Stephen James Anderson v Caffitaly System S.p.A
[2019] APO 16
•29 March 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stephen James Anderson v Caffitaly System S.p.A. [2019] APO 16
Patent Application: 2013233969
Title:System for making beverages
Patent Applicant: Caffitaly System S.p.A.
Opponent: Stephen James Anderson
Delegate: Dr V. Z. Kolev
Decision Date: 29 March 2019
Hearing Date: 07 August 2018, in Melbourne, further submissions filed on 09 August 2018, 14 August 2018, and 15 March 2019
Catchwords: PATENTS – section 59 opposition to grant of a patent – novelty – inventive step – usefulness (utility) – regulation 5.23 request – system for making beverages – sealing arrangement between the capsule and the capsule holder – sealed contact involving a lateral face – one document consulted under regulation 5.23 – opposition unsuccessful on all grounds – costs awarded
Representation: Counsel for the applicant: Mr Ben Fitzpatrick
Patent attorney for the applicant: Mr Richard Ollerenshaw of Patent Attorney Services
Counsel for the opponent: Ms Clare Cunliffe and Mr Wen H. Wu
Patent attorney for the opponent: Anderson IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013233969
Title:System for making beverages
Patent Applicant: Caffitaly System S.p.A.
Date of Decision: 29 March 2019
DECISION
Under regulation 5.23, for the purposes of deciding the opposition, I will consult document WO 2007/137974 A2 (D6).
For the purposes of deciding the opposition, I will not consult any of the following documents: Watson-2, D5, D7, D10, and Annexure H of the Opponent’s Summary.
The opposition is unsuccessful on all grounds. Subject to appeal, I direct that the application proceeds to grant.
I award costs according to the amounts specified in Schedule 8 against Stephen James Anderson.
REASONS FOR DECISION
Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).
Background
The matter relates to patent application 2013233969 (the Application) in the name of Caffitaly System S.p.A. (the Applicant). The Application is the national phase entry of the International Application PCT/IB2013/051595, published as WO 2013/136209. The Application was filed on 28 February 2013 and claims a priority date of 14 March 2012.
The Application was advertised as accepted on 09 June 2016. A notice of opposition to grant was filed on 09 September 2016 by Stephen James Anderson (the Opponent).
The statement of grounds and particulars (the SGP) was filed on 09 December 2016 together with the accompanying documents D1 to D22 (including D9A, D11A, and D16A). The evidence in support was completed on 09 March 2017. No evidence in answer was filed.
On 04 April 2017, the Opponent filed a request to amend the SGP. Document WO 2012/118367 A1 (already filed in evidence as exhibit SW-4) was also filed with this request as a corrected version of document D13 as mentioned in and filed together with the SGP. The request was allowed on 02 May 2017.
On 01 August 2017, the Applicant filed a request to amend the specification under section 104. The amendments were allowed unopposed on 30 November 2017.
On 24 July 2018, the Opponent filed the “Opponent’s Outline of Submissions” (the Opponent’s Summary or OS). On 31 July 2018, the Applicant filed the “Applicant’s Outline of Submissions” (the Applicant’s Summary or AS).
Relevantly, the present opposition is with respect to the Application as amended by the amendments filed on 01 August 2017, and is based on the SGP as amended on 02 May 2017.
Applicable Law and Onus
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations affecting, inter alia, the standard of proof required for an opposition to succeed. For patent applications filed on or after the above commencement date, subsection 60(3A) applies:
“If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.” (emphasis added)
10. The request for examination with respect to the Application was filed on 13 July 2015, hence subsection 60(3A) applies to the instant opposition. In addition, the filing date of the request for examination with respect to the Application being after 15 April 2013 also means that the Application was examined under the amended provisions of the Act and Regulations following the Raising the Bar Act and the same are also applicable to the present opposition proceedings.
11. It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition, and this applies even though the standard of proof is “the balance of probabilities”.
Grounds of Opposition and Evidence
Grounds of opposition
12. The SGP lists the following as grounds of opposition:
- Not a manner of manufacture – paragraph 18(1)(a);
- Lack of novelty – subparagraph 18(1)(b)(i);
- Lack of inventive step – subparagraph 18(1)(b)(ii);
- Not useful – paragraph 18(1)(c);
- Lack of clear enough and complete enough disclosure – paragraph 40(2)(a);
- The best method known to the applicant of performing the invention not disclosed – paragraph 40(2)(aa);
- Claims do not define the invention – paragraph 40(2)(b);
- Claims are not clear – subsection 40(3);
- Claims are not succinct – subsection 40(3); and
- Claims are not supported by matter disclosed in the specification – subsection 40(3).
13. However, in the Opponent’s Summary, the grounds of opposition are reduced to three:
“The Opponent opposes the grant of Standard Patent Application No. 2013233969 (Application) pursuant to s. 59 of the Patents Act 1990 (Cth) (Patents Act), on the grounds of lack of novelty, lack of inventive step, and lack of utility.” (OS at [1], original emphasis)
14. Therefore, my considerations will be limited to the above three grounds of opposition.
Evidence on file
15. The evidence filed in the opposition consists of:
Evidence in support consisting of:
· A declaration by Ms Margaret Sally-Anne Watson dated 09 March 2017 (Watson-1) with exhibits SW-1 to SW-15.
Evidence in answer was not filed.
Evidence in reply was not filed.
16. On 18 June 2018, the Opponent requested that a second declaration by Ms Margaret Sally-Anne Watson dated 07 June 2018 (Watson-2) with exhibits SW-16 to SW-19 be admitted into the opposition under regulation 5.23. In response, on 22 June 2018, a Delegate issued a letter explaining:
“It is convenient at this point to summarise the opposition as it presently stands. The opponent’s amended Statement of Grounds and Particulars particularises 22 items, nominated D1-D22. However, only the following 10 items in the SGP are presently in evidence in the opposition, as a consequence of being exhibited to Ms Watson’s declaration in support of the opposition:
D1 Exhibit SW-3 AU 2011309696 A1 is provided as the international publication WO 2012/042487 A1. D13 Exhibit SW-4 WO 2012/118367 A1 D16 Exhibit SW-5 A Consumentenbond webpage. D16A Exhibit SW-6 A computer-generated translation of D16. D17 Exhibit SW-7 A copy of a screenshot of a YouTube video. D18 Exhibit SW-8 A YouTube video corresponding to D17. D19 Exhibit SW-9 A declaration by Ralf Kamerbeek dated 19 April 2016 together with Annexes. D20 Exhibit SW-10 A declaration by Marc Wijnen dated 22 April 2016. D21 Exhibit SW-11 A declaration by Ralf Kamerbeek dated 27 October 2016. D22 Exhibit SW-12 A declaration by Marc Wijnen dated 26 October 2016.
Exhibits SW-13 and SW-14 to Ms Watson’s earlier declaration [Watson-1], WO 2013/132435 A1 (D23) and IT BO2012A00010 (D23A), respectively, are in evidence but they have not been particularised in the SGP and consequently cannot be relied on in the opposition. The applicant has since filed amendments to the claims for which leave has been granted, but it has filed no evidence in answer to the opposition.”
17. The Delegate then briefly considered the merits of the documents requested to be introduced under regulation 5.23 and concluded that:
“As it stands, D5, D6, D7 and D10 are not in evidence in the opposition, and I see no justification at this stage to invoke reg 5.23. Given the proximity of the hearing date, if the opponent wishes they could file submissions and/or a declaration addressing the significance of D5, D6, D7 and D10 to the opposition as it currently stands, with their submissions for the hearing. The hearing officer would then make a decision under reg 5.23 after the hearing. If the hearing officer proposes to rely on any one or more of D5, D6, D7 and D10 in deciding the opposition, the applicant will be given notice of this intention, and be allowed a period of time to give evidence or make representations about the document(s), in accordance with the provisions of reg 5.23.”
18. The issue was also discussed at the beginning of the hearing. I confirmed that the documents are not in evidence, however the Opponent can make submissions to explain their relevance, and I will then decide after the hearing whether to invoke regulation 5.23.
19. Another issue discussed at the hearing was related to the nature of document D16A (exhibit SW-6). At the hearing, I gave an oral direction with respect to this document, which direction I confirmed after the hearing in my letter dated 08 August 2018:
“At that Hearing, I made the following direction:
· The Opponent has 7 (seven) days from the date of the Hearing to file any further information they may wish to file in relation to D16A which is identified in the Statement of Grounds and Particulars as ‘English translation of D16’ and in the first declaration of Ms Watson as ‘a computer-generated translation of D16 (“D16A”), a copy of which is now produced and shown to me and marked “SW-6”’.
· If the Opponent files such further information, the Applicant has 7 (seven) days from the date of this filing to comment on the information.”
In response to the first dot point above, the Opponent filed a short, three-paragraph document titled “Opponent’s Further Submissions” which I will discuss later in this decision. The Applicant did not file any comments in accordance with the second dot point above.
20. The status of Annexure H of the Opponent’s Summary was also briefly discussed at the hearing, and in that respect, I commented in my letter (mentioned above) dated 08 August 2018 that:
“In a footnote on page 13 of these Submissions [OS], it is explained that ‘[i]t has come to the Opponent’s attention that the copy of D20 uploaded to Objective Connect was a poor quality copy. A clearer copy of D20 is attached as Annexure H’.
Document D20 was filed in evidence as exhibit SW-10 to the first declaration of Ms Watson [Watson-1]. On detailed comparison of Annexure H with SW-10, I note some differences – see e.g. the signatures in the bottom right-hand corner of each page. It appears that although both Annexure H and SW-10 are likely to be copies produced from ultimately the same original (which is difficult to ascertain determinatively due to the poor quality of both copies, but especially of SW-10), the two documents are in fact different copies. Therefore, I consider that Annexure H is different from SW-10 and hence not in evidence.
It follows that I will consider the relevance of Annexure H and, in a similar way as with documents D5, D6, and D10, decide whether or not to introduce it into the Opposition Proceedings under regulation 5.23 following all provisions of that regulation.”
In response to this part of my letter, the Applicant stated in a letter dated 09 August 2018:
“With reference to the footnote on page 13 of the Opponent’s Outline of Submissions it states that a clearer copy of D20 (SW-10) is attached as Annexure H. Thus it was characterised as a clearer copy of evidence previously filed. We did not object to the inclusion of Annexure H on that basis. However a mischaracterisation has occurred, as to it being purported to be a clearer copy of the originally filed document, given your comparison.
It is our view that Annexure H should not be introduced or admitted as evidence under Regulation 5.23. Apart from the fact that it should not be allowed under Regulation 5.23, we also consider that it is unlikely to change the outcome of the Opposition.”
21. In summary, I need to consider whether, under the provisions of regulation 5.23, in deciding the opposition, I will consult any one of the following documents: Watson-2; documents D5, D6, and D10 (document D7 was also originally listed in the Opponent’s request, however it was later made clear that the Opponent will not rely on D7, hence I will not consult it); and Annexure H of the Opponent’s Summary. Introducing new evidence under regulation 5.23 was discussed in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16:
“I conclude that a decision under regulation 5.23 must have regard to the nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.” (at [24])
My decision with respect to regulation 5.23 will be based on this test.
General observations in regards to Watson-1
22. I consider it important to provide some general observations regarding Watson-1. In this declaration, Ms Watson states at [198] that “[she] was provided with copies of the following documents” and this statement is followed by a list of 15 documents labelled with the letters (a) to (o). Ms Watson continues:
“For each claim in the specification, I was asked whether what is recited in that claim is disclosed in documents (a) to (n). Now produced and shown to me and marked ‘SW-15’ is a table summarising my findings as to whether claims are disclosed in the aforementioned documents.” (Watson-1 at [199], emphasis added)
I note however that document D7 does not appear to be present in the table of exhibit SW-15, despite being listed and labelled as document (d).
23. I also note that the table of exhibit SW-15 contains comments with respect to document D10, however I was unable to find document D10 in the list of documents provided to Ms Watson as per Watson-1 at [198]. An attempt to rectify this omission was made in Watson-2 which is not in evidence.
24. In addition, Ms Watson states at [200] of Watson-1:
“I was asked to compare the content of document (n) with the content of document (o), and to comment on the extent to which those contents are similar. I duly did so, and noted that I can readily see that the disclosure in D23 very closely corresponds to the disclosure in D23A throughout, notwithstanding that document (o) is in Italian.” (emphasis added)
Focusing my attention on the underlined word above, it may well be possible that Ms Watson is able to read Italian, however this is far from clear from the above statement and I am unable to find any mentioning of such ability in the evidence. In the absence of such mentioning, the above statement raises a number of questions as to the exact basis for the conclusion that was reached.
25. I must emphasise that Watson-1 is a duly executed legal document beginning with the following statement:
“On 9th March 2017, I, Margaret Sally-Anne Watson, of 1A Marriage Road, Brighton East, Victoria, 3187, make the following declaration under the Statutory Declarations Act 1959:”
26. While the above mentioned inaccuracies and uncertainties may or may not directly affect my decision, they nonetheless have the potential to raise some concerns about the accuracy of the other statements contained in Watson-1, hence I must apply caution in weighing the evidence.
The Specification of the Application
27. The specification makes it clear that:
“This invention relates to a system for making beverages.
In particular, it relates to a system for making beverages based on capsules containing a powdered food substance (for example coffee powder) which can be extracted by passing water through it to make a beverage (for example coffee). Prior art systems comprise a capsule holder into which the capsule is inserted. In some systems, inserted inside the capsule holder there are blades which allow the base of the capsule to be torn, making an opening through which the water can enter the capsule to interact with the food substance. The capsule also generally has a lid which allows the beverage out through it under suitable conditions.” (page 1, lines 2-12)
28. The specification then explains that:
“Once the opening has been made in the base, the water can be injected into the capsule. However, the presence of the powdered food substance in the capsule creates resistance to the passage of the water, which may therefore partly come out of the capsule through the opening and penetrate between the capsule and the capsule holder, causing water to leak out of the system and incorrect extraction of the beverage. To prevent that, in the prior art system there are therefore sealing means for creating a watertight seal between the capsule and the capsule holder. These sealing means in particular usually create the watertight seal between the capsule holder and a sealing member on the surface of the capsule which is generally at an edge of the capsule.” (page 1, lines 16-26)
29. Following a brief discussion of prior art solutions for the sealing arrangement, the specification notes:
“However, this prior art technology has several disadvantages. The indentations present on the edge of the capsule holder mean that a seal can only be formed with a capsule at whose edge there is a resilient sealing member into which the indentations of the capsule holder can sink.
Moreover, the watertight seal between the capsule and the capsule holder is created by the axial pressure of the capsule holder on the capsule at the resilient sealing member. The pressure needed for the seal must therefore be very precisely calibrated and must be sufficient to create the seal but not excessive, so that it then allows the capsule to be detached from the capsule holder.
In addition, the capsule and the resilient sealing member require significant construction precision. The level of sophistication of the construction techniques may affect production costs.
Furthermore, the use of a sealing member made of a material which is different to that of the capsule means an increase in production costs.” (page 2, line 24 to page 3, line 8)
30. In view of the outlined above issues with the prior art sealing arrangements, the aim of the invention is stated as:
“In this context, the technical purpose which forms the basis of this invention is to provide a system for making beverages which overcomes the above-mentioned disadvantages.
In particular, the technical purpose of this invention is to provide a system for making beverages which allows the creation of a watertight seal which is an alternative to those described above.
A further technical purpose of this invention is to provide a system for making beverages which allows the creation of a watertight seal between the capsule and the capsule holder irrespective of the presence or absence of the indentations or passages on the annular edge of the capsule holder.
Another technical purpose of this invention is to provide a system for making beverages which creates a watertight seal between the capsule and the capsule holder which allows reduced dependence of the seal on the axial pressure applied by the capsule holder on the capsule.
Yet another technical purpose of this invention is to provide a system for making beverages which allows the creation of a watertight seal between the capsule and the capsule holder which simplifies the construction process and which does not require excessive construction precision, thereby reducing production costs.” (page 3, lines 9-28)
31. In essence, the invention is concerned with the improvement of the watertight seal between the capsule and the capsule holder and is best described with reference to the drawings. I consider figures 1, 2, 3, and 5 most illustrative and they are reproduced below. Figures 4 and 6 show a slightly different embodiment in comparison to that of figures 3 and 5, characterised by the absence of the empty space 35 which is present on figures 3 and 5. Hence, I do not consider it necessary to reproduce figures 4 and 6.
32. The reproduced drawings represent:
“Figure 1 is an axial section of the system according to this invention;
Figure 2 is an axial section of the system of Figure 1, in a closed position;
Figure 3 shows the detail III of Figure 1;
…
Figure 5 shows the detail V of Figure 2” (page 4, lines 5-9)
33. The reference numbers of the system parts shown in the reproduced figures have the following meaning: 2 – a capsule; 3 – a body of the capsule; 4 – a central axis of the body; 5 – a lower wall of the body; 6 – a lateral wall of the body; 7 – a perimetric edge of the body; 8 – a lid of the capsule; 9 – a capsule holder; 10 – a housing of the capsule holder; 11 – an infeed opening of the capsule holder; 12 – an annular edge of the capsule holder; 13 – a contact element, the relative movement between this element and the capsule holder creates a watertight seal between the capsule and the capsule holder as well as between the capsule and the contact element; 14 – injection means mounted in the capsule holder for injecting pressurised water into the capsule through its lower wall; 15 – collecting means for collecting the beverage dispensed through the lid of the capsule; 16 – a collecting duct (at least one); 17 – an injecting pipe (at least one); 18 – blades designed to tear or pierce the lower wall; 19 – a projecting annular element at the top of the annular edge; 20 – an annular seat at the top of the annular edge; 21 – an annular groove on the perimetric edge; 22 – an annular tooth on the perimetric edge; 23 – a bottom zone on the surface of the annular groove; 24, 25 – two inner lateral faces on the surface of the annular groove; 26 – a top portion on the surface of the projecting annular element; 27, 28 – two outer lateral portions on the surface of the projecting annular element; 29 – a tip portion on the surface of the annular tooth; 30, 31 – two outer lateral faces on the surface of the annular tooth; 32 – a bottom portion on the surface of the annular seat; 33, 34 – two inner lateral portions on the surface of the annular seat; 35 – an empty space; 36 – projecting elements of the contact element against which the lid can tear to release the beverage as the pressure inside the capsule increases.
34. It is important to note that not all sealing elements (i.e. the parts with item numbers 19, 20, 21, and 22) must be present in each embodiment:
“Therefore, in accordance with this invention it is possible that only the projecting annular element 19 and the annular groove 21 are present, or only the annular seat 20 and the annular tooth 22 are present, or the projecting annular element 19, the annular seat 20, the annular tooth 22 and the annular groove 21 are present.” (page 8, lines 5-9)
35. The specification emphasises that the watertight seal is created by a lateral contact between the corresponding sealing elements (see e.g. page 8, line 29 to page 9, line 3; page 9, lines 13-18, 26-30; and page 10, lines 3-8), and that this creates certain advantages:
“Therefore, in accordance with this invention, it is not necessary for the watertight seal to be created at the bottom zone 23 and/or respectively at the tip portion 29. In this way the watertight seal is also guaranteed when for example the annular edge 12 of the capsule holder 9 has the surface with indentations and the capsule 2 is not provided with resilient sealing members. Moreover, in this way the watertight seal is also guaranteed in cases in which the top portion 26 of the annular edge 12 is ruined, for example following wear, and therefore the axial sealed coupling could no longer be guaranteed.” (page 11, line 27 to page 12, line 4)
36. The description concludes by summarising that:
“… as already indicated, advantageously the sealed coupling between the capsule 2 and the capsule holder 9 occurs, depending on the embodiment, exclusively at one of the lateral faces 24, 25 30, 31 or one of the annular lateral portions 27, 28 33, 34 respectively of the annular groove 21, the annular tooth 22, the projecting annular element 19 and the annular seat 20.
This invention brings important advantages.
First, the watertight seal between the capsule and the capsule holder, being created laterally, that is to say, depending on the embodiment, occurring at the annular lateral portions respectively of the first tooth, the groove, the seat and the second tooth, allows the watertight seal to be created even when the surface of the capsule holder has indentations in it or is uneven and the capsule is not equipped with a resilient sealing member suitable for compressing them.
Secondly, since the watertight seal between the capsule and the capsule holder is created at the lateral portions or lateral faces, there is a reduction in seal dependence on axial pressure.
Thirdly, the type of watertight seal created between the capsule and the capsule holder does not require sophisticated techniques nor excessive checks on construction tolerances. In fact, since the sealed coupling is created between the projecting annular element and the groove or the sealed coupling between the annular seat and the annular tooth is not created respectively at the bottom zone, the tip zone, the bottom portion or the top portion, but rather is created at the lateral portions and the lateral faces and advantageously with the possibility of deformation, there is no need for the seat and the second tooth or the groove and the second tooth to perfectly complement one another axially.
Finally, it should be noticed that this invention is relatively easy to produce and that even the cost linked to implementing the invention is not very high.” (page 14, line 5 to page 15, line 3)
37. The specification ends with 11 claims. Claim 1 is the only independent claim and is reproduced below (some formatting added to assist readability):
“1. A system for making beverages, comprising
a capsule (2) containing at least one powdered food substance which can be extracted by passing pressurised water through said capsule to make a beverage, the capsule (2) comprising
a substantially cup-shaped body (3) having a central axis (4), the body (3) comprising
a lower wall (5),
a lateral wall (6) extending from the lower wall (5), and,
at the opposite end of the lateral wall (6) to the lower wall (5), a perimetric edge (7) projecting outwards from the lateral wall (6),
the capsule (2) also comprising a lid (8) associated with the perimetric edge (7) for closing a top of the body (3);
a capsule holder (9) forming a housing (10) inside said capsule holder for accommodating the capsule (2), the capsule holder (9) comprising
an infeed opening (11) through which the capsule (2) can be inserted in the housing (10), the infeed opening (11) being delimited at its perimeter by an annular edge (12) of the capsule holder (9),
injection means (14) mounted in the capsule holder (9) for, in use, injecting pressurised water into the capsule (2) through the lower wall (5);
collecting means (15) for, in use, collecting the beverage dispensed through the lid (8) of the capsule (2);
the capsule holder (9) and the capsule (2) being able to adopt a sealed configuration in which the annular edge (12) is in contact with the capsule (2) and is connected to the capsule with a watertight seal; wherein alternatively:
·at the top of the annular edge (12) of the capsule holder (9) there is a projecting annular element (19);
at the perimetric edge (7) of the body (3) of the capsule (2), on the opposite side to that where the lid (8) of the capsule (2) is associated, there is an annular groove (21) on whose surface there are three portions annularly arranged relative to the central axis (4), consisting of a bottom zone (23) and two inner lateral faces (24, 25) which are laterally positioned on opposite sides of the bottom zone (23);
and the sealed configuration is a first sealed configuration in which the projecting annular element (19) is inserted in the annular groove (21) and is in sealed contact with at least one of the inner lateral faces (24, 25); or
·at the top of the annular edge (12) of the capsule holder (9) there is an annular seat (20);
at the perimetric edge (7) of the body (3) of the capsule (2), on the opposite side to that where the lid (8) of the capsule (2) is associated, there is an annular tooth (22) on whose surface there are three portions annularly arranged relative to the central axis (4), consisting of a tip portion (29) and two outer lateral faces (30, 31) which are laterally positioned on opposite sides of the tip portion (29);
and the sealed configuration is a second sealed configuration in which the annular seat (20) receives inside it the annular tooth (22) and is in sealed contact with at least one of the outer lateral faces (30, 31 ); or
·at the top of the annular edge (12) of the capsule holder (9) there are both a projecting annular element (19) and an annular seat (20);
at the perimetric edge (7) of the body (3) of the capsule (2), on the opposite side to that where the lid (8) of the capsule (2) is associated, there are both an annular groove (21) and an annular tooth (22), on the surface of the annular groove (21) there being three portions annularly arranged relative to the central axis (4), consisting of a bottom zone (23) and two inner lateral faces (24, 25) which are laterally positioned on opposite sides of the bottom zone (23), on the surface of the annular tooth (22) there being three portions annularly arranged relative to the central axis (4), consisting of a tip portion (29) and two outer lateral faces (30, 31) which are laterally positioned on opposite sides of the tip portion (29);
and the sealed configuration is a third sealed configuration in which the projecting annular element (19) is inserted in the annular groove (21) and is in sealed contact with at least one of the inner lateral faces (24, 25), and in which the annular seat (20) receives inside it the annular tooth (22) and is in sealed contact with at least one of the outer lateral faces (30, 31).”
Claim Interpretation
38. The Opponent does not raise lack of clarity as a ground of opposition, however there are some disagreements between the parties in relation to the proper interpretation of the claims which warrant more detailed discussions insofar as they are material to the other grounds of opposition.
39. It is important to note that claim 1 defines “[a] system for making beverages, comprising a capsule” and “a capsule holder” which are specifically designed to work together in a way so that “the capsule holder (9) and the capsule (2) [are] being able to adopt a sealed configuration in which the annular edge (12) is in contact with the capsule (2) and is connected to the capsule with a watertight seal”. I note that the system is defined by the use of expressions like “a lower wall”, “a top of the body” and “the top of the annular edge” which suggests a particular spatial orientation, i.e. generally as depicted in the figures but not always as the “bottom zone” of the groove is essentially on top in the drawing.
40. Clearly, these are not related to the spatial orientation of the system (i.e. the capsule and the capsule holder) when in use. I consider that they are used only for convenience and clarity of expression and I will also use the qualifiers “top” and “lower” in the same non-limiting context.
41. A critical feature is the perimetric edge of the body of the capsule “projecting outwards from the lateral wall” “at the opposite end of the lateral wall … to the lower wall”, wherein “a lid … [is] associated with the perimetric edge … for closing a top of the body” of the capsule and “at the perimetric edge …, on the opposite side to that where the lid … is associated, there is an annular groove” and/or “an annular tooth”.
42. I consider that the claim language clearly suggests that the sealing elements, i.e. the annular groove, the annular tooth, the projecting annular element, and the annular seat, as defined, must be present before the capsule and the capsule holder are brought into contact and not created by the pressure of the contact in the sealed configuration. While the parties seem to agree on this point, their main difference of opinion appears to be the nature and the amount of deformation of (some of) the sealing elements during the sealed contact. The Opponent submitted that since the deformation of the annular groove and the annular tooth is contemplated in the body of the specification and claimed in claims 5 and 10, there should be no limit on the deformation, whereas the Applicant considers that the deformation should be somewhat limited.
43. I note that Ms Watson places a lot of emphasis on the deformation in her explanation of the sealing arrangements in general. In addition, with respect to claims 5 and 10, she comments:
“I was asked, in relation to the recitation in claim 5 that in the sealed configuration the annular groove (21) and/or the annular tooth (22) are deformed at least at respectively at least one of the inner lateral faces (24, 25) and/or respectively at least one of the outer lateral faces (30, 31), to comment, having regard to what is disclosed in the specification, on whether sealing could be achieved if the condition defined in the claim is not met. I observed that claim 5 indicates that in the sealed configuration, at least one of the inner lateral faces and/or at least one of the outer lateral faces is deformed, and that I could not see how the seal would be achieved in the absence of that condition.” (Watson-1 at [191], emphasis in bold added)
“I was asked what I thought of claim 10. I noted that claim 10 denotes that in the sealed configuration, at least one of the inner and/or outer lateral faces must undergo elastic or plastic deformation. I indicated that I would expect such deformation to be required in order for the system of claim 1 to achieve a watertight seal, and that at least a component of the deformation would be elastic. I pointed out that I do not understand what the purpose of claim 10 is, except perhaps to imply that the system of claim 1 could achieve a watertight seal without any deformation occurring, and/or to imply that the deformation described in claim 5 is not elastic or plastic (neither of which I can see is possible).” (Watson-1 at [197], emphasis added)
44. It is clear that Ms Watson considers it impossible for the watertight seal defined in claim 1 to be achieved without deformation, in other words, a degree of deformation of certain sealing elements is implied in claim 1. The question I need to answer is whether any amount of deformation would still be within the scope of claim 1. On purposive construction in the context of the claim, I consider that the annular groove and/or the annular tooth are deformed in order to achieve the defined watertight seal between the capsule and the annular edge of the capsule holder. Since the projecting annular element is inserted in the annular groove and is in sealed contact with at least one of the inner lateral faces of the annular groove, I consider that the deformation of the annular groove is a direct result of the forces applied to the annular groove by the projecting annular element during its insertion as defined. Similarly, since the annular seat receives inside it the annular tooth and is in sealed contact with at least one of the outer lateral faces of the annular tooth, I consider that the deformation of the annular tooth is a direct result of the forces applied to the annular tooth by the annular seat when the annular tooth is received inside the annular seat as defined. In conclusion, I consider that although claim 1 does not clearly define the amount of deformation, on purposive construction in light of the evidence on file, the claim language implicitly defines the nature of the deformation and the mechanism by which it occurs, i.e. any deformation to a sealing element, in general, is a direct result of the forces received from its corresponding sealing element during their sealing engagement to achieve a watertight sealed configuration as defined in claim 1.
45. Another substantial point of contention between the parties is the interpretation of “a lid … associated with the perimetric edge … for closing a top of the body”. During the hearing, I expressed the view that this expression could potentially be interpreted in two possible ways:
(i) that the lid is for closing the top of the body and, in addtition and unrelated to the closing of the body, the lid is associated with the perimetric edge; or
(ii) that the lid is associated with the perimetric edge for the purpose of closing the body.
I invited oral submissions of the issue from both parties and having considered those submissions, I am more inclined to adopt interpretation (ii) for the following reasons. Firstly, from a purely grammatical point of view, interpretation (i) would require different order of the words, e.g. “a lid for closing a top of the body, associated with the perimetric edge”. Secondly, from the point of view of purposive construction, if the closing of the body is not related to the association of the lid with the perimetric edge, then this association becomes artificial and without any purpose. It follows that for the purpose of my decision I will adopt interpretation (ii).
46. It is also important to decide what is meant by the feature that the lid is associated with the perimetric edge for the purpose of closing the top of the body of the capsule. Since the capsule is “containing at least one powdered food substance”, I consider that closing the top has the purpose of preventing this “powdered food substance” from escaping the body of the capsule and should be interpreted in this sense.
47. Macquarie Dictionary (online edition, reviewed on 01 August 2018) gives a number of definitions for the word “associate”. While I note that most of these definitions relate to persons and not inanimate objects, bearing in mind the purpose of the claimed associating as discussed above, the following definition appears most suitable in the context of the claim (original formatting): “3. to unite; combine: coal associated with shale.”
48. Therefore, I conclude that the proper interpretation of the expression “a lid … associated with the perimetric edge … for closing a top of the body” is that the lid is united or combined with the perimetric edge for the purpose of closing the top of the body, thus together with the lower wall and the lateral wall creating an enclosure where the powdered food substance is contained within the body of the capsule. In addition, this uniting or combining occurs on the side of the perimetric edge opposite to the side where the annular groove and/or the annular tooth are located.
Novelty under Subparagraph 18(1)(b)(i)
49. Subsection 7(1) stipulates:
“For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.”
In turn, the above mentioned part of Schedule 1 defines:
“prior art base means:
…
(b) in relation to deciding whether an invention is or is not novel:
…
(ii) information contained in a published specification filed in respect of a complete application where:(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.”
50. The well-established test for novelty can be found in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 137 CLR 228 at 235:
“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.”
51. This test requires that all essential features of the claimed invention are disclosed in the prior art document. The level of disclosure in the prior art document was considered in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 486 as “… must contain clear and unmistakeable directions to do what the patentee claims to have invented”.
52. From the documents in evidence, the Opponent relies individually on two published specifications (D1 and D13) for novelty under paragraph 7(1)(c) known as “whole of contents” novelty as well as on a set of documents (D16 to D22, including D16A) to prove that relevant prior art information was made publicly available through doing a single act (sometimes referred to as “prior use”). The Opponent also submits that prior art documents D5, D6, and D10 are highly relevant for novelty and hence should be considered under the provisions of regulation 5.23.
53. It is also important to note that there is no suggestion by the Opponent that any of the claimed features of claim 1 are not essential, hence all features of the invention claimed in claim 1 must be disclosed in the prior art document or through doing the single prior act to establish that claim 1 is not novel. Any drawings from documents reproduced in the discussions are taken from the documents as filed in evidence or filed together with the request under regulation 5.23 (not what was filed together with the SGP which is not in evidence).
Novelty in light of document D1 (AU 2011309696 A1)
54. Document D1 is the Australian national phase entry of International Application PCT/IB2011/054274, filed on 28 September 2011 and having international publication date of 05 April 2012. The document was filed in evidence as exhibit SW-3. The Opponent focusses their submissions on the disclosure explained with reference to figures 1 and 8, both of which are reproduced below.
55. Document D1 explains:
“The capsule 1 … comprises a cup-shaped structure 2 made in a single truncated-cone-shaped body and defined by a side wall 3, by a bottom wall 4, and by a flat circular crown 5 which extends radially from an upper edge of the side wall 3. As we will see, such a flat circular crown 5 supports the cup-shaped structure 2 in the specific receptacle 160 of the percolating machine 150 (figure 1) …” (page 6, lines 1-8, emphasis added)
The capsule 1 further comprises a lid 6 which closes the free mouth of the cup-shaped structure 2 … allowing the entrapment of the granular material (not shown) to be infused inside the cup-shaped structure 2 itself. As shown in particular in figure 5, the lid 6 is arranged inside the circular crown 5 so that the upper edge of the side wall 3 is underneath the lid 6 itself.
The lid 6 has a substantially circular shape in the particular embodiment shown in figures 3, 4. In use, the lid 6 is accommodated in a circular, crown-shaped recess 6a obtained in the upper area of the wall 3. The lid 6 is also made of a rigid plastic material.
As shown in greater detail in figure 8, the upper part of the recess 6a includes an edge 66, which has an annular shape and projects internally towards a longitudinal symmetry axis (Y) of the cup-shaped structure 2. Such an edge 66 is also made of a plastic material and can thus be elastically deformable so as to allow the insertion of the lid 6 in the recess 6a. During the step of automatic coupling of the lid 6 with the respective cup-shaped structure 2, such a lid 6 is thus tightened between the bottom of the recess 6a, on one side, and the edge 66, on the other. Indeed, during the packaging of the capsule 1 in a specific packing machine (of known type and not illustrated), such a capsule 1 is subjected to high accelerations and thus, if the lid 6 were not tightened between the aforesaid elements, there would be the actual risk of a detachment of the lid 6 from the respective cup-shaped structure 2, with a consequent undesired spillage of product in the packaging machine.” (page 7, line 5 to page 8, line 9, emphasis added)
56. Even if I assume that the circular crown 5 provides a disclosure of a perimetric edge and that the edge 66 is the part of this perimetric edge where the lid 6 is associated (i.e. united or combined) with the perimetric edge for the purpose of closing the top of the body, I am still not satisfied that this association is “on the opposite side” of the perimetric edge with respect to the sealing elements as defined in claim 1. In that respect, I note that the “sealing annular rib 32 having triangular section with a rayed tip is provided on the lower surface of the circular crown 5” (page 9, lines 3-5) and it is this sealing annular rib that could provide disclosure of an annular tooth. However, if the sealing elements in D1 were to be provided “at the perimetric edge … of the body … of the capsule …, on the opposite side to that where the lid … of the capsule … is associated” as defined in claim 1, they would have to be provided on the radially outermost rim of the circular crown and not on its lower surface. Alternatively, if the sealing elements of D1 remain in their present location on the lower surface of the circular crown, then the location where the lid is associated with the circular crown should have been on the upper surface of the crown.
57. In addition, it does not appear to me that the corresponding sealing elements at the top of the annular edge of the capsule holder are clearly disclosed. I am unable to find any specific disclosure in the text of how the sealing elements on the circular crown (e.g. the annular rib 32) work together with the sealing elements (if any) on top of the annular edge. This could probably be explained with the fact that the sealing arrangement between the capsule and the capsule holder does not appear to be the main focus of the disclosure. The only disclosure of this sealing arrangement could possibly be ascertained from figure 1, however I find this inconclusive for the following reasons.
58. Reproduced below is “Figure SW-15.1 - Partial reproduction of Fig.1 in D1 showing an embodiment of the interaction at the edge of the capsule holder” prepared by Ms Watson and filed as part of exhibit SW-15. Firstly, it must be emphasised that an expanded illustration of the area of interest on figure 1 showing more details (e.g. similar to figure 8) is not provided in document D1. Hence, the partial reproduction is just a conveniently enlarged version of the portion of figure 1, however it does not reveal any extra detail which makes the interpretation uncertain. I note that Ms Watson does not provide any interpretation of the structures illustrated on the drawing. In the second drawing, I provided my best interpretation with the red line denoting the lower surface of the perimetric edge, the blue line representing the top surface of the annular edge of the capsule holder, and the green numerals 1 to 3 labelling what I interpret as possible sealing elements on those surfaces. After careful examination of the partial reproduction prepared by Ms Watson, I cannot identify any corresponding pair of sealing elements as defined in claim 1. If I follow the red line designating the lower surface of the perimetric edge and the blue line designating the top surface of the annular edge of the capsule holder, while it is possible to consider element 1 an annular tooth (probably the rib 32 of figure 8) and elements 2 and 3 as annular seats, I can see no correspondence between these elements – i.e. I can see no projecting annular element or annular tooth inserted in or received inside an annular groove or an annular seat, respectively.
59. I conclude that even my best attempt at interpreting the low resolution drawing of figure 1 does not result in the sealing arrangement defined in claim 1. Therefore, on the balance of probabilities, I am not satisfied that the Opponent has established that document D1 discloses all essential features of claim 1.
Novelty in light of document D13 (WO 2012/118367 A1)
60. Document D13 is the publication of International Application PCT/NL2011/050853 designating Australia, filed on 15 December 2011 and published on 07 September 2012. It was filed in evidence as exhibit SW-4.
61. The Opponent concentrates mainly on figures 2a and 2b, which are reproduced below.
62. Figure 2a shows the sealing arrangement in open configuration before the sealing, whereas figure 2b shows the sealed configuration created by the relative movement between the holder parts 119a and 119b. It is worth noting that the drawings in document D13 are presented “upside down” in comparison with the drawings of the Application and of document D1. Importantly, “[f]irst holder part 119a further comprises a clamping edge 120 for pressing engaging edge 114 onto second holder part 119b such that capsule holder 119 is substantially completely sealed, whereby leakage of water can be prevented” (page 17, lines 2-5). In addition:
“During the clamping particularly engaging edge 109 of capsule 101 is clamped in order to realize a seal between capsule 101 and the capsule holder. A special sealing element 109a is applied in the shown capsule 101 according to the invention. Sealing element 109a is of resilient nature and is provided with three annular absorption cavities 116 … Absorption cavities 116 are further bounded here by flange 107 … All cavities 116, 117 are adapted to facilitate deformation of sealing element 109a, whereby sealing element 109a can be pressed in simpler and better manner against the capsule holder, this enhancing the mutual sealing (see figure 2b). In the shown embodiment sealing element 109a is not connected to an upper side of flange 107, whereby the formed cavities 116, 117 can deform relatively easily. An (upper) side 118 of sealing element 109a remote from flange 107 follows the shape of the arcuate absorption cavities 116 and therefore takes a profiled form, whereby dam formation occurs which can further improve the sealing.” (page 16, lines 4-18, emphasis added)
63. The reference number 107 is not shown on figures 2a and 2b, however the flange 107 is the horizontal (on the figures) part of the capsule housing positioned immediately below the cavities 116:
“… housing 102 comprises a flange 107 which is integrally connected to the peripheral wall (see figure ld) and which as such forms part of an engaging edge 114 of capsule 101, this engaging edge 114 being adapted to allow clamping of capsule 101 by the capsule holder. An inner edge of flange 107 does in fact define (a part of) the discharge side of capsule 101, this discharge side being initially sealed substantially medium-tightly by a foil 108 connected to flange 107. The connection between flange 107 and foil 108 is preferably realized by means of (ultrasonic) heat welding, whereby a relatively reliable connection can be realized between flange 107 and foil 108.” (page 14, lines 22-30)
64. Although the foil 108 is not clearly identifiable on figures 2a and 2b, it could be considered a disclosure of the lid defined in claim 1 as it closes the body and is associated with the perimetric edge (i.e. the flange 107) on the opposite side (lower side on the figures), to the side of the sealing element (i.e. the sealing element 109a with the three annular absorption cavities 116).
65. It is clear that there is a projecting annular element (i.e. clamping edge 120) on the top (bottom on the figures) of the annular edge of the capsule holder (the first holder part 119a) as defined in claim 1. The Opponent submits that the small annular groove to the right of the rightmost absorption cavity 116 on figure 2a, as formed by the wall of this absorption cavity and the peripheral wall of the capsule housing, is the disclosure of the annular groove of claim 1. The annular groove being deformed by the insertion of the projecting annular element as shown on figure 2b.
66. I have already discussed the issue of the deformation of certain sealing elements and found that although deformation of the annular groove occurs, this deformation must be a direct result of the forces applied by the projecting annular element during its insertion in the annular groove. Referring to figures 2a and 2b, it does not appear to me that the deformation of the annular groove is a result of the insertion of the projecting annular element in the annular groove identified by the Opponent. In fact, it appears that the projecting annular element is aligned with the rightmost absorption cavity 116 which it squeezes to create a new annular groove which may include the original annular groove. Looking at figure 2b, it is not clear to me that the projecting annular element even occupies the space where the original annular groove was located next to the peripheral wall of the capsule housing.
67. It is also clear that there is an annular seat (see the annular groove illustrated on the first holder part 119a next to the clamping edge 120 in the outwardly direction, to the left on the figures) on the top of the annular edge of the capsule holder as defined in claim 1. The Opponent considers the middle absorption cavity 116 as a disclosure of the defined annular tooth which deforms during the sealing contact. As I concluded earlier, although deformation of the annular tooth occurs, this deformation must be a direct result of the forces applied by the annular seat when the annular tooth is received inside the annular seat, and looking at figure 2b, I do not consider that this is the case. The original annular tooth is deformed not by its interaction with the annular seat, but by the above mentioned squeezing of the rightmost absorption cavity by the projecting annular element.
68. In addition, it appears that this squeezing could have resulted in a transfer of resilient material forming the top (on the figures) of the absorption cavities 116 from the squeezed rightmost absorption cavity to the expanded middle absorption cavity. Thus, in figure 2b, the exact location of the original (i.e. before the inflation) outer lateral faces of the annular tooth appears uncertain. I note that it is at least one of these original outer lateral faces that must be in contact with the annular seat to create the watertight sealed configuration as defined. However, it does not appear that the original left outer face of the middle absorption cavity even reaches the annular seat, and it is uncertain whether the original right hand side outer lateral face of this absorption cavity is in contact with the annular seat, as it is possible that the resilient material originally forming part of the rightmost absorption cavity is what makes contact with the annular seat in figure 2b.
69. The Opponent also emphasises the sealing features on the capsule illustrated on figure 4 which is also reproduced below. While this drawing indeed shows an element that could potentially be considered a disclosure of an annular tooth and an annular groove, I am unable to find any clear disclosure in document D13 of the profile of the capsule holder parts that are to be used with the capsule of figure 4, and hence how the sealing arrangement will work. Importantly, at the end of the description of the capsule illustrated on figure 3, it is disclosed that “[t]hese cavities 207, 208 facilitate deformation of sealing element 205, whereby sealing element 205 can fit better and/or more firmly onto a clamping edge of a capsule holder. An example hereof is shown in figure 2b” (page 18, lines 4-6, emphasis added). However, no such an example is provided with respect to the capsule of figure 4. Instead it is explained that:
“Arranged on a side of flange 303 remote from foil 304 is an annular resilient sealing element 305 which is welded at a peripheral edge to flange 303. In order to facilitate welding, flange 303 is provided with a ridge 306, also referred to as so-called energy ring. Sealing element 305 is manufactured from non-polymeric material having some degree of resilience, such as paper, cardboard, textile or metal. Sealing element 305 encloses together with flange 303 an absorption cavity 307 and encloses together with flange 303 and housing 302 an (optional) smaller corner cavity 308. These cavities 307, 308 facilitate deformation of sealing element 305, whereby sealing element 305 can fit better and/or more firmly onto a clamping edge of a capsule holder. Shown clearly in this example is that sealing element 305 engages not only on flange 303 but also on an outer side of housing 302, which can further improve the sealing effect.” (page 18, lines 17-28)
70. Similarly, the profile of the capsule holder parts is not disclosed with respect to the capsules illustrated on figures 5 and 6 reproduced together with figure 4 for reference. This omission in the explanations with respect to figures 4, 5, and 6 in comparison with figure 3 suggests that the profiles are not the same as the one of figure 2, however there is no clear disclosure of these profiles.
71. Therefore, on the balance of probabilities, I am not satisfied that the Opponent has established that document D13 discloses all essential features of claim 1.
Novelty in light of a single act (prior use) as evidenced by documents D16 to D22 (including D16A)
72. The Opponent states:
“As to lack of novelty, the Opponent relies on the prior art information made publicly available through the prior use of the Nexpod coffee capsules in Nespresso Citiz coffee machines, as described in documents D16 to D22 (Watson #1, Ex SW-5 to SW-12).” (OS at [35], emphasis added)
73. Here, I will consider the contents of these documents. Later in this decision, I will decide on the relevance of Annexure H of the Opponent’s Summary.
74. As a general comment, I find the set of documents D16 to D22 (including D16A) somewhat confusing. Importantly, some of these documents are not in English. Regulation 22.15 is clear that:
“(3) If any other document is filed:
(a) the document must be in English; or
(b) the document must be filed with:
(i) a translation of the document into English; and
(ii) a related certificate of verification.”
In fact, none of the documents filed in a language other than English complies with this regulation.
75. In addition, the quality of the included graphical representations is such that it severely limits the possibility to extract useful information with a sufficient degree of certainty. In fact, this was the reason for the filing of Annexure H of the Opponent’s Summary.
76. I will consider these documents in more detail below in an attempt to establish their potential disclosure.
77. Document D16 (filed in evidence as exhibit SW-5) is a printout of a webpage containing what appears to be an article about NexPod. The document is not in English and without a certified or verified translation.
78. Document D16A (filed in evidence as exhibit SW-6) is supposedly a translation of document D16, however no related certificate of verification as required by regulation 22.15 is provided, and the nature of this document is uncertain. As already mentioned earlier, in the SGP, the document is simply referred to as “English translation of D16”, whereas in Watson-1, it is considered to be “a computer-generated translation of D16” (Watson-1 at [198], emphasis added). In the Opponent’s Further Submissions on the issue, mentioned earlier in this decision, it is stated at [2]-[3]:
“As indicated in the Statement of Grounds and Particulars, D16A and D16 were obtained from the publicly available EPO file wrapper (see page 3 above ‘GROUND A’ heading of the Statement of Grounds and Particulars). In particular, the documents are from the file wrapper for European Patent No. 2489609.
The Statement of Grounds filed on 31 October 2016 for an appeal of the opposition proceedings for European Patent No. 2489609 refers to D16 and D16A (denoted D11 and D11A in the European proceedings). D16A is identified as a ‘Translation of D11 [i.e. D16] into English’. No more specific information on how the translation was prepared has been identified from the material on the EPO file wrapper.”
In light of the clear requirements of regulation 22.15, I do not find the above explanations satisfactory. Hence, the probative value of document D16A is significantly diminished. In addition, the article of document D16A is brief with no technical details and I was unable to ascertain whether the NexPod capsules were tested with the Nespresso Citiz machine or not.
79. Document D17 (filed in evidence as exhibit SW-7) appears to be a printout containing a screenshot of a YouTube video identified as “Review: NexPods (Consumentenbond)”. The text below the image (probably an explanation or a comment) is not in English. No translation is provided at all.
80. Document D18 (filed in evidence as exhibit SW-8) is a YouTube video, most likely the one related to document D17. The voice in the video is not in English with no English translation and/or subtitles and, as noted by the Applicant, the Nespresso machine used does not appear to be the Nespresso Citiz.
81. Document D19 (filed in evidence as exhibit SW-9) appears to be a copy of a declaration by a person named Ralf Kamerbeek stating that:
“On 23-06-2010, [Ralf Kamerbeek] carried out measurements with one of the Capsules[.] These measurements were used by [his] colleague Mrs. D. van Loon in preparing the powerpoint file of 30 June 2010 attached as Annex: C. wherein these measurements are represented by the images on slide 4 as well as the image separately attached.” (at [5], emphasis added)
“Nexpod has adjusted their capsules for the ‘old’CitiZ appliances; they added a enclosing dyke for sealing” (Annex C)
82. Importantly, it appears that the measurements by Ralf Kamerbeek were limited only to the NexPod capsules. The sealing arrangement between the NexPod capsules and any Nespresso machine does not appear the have been investigated during these measurements. Such measurements with respect to the sealing arrangement appear to have been conducted separately at a later date:
“In addition, recent measurements have been carried with the Capsules, in part also using the Enclosing Member, by Verhoeven Ontwerpburo B.V. A declaration on behalf of Verhoeven Ontwerpburo B.V. on those measurements has been submitted in these EPO opposition proceedings separately.” (at [6])
83. Document D20 (filed in evidence as exhibit SW-10) appears to be a copy of a declaration by a person named Marc Wijnen (labelled as “Annex D” in the top left corner of the front page). The document is likely to be the declaration that was mentioned in document D19 (see [6] as quoted above):
“This declaration relates to measurements I recently carried out at the request of Jacobs Douwe Egberts (‘JDE’). These measurements were taken from Nexpod coffee capsules, a depiction of which is shown in Fig. 1. I received three of these capsules from JDE on 25 March 2016 and another one of these capsules from JDE on 19 April 2016 (these specific coffee capsules jointly ‘Capsules’, or when referring to either one ‘Capsule’). For the purpose of the measurements, I also received a brewing assembly with an enclosing member of a Nespresso Citiz coffee capsule machine from JDE on 29 March 2016 and a Nespresso Citiz coffee capsule machine, from which I took the capsule enclosing member, from JDE on 19 April 2016 (the enclosing members of these specific machines jointly ‘Encloslng Members’ or when referring to either one ‘Enclosing Member’).” (at [2], emphasis added)
“I carried out the following measurements:
(a) obtaining a section of an unused Capsule received on 25 March 2016
(b) obtaining a section of an unused Capsule received on 19 April 2016 when pressed against the Enclosing Member received on 19 April 2016 with a force of defined by the brewing assembly;
(c) obtaining a section of a used Capsule received on 25 March 2016 when pressed against the Enclosing Member received on 29 March 2016 with a force of 10N; and
(d) obtaining a section of a used Capsule received on 25 March 2016
To avoid deformation of the Capsules and the Enclosing Members as a result of reduced stability caused by cutting the Capsules and the Enclosing Member and forces exerted during cutting, each Capsule and each combination of a Capsule and an Enclosing Member that were mutually compressed was first immersed in epoxy resin (Technovit, 4006), which was allowed to cure until fully hardened at room temperature. Each block of resin containing the respective Capsule or combination of a Capsule and an Enclosing Member was then cut along a plane through the central axis of rotation of the capsule body.
I further declare that these measurements were carried out in accordance with standard care and procedure for these types of measurements, using a Dino digital microscope.” (at [7]-[9], emphasis added)
84. Document D21 (filed in evidence as exhibit SW-11) appears to be a copy of a second declaration by Ralf Kamerbeek in which he states:
“I already signed a declaration on 19 April 2016 [apparently contained in document D19]. This declaration is to confirm and supplement that declaration. Parts of the previous declaration are therefore repeated here.” (at [4])
It does not appear that this declaration contains any significant information that was not, in essence, contained in the declarations of documents D19 and D20, except some more details on the measured dimensions on the NexPod capsules with a graphical representation. In fact, two different copies of the declaration of document D20 appear to be attached as Annex D.
85. Document D22 (filed in evidence as exhibit SW-12) appears to be a copy of a second declaration by Marc Wijnen:
“I already signed a declaration on 22 April 2016 [apparently contained in document D20]. This declaration is to confirm and supplement that declaration.
This declaration relates to measurements I recently carried out at the request of Jacobs Douwe Egberts (‘JDE’). These measurements were taken from Nexpod coffee capsules. I received three of these capsules from JDE on 6 October 2016 (these specific coffee capsules jointly ‘Capsules’, or when referring to either one ‘Capsule’).
The measurements have been taken on 10 October 2016.” (at [3]-[5], emphasis added)
86. Apparently, the declaration relates to measurements on the NexPod capsules alone conducted in the following manner:
“Measurements of dimensions 2 and 3 have been taken from cross-sections of two of the Capsules cut in half along a plane through a central axis of the Capsule using a Dino digital microscope. Dimensions are read within 0.001 mm (the accuracy of the measurement is ± 0.025 mm).
To avoid deformation of the Capsules as a result of reduced stability caused by cutting the Capsules and forces exerted during cutting, two of the Capsules have first been immersed in epoxy resin (Technovit, 4006), which was allowed to cure until fully hardened at room temperature. Each block of resin containing the respective Capsule was then cut along a plane through the central axis of rotation of the capsule body.
I further declare that these measurements were carried out in accordance with standard care and procedure for these types of measurements.” (at [7]-[9], emphasis added)
87. Having considered documents D16 to D22 (including D16A), I conclude that, at best, the set of these documents could potentially suggest that the NexPod capsules were used with the Nespresso Citiz coffee machines before the priority date of the Application. It appears however, that any measurements that could potentially reveal relevant information about the working of the sealing arrangements during this use of the NexPod capsules were performed well after the priority date. Given the complexity of these measurements and the special equipment and knowledge required for their performing (see Marc Wijnen’s description in documents D20 and D22 above), I consider it highly unlikely that the information obtainable through these complex measurements could be ascertained by the simple act of using NexPod capsules with the Nespresso Citiz coffee machines.
88. On the balance of probabilities, I am not satisfied that the Opponent has established that the possible prior use of NexPod capsules with the Nespresso Citiz coffee machines could be such a single act that all essential features of claim 1 could be disclosed by the information made publicly available through doing this act as required by paragraph 7(1)(a). In light of this finding, I do not need to decide conclusively on whether the information obtained through the complex measurements done after the priority date is sufficient to render the invention defined in claim 1 not novel.
89. Nonetheless, I have some doubts as to whether the lid of the NexPod capsule is associated with the perimetric edge for closing the top of the body as defined in claim 1 (see the capsules, reproduced below, of D16A (on the left hand side) and D19). It appears to me that this association is realised between the upper region of the lateral wall and the cylindrical portion of the lid.
Regulation 5.23 considerations with respect to Annexure H of the Opponent’s Summary as well as documents D5, D10, and D6
90. I note that none of these documents was filed in evidence. While the relevance discussion of Annexure H is relatively straightforward, I consider that the circumstances of the case warrant somewhat more detailed considerations of the disclosure in documents D5, D10, and D6.
The relevance of Annexure H of the Opponent’s Summary
91. Annexure H was filed together with the Opponent’s Summary as a clearer copy of document D20 (filed in evidence as exhibit SW-10). However, as mentioned earlier in this decision, in my letter to both parties, I concluded that apparently “although both Annexure H and SW-10 are likely to be copies produced from ultimately the same original (which is difficult to ascertain determinatively due to the poor quality of both copies, but especially of SW-10), the two documents are in fact different copies”.
92. As I commented in the above novelty discussion, document D20 appears to be a copy of a declaration by a person named Marc Wijnen providing the results of some complex measurements performed after the priority date. Following the conclusion reached in that novelty discussion, I do not consider that the quality of the figures representing the results of these measurements would have the potential to change the outcome of the opposition in a significant way.
93. Therefore, I have no reasons to consult Annexure H of the Opponent’s Summary under regulation 5.23 for the purpose of deciding the opposition.
The relevance of document D5 (WO 2010/137954 A1) for novelty
94. Document D5 was filed together with the Opponent’s request under regulation 5.23 as exhibit SW-17 to Watson-2. Regarding to this document, the Opponent relies on the disclosure with respect to figure 4:
“A shaded version of Figure 4 is presented below, showing the projecting annular element (orange) is inserted in annular groove (green) and in sealed contact with an inner lateral face of the groove. As explained in D5 at p 15.25-28, the further ridge 40 [the reference number 40 appears omitted in figure 4] is arranged to abut against an outer circumferential surface 42 of the enclosing member 6. The outer circumferential surface 42 may be wedged against the inner circumferential surface 44 of the further ridge 40.
The table attached as Annexure B identifies the parts of Ms Watson’s expert evidence that correspond with the claims as amended in the C1 specification.
For the reasons given in the annexed table, the Opponent submits that the invention claimed in each of claims 1 to 6, 10 and 11 is not novel in light of D5.” (OS at [55]-[57], original emphasis)
95. Regarding figure 4, document D5 explains:
“In this example, the height HFR of the further ridge 40 is larger than the height HR of the ridges 28.i.
In this example, the further ridge 40 is arranged to abut against an outer circumferential surface 42 of the enclosing member 6. The outer circumferential surface 42 may be wedged against the inner circumferential surface 44 of the further ridge 40. In order to facilitate insertion of the enclosing member 6 within the perimeter of the further ridge 40, the further ridge 40 may comprise a conical section 46 on the inner circumferential surface 44.
Thus, in this example at least one of the ridges 28.i abuts against the enclosing member 6, and additionally, the further ridge 40 abuts against the enclosing member 6. Hence, an improved sealing engagement between the capsule 2 and the enclosing member 6 may be obtained.” (page 15, line 22 to page 16, line 6)
96. It is clear that the Opponent adopts Ms Watson’s understanding that the projecting annular element can, in fact, be the whole top of the annular edge, as suggested by the description of the Application:
“Advantageously, in this case the projecting annular element 19 may consist of the entire thickness of the annular edge 12 of the capsule holder 9.” (page 12, lines 7-9, emphasis added)
I do not agree with such an interpretation and I note that not all optional features in the description must necessarily be considered to be within the scope of the claims. The language of claim 1 clearly and unambiguously defines that “at the top of the annular edge (12) of the capsule holder (9) there is a projecting annular element (19)”. I consider this to mean that the projecting annular element is an object distinct from the annular edge; furthermore, it is located at the top of the annular edge and is projecting therefrom. It is not permissible for me to alter the clear meaning of the claim language by referring to the body of the specification.
97. I conclude that document D5 does not disclose any one of the features of projecting annular element or annular seat as defined in claim 1. It follows that introducing document D5 into the opposition under regulation 5.23 will not change the outcome of the opposition with respect to the ground of novelty.
The relevance of document D10 (EP 2230195 A1) for novelty
98. Document D10 was filed together with the Opponent’s request under regulation 5.23 as exhibit SW-16 to Watson-2. With respect to document D10, the Opponent submits:
“In Figure 18, the sealing means (Fig 18, 60) are designed to provide ‘liquid tightness’ between the injection cage (Fig 17, 13) and the surface of the flange-like rim: D10 [0070]. The pressing surface (14) of the injection cage (13) forces the sealing means into compression, thereby obtaining liquid tightness so as to enable the build-up of pressure within the capsule: D10 [0071].
The Opponent’s expert, Ms Watson, gave evidence in Watson #1 Exhibit SW-15, as to the disclosure in D10 of the features in the claims of the B2 specification of the Application. The Applicant did not file any evidence in answer to Ms Watson’s evidence.
The table in Annexure D identifies the parts of Ms Watson’s expert evidence that correspond with the claims as amended in the C1 specification.
For the reasons given in the table in Annexure D, the invention claimed in each of claims 1 to 6, 10 and 11 is not novel in light of D10.” (OS at [70]-[73], original emphasis)
99. Figures 12, 17, and 18 of document D10 are reproduced below:
100. Document D10 explains:
“As generally known per se, such machine 11 comprises a capsule holder 12 onto which the delivery wall of the capsule is pressed and a water injection cage 13 which has a pressing edge 14 which exerts pressure in a liquid-tight closure onto the upper surface of flange-like rim 5 of the capsule.” (at [65], emphasis added)
101. I consider that figures 12 and 17 do not show the presence of a projecting annular element as defined in claim 1 (see my discussion of this feature regarding document D5 above) as the pressing edge 14 does not have any additional object projecting from its top. While it could possibly be argued that the element 61 on top of the pressing edge 14 as illustrated on figure 18 could be considered a disclosure of this projecting annular element, the nature of the element 61 becomes apparent from the text of document D10:
“The capsule further comprises a sealing means 60 positioned at the intersection between the flange-like rim 5 and the sidewall 4 of the capsule. The sealing means 60 is designed 50 to provide liquid tightness between the injection cage 13 of the machine and the surface of the capsule at the flange-like rim as illustrated in figure 17. The pressing surface of the injection cage preferably comprises a plurality of radial slots or grooves 61 which form air inlets 55 when the compressive force of injection cage on the capsule and capsule holder is removed.” (at [70], emphasis added)
Clearly, a plurality of radial slots or grooves cannot be considered the same as a projecting annular element.
102. I conclude that, similarly to document D5, document D10 also does not disclose any one of the features of a projecting annular element or annular seat as defined in claim 1. It follows that introducing document D10 into the opposition under regulation 5.23 will not change the outcome of the opposition with respect to the ground of novelty.
The relevance of document D6 (WO 2007/137974 A2) for novelty
103. Document D6 was filed together with the Opponent’s request under regulation 5.23 as exhibit SW-18 to Watson-2. As best described with respect to the drawings (all reproduced below), this document discloses:
“A portion packaging for receiving a substance to produce a drink preferably comprises a curved base (11), a transition region (12) integrally formed on this base (11), a side wall (13) which is integrally formed on this transition region (12) and extends conically, and an edge (14) which is integrally formed on this side wall (13) and protrudes outwards. The base (11), the transition region (12) and the side wall (13) result in a cavity (15) for receiving the substance. The cavity (15) has an opening which is closable with a film (5). A deformable sealing element (3) is arranged on the portion packaging.” (abstract)
104. With respect to the drawings, document D6 states that:
“Fig. 1 shows an exemplary embodiment of a portion packaging and elements of a device according to the present invention before the extraction operation;
Fig. 2 shows the exemplary embodiment of Figure 1 shortly before the extraction operation; and
Fig. 3 shows the exemplary embodiment of Figure 1 during the extraction operation.” (page 6, line 33 to page 7, line 2, emphasis added)
105. A list of reference numbers for the parts illustrated on the drawings is included on page 12:
“List of reference numbers
1 Coffee capsule
129. In conclusion, while in the case of document D6 the lack of explicit teaching or clear inference of the feature of sealed contact involving a lateral face as claimed in claim 1 could have been overcome by convincing evidence, this has not been done. Therefore, although document D6 appears relevant to the opposition, on the balance of probabilities, I am not satisfied that the Opponent has established that document D6 discloses all essential features of claim 1.
Novelty summary
130. In the above discussions of the documents or acts relied on by the Opponent, including document D6 which I consulted under the provisions of regulation 5.23, I concluded that I am not satisfied that the Opponent has established that any one of these documents or acts discloses all essential features of claim 1. It follows that I am not satisfied that the Opponent has established that claim 1 is not novel. Claims 2 to 11 are ultimately appended to claim 1 and add further features to those already defined. Therefore, I am not satisfied that the Opponent has established that any one of the claims is not novel.
Inventive Step under Subparagraph 18(1)(b)(ii)
131. The test for obviousness was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 (Wellcome Foundation):
“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.” (at [45], emphasis added)
132. In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated at [53]:
“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the “2” position in place of the -Cl atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)
That approach should be accepted.” (original emphasis, references omitted)
133. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, it was stated:
“In Alphapharm, this Court reiterated that ‘obvious’ means ‘very plain’, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge…
Further, as recognised in Beecham Group Ltd’s (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (at [51-52], emphasis added, reference(s) omitted)
134. It is important to note that obviousness is a question of fact that is to be established by evidence.
135. The Opponent raises the ground of inventive step in light of the common general knowledge considered separately as well as in light of the common general knowledge together with ether one of documents D6, D5, and D10; and the information made publicly available through doing the act of prior use of NexPod capsules as evidenced by documents D16 to D22 (including D16A).
Inventive step in light of the common general knowledge considered separately
136. After discussing the evidence on the common general knowledge at section E2 of the Opponent’s Summary, the Opponent presents their case on obviousness in light of the common general knowledge in the following section E3 which is reproduced below in its entirety:
“It was common general knowledge that it was desirable to provide a seal to avoid fluid going into a dead space around the capsule (Watson #1 [37] to [55]).
In the case of a capsule which was sealed at the lip, it was obvious to provide a capsule lip feature (a ‘tooth’ on the rim of the capsule (Watson #1 [56], Fig 7 and [139], Fig 16).
It was also obvious to provide a projecting element on the capsule holder (Watson #1 [56], Fig 6), and to provide a seat on the capsule holder (Watson [86], Figure 10).
It was also obvious to provide complementary features on the capsule and capsule holder, particularly to avoid gaps (Watson #1 [158], Fig 18 and see also [156]).
Using complementary features may reduce the ability to use capsules in competitors’ machines (that is, it is a ‘lockout’ feature), but this is a commercial consideration, rather than a technical one, and not relevant to the issue of inventive step: see Hallen Co v Brabantia (UK) Ltd [1989] RPC 307 at 327, cited with approval in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21; 235 CLR 173.
In light of the common general knowledge, it is apparent that a skilled addressee at the priority date would have appreciated that one of the means of providing a sealed configuration at the priority date was to provide a complementary features on the capsule holder and the capsule (whether a projecting annular element on the capsule holder and an annular groove on the capsule, as in the first sealed configuration, or an annular seat on the capsule holder and an annular tooth on the capsule, as in the second sealed configuration, or a projecting annular element and an annular seat on the capsule holder and an annular groove and a tooth, as in the third sealed configuration).
Although such an arrangement might be commercially undesirable (because of the increased complexity of production, and because the complementary nature of the features would act as a ‘lockout’ and prevent use of the relevant capsules in non-compliant machines), it would not involve any difficulty overcome, or barrier crossed, to achieve. That is, it cannot be characterised as ‘beyond the skill of the calling’.
The Opponent says that each of the claims is obvious in light of the common general knowledge. (OS at [107]-[114], original emphasis, reference(s) omitted)
137. In the above, it appears that the Opponent refers to several distinct pieces of information (asserting that each one of them individually forms part of the common general knowledge), to build their case against the combination of features with clear working interrelationship as claimed in claim 1. I also note that the Opponent appears to be focusing more on the general concept of providing “complementary features on the capsule holder and the capsule” rather than on the exact features of the claimed invention (for example, the features reflecting the requirement of a sealed contact involving lateral faces are not even mentioned).
138. In her evidence, Ms Watson provided a number of example drawings illustrating different possible sealing arrangements between the capsule and the capsule holder “that would have been known at the earliest priority date” (Watson-1 at [56]). At the hearing, I asked both parties whether any of these configurations is within the scope of claim 1. The Opponent pointed to figures 6 and 10 of Watson-1 (reproduced below) and the corresponding explanations of Ms Watson.
139. Interestingly, paragraph [56] of Watson-1 reads (emphasis added):
“I was asked to explain in further detail how sealing could be performed at the option B location [at the capsule lip or perimetric edge]. I explained that I was not familiar with any capsule that had a sealing arrangement at that location at the earliest priority date, but that I would have known at the earliest priority date that a number of sealing arrangements for the option B location could be implemented. I was asked to draw examples of the sealing arrangements that would have been known at the earliest priority date. The sketch I prepared of the examples that would have been known to me is now reproduced below [as figure 6 and figure 7].”
Figures 6 and 7 illustrate four options for sealing at the lip of the capsule, options a) and b) being shown on figure 6. Neither of the two options of figure 6 appears to illustrate a lip or perimetric edge having any structures that could be considered an annular groove or an annular tooth.
140. With respect to figure 10, Ms Watson explains:
“Another variant of an Example a) seal arrangement might be where there is a female/male groove which is in a way an extension of the offset configuration and is also self-aligning in some respects if the material in between is thin. I prepared a sketch illustrating this variant, and the sketch I prepared is now reproduced below [as figure 10].
As shown above [on figure 10], there is a moment between the inner edge of the groove and the peak of the rib. There is also a moment between the peak of the rib and the outer edge of the groove.” (Watson-1 at [86]-[87], emphasis added)
141. On figure 6, example a) is characterised by the statement “[b]ite into material to deform and seal”. It is clear that neither the groove nor the rib of figure 10 are initially formed on the capsule lip or parametric edge which appears to be flat with no structures at all and being later deformed by the clamping device to form the seal. Having considered all of Ms Watson’s sealing arrangements, I do not consider that any of them is within the scope of claim 1. In light of this finding, I do not need to decide on whether the questions Ms Watson was asked were leading (as apparently suggested by the Applicant) or not.
142. I started my discussion on inventive step by outlining the test of Wellcome Foundation. While there are several important considerations related to the application of this test, I note that they all are based on the premise that the evidence suggests that the person skilled in the art would somehow reach a solution which is the same as the claimed invention. Based on the above discussion, I conclude that the evidence on file does not demonstrate that the person skilled in the art (in seeking a solution to whatever problem) would be motivated to reach, as a matter of routine, something within the scope of claim 1. In light of this finding, all other considerations involved in the application of the test cannot have any impact on the outcome, hence I do not need to consider them in any detail.
143. Therefore, I am not satisfied that the Opponent has established that the invention defined in claim 1 is obvious in light of the common general knowledge.
Inventive step in light of the common general knowledge together with document D6
144. I note that the evidence with respect to the prior art document D6 is limited to exhibit SW-15 which is in a form of a table indicating the locations in certain documents where Ms Watson considers that each claimed feature (before the amendment) is disclosed. Clearly, Ms Watson considers that all features of claim 1 are disclosed in document D6. While this evidence may be in a form somewhat adequate for the ground of novelty, I am unsure about its usefulness or sufficiency for the ground of inventive step.
145. In my earlier discussion with respect to novelty, I concluded that the embodiment discussed in some detail in document D6 the does not disclose the feature of a sealed contact involving a lateral face as claimed in claim 1. I was also unsure about the disclosure in this embodiment of an annular groove or an annular tooth due to the freestanding end of the fourth region 34. While document D6 also mentions the possibility for the end of the fourth region 34 been connected to the protruding edge 14, no detailed description or illustration of this embodiment is provided. Having compared the disclosure of document D6 with the claimed invention, I consider that the evidence on file is insufficient to establish, on the balance of probabilities, that a person skilled in the art, in seeking a solution to whatever problem, would be motivated to modify the teachings of document D6 and thus reach something within the scope of claim 1. In conclusion, I am not satisfied that the Opponent has established that the invention defined in claim 1 is obvious in light of the common general knowledge together with document D6.
The relevance of documents D5 and D10 for inventive step
146. Similar considerations apply to the evidence regarding documents D5 and D10 which, as I already discussed, do not disclose that at the top of the annular edge of the capsule holder there is a projecting annular element or an annular seat. I consider that the evidence on file is insufficient to establish, on the balance of probabilities, that a person skilled in the art, in seeking a solution to whatever problem, would be motivated to modify the teachings of either one of documents D5 and D10, and thus reach something within the scope of claim 1 even if these documents were to be considered part of the opposition. It follows that introducing documents D5 and D10 into the opposition under regulation 5.23 will not change the outcome of the opposition with respect to the ground of inventive step. This, combined with my earlier finding with respect to novelty, means that neither one of documents D5 and D10 has the potential to change the outcome of the opposition in a significant way.
147. Therefore, for the purpose of deciding the opposition, I have no reason to consult either of them under regulation 5.23.
Inventive step in light of the common general knowledge together with the information made publicly available through doing the act evidenced by documents D16 to D22 (including D16A)
148. In my earlier discussion of these documents with respect to novelty, I concluded that, at best, the set of these documents could potentially suggest that the NexPod capsules were used with the Nespresso Citiz coffee machines before the priority date of the Application.
149. Importantly, I noted that any measurements that could potentially reveal relevant information about the working of the sealing arrangements during the use of the NexPod capsules were performed well after the priority date and, given the complexity of these measurements, I considered it highly unlikely that the information obtainable through these complex measurements could be ascertained by the simple act of using NexPod capsules with the Nespresso Citiz coffee machines.
150. I also expressed my doubts as to whether the lid of the NexPod capsule is associated with the perimetric edge for closing the top of the body as defined in claim 1.
151. The evidence with respect to the prior art documents D16 to D22 (including D16A) is contained in the same table of exhibit SW-15 mentioned above. I consider that the evidence on file is insufficient to establish, on the balance of probabilities, that the person skilled in the art would, based on the very limited information made publicly available at the priority date through the use of NexPod capsules with the Nespresso Citiz coffee machines, be motivated as a matter of routine to reach the invention claimed in claim 1. Therefore, I am not satisfied that the Opponent has established that the invention defined in claim 1 is obvious in light of the common general knowledge together with the information made publicly available through the use of NexPod capsules with the Nespresso Citiz coffee machines as evidenced by documents D16 to D22 (including D16A).
Inventive step summary
152. I have found that I am not satisfied that the Opponent has established that claim 1 is obvious. Claims 2 to 11 are ultimately appended to claim 1 and add further features to those defined, hence I have no reason to consider that any one of these claims is obvious. Therefore in conclusion, I am not satisfied that the Opponent has established that any one of claims 1 to 11 does not involve an inventive step.
153. In light of the above finding, I do not need to decide conclusively on:
·the exact problem solved by the claimed invention; and
·what exactly formed part of the common general knowledge at the priority date.
Neither of these considerations have any potential to affect the outcome of the opposition.
Usefulness (Utility) under Paragraph 18(1)(c)
154. With respect to this ground of opposition, the Opponent refers to two parts of the specification (while some of the following parts of the description were reproduced earlier in this decision, I have provided them again for convenience):
“In this context, the technical purpose which forms the basis of this invention is to provide a system for making beverages which overcomes the above-mentioned disadvantages.
In particular, the technical purpose of this invention is to provide a system for making beverages which allows the creation of a watertight seal which is an alternative to those described above.
A further technical purpose of this invention is to provide a system for making beverages which allows the creation of a watertight seal between the capsule and the capsule holder irrespective of the presence or absence of the indentations or passages on the annular edge of the capsule holder.
Another technical purpose of this invention is to provide a system for making beverages which creates a watertight seal between the capsule and the capsule holder which allows reduced dependence of the seal on the axial pressure applied by the capsule holder on the capsule.
Yet another technical purpose of this invention is to provide a system for making beverages which allows the creation of a watertight seal between the capsule and the capsule holder which simplifies the construction process and which does not require excessive construction precision, thereby reducing production costs.
The technical purpose specified and the aims indicated are substantially achieved by a system for making beverages as described in the appended claims.” (page 3, lines 9-31, emphasis added)
“This invention brings important advantages.
First, the watertight seal between the capsule and the capsule holder, being created laterally, that is to say, depending on the embodiment, occurring at the annular lateral portions respectively of the first tooth, the groove, the seat and the second tooth, allows the watertight seal to be created even when the surface of the capsule holder has indentations in it or is uneven and the capsule is not equipped with a resilient sealing member suitable for compressing them.
Secondly, since the watertight seal between the capsule and the capsule holder is created at the lateral portions or lateral faces, there is a reduction in seal dependence on axial pressure.
Thirdly, the type of watertight seal created between the capsule and the capsule holder does not require sophisticated techniques nor excessive checks on construction tolerances. In fact, since the sealed coupling is created between the projecting annular element and the groove or the sealed coupling between the annular seat and the annular tooth is not created respectively at the bottom zone, the tip zone, the bottom portion or the top portion, but rather is created at the lateral portions and the lateral faces and advantageously with the possibility of deformation, there is no need for the seat and the second tooth or the groove and the second tooth to perfectly complement one another axially.
Finally, it should be noticed that this invention is relatively easy to produce and that even the cost linked to implementing the invention is not very high.” (page 14, line 12 to page 15, line 3, emphasis added)
155. The Opponent’s interpretation of the above text is reflected below:
“The Opponent says that these passages, properly understood having regard to the whole of the Application including the claims, contain a ‘composite’ promise for the described invention. A failure to attain any one of the elements of the composite promise in any claim defining the invention renders the invention so far as claimed in any claim, inutile (ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46; 131 IPR 1 (at [239]).” (OS at [129])
156. Based on the evidence of Ms Watson at [182]-[185] and [156] of Watson-1, the Opponent concludes:
“In light of these matters, the Opponent contends that:
(a) The claimed invention does not meet the promise of the specification; and that
(b) Not everything within the scope of the claim will be useful, since if the variations in the lip do not have a complementary shape to the variations in the capsule holder, an effective seal will not be achieved.” (OS at [132])
157. Even if I accept for the moment (without deciding on the issue) the Opponents assertion that the specification contains “a ‘composite’ promise for the described invention”, I note that the underlined wording in the above quotations clearly suggests that the promise relates to the capabilities of the claimed invention. In other words, the claimed invention provides design features that allow the listed advantages to be achieved.
158. Ms Watson explains:
“I noted that it is stated in the specification, at page 2, lines 24 to 28, that a seal can only be formed with a capsule at whose edge there is a resilient sealing member. I pointed out that I understand this statement to be identifying a disadvantage that resilient sealing on the capsule must be provided by a member, i.e. a feature distinct from the remainder of the capsule, which would likely increase production costs. I was asked whether the system of claim 1 overcomes this disadvantage. I indicated that at least a portion of the annular tooth and/or annular groove of the capsule would need to be defined by a resilient material, though noted that claim 1 does not indicate that the annular tooth or what defines the annular groove need be integral with the remainder of the perimetric edge of the capsule. I made the observation that claim 1 thus allows for an annular groove and annular tooth defined by a resilient sealing member, so that I cannot see that the claimed system overcomes this disadvantage.” (Watson-1 at [182], original emphasis)
159. The “specification, at page 2, lines 24 to 28” referred to by Ms Watson is reproduced below:
“However, this prior art technology has several disadvantages.
The indentations present on the edge of the capsule holder mean that a seal can only be formed with a capsule at whose edge there is a resilient sealing member into which the indentations of the capsule holder can sink.”
In the absence of evidence to the contrary, I consider that the above mentioned indentations are more likely to appear on the top face of any projecting elements. The requirement for a sealed contact with a lateral (not the top) face as defined in claim 1 clearly makes the claimed sealing arrangement less sensitive to these indentations. The evidence on file does not allow me to establish that the invention of claim 1 does not allow “the watertight seal to be created even when the surface of the capsule holder has indentations in it or is uneven and the capsule is not equipped with a resilient sealing member suitable for compressing them”.
160. In addition, the fact that a device within the scope of claim 1 can potentially be designed such that it would require a very complex, precise and time consuming production process involving a variety of costly materials does not necessarily mean that the claimed invention does not fulfil its promise as properly identified.
161. Ms Watson continues:
“I also noted that page 3, lines 20 to 23 of the specification states that [a]nother technical purpose of this invention is to provide a system for making beverages which creates a watertight seal between the capsule and the capsule holder which allows reduced dependence of the seal on the axial pressure applied by the capsule holder on the capsule. I was asked whether the claimed system achieved this technical purpose. I indicated that I had difficulty understanding what it means to reduce the dependence of the seal on axial pressure. I noted that to achieve a watertight seal between the capsule holder and the capsule in the system described and illustrated in the specification, it is critical that axial force (resulting in pressure) be applied by the capsule holder on the capsule and that it is difficult to see how the claimed system could achieve a seal whose dependence on axial pressure applied by the capsule holder to the capsule is reduced; indeed, it is clear to me, from the angled nature of the faces which contact to provide the sealing in the system described and illustrated in the specification, that axially derived pressure is critical. I also indicated, with reference to lines 21 to 22 on page 14 of the specification, that it is unclear how a reduction in seal dependence on axial pressure is achieved.” (Watson-1 at [184], emphasis added).
162. Despite Ms Watson’s concerns, I consider that the explanations provided in the specification are clear and comprehensive:
“Moreover, [in the prior art system] the watertight seal between the capsule and the capsule holder is created by the axial pressure of the capsule holder on the capsule at the resilient sealing member. The pressure needed for the seal must therefore be very precisely calibrated and must be sufficient to create the seal but not excessive, so that it then allows the capsule to be detached from the capsule holder.” (page 2, line 29 to page 3, line 3, emphasis added)
“In the sealed configuration the projecting annular element 19 is in sealed contact with at least one of the inner lateral faces 24, 25 of the annular groove 21. That is to say, the projecting annular element 19 and the annular groove 21 are shaped in such a way that the force applied between the projecting annular element 19 and the annular groove 21, responsible for the seal, at each contact point has a component transversal to the axial direction (that is to say a direction parallel with the central axis 4) and substantially perpendicular to the inner lateral face or faces 24, 25 with which the projecting annular element 19 is in contact.” (page 8, lines 13-22, emphasis added)
“Again in this case, the annular seat 20 and the annular tooth 22 are shaped in such a way that the force applied between the annular seat 20 and the annular tooth 22, responsible for the seal, at each contact point has a component transversal to the axial direction and substantially perpendicular to the outer lateral face or faces 30, 31 with which the annular seat 20 is in contact.” (page 9, lines 13-18, emphasis added)
“Therefore, in all cases the watertight seal is created laterally. In other words, the forces applied between the projecting annular element 19 and the annular groove 21 and/or respectively between the annular seat 20 and the annular tooth 22 have a component which is transversal to the axial direction and substantially perpendicular to the angled surfaces which are in contact with one another.” (page 10, lines 3-8, emphasis added)
“Advantageously, in the event of elastic deformation of the capsule 2, the capsule 2 itself will contribute to generating on the capsule holder 9 components of force which are transversal to the axial direction.” (page 11, lines 12-14)
“Therefore, in accordance with this invention, it is not necessary for the watertight seal to be created at the bottom zone 23 and/or respectively at the tip portion 29. In this way the watertight seal is also guaranteed when for example the annular edge 12 of the capsule holder 9 has the surface with indentations and the capsule 2 is not provided with resilient sealing members. Moreover, in this way the watertight seal is also guaranteed in cases in which the top portion 26 of the annular edge 12 is ruined, for example following wear, and therefore the axial sealed coupling could no longer be guaranteed.” (page 11, line 27 to page 12, line 4, emphasis added)
163. While I agree with Ms Watson that “it is critical that axial force (resulting in pressure) be applied by the capsule holder on the capsule”, as the specification explains, this application of axial force creates lateral force components, and it is these lateral components (not the residual axial component, if any) that are important for the sealing. The specification as a whole suggests that because of that, the axial force or pressure is not directly “needed for the seal” as in the described prior art, hence it does not need to be “very precisely calibrated”, which is expressed by stating that this “creates a watertight seal between the capsule and the capsule holder which allows reduced dependence of the seal on the axial pressure applied by the capsule holder on the capsule”. The evidence on file does not allow me to establish that the invention of claim 1 does not allow this to happen.
164. Ms Watson also comments:
“I noted that page 3, lines 24 to 28 of the specification states that another technical purpose of this invention is to provide a system for making beverages which allows the creation of a watertight seal between the capsule and the capsule holder which simplifies the construction process and which does not require excessive construction precision, thereby reducing costs. I was asked whether the claimed system achieved this technical purpose. I indicated that forming a capsule with the claimed annular tooth and/or annular groove would likely increase the complexity of any moulding and/or tooling required. I also indicated that given the wall thickness of capsules is typically relatively small, high-precision tooling would be required and this may decrease the reliability and repeatability of the capsule construction process, which can lead to increased waste material. I indicated that increased waste material, higher precision tooling and more complex moulding is likely to increase costs, and thus it does not necessarily follow that the claimed system achieves this technical purpose. I also indicated, with reference to lines 1 to 3 on page 15 of the specification, that it is not clear that the claimed invention is relatively easy to produce or that the cost linked to implementing the invention is not very high.” (Watson-1 at [185], emphasis added)
165. I must note that the language used by Ms Watson as emphasised above does not inspire much confidence that the invention claimed in claim 1 does not allow “the creation of a watertight seal between the capsule and the capsule holder which simplifies the construction process and which does not require excessive construction precision, thereby reducing production costs”, or that “the type of watertight seal created between the capsule and the capsule holder” does “require sophisticated techniques nor excessive checks on construction tolerances”, or indeed that it is not “relatively easy to produce” and “the cost linked to implementing the invention” is very high. In addition, I note that Ms Watson is focussing of the production of the capsule alone, and not on the production of the whole system for making beverages as claimed. It follows that the evidence on file does not allow me to establish that the invention of claim 1 will not be easier and cheaper to produce.
166. In conclusion, on the balance of probabilities, I am not satisfied that the Opponent has established that the invention as claimed in any one of the claims is not useful.
Conclusion and Costs
167. Earlier in this decision, I noted that I will need to consider whether, under the provisions of regulation 5.23, in deciding the opposition, I will consult any one of the following documents: Watson-2; documents D5, D6, and D10 (document D7 was also originally listed in the Opponent’s request, however it was later made clear that the Opponent will not rely on D7); and Annexure H of the Opponent’s Summary.
168. I have already decided that I will consult document D6 and I have already consulted it. I have also decided that I will not consult documents D5 and D10 as well as Annexure H of the Opponent’s Summary. I note that Watson-2 was submitted to correct some of the deficiencies of Watson-1. In light of my earlier discussions of the grounds of opposition, I do not consider that Watson-2 has the potential to change the outcome of this opposition in a significant way, hence I have no reason to consult it for the purpose of deciding the Opposition.
169. I have not found that the invention defined in any one of the claims is not novel, or lacks an inventive step, or is not useful. It follows that the opposition is unsuccessful on all grounds.
170. It is a normal practice that costs should follow the event, and the parties’ submissions at the hearing were along this lines, with the exception of any negative findings resulting from the possible introduction of documents under the provisions of regulation 5.23 following the Opponent’s request. I note that the specification of the Application was amended during the opposition, however I am uncertain whether the amendment was material to the outcome of the opposition. The opposition is unsuccessful and the fact that I consulted a document under regulation 5.23 did not change the outcome of the opposition. Therefore, I consider it fair to award costs against the Opponent.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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