [40] and [59]
52. I note that the opponent’s expert (Mr Krnic) did not suggest he would be unable to produce something that fell within the scope of the claims from his common general knowledge. The opponent also acknowledged that the control parameters listed in the specification were conventional manufacturing techniques. It therefore appears that once the skilled worker was directed to configure a weakened (rapid release) casing according to the claims, they would generally know which of these parameters could be used to achieve this result.
53. While there might some trial and error involved, this would not necessarily lead to a problem with insufficiency. As McTiernan J. pointed out in AMP v Utilux, (1971) 45 ALJR 123 at page 128:
"Specifications veryfrequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
54. In my view, there is no evidence to suggest that the experimentation required to achieve the intended result by varying conventional manufacturing parameters would involve “new inventions or additions or prolonged study of matters presenting initial difficulty”.[13] As a consequence, I find that the specification is fully described with regard to the applicant’s intended invention.
Fair basis [section 40(3)]
[13] As per Kimberly-Clark Australia v Arico Trading [supra] at paragraph 45.
Relevant law
55. Section 40 of the Act has been considered by the High Court in two relatively recent decisions Kimberly-Clark Australia Pty v Arico Trading International Pty Ltd [2001] HCA 8 and Lockwood v Doric [2004] HCA 58. Two key principles which arise from these decisions in relation to this section 40 are:
· Section 40 only goes to the form of the specification. Issues of whether the alleged invention is novel, inventive, or has utility are of no relevance to whether the specification complies with s.40 (Lockwood v Doric [supra] at para 44);
· Each ground of invalidity is separate and considerations of one ground should not be imported into another. The requirements of description and fair basis are therefore distinct from each other and from other grounds of invalidity (Lockwood v Doric [supra] at paragraph 49);
56. Section 40(3) of the Patents Act 1990 (Cth) requires that the claim or claims must be clear and succinct and fairly based on the matter described in the specification. The High Court in Lockwood v Doric [supra] noted[14] that fair basis is concerned “purely with the relationship between the body and claims of the one specification”. The primary test for fair basis is simply whether the claims are consistent with what the specification as a whole describes as the invention. However, the “invention” for the purposes of section 40 however is not the inventive step or the technical contribution made by the inventor but rather the “embodiment around which the claims are drawn” (Kimberly-Clark Australia v Arico Trading [supra] at paragraph 21).
[14] see paragraph 27
57. The High Court accepted that there were two subsidiary tests (sub-tests) for fair basis which were relevant to the consideration of fair basis:
1. Is there “a real and reasonably clear disclosure” of the invention in the specification? [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79];
2. Do the claims travel beyond the subject matter of the invention described in the specification? [Olin v Super Cartridge (1977) 180 CLR 236]
58. However, the word “real” in “real and reasonably clear disclosure” does not mean that the specification has to provide “real” (enabling) support over the scope of the claims but merely as noted in Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [supra]:
‘...that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
59. Similarly, the words “travelling beyond the subject matter” do not mean that the claims cannot go beyond the technical contribution made by the inventor nor is it proper to limit the claims based on the disclosures of preferred embodiments (see Lockwood v Doric [supra] at paragraph 69 and 77).
60. As Barwick J’s noted in Olin Corp v Supercartridge Co. Pty Ltd & Or 180 CLR 237 (at p240):
“The question whether the claim is fairly based is not to be resolved in my opinion, by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification”.
Application of Fair basis
61. Both sides provided submissions on fair basis based on the applicant’s intended invention rather than the claims as they are currently drafted. I will therefore assume that the claims include the intended invention for the purposes of analysing fair basis.
62. The opponent noted that claim 1 defines an integer in functional terms as a configuration of the casing which enables filling to be released without having to wait for a substantial portion of the shell to dissolve. However, according to the opponent, the consistory statement only identified two specific means of configuring the casing to achieve this result.
(a) Where the casing had at least one zone of reduced thickness which dissolves in the mouth before the remainder of the casing; and
(b) Where the casing had a hole of a size that allows the filling to exit the casing when the confectionary is placed in the mouth.
63. According to the opponent, means of achieving the result other than these specific means “travelled beyond the scope of the disclosure” and were not fairly based.
64. However the fair basis test outlined by the High Court in Lockwood v Doric [supra] is simply whether the claims are consistent with what the specification as a whole describes as the invention. From the specification as a whole, the intended invention was the concept of using a casing configured for a quick release of its sugar free filling. The applicant claimed this invention in functional terms (a “claim by result”). This style of claims was considered in Shave v H V McKay Massey Harris Pty Ltd (1935) 52 CLR 701 which the High Court in Lockwood v Doric expressly approved. The earlier court found that if the invention resided in a “new result”, it could be claimed per se:
"When a combination claim states an invention which gives an old result by a new means, the monopoly is limited, at any rate prima facie, to the new means. But when by a new application of principle the inventor has obtained a new result or thing, even when it be done by a combination, he may claim all the alternative means by which the thing or result may be achieved”
65. At its broadest, the intended invention is a “new result” and this is reflected in the broadest consistory statement. Since this is also consistent with the broadest claims, these claims are fairly based. In that regard, it does not matter that the specification does not provide enabling support for all means of achieving the claimed result. The words “travelling beyond the subject matter” do not mean that the claims cannot go beyond the technical contribution made by the inventor nor is it proper to limit the claims based on the disclosures of preferred embodiments (see Lockwood v Doric [supra] at paragraph 69 and 77.
66. The opponent also noted that claim 4 claims a confectionary according to claims 1 or 2 wherein the filling represents 6 to 40% by weight of the product. They argued that the body of the specification teaches that “the proportion of the filling should not exceed 30% by weight, preferably 22%, even preferably 18% by weight to limit serious closure problems that would lead to accidental leakage of the filling”[15]. According to the opponent, there is no fair basis in the body of the specification for a claim to a maximum of 40%.
[15] See accepted specification page 10, lines 16-19
67. I note that specifications often contain a clear statement that a specific feature is ‘essential’ to the invention but this does not necessarily mean that a specific feature is a core element of the invention merely that it is essential for the working of the preferred embodiment. As the High Court in Lockwood v Doric [supra] [at para 68] observed:
“The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ "an over meticulous verbal analysis". It is wrong to seek to isolate in the body of the specification "essential integers" or "essential features" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question”.
68. In this case, the specification does not suggest that the exact proportion of filling is a critical part of the invention. This feature is simply one of many standard parameters that the skilled worker would know to adjust in their manufacturing process to achieve the claimed result. The broad independent claims are not limited to any particular proportion and the specification broadly discloses any proportion of filling. There is therefore no basis in the specification to restrict the claims to exact proportions of fillings and claim 4 is fairly based.
Clarity [section 40(3)]
69. Under section 40(3) of the Patents Act 1990 (Cth), claims must be clear and succinct. The opponent argued that claim 1 defines an integer in functional terms as a configuration of the casing which enables filling to be released out of the casing when in the mouth without having to wait for a substantial portion of the shell to dissolve or without having to chew or bite the casing. They argued that this claim does not provide any indication of what types of configurations would fall within the scope of the claim and therefore the claim is unclear.
70. I note that defining an invention by reference to a result to be obtained will seldom lead to a lack of clarity in a claim, provided it is possible to clearly distinguish articles in which the defined result is obtained from those in which it is not (see for example International de Lavaud Manufacturing Co Ltd v Clay Cross Co Ltd (1941) 58 RPC 177 at 195 and Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag (2008) 77 IPR 229).
71. In this case, there is no evidence that a skilled worker would not be able to determine whether a particular configuration would achieve the claimed result. Hence I do not accept the opponent’s clarity argument with respect to the functional nature of the claims.
72. The opponent also argued that the term “substantial portion” was unclear in claims 1 and 20 (and dependent claims thereon) because it was unclear how large a portion would be “substantial” enough to fall within the scope of the claims.
73. The Full Federal Court in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag (2008) 77 IPR 229 recently explained the test for clarity by the Court by referring to Blanco White, Patents for Inventions (5th ed) at 4-701 [16]
“…what matters is not the grammar of the claim, but whether a reader would be left in doubt whether any given apparatus or method fell within the claim or not; the purpose of the rule is to enable the public to rely upon the words of the claim as defining the rights of the patentee. Accordingly, a mere grammatical ambiguity, not affecting the scope of the monopoly, will not invalidate” (my emphasis)
[16] See Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [supra] at paragraph [14].:
74. In that case, the Full Federal Court considered the term “substantial portion” and the Court concluded that the phrase did not render the claim unclear. In doing so, the Court referred to the following passage from Flexible Steel [supra]:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”
75. I agree with the opponent that the term “substantial portion” is an imprecise term and that there could be difficulty determining exactly where the outer boundary of the claims are. However, I also note that I should "give little weight to puzzles which may arise 'at the edge of the claim' if those puzzles would not, as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe the patent" (Glaverbel SA v British Coal Corp [1994] RPC 443 at 495).
76. In the current case, the opponent has not established that there would be any practical difficulties determining whether an type of confectionary would fall within the scope of the claim. I was able to construe the claim to find a lack of novelty based on the documents provided by the opponent and their expert also had no difficulty in his novelty analyis of the claims. As a consequence, I find that the term “substantial portion” is clear.
77. The same issue occurs with the term “significant melting” in claims 9 and 10. The opponent argued that it is not clear what amount of melting would be significant enough to distinguish the prior art from the claims. However as with the term “substantial portion”, I do not see that a skilled worker would have any practical difficulty determining what types of confectionary would fall within the scope of the claim. I think that the real problem is one of novelty rather than clarity. As a consequence, I find that all the claims are clear.
Manner of Manufacture
78. The opponent argued that the claimed method was not a manner ofmanufacture because it failed the threshold test of inventiveness on the face of the specification (as per NV Philips Gloeilampenfabrieken v Mirabella Pty Ltd (1995) 183 ALR 655; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604 and Merck Inc v Arrow Pharmaceuticals Limited [2006] FCAFC 91 (15June 2006)].
79. The opponent argued that the specification merely discloses a description of conventional ingredients and a conventional process for the manufacture of centre-filled hard confectionary. As a result, the specification did not pass the threshold test for invention and was not a manner of manufacture.[17] ,
[17] Ward #1 at [26] and [27]
80. However as noted above under inventive step, the inventive advance described in the specification is not in particular process parameters but in the idea of using conventional process parameters to deliberately produce a “weakened” hard candy. There is no suggestion in the specification that this was not inventive and hence I find that all the claims define a manner of manufacture.
81. The opponent also argued that claims 1 and 18 merely define a collocation of known integers where “each performs its own proper function independently of any of the others”. According to the opponent, it is not controversial that the first 5 integers in each of the claims was known. The 6th integer (the “early release configured casing”) was an inherent property of many prior art confectionaries which meant there was no new or improved result of combining the integers of claims 1 or 18.
82. In my view, this argument is a restatement of the opponent’s novelty argument which I have already considered in detail above. It does not give rise to a separate objection under manner of manufacture and I do not propose to consider the issue further under this ground .
CONCLUSION
83. 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. However none of the claims properly construed were limited to this concept. This means that claims 1-8, 9-12 (in part), 13-17. 18-19 (in part), 20-22 are not novel in light of Kurata
84. One of the options defined in claims 9-12, 18 and 19 is where the casing 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.
85. The claims as currently drafted are clear and had the claims been restricted to the intended invention, the evidence did not establish that the claims lacked novelty, inventive step or failed for lack of fair basis, full description or manner of manufacture.
86. I consider that there is patentable subject matter and allow the applicant 60 days in which to propose suitable amendment to overcome the above problems.
COSTS
87. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. In matters before the Commissioner, costs generally follow the event. In this case, the opponent has been largely successful in their opposition. I see no reason to depart from the usual practice and I award costs under schedule 8 against the applicant.
Karen Ayers
Delegate of the Commissioner of Patents
24 June 2010
Patent attorneys for the applicant : Shelston IP, Sydney
Patent attorneys for the opponent : Griffith Hack, Melbourne
Annex A
Relevant sections of the Patents Act and Regulations
From Patents Act [1990]
7Novelty and inventive step
Novelty
(1)For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a)prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b)prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c)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.
Inventive step
(2)For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless 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 of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.
From Schedule 1:
prior art base means:
(a)in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i)information in a document that is publicly available, whether in or out of the patent area; and
(ii)information made publicly available through doing an act, whether in or out of the patent area.
(b)in relation to deciding whether an invention is or is not novel:
(i)information of a kind mentioned in paragraph (a); and
(ii)information contained in a published specification filed in respect of a complete application 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.
[Note: For the meaning of document see section 25 of the Acts Interpretation Act 1901.]
prior art information means:
(a)for the purposes of subsection 7(1)—information that is part of the prior art base in relation to deciding whether an invention is or is not novel; and
(b)for the purposes of subsection 7(3)—information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step; and
(c)for the purposes of subsection 7(5)—information that is part of the prior art base in relation to deciding whether an invention does or does not involve an innovative step.
40Specifications
(1) A provisional specification must describe the invention.
(2) A complete specification must:
(a)describe the invention fully, including the best method known to the applicant of performing the invention; and
(b)where it relates to an application for a standard patent—end with a claim or claims defining the invention; and
(c)where it relates to an application for an innovation patent—end with at least one and no more than 5 claims defining the invention.
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
Annex B
THE CLAIMS DEFINING THE INVENTION ARE AS FOLLOWS:-
1. A confectionery product comprising a casing of a protective confectionery 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 which enables the filling to be released out of the casing when in the mouth without having to wait for a substantial portion of the shell to dissolve or without having
to chew or bite the casing.2. Confectionery product according to claim 1, wherein the monosaccharide polyol is chosen among the list consisting ofxylitol, erythritol, sorbitol and combination thereof.
3. Confectionery product according to claim 1 or claim 2, wherein the proportion of polyol relative to the non-polyol is of at least 60% by weight of the filling.
4. Confectionery product according to anyone of claims 1, 2 or 3, wherein the filling represents 6 to 40 % by weight of the product.
5. Confectionery product according to claim 4, wherein the filling represents 8 to 22 % by weight of the product.
6. Confectionery product according to· anyone of the preceding claims, wherein the thickness of the casing is comprised between 1 to 4 mm.
7. Confectionery product according to claim 6, wherein the thickness of the casing is comprised between 1.5 to 2.5 mm.
8. Confectionery product according to anyone of the preceding claims wherein at least 85 % by weight the particles within the powder have a size less than 250 microns.
9. Confectionery product according to anyone of the preceding claims, wherein the casing comprises at least one zone of reduced thickness and/or small hole capable to form at least one passage communicating with the filling of a size effective to allow at least part of the filling to be progressively freed before the casing has significantly melted in mouth.
10. Confectionery product according to claim 9, wherein the casing has two opposite zones of reduced thickness and/or small holes.
11. The confectionery product according to claim 1, wherein the casing portion comprises at least two zones of reduced thickness or two or more holes having an opening of equal to or less than 250 microns.
12. The confectionery product according to claim 11, wherein the casing portion comprises at least two zones of reduced thickness or two or more holes having an opening of equal to or less than 100 microns.
13. Confectionery product according to anyone of the preceding claims, wherein the casing and filling is produced by sizing a filled rope and forming individual casings by stamping the filled rope in a die having the counterform of the casing.
14. Confectionery product according to anyone of the preceding claims, wherein the casing has a hard glassy texture comprising saccharide or sugar alcohols.
15. Confectionery product according to claim 14, wherein the casing consists mainly of at least one sugar alcohol selected from the group consisting of isomalt, sorbitol, maltitol, mannitol, lactitol, polydextrose and combination thereof.
16. Confectionery product according to anyone of claims 1 to 13, wherein the casing comprises a chewy crystallised (low boiled) structure or a chewing gum.
17. Confectionery product according to anyone of the preceding claims, wherein the filling comprises flavourants, sweeteners and/or acidifying agents.
18. A confectionery product comprising a casing of a protective confectionery 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 which comprises (a) at least one zone of reduced thickness which dissolves in the mouth before the remainder of the casing to progressively free the filling or (b) a hole of a size that allows the filling to exit the casing when the confectionery is placed in the mouth.
19. The confectionery product according to claim 18, wherein the casing portion comprises at least two zones of reduced thickness or two or more holes having an opening of equal to or less than 250 microns.
20. A method for providing a refreshing cooling effect in the mouth during consumption of a confectionery product, which comprises providing the confectionery product in the form of a casing of a protective confectionery material and a filling included therein, with the filling comprising a major amount of monosaccharide polyol in a crystalline anhydrous form chosen among polyols having a cooling effect and wherein the casing is configured with at least one portion to allow filling to release out of the casing when in the mouth without having to wait for a substantial portion of the shell to dissolve or without having to chew or bit the casing, and consuming the confectionery product to release the cooling effect polyol into the mouth to provide the cooling effect.
21. A confectionery product comprising a casing of a protective confectionery material, substantially as herein described with reference to anyone of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
22. A method for providing a refreshing cooling effect in the mouth, substantially as herein described with reference to anyone of the embodiments of the invention illustrated in the accompanying drawings and/or examples.
Annex C
Comparison of Kurata with the additional features introduced by dependent claims
claims additional feature present? Kurata reference 2 polyol selected from list including sorbitol y see whole document 3 proportion of polyol is at least 60% of filling y see table p 6 4 filling is 6-40% by weight of product y 10% - see p 5. line 28 5 filling is 8-22% by weight of product y see above for cl 4 6 thickness of casing is 1-4mm y not explicitly mentioned in citation but Krnic’s (undisputed) evidence suggests this would be understood (see Krnic#2 [4.2.7],opponent’s submissions at [66] 7 thickness of casing is 1.5-2.5mm y see above for claim 6 8 85% of particles are less than 250 microns y not explicitly mentioned in citation but Krnic’s (undisputed) evidence suggests this would be understood (see Krnic#2 page 10[4.2.7],opponent’s submissions at [68] 9 confectionary product with walls of reduced thickness allowing progressive release of the filling before the casing has significantly melted y discussed in decision 10 wholly dependent on claim 9 y discussed in decision 11 casing comprising at least 2 zones of reduced thickness y 3 zones – see figure 3 12 casing comprising at least 2 zones of reduced thickness y see above for claim 11 13 casing produced by sizing a filled rope and stamping y see page 4, lines 40-43 14 casing has a hard glassy texture containing sugar alcohols y see page 4, line 24 and 35 and table 6 15 casing consists mostly of at least one sugar alcohol y see table 6 16 casing comprises a chewy crystallised (low boiled) structure or chewing gum y generally disclosed page 4, lines 47 et seq 17 filling comprises flavourants, sweeteners or acidifying agents y page 4, lines 35 19 claim 18 + casing portion has at least 2 zones of reduced thickness y figure 3
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