Stephen Anderson v K-fee System GmbH
[2018] APO 56
•22 August 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stephen Anderson v K-fee System GmbH [2018] APO 56
Patent Application: 2013351261
Title:Single serve capsule for producing a coffee beverage without crema
Patent Applicant: K-fee System GmbH
Opponent: Stephen Anderson
Delegate: R Subbarayan
Decision Date: 22 August 2018
Hearing Date: 8 February 2018, in Canberra;
Catchwords: PATENTS – opposition to grant of patent under s59 – whether the claims are clear - whether the disclosure of the specification is clear enough and complete enough – whether the claims are supported – whether the claimed invention is useful – whether the claimed invention is novel – whether the claimed invention is inventive – the disclosure is not clear enough and complete enough to perform the invention across the full width without undue burden – claims not supported – claims are useful – claims are novel and inventive – costs awarded
Representation: Counsel for the applicant: Andrew Musgrave
Patent attorney for the applicant: Jeremy Moller of Fisher Adams Kelly Callinans
Counsel for the opponent: Neil Murray assisted by Frances St John
Patent attorney for the opponent: Anderson IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013351261
Title:Single serve capsule for producing a coffee beverage without crema
Patent Applicant: K-fee System GmbH
Date of Decision: 22 August 2018
DECISION
The opposition is successful. The specification does not disclose the claimed invention in a manner that is clear enough and complete enough to perform the invention. The claimed invention is not supported by matter disclosed in the specification.
Applicant has 2 months to propose amendments to overcome these adverse findings.
Costs are awarded against the applicant.
REASONS FOR DECISION
BACKGROUND
Application 2013351261 in the name of K-fee System GmbH (the applicant) was filed on 25 November 2013 as a PCT application (PCT/EP2013/074651) and claims an earlier priority date of 30 November 2012. After two adverse examination reports, it was accepted on 15 June 2016 and advertised in the Australian Official Journal of Patents on 7 July 2016. A notice of opposition to the grant of the patent was filed on 7 October 2016 by Stephen Anderson (the opponent). The Statement of Grounds and Particulars (SGP) was filed on 7 January 2017 and this was then replaced with an amended SGP that was filed on 13 April 2017. The opponent’s evidence in support was completed on 7 April 2017. The applicant did not file any evidence in answer. The matter was heard in Canberra on 8 February 2018.
GROUNDS OF OPPOSITION
The SGP states that the grant of the patent is opposed on the following grounds:
·Not a manner of manufacture
·Not novel
·No inventive step
·Not useful
·Disclosure not clear enough and complete enough
·Does not disclose the best method of performance
·Claims do not define the invention
·Claims not clear
·Claims not supported by the specification
However at the hearing, the opponent did not press the grounds of manner of manufacture, the best method of performance and claims do not define the invention. This decision is therefore limited to the remaining grounds only for which submissions were made.
EVIDENCE
Evidence in support from the opponent comprises the following declarations:
·Matthew Crowley dated 6 April 2017 together with Annexures MC-1 to MC-4 (Crowley); and
·Margaret Sally-Anne Watson dated 31 March 2017 together with Exhibits SW-1 to SW-8 (Watson).
·Patrick Verolme dated 6 April 2017 with Annexure A
·Estelle Guillemois dated 6 April 2017 with Annexure A
·Edward Brunner dated 6 April 2017 with Annexures A to C
Mr Crowley is currently the Head Roaster and Green Bean Buyer at Axil Coffee Roasters in Hawthorn, Victoria. He has worked in the coffee industry since 2005 first as a barista and then as a manager and trainer. He has stated that in these roles he became familiar with how the adjustment of certain parameters, such as water pressure, water exposure time, temperature, grind and dose affect the brew and flavour of the coffee beverage. He also then became a qualified roaster and has as a consequence developed a good understanding of roasting of the coffee bean and its impact on flavour, solubility and extraction yield.
Mr Crowley has provided his opinion on the common general knowledge and state of the art as at the priority date and also his understanding of the terms used in the specification.
Ms Watson is a Mechatronics Engineer and consultant in the field of product development and robotics. She has over two decades of experience in mechanical engineering and design. Much of her work has been with fast moving consumer goods and this has included work on designs for single dose coffee machines and single dose capsules for such machines.
Ms Watson has provided her opinion on the common general knowledge and state of the art as at the priority date, her understanding of the terms used in the specification and her comments on the prior art cited in the opposition.
Mr Verolme is a researcher with Delft Solids Solutions B.V, Netherlands (DSS) who performed tests on Verismo Pike Place coffee capsules and prepared a report, a copy of which is annexed to his declaration.
Ms Guillemois is a technical project coordinator with Nonwovens Innovation & Research Institute Ltd., United Kingdom (NIRI). She also performed tests on Verismo Pike Place coffee capsules and prepared a report, titled "Benchmarking of Nonwoven Coffee Filters Media", a copy of which is annexed to her declaration.
Mr Brunner is Global Head of Food and Beverage Business, United Kingdom, who provides evidence regarding the public availability of Verismo Pike Place, Verismo 580 Brewers and Caffe Verona coffee pods by Starbucks. He also sent some of these coffee capsules to NIRI for testing.
THE RELEVANT LAW
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) as the opposed application was filed after 14 April 2013. As a consequence the Commissioner may, under section 60(3A), refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
THE SPECIFICATION
As the title of the invention indicates, the present invention relates to a single serve coffee capsule that can be used with a compatible coffee machine for producing a coffee beverage without crema.
The specification states that single serve coffee capsules (often referred to as coffee pods) are well known in the art and generally comprise a frustoconical body with a closed base, an open filling side on the top through which ground coffee is introduced into the cavity defined by the capsule body and a membrane or film which is sealed over the open filling side in order to seal the ground coffee within the capsule. A filter element is also normally provided near the base of the capsule.
For preparing a coffee beverage the capsule is introduced into the brewing chamber of a compatible coffee machine. On closing the brewing chamber with a lid, the closed base of the capsule is opened by an outlet spike and the membrane or film on the filling side is pierced by a piercing means. Subsequently hot water under pressure (up to 20 bar) is introduced into the capsule through the piercing means. The hot water flows through the ground coffee, extracts the essential oils from the ground coffee as the coffee beverage, then passes through the filter element and finally exits the capsule through the outlet spike into a discharge outlet for collection in a cup.
The specification further states that when the pressurised hot water passes through the filter it experiences a sudden pressure drop leading to the formation of foam in the extracted coffee beverage. This foam is referred to as crema. The formation of crema is stated to be also affected by other parameters such as the fineness of the ground coffee, the degree of roasting of the ground coffee and the filter element characteristics.
The specification also then states that in some markets like USA and Scandinavia, coffee drinkers tend to prefer coffee without the crema.
The specification then discusses some of the problems with known capsules.
It notes that when more than 150 ml of beverage is extracted from the capsule, “the additional extraction of the coffee grounds leads to washing-out of unwanted taste components which give the end product a bitter, acidic, stale taste”.[1] While this can be addressed by either increasing the amount of ground coffee in the capsule or by grinding the coffee finer, these would give rise to other issues like poorer extraction and extraction of unwanted components. The specification acknowledges that there are capsules that allow differing beverage productivities with an unchangeable fixed volume of the single serve capsule, but then notes that such capsules tend to be fairly large.
[1] Specification page 3, lines 9-12
The specification then mentions the following objectives of the present invention.
“There is a need for single serve capsules for producing coffee beverages which have a uniform size and therefore can be part of a system solution. The single serve capsules should have a high productivity for coffee beverages of different volumes that are faultless in sensory quality”[2].
“There is especially a need for single serve capsules for the production of preferably crema-free coffee beverages with volumes of preferably more than 80 ml, wherein the coffee contained in the single serve capsule can be used in a wide degree of grinding range (expressed as D[4,3] value) and at the same time coffee beverages of good sensory quality can be obtained”[3].
“In addition, beverages which do not have a crema should be obtained which beverages therefore correspond to the beverages which are prepared with apparatuses of unpressurized filtration”[4].
“In addition, a system should be found with which coffee beverages which are faultless in sensory quality can be produced in a relatively high volume range (preferably 80 to 350 ml), wherein the degree of grinding (expressed as D[4,3] value) is variable and freely selectable in a relatively large range”[5].
[2] Specification page 3, lines 29-34
[3] Specification, paragraph bridging pages 3-4
[4] Specification page 4, lines 27-30
[5] Specification page 4, lines 32-37
A summary of the invention then follows:
“These objects are achieved by the present invention, i.e. a single serve capsule for producing a coffee beverage,
wherein the single serve capsule has a capsule base body in which a textile fabric and a beverage substance are arranged,
wherein the beverage substance is provided for storage in the single serve capsule and for extraction in the single serve capsule through the textile fabric by means of pressurized hot water,
wherein the beverage substance is present in the single serve capsule in an amount in the range from 1 to 20 g;
wherein the beverage substance is substantially pulverulent, comprises roasted, ground coffee which in the dry state has a D[4,3] value in the range from 100 to 800 μm; and
wherein the textile fabric has a weight per unit area of at least 100 g/m²”[6].
[6] Specification page 5, lines 1-23
The specification then notes the following advantages/benefits of the invention:
“It has surprisingly been found that by the special combination of textile fabric, in particular the air permeability and the weight per unit area, degree of grinding of the roast coffee, amount of the coffee situated in the extraction volume and degree of roasting, the beverage respectively to be achieved with the desired freedom from crema and also the desired beverage volume can be set.
According to the invention, the parameters degree of roasting, degree of grinding and amount of coffee situated in the extraction volume (weighed portion) are varied and matched to one another in such a manner that even with very low weighed portions, high beverage volumes can be achieved, which correspond in sensory quality to the specifications. The yield of beverage volume per amount of coffee situated in the extraction volume can thus be improved”[7].
[7] Specification page 5, line 25-page 6, line 4
The specification then discusses the parameters of degree of roasting, degree of grinding and the amount of coffee in each capsule including their influence on the coffee beverage produced and also the preferred values for each of these characteristics.
The degree of roasting is typically specified by the colour value of the roasted coffee and the specification states that the colour value is measured using the Colorette 3b colour measuring device from the company Probat.
The specification specifies the degree of grinding by the median particle size of the ground coffee and this is referred to as the D[4,3] value.
The specification then goes on to discuss the filter element that is arranged within the capsule. The invention calls for a textile fabric as the filter element and defines textile fabrics as follows:
“Textile fabrics in the meaning of the invention comprise flat, i.e. two-dimensionally extending structures which comprise fibers. The fibers themselves can form any type of textiles, in particular woven fabric, fleeces, felts, sponges etc”[8].
[8] Specification at page 18, lines 24-28
The specification states that the textile fabrics can range from “flat and flexible to rigid and three-dimensional textile fabrics”[9]. It then specifies various ranges of values for the air permeability and weight per unit area (often referred to as ‘grammage’) of the textile fabric. It also notes that flat permeable textile fabrics allow the formation of crema while a porous cascade-type textile fabric which has a three-dimensional structure is preferred for producing a beverage without crema.
[9] Specification at page 18, lines 32-33
The specification also mentions that in certain embodiments the base of the capsule rather than being closed can instead be partially open, with the opening preferably being a circular hole in the base. In such embodiments, the opening is normally closed by a seal for product protection, with the seal either being perforatable by the outlet spike or being able to be removed manually before use.
The body of the specification ends with three exemplary embodiments in which coffee capsules with various combinations of the parameters of D[4,3] value, roasting colour value, weight per unit area and air permeability were made and tested to determine the properties of the beverage obtained. The properties determined were beverage volume, formation of crema and taste.
Embodiment 1 uses either a flat permeable or a porous cascade-type filter in the capsule and includes 3 examples (Test Series 1-3). These examples are stated to show the influence of the colour value of the roasted coffee on the sensory properties of the beverage.
Embodiment 2 uses a porous cascade-type filter in the capsule and includes 6 examples (Test Series 4-9) that are stated to be comparative investigations to achieve crema-free coffee with a high beverage volume. All of them use a porous cascade textile fabric with differing grammage and air permeability, with the other parameters of D[4,3] and colour value being the same. Examples 8 and 9 both of which had a weight per unit area of at least 1150 g/m² produced coffee without any crema. Example 9 is stated to show the influence of air permeability on the sensory qualities of the beverage.
Embodiment 3 uses a porous cascade-type filter in the capsule and includes 3 examples (Test Series 10-12) which differ from each other only in the D[4,3] value. According to the specification these examples illustrate that even with a fairly broad range of D[4,3] values, coffee of good sensory qualities and without crema can be obtained.
The test results are listed in Tables 1-3 of the specification that are reproduced and annexed at the end of this decision. It is clear from these Tables that only test series 2, 3 and 8-12 produced coffee totally devoid of crema.
The specification ends with five claims as follows:
1.A single serve capsule for producing a crema-free coffee beverage,
wherein the single serve capsule has a capsule base body in which a textile fabric and a beverage substance are arranged,
wherein the beverage substance is provided for storage in the single serve capsule and for extraction in the single serve capsule through the textile fabric by means of pressurized hot water,
wherein the beverage substance is present in the single serve capsule in an amount in the range from 1 to 20 g;
wherein the beverage substance is substantially pulverulent, comprises roasted, ground coffee which in the dry state has a D[4,3] value in the range from 100 to 800 μm;
wherein the textile fabric has a weight per unit area of at least 100 g/m²;
wherein the textile fabric has an air permeability in the range from 160 to 500 l/(m²s), and
wherein the capsule base of the single serve capsule is partially open, wherein the opening is closed by means of a seal which is perforable by means of perforating means or can be taken off manually from the capsule base.
2.The single serve capsule as claimed in claim 1, wherein the textile fabric has a weight per unit area of at least 500 g/m².
3.The single serve capsule as claimed in any one of the preceding claims, wherein the textile fabric has a weight per unit area of more than 900 g/m².
4.The single serve capsule as claimed in any one of the preceding claims, wherein the beverage substance is present in the single serve capsule in an amount in the range from 4 to 11 g.
5.The single serve capsule as claimed in any one of the preceding claims, wherein the beverage substance is substantially pulverulent, comprises roasted, ground coffee which in the dry state has a D[4,3] value in the range from 200 to 650 μm.
CLARITY
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228[20]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
The opponent submitted that claim 1 lacks clarity for the following reasons:
·The term ‘arranged’ in the definition “a capsule body in which a textile fabric and a beverage substance are arranged” is vague and indefinite and does not define any specific relationship between the textile fabric, the beverage substance and the capsule body.
·The definition the beverage substance is “substantially pulverulent” is indefinite and vague.
·It does not identify the test or the pressure differential that is used to determine the air permeability values.
Claim 1 clearly defines that the beverage is extracted “through the textile fabric by means of pressurized hot water”. When this definition in the claim is read in the context of a single serve capsule, in my view, the skilled addressee would readily understand the location and function of the textile fabric within the capsule.
The Macquarie Dictionary defines pulverulent as “consisting of dust or fine powder”. The claim therefore requires that the beverage substance is in the form of a dust or fine powder and in the context of a coffee capsule, where the coffee is normally in a powdered form I can see no ambiguity in the meaning of this term.
While the claim does not mention the test or the pressure differential for air permeability, the specification clearly discloses at page 23, that the air permeability is determined as specified in DIN ISO 9237 and at a preferred pressure of 100 pascal. No other tests or pressure differential are mentioned. This is clearly an instance where the apparent lack of clarity in the claim can be resolved by reference to the body of the specification. This definition of the air permeability value in the claim is clear.
Claim 1 does not lack clarity.
ENABLING DISCLOSURE
Section 40(2)(a) of the Act requires that that the specification must “disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art”. This disclosure requirement was introduced by the Raising the Bar Act.
The Explanatory Memorandum of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the Explanatory Memorandum) explains the purpose of this new provision at page 47 – 48:
"The item is intended to modify the wording of paragraph 40(2)(a) of the Act so as to require enablement across the full width of the claims, while adopting language that is consistent with that used in other jurisdictions. The wording in the amendment is similar to s 14(3) of the UK patents legislation, which has been interpreted as imposing this requirement. The wording is also similar to art 83 of the European Patent Convention, which has been interpreted with similar effect. The intention is that paragraph 40(2)(a) be given, as close as is practicable the same effect as the corresponding provisions of UK legislation and the European Patent Convention.
The concept of an enabling disclosure in the context of similar provisions in the UK Act was discussed by Lord Hoffmann in Biogen v Medeva[1996] UKHL 18; [1997] RPC 1 at [48]:
“... the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the [specification] discloses a principle capable of general application, the claims may be in correspondingly general terms. The [applicant] need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the [applicant] must enable the invention to be performed in respect of each of them.”
In Eli Lilly & Co v Human Genome Sciences, Inc[2008] EWHC 1903; [2008] RPC 29 Kitchin J provided the following approach at [241]:
"The sub-section, by using the words, clearly enough and completely enough, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, as to whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result."
The provisions of s40(2)(a) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72, who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a specification provides an enabling disclosure as required by section 40(2):
·construe the claims to determine the scope of invention as claimed,
·construe the description to determine what it discloses to the person skilled in the art, and
·decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
Before I discuss the alleged deficiencies in the disclosure of the specification, I will need to decide whether the performance of the claimed invention requires the coffee beverage produced to have good sensory qualities as was submitted by the opponent.
While the specification does highlight the good sensory qualities of its coffee, there is no such limitation in the claims. Even if I accept that good sensory qualities would always be a desired characteristic and such a limitation can therefore be read into the claims, as noted by the applicant, any opinion on whether a coffee beverage has good sensory qualities or not would be very much subjective. Therefore what is required for performance of the claimed invention is that the capsule should be able to produce a coffee beverage without crema.
No clear description of what would constitute a suitable “textile fabric”
The opponent submitted that it is not clear from the specification what would constitute a suitable “textile fabric” for the purpose of the alleged invention and relied on the evidence of Ms Watson in support of this contention.
In relation to the feature of ‘textile fabric’, the specification variously states as follows:
“Textile fabrics in the meaning of the invention comprise flat, i.e. two-dimensionally extending structures which comprise fibers. The fibers themselves can form any type of textiles, in particular woven fabric, fleeces, felts, sponges etc”[10].
“Particular preference is given to porous-cascade-type textile fabrics according to the invention”[11].
“Porous-cascade-type textile fabrics have a markedly three-dimensional structure which contains pore-like cavities…”[12].
“The textile fabric preferably comprises a fleece, felt and other textiles or structures having pores and channels such as open-pore sponges, open-pore foam or a combination thereof”[13].
[10] Specification at page 18, lines 24-28
[11] Specification at page 18, lines 33-35
[12] Specification at page 19, lines 6-8
[13] Specification at page 20, lines 11-14
Ms Watson states that the inclusion of ‘sponges’ in the category of flat fibrous textiles is at odds with common understanding of sponge material as the term ‘sponge’ is “customarily used as a reference to closed- or open-cell porous structures that are conventionally obtained by trapping gas bubbles within a volume of material, for example a polymer”[14]. She further states that the description of a three-dimensional structure for the porous cascade-type textile fabric is also at odds with the definition of textile fabric as a two-dimensionally extending structure and that the terminology ‘pore-like cavities’ would be more appropriate for a sponge or foamed material rather than a fibrous matrix.
[14] Watson at [85]
The applicant submitted that the specification describes a range of textile fabrics including porous-cascade-type textile fabrics, flat-permeable textile fabrics and fleece, felt and other textiles or structures having pores and channels and that the purpose of the invention is not hindered by the description of the textile fabrics in the opposed specification.
While the specification does mention both a two-dimensional structure and a three-dimensional structure for the textile fabric, I do not see this as a lack of clear enough disclosure for performing the claimed invention. The specification mentions that a range of textile fabrics such as those mentioned in the preceding paragraph may be used as the filter element in the capsule. Out of these some such as flat permeable fabrics could be considered primarily two-dimensional whereas a thicker fabric like felt or fleece would also have a third dimension.
In relation to the specification including sponges within the context of a textile fabric, if as Ms Watson opines that textile fabric would not include a sponge, then naturally the skilled addressee would interpret the scope of claim 1 as not including a sponge. I also note that none of the examples in Tables 1-3 use a sponge and the specification therefore does not rely on a sponge filter element to enable the invention. In any event, there is no evidence from either Ms Watson or Mr Crowley to suggest that the use of a sponge having a weight per unit area of at least 100 g/m² and air permeability in the range specified would not enable the performance of the claimed invention.
I am not satisfied that the disclosure of the specification in relation to the textile fabric filter element is not clear enough or sufficient enough to perform the invention.
No guidance on D[4,3] value of ground coffee
The opponent submitted that the specification does not specify what spread of D[4,3] values the ground coffee should have for the purpose of the alleged invention and as noted by Ms Watson without that information, the claimed D[4,3] range of values for ground coffee is quite meaningless.
According to Ms Watson, D[4,3] is a well-known statistical parameter that is used to define the average size of particulate having irregular shape and that the claimed range of 100 to 800µm is an extremely broad range that effectively covers the average grinding size of coffee contained in a single serve capsules. However she also states that in the case of ground coffee, the particle size is not uniform and there will always be some variation in size and consequently “D[4,3] may not be an appropriate parameter to quantify the average size of ground coffee particulate”[15] and that “a meaningful measure of the average size of ground coffee particulate would have to be presented with an indication of the spread around that average”[16]. She further states that “it is conceivable that different batches of the ground coffee having identical D[4,3] values provide different extraction dynamics which may or may not result in crema-free coffee”[17].
[15] Watson at [97]
[16] Watson at [97]
[17] Watson at [93]
Mr Crowley appears to have a similar view. He states “reference to a single average value of size may not be strictly appropriate, since grinders work in such a way that they create a variation of particle sizes within the same batch…Depending on the grind size, one would be looking for an acceptable size "spread", i.e. a distribution of sizes spanning across a range of values”[18]. In particular, he explains, “when the coffee is ground one would try to achieve a bimodal or trimodal distribution, i.e. a certain spread of size across more than one specific value”[19].
[18] Crowley at [28]
[19] Crowley at [71]
According to the specification, “The particle size, or the particle size distribution, of the ground coffee influences the brewing pressure, the formation of a crema and the taste of the coffee beverage”[20] and “Methods for determining the particle size distribution and also the medium particle size are known to those skilled in the art. The D[4,3] value gives the median volume which according to the invention is preferably determined by laser measurement, for example using a Malvern Mastersizer 3000 and the dispersion unit Malvern AeroS”[21].
[20] Specification at page 11, lines 4-7
[21] Specification at page 11, lines 27-33
It further states that “In a preferred embodiment, the entire amount of ground coffee in the dry state has the same particle size”[22]. The table in page 12 lists preferred D[4,3] ranges for samples B1-B8.
[22] Specification at pages 12, lines 23-24
It also then notes that “In a particularly preferred embodiment, the ground coffee has a defined mixture of different particle sizes”[23] and in the table that follows it provides preferred particle size distributions for samples C1-C10.
[23] Specification at pages 12, lines 26-27
The applicant referred me to these disclosures in the specification as providing sufficient disclosure in relation to the acceptable distribution of coffee particle size for performing the invention.
While it is the view of Ms Watson and Mr Crowley that it would be preferable to have a bimodal or trimodal distribution, there is nothing to suggest that a single modal distribution would not provide crema-free coffee. The specification clearly states that in certain embodiments, all of the ground coffee can have the same particle size and in such embodiments, the particles would not have any appreciable spread on either side of the mean and just specifying the D[4,3] value is all that is likely to be required. Even in some of the prior art documents relied upon by the opponent, such as D6, D7 and D11, the particle size of the ground coffee is only referred to by the D[4,3] value without any additional indication of the spread around that mean value. The instrument that could be used to determine the D[4,3] value is also specifically identified in the specification.
I am not satisfied that just specifying the D[4,3] value without any additional indication of the spread around that mean value would not be an enabling disclosure to perform the invention.
No guidance on how to select a textile fabric in relation to D[4,3] of ground coffee
The opponent submitted that although the specification discloses that “The medium diameter of the filter openings and the D[4,3] value are matched to one another in such a manner that no particles of the beverage substance pass into the coffee beverage”[24] it does not provide sufficient information as how these two parameters could be matched to ensure that no particles would pass through.
[24] Specification at page 23, lines 19-22
The specification should provide clear enough and complete enough disclosure to perform the invention as claimed. None of the claims of the specification make any reference to the medium diameter of the filter opening or matching this to the D[4,3] value. Hence even if there is any alleged deficiency as submitted by the opponent, it is clearly not in relation to the claimed invention and is hence irrelevant for the purposes of assessing whether the specification provides an enabling disclosure for performing the invention.
Weight per unit area
The opponent also submitted that claim 1 does not specify any upper limit for the weight per unit area of the textile fabric, leaving it open to choose a fabric with a very high weight per unit area, and according to Ms Watson “Filters having high values of weight per unit area would necessitate high brewing pressures, in order for the water to be pushed through the fabric. This is at odds with the requirement that the capsule be suitable for making crema-free coffee, since the Specification explains that crema is obtained through ... a high pressure in the extraction volume (page 2 lines 29-32)”[25].
[25] Watson at [101]
While there is a brief reference in page 2 that high extraction pressures can lead to formation of crema, it is also clear from the specification that formation of crema is influenced by a number of other factors as well such as fineness of the coffee particles, the type of textile fabric used and the air permeability of the textile fabric.
When one looks at the examples in Tables 1-3, it is clear that most of the examples that have a textile fabric with a high weight per unit area, produced coffee without crema, contrary to what is suggested by Ms Watson. For example, test series 2 and 9, both of which produced coffee without crema, have a weight per unit area of 650g/m² and 1150g/m² respectively.
While there is no upper limit specified in the claim for the weight per unit area, according to the specification the pressure generated in coffee machines for single serve capsules is typically 20 bar or less. So the weight per unit area chosen for the textile fabric would need to work with pressures of 20 bar or less. There is no evidence from Ms Watson or Mr Crowley that would suggest that a skilled addressee would not be able to identify through routine experimentation, a maximum value for the weight per unit area that would work with the pressures that are normally generated by coffee machines for single serve capsules.
I am not satisfied that because of the lack of an upper value for the weight per unit area, the specification lacks a clear enough and complete enough disclosure.
Air permeability of the textile fabric
In relation to this parameter, the opponent submitted that although the specification states that the air permeability is determined as specified in DIN ISO 9237 and at a preferred pressure of 100 pascal, claim 1 which defines that the textile fabric has “an air permeability in the range from 160 to 500l/(m²s)” does not specify the pressure differential to be used and without this the disclosure is not clear enough and complete enough for a skilled person to unambiguously determine values of air permeability of the textile.
The applicant argued that while claim 1 does not explicitly specify the pressure differential to be used, the skilled addressee would understand it is the preferred value of 100 pascal mentioned in the description.
I agree. Where a claim is unclear it is legitimate to refer to the body of the specification. In the present case while the pressure differential of 100 pascal is stated as a preferment, it is the only pressure differential specified and it would only be logical to conclude that this is the pressure differential to be used in determining the pressure differential specified in claim 1.
In my view, the specification provides an enabling disclosure of this parameter.
No guidance on how to select a filter material based on air permeability
The opponent submitted that by specifying only the air permeability for the textile fabric, the specification does not give enough information to the skilled addressee how to choose a filter with appropriate liquid permeability which is the more relevant parameter that determines whether the coffee is produced with or without crema.
Ms Watson says at [103] “two filters having the same air permeability can have significantly different liquid permeability due to surface tension effects” and on that basis she concludes “Mere reference to a certain range of air permeability in isolation is insufficient to define a filter suitable for production of crema-free coffee from the claimed capsule”.
The specification only discusses the air permeability of the textile fabric and the test used to determine the air permeability. It is totally silent on the liquid permeability. While I accept that liquid permeability would appear to be more relevant as it is pressurised water that passes through the textile fabric, the air permeability would also be an indicator as to how much fluid, whether in the form of a liquid or gas, flows through the fabric. All the examples in Tables 1-3 also only specify the air permeability and it would appear from these examples that different air permeabilities also influence the formation of crema. I also note that prior art documents D1 and D12 relied on by the opponent only specify the parameter of air permeability for the filter element rather than a liquid permeability which further suggests that this is a common parameter for filter elements for coffee capsules.
In any event, there is no evidence from the opponent to clearly establish that the claimed invention could not be performed with only the parameters of air permeability and weight per unit area specified for the textile fabric.
I am therefore not satisfied that by specifying only the air permeability and not the liquid permeability, the disclosure is not clear enough and complete enough for performing the invention.
No guidance on how to select the appropriate amount of beverage substance
The opponent submitted that the specification gives no guidance on how to select the appropriate amount of beverage substance. They argued that while the claim specifies a range of 1 to 20g, the only amounts that are enabled are those specified in the examples, namely 8.5-9.4 g, and that according to Mr Crowley, low amounts of coffee such as 1g in combination with the parameters specified would not produce coffee with good sensory qualities.
The applicant submitted that people enjoy coffee at different strengths and that the range of 1-20g caters to a range of tastes and that the assertion that 1 gram of coffee would not provide good coffee is Mr Crowley’s subjective opinion rather than a fact.
Irrespective of whether the coffee beverage produced has good sensory qualities or not, as I have noted earlier, claim 1 places no such limitation. Even if the coffee beverage that is produced is weak, it is still a coffee beverage for the purposes of the claimed invention.
I am not satisfied that the disclosure of the specification in relation to the amount of the roasted ground coffee within the capsule is not clear enough and complete enough to perform the claimed invention.
No guidance on which combinations of parameters will provide crema-free coffee
The opponent submitted that the claimed invention seeks to produce coffee of good sensory quality without crema and that there are numerous parameters including the grind and roast of the coffee, the brewing temperature, the cut-off size and density of the filter, the flow rate of the coffee, and the pressure drop, all of which work together to determine whether crema forms, and how much. However the specification does not disclose any general concepts or principles that would teach the skilled addressee how to reliably combine the various parameters defined in the claims in order to produce a capsule that could provide coffee of good sensory quality without crema. They further submitted that the only combinations that have been tested are the examples in Tables 1-3 and even some of these produced crema and/or are not of good sensory quality.
The capsule of Test series 1 had a closed base and used a flat permeable textile fabric having a weight per unit area of 70 g/m² and an air permeability of 2000 l/m²s. It therefore does not fall within the scope of claim 1.
The capsules of Test series 2-12 all had an open base and used a porous-cascade-type textile fabric with a weight per unit area and air permeability that falls within the ranges specified in claim 1. Therefore all of these capsules fall within the scope of claim 1 with regard to the construction of the base and the properties of the textile fabric.
However as noted earlier, only the seven capsules in Test Series 2, 3 and 8-12 produced coffee without any crema, while the capsules of Test series 4 and 5 produced coffee with full surface crema and the capsules of Test Series 6 and 7 produced coffee with a small amount of crema.
It is therefore clear that not all combinations of the claimed parameters will result in a coffee beverage without crema. The applicant conceded this at the hearing. However as the claims are directed to “a single serve capsule for producing a crema-free coffee beverage”, in my view they are limited to capsules that will be capable of producing a crema-free coffee beverage and any capsules that would produce crema will fall outside the scope of the claims.
The question that however still remains is would the skilled addressee be able to determine which combinations of the claimed parameters will produce crema-free coffee and which ones would not. The description or the examples in test series 1-12 do not appear to clearly disclose any principle of general application that would allow the skilled addressee to readily make this determination. While the description mentions that porous cascade type filters that have a high weight per unit area are preferred for avoidance of crema, it is clear from the examples that even some porous cascade-type filters produce crema. For example test series 3 and 4 both used a porous cascade-type filter and had the same grammage of 650 g/m², but while test series 3 had no crema, test series 4 produced full surface crema. Similarly test series 6 and 7 which had high grammage of 900 g/m² and 1000 g/m² respectively were also not totally crema-free.
Both Ms Watson and Mr Crowley are also of the view that the specification does not provide clear guidance on what combination of parameters would produce crema-free coffee.
“In summary, I consider claim 1 to define extremely broad ranges of coffee and fabric parameters which were well known as at the Earliest Priority Date. Also, although the claim purportedly defines a capsule for producing crema-free coffee, the Specification deals with each parameter in isolation, and provides no guidance as to how the parameters correlate to allow production of crema-free coffee. Rather, I understand from the description of sample capsules listed in Tables 1-3 that certain combinations of the claimed parameters do not result in a capsule suitable for the production of crema-free coffee. I am therefore left uncertain as to how to design a capsule for the production of crema-free coffee”[26].
“…even after reading the data in the Examples, I did not have enough information to guarantee that I would be able to brew a crema-free coffee. In particular, I commented that if I wanted to brew a coffee having to choose from the parameters listed in the claims, I would expect to obtain contrasting results as also shown in the data of Tables 1-3. In that regard the combinations disclosed in the Tables lead to varying results and do not seem to guarantee a crema-free coffee or a pleasant tasting one, let alone both”[27].
[26] Watson at [110]
[27] Crowley at [79]
Therefore it is clear that the skilled addressee would need to trial the different combinations of the claimed parameters to determine which ones would produce coffee that is crema-free. The UK authorities that I have mentioned earlier, have stated that while in seeking to perform the invention, the person skilled in the art may carry out ‘routine trials’ which involve no inventive step, it would be an undue burden if the person skilled in the art had to undertake prolonged research, enquiry or experiment, or take an inventive step in order to carry out the invention as claimed.
Given the wide range of values for each of the claimed parameters, I am of the view that trialling each of the numerous possible permutations and combinations of these parameters to determine which ones would produce a coffee beverage without crema would constitute more than routine experimentation and would also be an undue burden. The statements of Ms Watson and Mr Crowley in the preceding paragraph would also appear to suggest that this would be more than a matter of routine trial and error.
The specification does not therefore comply with the s40(2) requirement to provide a disclosure that is clear enough and complete enough to perform the invention across its entire width without undue burden.
While the opponent also argued that some of the capsules of test series 2-12 produced coffee with a low taste ranking, I note that there is no requirement in claim 1 that the coffee should have good sensory qualities and therefore this attribute of the coffee is not relevant in terms of enablement of the claimed invention.
SUPPORT
Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. The Explanatory Memorandum explains the purpose of this new provision at page 49:
"This item is intended to align the Australian requirement with overseas jurisdictions' requirements (such as the UK). Overseas case law and administrative decisions in respect of the 'support' requirement will be available to Australian courts and administrative decision-makers to assist in interpreting the new provision."
In the UK where similar provisions apply, this has been interpreted as requiring that there must be a basis in the description for each claim and the scope of the claims must not be broader than is justified by the extent of the description, drawings, sequence listing and the contribution to the art. As noted in Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [36]:
“... the definitions in the claims [i.e. the claimed invention] should essentially correspond to the scope of the invention as disclosed in the description. In other words, ... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.”
While this does not mean that the claims should be restricted to the specific embodiments described, the scope of the claims must be properly supported by the matter disclosed in the body of the specification.
The provisions of s40(3) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72, who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a claim is supported by the description.
· Construe the claims to determine the scope of the invention as claimed,
· Construe the description to determine the technical contribution to the art, and
· Decide whether the claims are supported by the technical contribution to the art.
The Opponent submitted that claim 1 is not supported by the description because the scope of that claim is broader than is justified by the extent of the technical contribution to the art. Specifically they argued that the specification discloses that the colour value of the roasted coffee plays a significant role in determining whether the coffee produced is crema-free and of good sensory quality and provides a precise range of the acceptable values for this parameter. They referred in particular to the following statement in page 5 of the specification:
“It has surprisingly been found that by the special combination of textile fabric, in particular the air permeability and the weight per unit area, degree of grinding of the roast coffee, amount of the coffee situated in the extraction volume and degree of roasting, the beverage respectively to be achieved with the desired freedom from crema and also the desired beverage volume can be set”.[28]
[28] Specification page 5, lines 25-32
They further argued that all the examples in Tables 1-3 also specify the colour value. This parameter is therefore part of the technical contribution to the art and as claim 1 does not specify this parameter, it exceeds the contribution to the art and consequently lacks support.
100. The applicant submitted that the specification at pages 4-5 clearly describes that the objects of the invention are achieved by the invention as it is without reference to the colour value of the roasted coffee.
101. I agree that the passage in page 5 strongly suggests that the colour of the roasted coffee is an important parameter in determining whether the coffee is produced with or without crema. However the consistory clause on the same page that precedes this statement makes no reference to the colour value. There is clearly some inconsistency in these two statements of the description as to the role of this parameter in providing coffee without crema.
102. The parameter of colour value is further described in pages 8 and 9 of the specification. In particular the following passage in page 8 is instructive as to the main purpose of roasting to achieve certain colour values:
“In order to achieve beverages having different beverage volumes - with or without crema - the roasting of the individual varieties is an important element. In this operation, taste and color are affected”.[29]
[29] Specification page 8, lines 9-12
103. While there is some reference to coffee with or without crema, the emphasis is clearly on beverage volume and taste. There is nothing in this statement or the other passages in pages 8 and 9 that clearly indicate that a specific range of colour values is an essential integer in order to achieve crema-free coffee. While this parameter is clearly important for beverage volume and sensory quality, I note that claim 1 makes no reference to either beverage volume or sensory quality.
104. While Tables 1-3 indicate a colour range for each of the examples of test series 1-12, there is nothing in these examples that clearly establishes that changing these colour values alone would affect whether the coffee has crema or not.
105. I am not satisfied that the specification clearly asserts that a specific colour value is part of the technical contribution to the art in order to achieve crema-free coffee. Claim 1 does not lack support in this regard.
106. The opponent also submitted that the specification does not refer to any exact relationship or overall concept for selecting variables that will achieve a crema-free beverage and that as some of the examples in Tables 1-3 do not produce crema-free coffee, the scope of the claims is broader than is justified by the disclosure and the contribution to the art.
107. I have earlier found that there is no principle of general application in the body of the specification that would enable the skilled addressee to readily determine which combinations of the different claimed parameters of the capsules would produce crema-free coffee. Also as I noted earlier only the examples in Test Series 2, 3 and 8-12 produced crema-free coffee, whereas the remaining capsules produced crema. Therefore the contribution to the art is in my view limited to the examples in Test Series 2, 3 and 8-12 that produced crema-free coffee. However as the claims include within their scope values of the parameters that would not produce crema-free coffee, it follows that they extend beyond the contribution to the art. The claimed invention therefore lacks support under Subsection 40(3).
UTILITY
108. Section 18(1)(c) of the Act provides that an invention is a patentable invention if the invention, so far as claimed in any claim, is useful. Section 7A, which is a new provision introduced by the Raising the Bar Act, provides that the invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification, and that this further requirement does not otherwise affect the meaning of the word useful in the Act.
109. The basic principles to be applied in deciding whether the claimed invention is useful under the requirements of Section 18(1)(c) of the Act, were summarised by Greenwood J in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29 at [120]-[121].
“The “basic principle” of inutility is that if an invention “does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention”: Fawcett v Homan (1896) 13 RPC 398, Lindley LJ at 405, adopted by Gummow J as a correct statement of principle in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 96 (“Rehm”). What the invention is “intended” to do is a matter to be gathered from “title and the whole of the specification”: Rehm, Gummow J at 96.
Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 394 (“Décor v Dart”), Lockhart J (in the Full Court); Welcome Real‑Time SA v Catuity Inc (2001) 113 FCR 110 at 144 [160], Heerey J; H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151 at 198 [217] (“Lundbeck”), Bennett J; Ranbaxy Australia Pty Ltd v Warner‑Lanbert Co LLC (2008) 77 IPR 449 at 479 [141], Emmett, Weinberg and Bennett JJ. Further, “everything” that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee: Lundbeck at 172 [81], Emmett J”.
110. The opponent submitted that the promise of the invention is to come up with a single serve coffee capsule that can provide coffee beverage of good sensory qualities in the medium volume range without crema.
111. The applicant submitted that the relevant promise is to provide single serve capsules for producing coffee beverages without crema and that there is no promise that the coffee produced must be of good sensory quality.
112. The specification when discussing the prior art on page 3, lines 8-12, notes that when the beverage amounts is greater than 150 ml, the additional extraction of the coffee grounds leads to washing out of unwanted taste components leading to a poor quality coffee with bitter, acidic, stale taste. It then discusses the various objectives of the invention that I have referred to earlier. These clearly make reference to the coffee beverage needing to be of good sensory quality. I therefore agree with the opponent that in addition to the promise of crema-free coffee, the sensory quality of the coffee is also a promise of the invention. However as I noted earlier, whether a coffee beverage has good sensory qualities can be very much subjective.
113. The opponent submitted that it is clear from the specification that the degree of roasting represented by the colour value is essential in combination with the other features to meet the objects of the alleged invention. However none of the claims specifies a colour value and they therefore encompass combinations of features that would fail to meet the promise of crema-free coffee.
114. The applicant submitted that the opposed application clearly describes at page 5 that the objects of the specification are achieved by the invention as presently claimed without reference to the degree of roasting and there is nothing in the specification to suggest that the degree of roasting is an essential feature of the invention.
115. I have earlier found that as claim 1 defines a “single serve capsule for producing a crema-free coffee beverage” it is limited to those coffee capsules that do produce a crema-free coffee beverage. Therefore is therefore necessarily utility in this regard.
116. In any event I have earlier found that the colour value is not an essential feature in relation to the promise of achieving a crema-free coffee and hence the non-inclusion of this feature cannot result in the claimed invention lacking utility in respect of achieving the promise of crema-free coffee.
117. I am not satisfied that the claimed invention lacks utility for the reasons submitted by the opponent.
NOVELTY
118. A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [248]). It is well established that the general test for anticipation or want of novelty is the reverse infringement test. The classic formulation of this test is that given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
119. The level of disclosure required of an alleged prior use was considered in Insta Image Pty Ltd v K DKanopy Australia Pty Ltd [2008] FCAFC 139; 78 IPR 20. The Full Court identified the relevant principles at [124], chiefly being that the information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it. In this respect it is immaterial whether or not the claimed invention has become known to many people or a few people: availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality. Furthermore, the information made publicly available must have constituted an enabling disclosure of all of the essential features of the claimed invention.
120. The opponent submitted that the invention of claim 1 lacks novelty in light of the sale and use of Starbucks Verismo Pike Place coffee pods.
121. The opponent purchased a number of these Pike Place coffee pods, the first lot of these being purchased online on 4 December 2012, which is 4 days after the earliest priority date of the opposed application. These pods were sent for testing to two different companies, namely Nonwovens Innovation & Research Institute (NIRI) and Delft Solids Solutions (DSS).
122. Both companies provided written reports on the outcomes of the testing they carried out. The NIRI Report sets out the results of characterisation results performed on the filter element contained in the Pike Place pods and the DSS Report sets out the results of characterisation tests performed on the ground coffee contained in the Pike Place pods.
123. The opponent submitted that based on these reports it is clear that the Pike Place pods disclose all of the features of claim 1-5. At the hearing they also sought to introduce into the proceedings two internet articles retrieved from the internet archives that they submitted establishes that the Pike Place coffee pods were available for sale even before the priority date of the claimed invention. They requested that I bring these two documents into the proceedings under the provisions of regulation 5.23 which gives the Commissioner the discretion to consult any document that has been made available to the Commissioner.
124. Subsequent to the hearing, I formed the view that these documents could be highly relevant to establish that the Pike Place pods were available before the priority date and therefore decided to bring these two documents into the proceedings and advised the parties accordingly. I also gave the applicant a period of one month to file any evidence and/or submissions in relation to these new documents. The applicant did not however file any submissions.
125. The opponent provided in their written submissions for the hearing the following analysis of the conclusions of the NIRI Report and the DSS Report compared against the integers of each claim of the opposed application.
Claimed feature NIRI Report DSS Report 1.1 A single serve capsule for
producing a crema-free coffee beverage,Inherent Inherent 1.2 wherein the single serve
capsule has a capsule base body in which a textile fabric and a beverage substance are arranged,See at least pictures and
description on page 4, 8, 15, 16, 20See at least sample description on page 1, methodology on page 4, pictures on page 17 1.3 wherein the beverage substance is provided for storage in the single serve capsule and for extraction in the single serve capsule through the textile fabric by means of pressurized hot water Inherent Inherent 1.4 wherein the beverage substance is present in the single serve capsule in an amount in the range from 1 to 20 g N/A The Starbucks Pods contain on average
9.2520 g of ground coffee (table 3 on page 5)1.5 wherein the beverage substance is substantially pulverulent, comprises roasted, ground coffee which in the dry state has a D[4,3] value in the range from 100 to 800 μm N/A D[4,3] value of 574.5 μm and 570.6 μm for the Starbucks Pods (table 8 on page 10, “Real”) 1.6 wherein the textile fabric has a weight per unit area of at least 100 g/m² Weight per unit area (areal
density) of 942.85 g/m² (see at least table 1 on page 7, “L2240K513”)N/A 1.7 wherein the textile fabric has an air permeability in the range from 160 to 500 l/(m²s) Air permeability of 163.97
l/(m²s) @ 200 Pa (table 7 on page 14, specimen 2,
“L2240K513”)N/A 1.8 wherein the capsule base of the single serve capsule is partially open, wherein the opening is closed by means of a seal which is perforable by means of perforating means or can be taken off manually from the capsule base An opening in the base of a
Starbucks Pod is visible in
the schematics and pictures
on page 16. Further or
alternatively, the closing seal is inherent (the initial
capsule can retain pressurised air - see bulging
of the top lid on Figure 2 on
page 4).An opening in the base of a Starbucks Pod is visible in the schematic of Figure 2 (p 8).
The reference to “Foil bottom” on page 6 appears to be a reference to the sealing tab2.1 wherein the textile fabric has a weight per unit area of at least 500 g/m² Areal density of 942.85 g/m² (see at least Table 1 on page 7, sample “L2240K513”) N/A 3.1 wherein the textile fabric has a weight per unit area of more than 900 g/m² Areal density of 942.85 g/m² (see at least Table 1 on page 7, sample “L2240K513”) N/A 4.1 wherein the beverage substance is present in the single serve capsule in an amount in the range from 4 to 11 g N/A The sample Starbucks Pods contain on average
9.2520 g of ground
coffee (Table 3 on page 5).5.1 wherein the beverage substance is substantially pulverulent, comprises roasted, ground coffee which in the dry state has a D[4,3] value in the range from 200 to 650 μm N/A The sample Starbucks Pods have a D[4,3] value of 574.5 μm and 570.6 μm (Table 8, page
10, “Real”)
126. It is clear from this analysis that the Pike Place pods have a filter element made of three layers of cross-lapped and needle punched nonwoven fabric that have a weight per unit area that fall within the range specified for this parameter in claims 1-5. The coffee present in these capsules also have a weight and D[4,3] value that falls within the values specified in claims 1-5. While on the face of it, the air permeability of these pods would also appear to be within the range specified in claim 1, I note that the value given in the NIRI report is with reference to a pressure differential of 200 Pa whereas I have already found that the air permeability value specified in claim 1 is with reference to a pressure differential of 100 Pa. The opponent made no submissions in regard to this at the hearing other than a general comment that claim 1 does not specify a pressure differential for the air permeability. It is clear from the evidence of Ms Watson that the air permeability value will be different depending on the pressure differential used for testing and that fluid permeability will generally be higher at a higher pressure differential. Therefore it is clear that the air permeability of the Pike Place pods will be less than 163.97 l/m²s when measured at 100 Pa. However there is no evidence from the opponent to indicate what this value will be or even whether it will be at least 160 l/m²s as required by claim 1. The air permeability value specified in claim 1 is not disclosed by the Pike Place pods.
127. The claimed invention cannot therefore be anticipated by the sale and prior use of the Pike Place pods.
128. I do not consequently need to decide whether the Pike Place pods were publicly available before the priority date.
INVENTIVE STEP
129. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
(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 (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
130. The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd [1981] HCA 12, 148 CLR 262 at 286 [45], 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."
131. Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59, the High Court stated at [41]:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
132. In relation to what level of inventiveness is required to sustain a patent, the Full Federal Court in Garford Pty Ltd v Dywidag Systems International Pty Ltd [2015] FCAFC 6 stated as follows at [44]:
“The inventiveness required to sustain a patent for a claimed invention is quite small. A “scintilla” of inventiveness is all that is required: Alphapharm at [195]. However, there must still be “some difficulty overcome, some barrier crossed” (per Lockhart J in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 574) or some contribution to the art “beyond the skill of the calling” (Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 701)”.
The problem to be solved
133. The opponent submitted that while the specification does not provide a clear statement of any problem it is trying to solve, it would appear from various statements in the specification that the invention seeks to come up with a generalised approach for single serve coffee capsules that will provide crema-free coffee of good sensory attributes.
134. The applicant submitted that the present invention seeks to provide a single serve capsule that can provide coffee without crema.
135. As noted earlier, the specification lists the following objectives and benefits of the invention:
·“There is a need for single serve capsules for producing coffee beverages which have a uniform size and therefore can be part of a system solution. The single serve capsules should have a high productivity for coffee beverages of different volumes that are faultless in sensory quality”[30].
[30] Specification page 3, lines 29-34
·“There is especially a need for single serve capsules for the production of preferably crema-free coffee beverages with volumes of preferably more than 80 ml, wherein the coffee contained in the single serve capsule can be used in a wide degree of grinding range (expressed as D[4,3] value) and at the same time coffee beverages of good sensory quality can be obtained”[31].
[31] Specification, paragraph bridging pages 3-4
·“In addition, beverages which do not have a crema should be obtained which beverages therefore correspond to the beverages which are prepared with apparatuses of unpressurized filtration”[32].
[32] Specification page 4, lines 27-30
·“It has surprisingly been found that by the special combination of textile fabric, in particular the air permeability and the weight per unit area, degree of grinding of the roast coffee, amount of the coffee situated in the extraction volume and degree of roasting, the beverage respectively to be achieved with the desired freedom from crema and also the desired beverage volume can be set”[33].
[33] Specification page 5, lines 25-32
136. I am of therefore of the view that the problem that the claimed invention seeks to address is to come up with a single serve coffee capsule that can produce coffee beverage without crema. While the characteristics of good sensory qualities and beverage volume are also mentioned in the body of the specification, these are not claimed and hence are not part of the problem for the purposes of assessing inventive step.
Obviousness in light of Common General Knowledge (CGK) alone
137. The opponent submitted that based on the views expressed by Ms Watson and Mr Crowley, it is clear that the person skilled in the art would have been readily capable of adapting commonly known notions on coffee filtration and of coffee making into producing a single serve coffee pod as claimed and that the manipulation of the claimed parameters to obtain a suitable coffee beverage within the claims represented no more than routine experiments that does not require the exercise of inventive ingenuity. They further argued that the claimed invention was not ‘beyond the skill of the calling’ and that there was no ‘barrier crossed’.
138. It is clear from the opponent’s evidence, that a single serve coffee capsule having a capsule body with a partially open base that is closed by a seal, a filter element in the form of a textile fabric arranged within the capsule body and containing roasted ground coffee in pulverulent form was CGK in the art at the priority date. There is no evidence from the applicant and nor did they make any rebutting submissions in relation to these features at the hearing. I am therefore satisfied that these features were CGK in the art at the priority date.
139. What I therefore need to decide is whether the choice and the combination of the claimed values for the parameters of amount of coffee within the capsule, the D[4,3] particle size of the ground coffee, the weight per unit area of the textile fabric and the air permeability of the textile fabric would have been a matter of routine when trying to provide a coffee capsule that will provide crema free coffee.
140. In relation to the amount of coffee within a single serve capsule, Ms Watson has stated at [37] that “a coffee capsule at the Earliest Priority Date would have contained less than 20 grams of ground coffee” and Mr Crowley has stated at [43] that at the priority date it was well known that single serves of coffee would require around 11 grams of coffee. I am satisfied that a single serve coffee capsule at the priority date would have a coffee in an amount that would fall within the claimed range of 1 to 20 grams.
141. In relation to the D[4,3] particle size of the ground coffee, Ms Watson has stated at [95] that “I noted that the claimed range between 100 to 800 µm is an extremely broad range. The range effectively covers the average grinding size of coffee contained in typical single serve capsules existing at the Earliest Priority Date”. There is no evidence to the contrary. I am therefore satisfied that the ground coffee within a single serve coffee capsule at the priority date would have an average D[4,3] particle size that would fall within the claimed range of 100 to 800 µm.
142. In relation to the weight per unit area of the textile fabric, the applicant submitted that the use of a textile fabric having a weight per unit area of at least 100 g/m² “solves the objective technical problem of preventing crema formation in the production of a coffee beverage from a capsule having beverage granules that have a D[4,3] value between 100 and 880 µm”[34].
[34] Applicant’s written submissions at [74]
143. It is clear from the specification that the grammage of the textile fabric has a key role in achieving coffee without crema. It also influences how much brewing pressure is achieved within the capsule which in turn affects the extraction and the sensory qualities of the brew. The specification specifically recommends a porous cascade-type textile fabric which has a high grammage for producing coffee of good sensory quality without crema.
“Particular preference is given to porous-cascade-type textile fabrics according to the invention. With porous cascade-type textile fabrics, a sufficient high brewing pressure is achieved in the extraction volume which delivers a beverage of faultless sensory quality. At the same time, the beverage substance is retained to the desired extent in the extraction space and the foam formation for achieving the crema on the beverage can be prevented.
Porous-cascade-type textile fabrics have a markedly three-dimensional structure which contains pore-like cavities, wherein the liquid flowing through which is to be filtered flows as in a cascade from pore level to pore level. Any foam present is broken and does not form a crema”.[35]
[35] Specification at pages 18-19
144. The applicant further submitted that while flat permeable textile fabrics which have a low grammage can also be used in single serve capsules these generally produce coffee with crema. They referred to the example of test series 1 which used a flat textile fabric with a grammage of only 70 g/m² and produced good quality coffee but with crema.
145. The opponent submitted that it is clear from the evidence of Ms Watson and Mr Crowley that textile fabrics with a weight per unit area of at least 100 g/m² was CGK in the art.
146. Ms Watson has stated that “in the context of the coffee industry, and in particular manufacturers of coffee capsules for pressure brewing, it was standard practice to select fibre-based material having weight per unit area in the range of hundreds of grams per square metre. This would ensure the filter would not rupture during pressure brewing”[36]. Mr Crowley is of the view that the claimed range “would have been considered to be standard grammage of a paper filter for brewing coffee”[37].
[36] Watson at [35]
[37] Crowley at [72]
147. While Ms Watson’s evidence is uncontested, her statement is pretty vague in my view and she does not provide any specific values that she would have considered to be a standard range for the grammage of textile fabrics in single serve capsules. While she has also stated that the grammage values could be readily found in filter media catalogues and has annexed a catalogue of the company Hahneműhle titled “Filter Papers” (exhibit SW-3), there is very little support in this exhibit for her statement in relation to the grammage of filter elements in single serve capsules. This catalogue appears to be mostly directed to filter papers for industrial and laboratory purposes rather than filter papers specifically for coffee capsules or coffee brewing. There is one section on “Filter papers for the production of beverages” that is recommended for the clarification of juices, wines and extracts that lists various paper filters that they supply for this application together with their properties. In terms of weight per unit area most of them have fairly low values ranging from 65 to 190 with only one having a grammage of 310 g/m². I am therefore puzzled as to the basis of Ms Watson’s statement that “it was standard practice to select fibre-based material having weight per unit area in the range of hundreds of grams per square metre”, given that most coffee drinkers would generally prefer coffee with crema.
148. Also the evidence of Ms Watson does not clearly establish that it was CGK that increasing the grammage would reduce or prevent the formation of crema. In paragraphs [58]-[63] Ms Watson has stated that formation of crema could be avoided by:
·selecting a coffee with coarser grind and a lighter roast in order to lower the rate of extraction of crema-forming compounds
·selecting a coffee that can be brewed at lower temperatures again to lower the rate of extraction of crema-forming compounds
·selecting a filter having a cut-off size tailored to capture crema-forming compounds
·selecting a filter with a lower density to minimise the amount of trapped air
·making the filter thin if it has a high density
Increasing the grammage does not feature in the above list.
149. Similarly while Mr Crowley is of the view that the claimed range of grammage would be standard grammage for a paper filter for brewing coffee, this has not been substantiated by any documentary evidence. Although Mr Crowley is a barista, his expertise does not cover single serve coffee capsules. I would also think that filter papers for coffee capsules which filter under pressure are likely to be different to filter papers for non-pressurised coffee machines that brew coffee without crema.
150. It is quite clear that there is a wide range of variation in the grammage of the textile fabric that can be used in a single serve capsule, including grammage that is below 100 g/m². In my view the evidence does not clearly establish that it was CGK to provide a textile fabric having a weight per unit area of at least 100 g/m² in order to prevent the formation of crema.
151. Claim 1 also requires that the textile fabric has an air permeability in the range from 160 to 500 l/m².
152. In relation to this parameter Ms Watson has stated that permeability is a parameter that is commonly used to categorise filter materials and that typical “values could readily be found in reference charts or filter media catalogues well known at the Earliest Priority Date”[38]. She also refers to exhibit SW-3 as an example of one such catalogue. The applicant in their written submission referred in particular to page 50 of this catalogue, where air permeability of Cellulose/Synthetic low density filter is stated to be 500 g/m² at 50 Pa.
[38] Watson at [27]
153. Ms Watson has also stated at [27] that “it would have been standard engineering practice to determine an appropriate range of air permeability values of a fibre-based filter based on its intended use. I noted that, in other words, there is no standard set of values, rather a series of standard calculations based on the parameters at play”[39].
[39] Watson at [27]
154. She has further stated at [28], that “having to design a coffee capsule with a filter medium for a specific purpose, one would have routinely considered a basic set of parameters including a certain brewing time and volume, capsule volume and characteristics of the ground coffee (e.g. amount and particulate size). Based on those parameters, one would readily be capable of calculating the required rate of filtration and select an appropriate filter material. In that regard, I explained it would be routine practice to approach a filter manufacturer and specify the range of the relevant filtration parameters. Once handed samples, it would be routine procedure to run some tests with the samples and proceed to select the filter medium that provides the most desirable results”[40].
[40] Watson at [28]
155. She has also noted at [103] that a number of other factors such as surface tension and temperature can impact on the overall liquid flow through the filter element and that “Mere reference to a certain range of air permeability in isolation is insufficient to define a filter suitable for production of crema-free coffee from the claimed capsule”[41].
[41] Watson at [103]
156. Whilst I accept the correctness of this last statement, I note that claim 1 defines the air permeability not in isolation but in combination with other parameters as the D[4,3] value and the weight per unit area. While she states that air permeability values could be determined based on intended use, nowhere does she clearly state that the skilled addressee would have chosen the values specified in claim 1 when trying to come up with a coffee capsule that could produce coffee without crema in a pressurised coffee machine. Page 50 of the catalogue (exhibit SW-3) that the applicant referred to relates to filter papers for technical and industrial use and not to filter papers for beverages. Furthermore the value of 500 for the air permeability is with reference to a pressure differential of 50 Pa. While Ms Watson has stated that the permeability values specified in claim 1 can be achieved by choosing an appropriate pressure differential, I have already found that the pressure differential defined in claim 1 is with reference to a pressure differential of 100 Pa. Also similar to the parameter of weight per unit area, Ms Watson’s evidence in relation to the things she would have done to prevent the formation of crema does not include any reference to air permeability of the textile fabric let alone air permeability of specific values as claimed.
157. The evidence of Ms Watson does not clearly establish that it was CGK to provide a textile fabric having air permeability of 160 to 500 g/m² at 100 Pa in order to prevent the formation of crema.
158. There is still the further question of whether the combination of these different parameters would have been a matter of routine. While both Ms Watson and Mr Crowley state, after having read the opposed specification, that the claimed parameters were individually well known in the art, neither has stated that the skilled addressee would have as a matter of routine chosen these parameters when trying to come up with a single serve coffee capsule that can produce coffee without crema.
159. The evidence does not establish that the claimed invention lacks an inventive step in light of the CGK alone.
Obviousness in light of common general knowledge and prior art
D1: US 2012/0070543
160. D1 relates to a single serve coffee capsule having a capsule body in which a filter element and roasted pulverulent coffee are arranged wherein the coffee beverage can be extracted through the textile fabric by pressurised hot water. In one of the preferred embodiments illustrated in figures 8a and 8b, the capsule base is pre-perforated along lines of weakness in order to assist in perforation during use. The opponent submitted that this falls within the scope of the capsule base being partially open. The applicant did not dispute this construction and I am satisfied that this integer is disclosed in D1.
161. While D1 does not mention the amount of coffee, I am satisfied, based on the evidence of Ms Watson, that this would inherently be in the claimed range of 1 to 20g.
162. D1 also does not expressly disclose the D[4,3] value of the pulverulent ground coffee. I have earlier found that this particle size is CGK in the art. As there is no specific particle size mentioned in D1, the PSA would as a matter of routine try different D[4,3] values including the ones which are CGK in the art.
163. The applicant submitted that D1 does not teach a filter medium that has a weight per unit area of at least 100 g/m² in order to prevent foam formation but rather teaches that foam formation is solely dependent on the pressure in the capsule, with a higher pressure leading to much foam formation and a lower pressure leading to lesser foam formation. However I can find no basis for this assertion. D1 uses a non-woven filter element which is stated to preferably not contain any paper-like materials. While in one embodiment the filter element has a weight per unit area of between 40-100 g/m², D1 clearly discloses that in a preferred embodiment, the filter element is a felt structure with a weight per unit area in the range of 100-800 g/m² [0018]. It further mentions that the felt structure produces coffee without crema [0073]. The integer of weight per unit area of at least 100 g/m² is therefore disclosed in D1.
164. D1 discloses that the non-woven filter element which has a weight per unit area of between 40-100 g/m² has an air permeability in the range of 1000-3000 l/m² at a pressure of 100 pascal. D1 does not however disclose what is the air permeability of the felt filter structure that has a weight per unit area in the range of 100-800 g/m². The opponent argued that as claim 1 does not specify a pressure differential for the air permeability measurement, by choosing an appropriate pressure drop, air permeability within the claim can be achieved. I have already found that while claim 1 does not specify the pressure differential, the PSA would understand this to be 100 pascal as disclosed in the body of the specification. Clearly the only air permeability value disclosed in D1 is substantially higher than the claimed range of 160-500 l/m². There is also no evidence to suggest that it was CGK that a filter element formed as a felt structure would inherently possess air permeability within the range specified in the claim. Hence the feature of the air permeability in the range of 160-500 l/m² is not disclosed in D1 and nor is it obvious.
165. The claimed invention does not lack an inventive step over D1 and the CGK.
D2: US 2012/0121765 A1; (D3) US 2012/0201933 A1; (D5) US 2011/0033580 A1; (D6) US 2010/0239734 A1; (D7) US 2010/0239717 A1; (D11) WO 2012/100975 A1; (D12) CA 2753230 A1; (D15) EP 1792850 A1; (D18) EP 1500358 A1 and (D19) WO 2012/100977 A1
166. Each of these documents relates to a single serve coffee capsule with a textile filter element and pulverulent ground coffee for extraction through the textile filter element by means of pressurised hot water.
167. The opponent accepted that each of these documents fails to disclose one or more features of claim 1, but submitted that despite these differences claim 1 is not inventive.
168. None of these documents disclose the feature of the specified air permeability. The opponent again argued that as claim 1 does not qualify the claimed air permeability values by the pressure differential used, air permeability that falls within the range specified can be achieved in the teachings of these documents by selecting an appropriate pressure drop.
169. I have found that the claimed air permeability is with respect to a pressure drop of 100 Pa and so this argument of the opponent fails. What the opponent is seeking to do is to engage in analysis in hindsight to try and fit the disclosure of these prior art documents to the scope of claim 1. The authorities have clearly warned against such an approach. Furthermore I have already found that the opponent’s evidence does not establish that it was CGK that a filter element in a single serve capsule for producing crema free coffee would inherently possess air permeability within the range specified in the claim. The claimed invention does not lack an inventive step over each of these documents at least due to this feature.
170. There are other differences between the claimed invention and some of the other documents that would further make the claimed invention non-obvious over those documents.
171. Apart from documents D11, D12 and D19, none of the other documents in this group also discloses the claimed grammage of the textile fabric and I have also earlier found that it was not CGK to provide a textile fabric having a weight per unit area of at least 100 g/m² to avoid the formation of crema.
172. Also documents D2, D5-D7 and D19 do not disclose that the coffee produced will be without crema.
173. The claimed invention does not lack an inventive step over any of the above mentioned documents when combined with the CGK in the art.
CONCLUSION
174. The opposition is successful. The specification does not disclose the claimed invention in a manner that is clear enough and complete enough to perform the invention across the entire width of the claims without undue burden. Furthermore the claimed invention is not supported by matter disclosed in the specification.
175. I give the applicant a period of 2 months from the date of this decision to propose amendments to overcome all of the adverse findings.
COSTS
176. Both parties have sought costs in these proceedings. As the opposition is successful, I award costs according to schedule 8 against the applicant.
R Subbarayan
Delegate of the Commissioner of PatentsANNEX: Tables 1, 2 and 3
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