Stephen Anderson v K-fee System GmbH
[2018] APO 31
•16 May 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stephen Anderson v K-fee System GmbH [2018] APO 31
Patent Application: 2013351262
Title:Single serve capsule for producing coffee beverages with and without crema
Patent Applicant: K-fee System GmbH
Opponent: Stephen Anderson
Delegate: R Subbarayan
Decision Date: 16 May 2018
Hearing Date: 9 February 2018, in Canberra
Catchwords: PATENTS – opposition to grant of patent under s59 – governed by Patents Act 1990 as amended by the Raising the Bar Act 2012 –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 inventive – claim 1 lacks inventive step – none of the other grounds made out – 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: 2013351262
Title:Single serve capsule for producing coffee beverages with and without crema
Patent Applicant: K-fee System GmbH
Date of Decision: 16 May 2018
DECISION
The opposition is successful. Claim 1 lacks an inventive step. None of the other grounds have been made out. Applicant has two months to propose suitable amendments. Costs awarded against the applicant.
REASONS FOR DECISION
BACKGROUND
Application 2013351262 in the name of K-fee System GmbH (applicant) was filed on 25 November 2013 as a PCT application (PCT/EP2013/074652) and claims an earlier priority date of 30 November 2012. After two adverse examination reports, it was accepted on 29 August 2016 and advertised in the Australian Official Journal of Patents on 22 September 2016. A notice of opposition to the grant of the patent was filed on 21 December 2016 by Stephen Anderson (opponent). The Statement of Grounds and Particulars (SGP) was filed on 21 March 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 21 June 2017. The applicant did not file any evidence in answer. The matter was heard in Canberra on 9 February 2018.
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.
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, novelty, 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 15 June 2017 together with Annexures MC-1 to MC-4 (Crowley); and
·Margaret Sally-Anne Watson dated 19 June 2017 together with Exhibits SW-1 to SW-12 (Watson).
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.
THE SPECIFICATION
As the title of the specification 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 with or 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 at 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 which, by changing individual, defined parameters, permit the production of different coffee beverages of good sensory quality”.[3]
“In particular, coffee beverages of good sensory quality should be provided with different degrees of roast in the medium volume range (preferably 20 to 170 ml). In addition, these coffee beverages should be able to be produced optionally with crema or crema-free, wherein crema-free coffee beverages should correspond to the beverages which are prepared with apparatuses of unpressurized filtration”.[4]
[2] Specification at page 3, lines 29-34
[3] Specification at page 3, line 36 – page 4, line 2
[4] Specification at page 4, lines 20-27
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 150 to 550 μm; and
wherein the roasted, ground coffee has a color value in the range from 50 to 150”.[5]
[5] Specification at page 4, line 29 – page 5, line 13
The specification then notes the following advantages/benefits of the invention:
“It has surprisingly been found that by the special combination of single serve capsule configuration, filter medium, roasting curve of the roast coffee, median particle size of the ground roast coffee and amount of the coffee situated in the extraction volume, the beverage respectively to be achieved and also the desired beverage volume can be set.
According to the invention, the characteristics 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”.[6]
[6] Specification at page 5, lines 20-36
The specification then discusses the characteristics 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”[7].
[7] Specification at page 18, lines 16-20
The specification states that the textile fabrics can range from “flat and flexible to rigid and three-dimensional textile fabrics”[8]. 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.
[8] Specification at page 18, lines 24-25
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 two exemplary embodiments in which coffee capsules with different degrees of roasting and differing D[4,3] values were tested. Embodiment 1 uses a porous cascade-type filter in the capsule and includes 3 examples (Test Series 1-3) and embodiment 2 uses a flat permeable textile fabric in the capsule and includes 4 examples (Test Series 4-7). The properties of the resulting coffee beverage for each of these embodiments are listed in Tables 1 and 2. These Tables are reproduced and annexed at the end of this decision.
It is clear from these Tables that test series 1-3 produced coffee without crema while test series 4-7 produced coffee with crema. In terms of sensory qualities, only test series 1, 2, 4 and 5 appear to produce coffee with good sensory qualities whereas test series 3, 6 and 7 appear to fail in this regard.
The specification ends with two claims as follows:
1.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 150 to 550 μm;
and
wherein the roasted, ground coffee has a color value in the range from 50 to 150;
wherein the textile fabric has a weight per unit area in the range from 400 to 1500 g/m²;
wherein the capsule base of the single serve capsule is partially open.
2.The single serve capsule as claimed in claim 1, wherein the textile fabric has an air permeability in the range from 100 to 600 l/(m²s).
When one looks at these claims in isolation, there is no explicit limitation in terms of the type of textile fabric that is used in the capsule and also whether the coffee produced by the claimed invention will have crema or not.
However when the claimed range of 400 to 1500 g/m² for the weight per unit area of the textile fabric is compared with the examples in Tables 1 and 2, it is quite clear that this claimed value is in the higher range that include fabrics of the porous cascade-type used in test series 1-3, but does not include flat permeable textile fabrics used in test series 4-7, all of which have a weight per unit area of only 70 g/m². Furthermore it is only test series 1-3 have a capsule with a partially open base as required by claim 1, with test series 4-7 having a closed base.
As noted earlier, the coffee produced by each of test series 1-3 is without crema. Therefore although not explicitly defined as such, it would appear that the coffee produced by at least some of the capsules that fall within the scope of claim 1 is likely to be without crema.
CLARITY AND CLAIM CONSTRUCTION
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.
·The colour values are unit-less and without any further qualification of the test used to determine those 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 scale that is used to define the colour values in the claims, the specification clearly discloses at page 9, that the colour value is measured with Colorette 3b from Probat, constructed 2011. While Ms Watson states that the claim lacks clarity as it does not specify the instrument that is used to measure the specified colour value, Mr Crowley, an experienced barista had no problem in understanding that the colour value is to be measured with Colorette 3b and states that “the claimed values effectively embrace the vast majority of color values of ground coffee that was commercially available at the priority date”. This is clearly an instance where the lack of clarity in the claim can be resolved by reference to the body of the specification. This definition of the colour value in the claim is clear. Claim 1 does not lack clarity.
The opponent also submitted that claim 2 lacks clarity because it fails to specify the test and the reference pressure differential used to determine the claimed range of air permeability values of the textile fabric.
Again while the claim does not specify the test used or the pressure differential to be applied, the body of the specification states that the “air permeability of textile fabrics is determined as specified in DIN ISO 9237” and that the “air permeability is preferably determined at a pressure of 100 pascals”. Reference to this disclosure in the body of the specification will clearly overcome any ambiguity in this claim. Claim 2 does not lack clarity.
ENABLING DISCLOSURE
Section 40(2)(a) of the Act requires 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.”
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, there are a couple of points relating to the scope of the claimed invention that needs to be noted.
Firstly claim 1 makes no reference as to what is the type of textile fabric that is used and whether the coffee produced by the capsules of the claimed invention would have crema or not. While the examples in Table 1 that use a porous cascade filter element having a weight per unit area that falls within the range specified in claim 1, may suggest that the coffee produced would also be without crema similar to the examples in Table 1, I note that these examples do not cover the entire range specified. Hence it is entirely possible that the coffee produced by some of the capsules that fall within the scope of claim 1 could be with crema. So in terms of performance of the claimed invention, in my view there is no limitation as to whether the coffee should be with or without crema.
Secondly 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 claim, 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.
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”.[9]
“Particular preference is given to porous-cascade-type textile fabrics according to the invention”.[10]
“Porous-cascade-type textile fabrics have a markedly three-dimensional structure which contains pore-like cavities…”.[11]
“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”.[12]
[9] Specification at page 18, lines 16-20
[10] Specification at page 18, lines 25-27
[11] Specification at page 18, lines 36-28
[12] Specification at page 20, lines 1-4
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”[13]. 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. She concludes that she is unable to form a clear understanding as to which fabrics can be used as the textile fabric of the filter element in the capsule.
[13] Watson at [90]
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”[14] and that “the purpose of the invention is to provide “a single serve capsule for producing a coffee beverage” which is not hindered by the description of the textile fabrics in the opposed specification and is clearly supported by the numerous examples present in the opposed specification”[15].
[14] Applicant’s written submissions at [71]
[15] Applicant’s written submissions at [72]
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. I also note that the requirement in the claim that the textile fabric has a weight per unit area in the range from 400 to 1500 g/m² would in all probability exclude thin textile fabrics such as flat permeable fabrics.
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 and 2 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 as 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”[16] 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”[17]. 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”[18].
[16] Watson at [102]
[17] Watson at [102]
[18] Watson at [103]
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”[19]. 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”[20].
[19] Crowley at [29]
[20] Crowley at [73]
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”[21] 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”[22].
[21] Specification at page 11, lines 12-15
[22] Specification at paragraph bridging pages 10-11
It further states that “In a preferred embodiment, the entire amount of ground coffee in the dry state has the same particle size”[23]. The table in page 12 lists preferred D[4,3] ranges for samples B1-B8.
[23] Specification at pages 12, lines 19-20
It also then notes that “in a particularly preferred embodiment, the ground coffee has a defined mixture of different particle sizes”[24] and in the table that follows it provides preferred particle size distributions for samples C1-C7.
[24] Specification at pages 12, lines 22-24
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 coffee of good sensory quality. 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” it does not provide sufficient information as how these two parameters could be matched to ensure that no particles would pass through.
The specification should provide clear enough and complete enough disclosure to perform the invention as claimed. Neither of the two 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.
Colour value or degree of roasting
The opponent submitted that although the claimed invention specifies that the colour value of the roasted ground coffee should be in the range 50 to 150, the specification does not disclose what is the roasting time and temperature that should be used and both Ms Watson and Mr Crowley have stated that without this information the colour value on its own is quite meaningless.
Ms Watson discusses this parameter of the coffee in her evidence and states therein:
“As it was well known at the Earliest Priority Date, for example, discrete batches of coffee roasted to the same colour value may result in coffee beverages of significantly different taste quality depending on the specific roasting time, for a given roasting temperature. This is because the content of soluble solids within the coffee beans can vary considerably during the roasting procedure even if the colour value remains unchanged”.[25]
“…there is no guarantee that capsules containing coffee having the claimed colour value would necessarily provide for a coffee beverage of consistent and satisfactory taste”.[26]
[25] Watson at [110]
[26] Watson at [112]
Mr Crowley is also of a similar view when he states as follows:
“I also noted that defining the color value in isolation from other roasting parameters such as temperature and duration of roasting is almost meaningless. That is, the color value on its own is not indicative of the chemical composition of ground coffee unless the roast time and temperature are also specified. For example, one could roast multiple batches of the same coffee at a given roasting temperature for significantly different times and obtain coffee having an identical color value, yet different chemical composition. This is because the color value is merely indicative of a surface characteristic of the coffee beans, while the roasting procedure affects the internal composition of the beans”.[27]
“Accordingly, a mere indication of a certain color degree of the ground coffee does not by itself guarantee a consistent taste quality of the resulting coffee beverage. In that regard, I could not find in the Specification any indication as to the temperature and duration of the roasting procedure. For at least this reason there is no guarantee that the coffee beverage obtained by using any combination of the claimed features would consistently have an equal or better taste than commercially known coffees”.[28]
[27] Crowley at [75]
[28] Crowley at [77]
At paragraphs [80]-[81] of his declaration Mr Crowley further notes that the specification on page 5 when talking about the advantages of the invention, makes reference to a “roasting curve”, which he understands to be “indicative of roasting parameters such as roasting temperature and roasting time”, but there is no further mention of any such parameters in the specification.
While I accept the uncontroverted evidence of Ms Watson and Mr Crowley that the roasting time and temperature are important parameters in achieving a coffee of consistent and satisfactory taste, as I noted earlier, there is no such requirement in relation to the performance of the claimed invention. All that is required by claim 1 is that the roasted coffee should have a colour value that falls within the range specified. I have already found that this colour value would be construed with reference to the Colorette 3b colour palette from Probat and as noted by Mr Crowley, the claimed colour values encompass the majority of colour values of commercially available ground coffee. I cannot therefore see any reason why by choosing a ground coffee with the colour value specified the skilled addressee would not be able to perform the claimed invention.
I am not satisfied that the disclosure of the specification in relation to the colour value of the roasted ground coffee is not clear enough and complete enough to perform the claimed invention.
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 2 which defines that the textile fabric has “an air permeability in the range from 100 to 600l/(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 2 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 2.
In my view, the specification provides an enabling disclosure of this parameter.
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 8.5-9.4g, 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.
Is there an enabling disclosure across the entire width of the claims
The opponent submitted that the claimed invention seeks to produce coffee of good sensory quality with or 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 with or without crema. They further submitted that the only combinations that have been enabled are the examples in Tables 1 and 2 and even some of these are not of good sensory quality.
The applicant submitted that the use of a textile fabric with a high weight per unit area in the range specified is a principle of general application and that the examples in test series 1-3 have enabled this principle.
As noted earlier, the four examples in Table 2 (test series 4-7) use a flat permeable textile fabric that has a weight per unit area substantially less than that specified in claim 1 and furthermore have a base that is closed. Hence these examples are not representative of the claimed invention.
Table 1 includes 3 examples (test series 1-3) that have values for the parameters of amount of beverage substance, D[4,3] value, colour value and weight per unit area falling within the ranges specified in claim 1 and also have an open base. Hence these examples are clearly representative of the claimed invention. The opponent argued that the coffee produced in example 3 is of poor sensory quality as it is stated to be “acidic, bitter, very powerful, astringent” and therefore claim 1 is not enabled across its entire width. However this argument fails as there is no requirement in claim 1 that the coffee produced should have good sensory qualities. I also note that even in example 3, the ranking of 3.0-4.0 (which is presumably a taste or sensory quality ranking) given to it is higher than the ranking 2.0-2.5 and 2.0-3.0 given to examples 6 and 7 respectively, thereby suggesting that quality of the coffee of example 3 is definitely not at the very bottom end of the sensory quality rankings. Also as I noted earlier opinions on sensory qualities can be quite subjective.
In relation to whether the claim is enabled across its entire width, clearly the examples in test series 1-3 do not cover the entire width of the ranges specified in claim 1. However there is no evidence from the opponent to even suggest that coffee capsules that fall within the claimed ranges and that have not been enabled by the examples in test series 1-3 would not be able to produce a coffee beverage or that preparing and conducting routine testing of such non-enabled coffee capsules would be an undue burden.
I am satisfied that the specification does provides a disclosure of the invention that is clear enough and complete enough for the invention to be performed by a person skilled in the art.
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 value of air permeability of the textile fabric plays a significant role in determining whether the coffee is produced with or without crema and provides a precise range of the acceptable values for this parameter. Furthermore all the examples in Tables 1 and 2 also specify the air permeability. 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.
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 air permeability of the textile fabric.
While the specification states on page 6, lines 5-8, that by targeted modification of the textile fabric, a coffee beverage with or without crema can be obtained, nowhere does it specifically state that the air permeability is the parameter of the textile fabric that influences whether the coffee is produced with or without crema. The air permeability is just one amongst different parameters of the textile fabric that include the weight per unit area, the type of textile fabric and the median diameter of the filter openings. In the paragraph bridging pages 32 and 34, the specification states “In another particularly preferred embodiment, the coffee beverage does not have a crema, wherein the textile fabric has an air permeability in the range from 100 to 600 l/(m²s), and/or the textile fabric has a weight per unit area in the range from 400 to 1500 g/m², and/or the capsule base is partially open”. The use of ‘and/or’ would further suggest that the air permeability is not absolutely essential for producing coffee without crema and is therefore not part of the technical contribution to the art.
I am not satisfied that by not including the air permeability value in claim 1, the specification would extend beyond the contribution to the art.
UTILITY
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.
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”.
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 with or without crema.
The applicant submitted that the relevant promise is “to provide single serve capsules for producing coffee beverages which have advantages over single serve capsules of the prior art”[29] and that there is therefore no promise that the coffee produced must be of high sensory quality.
[29] Specification at page 4, lines 4-7
However this is a general statement that needs to be read with reference to the discussion of the prior art and the objectives of the invention.
The specification when discussing the prior art on page 3, lines 8-16, 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 coffee of good sensory quality is a promise of the invention. However as I noted earlier, whether a coffee beverage has good sensory qualities can be very much subjective.
In relation to the crema aspect, while the specification does talk about consumers in certain markets preferring coffee without crema, it does not appear to make any specific promises in relation to the crema aspect of the present invention, other than stating that “these coffee beverages should be able to be produced optionally with crema or crema free”[30] and “In addition, by targeted modification of the textile fabric, optionally a coffee beverage with or without crema can be obtained”[31] (both, my underlining). While all the examples in test series 1-3 that use a textile fabric of high weight per unit area produced very little or no crema, that does not necessarily lead to the conclusion that coffee without crema is a promise of the invention. I am therefore not satisfied that the crema aspect is a promise of the invention.
[30] Specification at page 4, lines 23-24
[31] Specification at page 6, lines 5-8
The opponent submitted that the invention of claim 1 lacks utility as it does not specify the air permeability of the textile fabric and as this integer plays a crucial role in determining whether the coffee is produced with or without crema, claim 1 would not meet the promise of the invention of being able to produce coffee with or without crema.
100. As I have already found that coffee with or without crema is not a promise of the invention, this line of attack on the lack of utility of the claimed invention fails.
101. The opponent also submitted that the claimed invention lacks utility because it does not specify any seal for the partially open base and without such a seal there would be inadequate protection for the ground coffee within the capsule and the coffee produced would therefore be of poor sensory quality contrary to the main object of the invention.
102. While I accept that without a seal for the opening in the base, the coffee within the capsule could suffer from exposure to the surrounding atmosphere and as a consequence likely to deteriorate in its sensory attributes much quicker than it otherwise would, such a deterioration is not likely to be immediate. Moreover if such capsules are packaged in a sealed wrapper or container, they are likely to retain their sensory attributes as well as any capsule with a closed base.
103. I am not satisfied that the claimed invention lacks utility for the reasons submitted by the opponent.
INVENTIVE STEP
104. 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.
105. 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."
106. 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.”
107. 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
108. 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 yield certain volumes of coffee of good sensory attributes.
109. The applicant submitted that the present invention seeks to provide a single serve capsule that can provide coffee without crema.
110. As I noted earlier, while the examples in test series 1-3 that use a textile fabric with a high weight per unit area that falls within the range specified in claim 1, would suggest that the coffee produced by the capsule of claim 1 would be without crema, claim 1 includes no such limitation and nor do I think such a limitation is implicit as the examples in test series 1-3 do not cover the entire claimed range for the weight per unit area.
111. While the claim also does not specify that the coffee beverage produced should have good sensory attributes, one would expect that would be a desired property for anyone trying to come up with an improved coffee capsule, noting however that any opinion on the sensory qualities of a coffee beverage can be fairly subjective.
112. Hence I am inclined to go with the problem to be solved put forth by the opponent.
Obviousness in light of Common General Knowledge (CGK) alone
113. 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’.
114. It is clear from the opponent’s evidence, that a single serve coffee capsule having a capsule body with a partially open base, 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.
115. 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 colour of the roasted coffee and the weight per unit area of the textile fabric would have been a matter of routine when trying to provide a coffee capsule that can yield different volumes of coffee of good sensory quality.
116. In relation to the amount of coffee within a single serve capsule, Ms Watson has stated that “a coffee capsule at the earliest priority date of the '261 Application (being the Earliest Priority Date) would have contained less than 20 grams of ground coffee”[32] and Mr Crowley has stated at [44] 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.
[32] Watson at [39]
117. In relation to the D[4,3] particle size of the ground coffee, Ms Watson has stated at [99] that “the claimed range between 150 to 550 µm is effectively in line with 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 150 to 550 µm.
118. In relation to the colour value of the roasted ground coffee, Ms Watson has discussed this feature at [106]-[115] and concludes that “If I assume that the colour values described in the Specification refer to the Colorette 3b scale, then it would appear that the claimed range of between 50 and 150 embraces most, if not all, conventionally known degrees of roasting”[33]. Mr Crowley has stated that while “defining the color value in isolation from other roasting parameters such as temperature and duration of roasting is almost meaningless”[34], he is of the view that “the claimed values effectively embrace the vast majority of color values of ground coffee that was commercially available at the Earliest Priority Date”[35]. Again there is no evidence or submissions to the contrary and I am therefore satisfied that the coffee within a single serve coffee capsule at the priority date would have a colour value according to Colorette 3b in the range from 50 to 150.
[33] Watson at [115]
[34] Crowley at [75]
[35] Crowley at [74]
119. In relation to the weight per unit area of the textile fabric, 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 [37]
[37] Crowley at [84]
120. The applicant however submitted that “the use of a textile fabric having a weight per unit area in the range of 400 to 1500 g/m² surprisingly delivers the best result for crema free coffee and, in particular, makes possible a balanced compromise between the absence of crema on the one hand and the degree of extraction on the other”[38].
[38] Applicant’s written submissions at [51]
121. It is clear from the specification that the grammage of the textile fabric has a key role in determining whether the coffee is produced with or 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”.[39]
[39] Specification at pages 18-19
122. It would also appear from the specification that a textile fabric of low grammage would be chosen for producing coffee with crema. For example all of the examples in test series 4-7 which produce crema have a flat textile fabric with a grammage of only 70 g/m². So it is 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.
123. 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. Ms Watson has also stated that the grammage values could be readily found in filter media catalogues and has also annexed a catalogue of the company Hahnemu̎hle titled “Filter Papers” (exhibit SW-3). 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 all of them have fairly low values ranging from 65 to 190 with only one having a grammage of 310 g/m². This would again suggest that grammage in the range claimed in respect of filters for beverages was probably not as well-known as Ms Watson has opined.
124. Although Mr Crowleys 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 brewing machines.
125. Even if the aim of the invention is to produce coffee without crema, 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 [62]-[66] of her declaration 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
126. Increasing the grammage does not feature in the above list. I am therefore not satisfied that the evidence clearly establishes that it was CGK to provide a textile fabric having a weight per unit area in the high value range of 400 to 1500 g/m² even if the problem to be solved is to prevent the formation of crema.
127. 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
128. 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.
129. Although the applicant submitted that D1 uses a paper filter medium that does not have a weight per unit area as claimed, 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]. There is therefore clearly a substantial overlap between this range and the range specified in claim 1. I also note that the weight per unit area of 650 g/m² of the filter elements in test series 1-3 falls within this range in D1. I am therefore satisfied that the integer of weight per unit area in claim 1 is disclosed in D1.
130. 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. D1 does not expressly disclose that the colour value of the coffee, but states that the capsule is designed for the purpose of preparing an espresso. The opponent submitted that coffee meant for espresso would have a colour value within the range specified. In any event, based on the evidence, I have already found that the claimed range effectively covers all levels of roasting from very light brown to very dark brown. Therefore I am satisfied that the coffee in the capsule of D1 would have a colour that falls within the range specified.
131. 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 and thereby arrive at the claimed invention. Claim 1 therefore lacks an inventive step over D1 and the CGK.
132. In relation to claim 2, the opponent submitted that while the values of the air permeability disclosed in paragraph [60] of D1 are outside of the values defined in claim 2, as claim 2 does not mention the pressure drop, air permeability within the claimed values can be achieved by selecting an appropriate pressure drop. I have already found that although claim 2 does not specify the pressure differential, the PSA would understand this to be 100 pascal as disclosed in the body of the specification. The values disclosed in D1 are also with respect to 100 pascal and hence do not fall within the scope of claim 2. I also note that the values in paragraph [60] are in respect of the non-woven filter element and not in respect of the felt structure filter element. No values are given in respect of the air permeability of the felt structure and also there is no evidence from the opponent’s experts to suggest that the felt structure would have air permeability within the claimed range. Claim 2 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; (D7) US 2010/0239717 A1; (D11) WO 2012/100975 A1; (D12) WO 2008/121489 A1; (D15) EP 1792850 A1; (D18) EP 1500358 A1; (D19) WO 2012/100977 A1 and (D21) WO 2007/042414 A1
133. Each of these documents relates to a single serve coffee capsule with a filter element and having pulverulent ground coffee.
134. The opponent accepted that in each of these prior art the claimed grammage of the filter element is not disclosed but argued that this does not involve an inventive step as the claimed range was CGK at the priority date. They also submitted that D12 discloses a filter element made of multiple sheets of paper that is required to have sufficient strength , stiffness and porosity and that it is the view of Ms Watson that a skilled person would select a filter with a grammage in the claimed range.
135. I have earlier found that it is not CGK to provide a textile fabric having a weight per unit area in the high value range of 400 to 1500 g/m² in the context of a single serve coffee capsule, even if the filter element is a paper filter element. Even in the case of D12, I am not satisfied that because the filter element can comprise multiple sheets of paper that it is inherent that the grammage would be within the claimed range. Any grammage mentioned is well below the claimed range and there is no disclosure or teaching in these documents that increasing the grammage will prevent the formation of crema.. Therefore at least for this reason, I am not satisfied that the opponent has clearly established that the claimed invention lacks an inventive step over any of these documents when combined with the CGK.
CONCLUSION
136. The opposition is successful. Claim 1 lacks an inventive step in light of prior art document US 2012/0070543 (D1) and the CGK.
137. I allow the applicant a period of 2 months from the date of this decision to propose amendments to overcome this adverse finding.
COSTS
138. 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 and 2
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