Steven Borovec v K-fee System GmbH

[2020] APO 2

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Steven Borovec v K-fee System GmbH [2020] APO 2

Patent Application:                2013279478

Title:Portion capsule and method for producing a beverage by means of a portion capsule

Patent Applicant:                   K-fee System GmbH

Opponent:  Steven Borovec

Delegate:  R Subbarayan

Decision Date:  15 January 2020

Hearing Date:  16 October 2019, in Melbourne

Catchwords:  PATENTS – opposition to grant of a patent – portion capsule for producing a beverage – whether the claims are novel – whether claims are for a manner of manufacture – whether claims are useful – whether the specification is clear enough and complete enough – whether the claims are supported – whether the claims are clear – some of the claims lack an inventive step – none of the other grounds made out – costs awarded

Representation:  Counsel for the applicant:  Andrew Musgrave

Patent attorney for the applicant:  Collison & Co

Counsel for the opponent:  Ian Horak and Lucy Davis

Patent attorney for the opponent:  Churchill Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2013279478

Title:Portion capsule and method for producing a beverage by means of a portion capsule

Patent Applicant:                   K-fee System GmbH

Date of Decision:                   15 January 2020

DECISION

The opposition succeeds. The inventions defined in claims 30 and 31 lack an inventive step. None of the other grounds have been made out.

The applicant has two months from the date of this decision to propose suitable amendments that would overcome this adverse finding.  

Costs are awarded against the applicant.

REASONS FOR DECISION

BACKGROUND

1. Patent application AU 2013279478 in the name of K-Fee System GmbH (the applicant) was filed on 18 June 2013 as a PCT application (PCT/EP2013/062610) and claims priority from basic application DE 102012105282.4 filed on 18 June 2012. Following examination, the application was advertised as accepted on 20 August 2015. A notice of opposition to the grant of the patent was filed on 20 November 2015 by Steven Borovec (the opponent). The evidentiary stages were completed on 25 October 2016.

2. On 26 October 2016, the applicant filed a request under section 104 to amend the complete specification. The amendments were considered to be allowable and advertised as such on 15 December 2016. The amendments were opposed by the opponent and a hearing took place on 14 December 2017. I found that the amendments were not allowable and therefore refused them in my written decision that issued on 9 March 2018 (the S104 decision).[1]

   [1] Steven Borovec v K-Fee System GmbH [2018] APO 18

3. The applicant proposed further amendments to the claims on 10 May 2018 and these were advertised as having been allowed on 27 September 2018.

   GROUNDS OF OPPOSITION

4. A statement of grounds and particulars was filed on 22 February 2016. This statement was subsequently substituted by an amended statement that was filed on 3 October 2019. This amended statement lists the grounds of opposition as lack of novelty, lack of inventive step, lack of clarity, lack of support, lack of complete enough disclosure, lack of utility and lack of manner of manufacture. All of these grounds were canvassed at the hearing.

   EVIDENCE

5. Evidence filed for the present opposition comprises the following:

   Evidence in support

   ·Declaration of Margaret Sally-Anne Watson dated 23 May 2016 (Watson #1), together with Exhibits SW-1 to SW-4

   Evidence in answer

   ·Declaration of Phillip Higgins dated 24 August 2016 (Higgins #1), together with exhibits PH1-PH4

   Evidence in reply

   ·Declaration of Margaret Sally-Anne Watson dated 25 October 2016 (Watson #2)

6. The parties also relied on the following evidence filed for the s104 opposition:

   ·Declaration of Margaret Sally-Anne Watson dated 26 May 2017 excluding paragraphs [74]-[78], [84]-[86] and [90]-[99] (Watson #3), together with Exhibits SW-1 to SW-8

   ·Declaration of Phillip Higgins dated 26 July 2018 (Higgins #2), together with Exhibits PH1 to PH5

   ·Declaration of Margaret Sally-Anne Watson dated 26 August 2018 (Watson #4), together with Exhibit SW-9

7. Ms Watson is a qualified professional engineer with over two decades of experience in the field

   of mechanical engineering, including product design and development. She states that her “work
   in consumer goods included improvement of designs for single dose coffee machines and single
   dose capsules for said machines” and that specifically, she “was involved in understanding
   current coffee capsule inventions so as to design novel products that avoided infringement of
   

   [2] Watson #3 at [6]

   existing patented products”.[2]

8. Mr Higgins has a degree in industrial design and has over two decades of experience in the field

   of product design most of which has been the packaging industry. He has also been directly involved in the research and development of pods for coffee making systems.

   SPECIFICATION

9. The invention relates to a beverage capsule or pod for preparing a beverage using beverage making systems. Such capsules or pods are well known in the art and comprise a cylindrical or frustoconical body with a closed bottom generally made from plastic by a thermoforming or injection moulding process. The cavity defined by the capsule body is filled with a quantity of the beverage substance. A filter element is also situated within the cavity between the bottom of the body and the beverage substance. The top of the capsule body is then closed with a covering film. For preparation of the beverage the capsule is placed in a beverage making device and hot water under pressure is introduced into the capsule through a brewing spike that pierces the top film of the capsule. The hot water extracts or dissolves the substances required for the beverage and is expelled from the capsule bottom which has been opened by another spike.

10. The filter element serves to retain the beverage substance within the capsule during the brewing process. According to the specification, “These filter elements are either injection moulded from a thermoplastic material or thermoformed from a plastic film or embossed or made of a woven or non-woven material[3]”.

    [3] Specification at page 1

11. The specification then mentions certain disadvantages with filter elements produced by plastic injection moulding, deep drawing or embossing processes. The pores of the filter element must be of the right size for the particular beverage substance as larger pores will allow the beverage particles to pass through while smaller pores could result in the clogging of the filter element at high pressures.  Furthermore, the need for supports for the filter element to prevent deformation of the element and to space the element from the bottom of the capsule adds to the cost of production.

12. The specification then identifies three prior art patent documents that are stated to avoid these abovementioned disadvantages. These employ a filter holder with large openings that are covered with a filter material. But it then notes that these prior art documents themselves have other disadvantages like high manufacturing costs and the filter element having too small an effective filtering area.

13. The objective of the invention is stated to be “to make available a portion capsule with a filter assembly which can be more cost-effectively manufactured than the prior art and which at the same time avoids the disadvantages demonstrated in connection with the prior art”.[4]

    [4] Specification at page 2

14. The specification then states that this objective is achieved by making the filter element “using a non-woven fabric that is formed from plastic, preferably deep-drawn”.[5]

    [5] Specification at page 2

15. The specification then provides a definition of what is deep-drawn.

    “Deep-drawn within the context of the present invention means that a formerly flat filter element is given a 3D shape with at least one indentation or protrusion”[6].

    [6] Specification at page 2

16. The specification also states that the deep-drawing of the non-woven fabric can be carried out using a punch and die with the application of heat if necessary.

17. A number of preferred embodiments are then described with reference to various figures. Figures 4a and 4b are reproduced below:

18. These figures show a capsule 1 comprising a frustconical body 2 with a closed bottom 3 and a collar edge 5 on its upper end upon which a cover film 6 is welded or glued. A cavity 100 is formed between the capsule body between the bottom 3 and the upper film 6. A filter element 7 is situated within the cavity. The filter element is made of a non-woven fibrous material that has been deep-drawn into a cup-shape. The filter element is attached at its edge regions 7’ to the collar edge so that the bottom 7 of the element is spaced from the bottom of the capsule body. This ensures that the piercing spike 16 can pierce the bottom of the capsule during brewing without piercing or damaging the filter element. The specification also mentions that the filter element can be of an elastic design so that in embodiments in which the filter element is not spaced from the bottom of the capsule, the central area 7'' of the filter element bottom will deform on contact by the piercing spike without being perforated.

19. The specification notes that it was surprising that the fibrous material could be plastically deformed and deep-drawn without losing its filtering properties. In preferred embodiments, the fibrous material is made of fine synthetic fibres, such as polyester fibres, but the specification also states that paper or paper-like material can also be used for the filter material.

20. The specification also describes a method of manufacturing and inserting the filter element into the portion capsule with reference to figure 11 that is reproduced below.

21. The filter element 27 is initially a flat circular disc which is then pressed into the capsule body by means of a punch. The filter element is thereby deformed into a cup-shape within the capsule body with only the connecting region 27 of the filter element being in contact with the capsule body. The filter element is only pressed to such an extent that there is still a gap between the filter element and the capsule bottom. The filter element is then sealed to the capsule body by heat and pressure using a heated punch.

22. A deep-drawn filter element 7 having a flange-like collar 7' and channels 103' is illustrated in figure 9a which is reproduced below.

23. The specification states that the filter element of the present invention provides a number of advantages including the following:[7]

    ·It is simple and inexpensive.

    ·It has a comparatively larger filter area than a flat filter element, and which in particular is larger than the cross-sectional area of the capsule body.

    ·It permits cross-flow of the liquid (parallel to the main filter plane), thereby providing better mixing and draining.

    ·The risk of clogging of the screen mesh is significantly reduced or virtually eliminated.

    ·The elasticity permits the filter element to stretch without being punctured or perforated.

    [7] Specification at pages [3] and [7]

24. The specification ends with 32 claims (the amended claim set that I referred to earlier) of which claims 1, 27 and 30 are independent claims. These independent claims are set out below:

    1.Portion capsule (1) for preparing a beverage, comprising a capsule body (2) with a capsule bottom (3) and a lid (6), wherein between the capsule bottom (3) and the lid (6), a cavity (100) for receiving a powdered or liquid beverage substrate (101) is formed, and wherein a filter element (7) is situated and the filter element is made of non-woven fibre material, characterised in that the fibre material is plastically formed, deep-drawn and the filter element is elastic.

    27.Method for the manufacture of a portion capsule with a capsule body, and with a filter element therein made of a non-woven fibrous material, wherein the filter element is connected to the capsule body, then filled with a beverage and/or food substrate, and the capsule body is closed with a lid foil, characterised in that the filter element (7) is plastically formed, deep-drawn and the filter element is elastic.

    30. Process for the preparation of a portion capsule with a capsule body, and with a filter element made of a non-woven fibre material, characterised in that a planar filter element is inserted into a portion capsule using a punch and thereby moulded and then connected to the capsule body, in particular by means of sealing.

    CLAIM CONSTRUCTION

25. The approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:

    “the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”

26. I also note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:

    “It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”

27. The requirement for clarity is understood to be satisfied if there would be “no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim” (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). While it is certainly possible to apply an overly meticulous, semantic analysis and come up with words or short phrases which are, strictly speaking, not perfect, I note it was said in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, 77 IPR 229 at [81]:

    “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use”

28. I also note that where a claim is capable of more than one construction, then an absurd construction should be rejected in favour of an alternative construction (Henriksen v Tallon [1965] RPC 434), EMI v Lissen Ltd [1939] 56 RPC 23).

29. The present application was filed as a PCT application in the German language and the Australian national phase application is a translation of this German language document. When one reads the translated Australian specification, the use of non-idiomatic expressions is quite apparent, and this leads to certain terms not being easy to understand. I will now look at some of the contentious terms in the independent claims in order to determine the scope of these claims.

30. Claim 1 defines that the filter element is made of a non-woven fibre material and that this ‘fibre material is plastically formed, deep-drawn’. The applicant and the opponent had different views on how the terms ‘plastically formed’ and ‘deep-drawn’ should be construed.

    Plastically formed

31. The opponent submitted that this term should be construed as meaning that the fibre material has been subjected to some permanent deformation, without any limitation being placed on what the fibre material is made of. They rely on the evidence of Ms Watson in this regard who has variously stated as follows.

    “‘Plastically formed’ is very general and means that there has been some permanent deformation of the material. As I discuss further below at [52], I observe all references in the description of the Specification and Translation to "plastically forming" are in relation to the filter element shape creation, not the filter material fabric manufacture. "Plastically formed" does not mean that the material is necessarily made of plastic”.[8]

    “Thus the plastic forming is how the filter element is transformed into a three-dimensional (3D) (deep-drawn) shape”.[9]

    “In particular, I do not think that "plastically formed" would be understood as meaning that the filter element is made of a polymeric material”.[10]

    “Having regard to basic material science, a material is "plastically formed" when it has been deformed beyond its elastic limit (i.e. plastically); the material need not comprise "plastic", that is not be made from a polymeric material, to be plastically formed . A solid material, for example a metal such as aluminium, which is deformed beyond an elastic limit is plastically formed”.[11]

    [8] Watson #3 at [27]

    [9] Watson #3 at [28]

    [10] Watson #3 at [30]

    [11] Watson #2 at [35]

32. The applicant disagreed with this construction and submitted that this term is to be construed as the fibre material being formed or made from plastic for the following reasons.

    ·The claim clearly specifies two characteristics for the fibre material, namely (i) it is plastically formed and (ii) it is deep-drawn.   

    ·The expression ‘deep-drawn’, has within it the characteristic of being plastically deformed and hence the expression ‘plastically formed’ must have a different meaning and that this different meaning is that the fibre material is formed of plastic.

    ·There are clear statements in the specification that the filter element is formed from plastic.

    ·This is the view of Mr Higgins as well.

33. The term ‘plastically formed’ is used in a number of instances in the specification, some of which could suggest that this term is intended to mean that the fibre material is formed from plastic, whilst others would suggest that this term is intended to mean that the fibre material is plastically deformed to give it a three-dimensional shape.

34. The following passages could tend to support the former construction.

    “This objective is achieved through a portion capsule for production of a beverage, comprised of a capsule body with a capsule bottom and a lid, whereby between the capsule bottom and the lid, a cavity for accommodation of a powdery or liquid beverage substrate is provided and a filter element is situated in the cavity, and the filter element is made using a non-woven fabric that is formed from plastic, preferably deep-drawn”.[12] (my underlining)

    “Compared to the prior art, the portion capsule according to this invention has the advantage that a simple and inexpensive filter mesh is used as a filter screen. This material is formed from plastic, preferably deep-drawn, is not flat, and as a result has a comparatively larger filter area than a flat filter element, and which in particular is larger than the cross-sectional area of the capsule body to which it is attached”.[13] (my underlining)

    “Preferably, the nonwoven fibrous material is a mesh. A mesh according to the present invention is a random, non-woven structure made of fibres, in particular plastic fibres. A mesh according to the present invention preferably contains no paper or paper-like materials, but is rather completely made of plastic”.[14] (my underlining)

    [12] Specification at page 2

    [13] Specification at page 3

    [14] Specification at page 3

35. The following passage would however suggest that the latter construction is intended.

    “According to the invention the fibre material is plastically formed for the manufacture of the filter element, particularly deep-drawn. Thereby, this flat fibre material is given a three-dimensional form, for example as a strip, sheet, bow or plate. Plastic forming, particularly deep-drawing, of the nonwoven fibrous material is preferably carried out using pressure and/or heat treatment. Preferably, a punch will be pressed into a die for this purpose. The fibrous material is then located between the punch and the die and is thereby shaped or for example deep-drawn. After the plastic is formed, the filter element takes on its three-dimensional form (3D-shape). Through plastic forming, particularly deep-drawing, the fibrous material forms a space which can be filled with the beverage or food substrate. To those skilled in the art, it was amazing that the fibre material can be plastically deformed, particularly deep-drawn, without losing its filtering properties. According to another preferred embodiment of the present invention, the flat fibre material is embossed. Plastic forming can however be accomplished by any other forming method known to those skilled in the art”.[15] (my underlining)

    [15] Specification at page 5

1. Clearly there is ambiguity as to what is meant by the term ‘plastically formed” in the claims. While I accept that the specification does describe embodiments in which the filter element or filter mesh is formed/made of plastic, these are in the context of certain preferred embodiments rather than as an essential integer of the invention. The specification clearly contemplates embodiments where the filter element can be made of paper or other similar materials.

   A paper material or a paper-like material can preferably be used as a filter material, which preferably is at least partially coated with a plastic so that it is sealable.[16]

   Preferably the filter element is made of a material that is primarily paper or a material similar to paper.[17]

   [16] Specification at pages 9, 10, 11

   [17] Specification at page 20

2. Also the expression “plastic forming, particularly deep-drawing”, clearly indicates that ‘deep-drawing’ is a preferred form of plastic forming and this would again support the construction that ‘plastic forming’ means to plastically deform the filter element.

3. I do not find the applicant’s submission that, as ‘deep-drawn’ has embodied within it the concept of plastic deformation, the term ‘plastically formed’ must mean something else, to be persuasive. Clearly there are a number of ways of plastically forming an article and deep-drawing is one preferred way that is taught in the specification. In that respect the term ‘deep-drawn’ is providing a further limitation on the scope of the claim which otherwise would encompass all ways of plastic deformation. In fact, the passage on page 10 contemplates that embossing is another way of providing the plastic deformation.

4. Although Mr Higgins accepts that this term refers to plastic deformation of the fibre material to modify its ambient state form one shape to another, he is also of the view, that the fibre material has to be a polymer or polymer containing material.[18] In my view that would be improperly importing a gloss from the specification because, as noted by Ms Watson, plastic deformation including deep-drawing can be performed on materials that are not made of plastic.[19]

   [18] Higgins #1 at [54]

   [19] Watson #2 at [35]

5. On balance, in my view, the use of the term ‘plastically formed’ rather than ‘formed of plastic’ or ‘made of plastic’ in the claims leads me to conclude that that this term is intended to refer to the plastic deformation of the filter element to give it a three-dimensional shape rather than the filter element being made of plastic. Also, there is no further requirement that the fibre material should be made/formed from plastics.

   Deep-drawn

6. In relation to the term ‘deep-drawn’, as I noted earlier, the specification states that “Deep-drawn within the context of the present invention means that a formerly flat filter element is given a 3D shape with at least one indentation or protrusion”.

7. Firstly, I would note that as mentioned by Ms Watson, there is some uncertainty as to whether the phrase ‘with at least one indentation or protrusion’ refers to a tool that is used to produce the 3D shape or to the 3D shape having an indentation or protrusion.

8. Ms Watson has stated that her understanding of deep-drawing is that it involves fixing the edges of a material and then drawing the material by plunging a tool into the material to a depth approaching the draw limit of the material such that there is stretching, material thinning and plastic deformation of the material.[20]

   [20] Watson #2 at [29]-[32]

9. Mr Higgins also states that this involves changing the shape of a flat material by plunging a forming tool into the material so that it deforms and takes on the shape of the forming tool.[21]

   [21] Higgins #1 at [56]

10. As I noted earlier, the specification also describes deep-drawing as a method of forming a three-dimensional filter element from a flat circular disc of fibre material by placing it between a punch and die and plunging the punch into the die using pressure and heat such that the fibre material is plastically deformed and takes the shape of the punch. This clearly accords with Ms Watson’s and Mr Higgins’ understanding of this term.

11. Although the opponent submitted, that the dictionary definition provided in the specification only requires deep-drawn to give a 3D shape to the flat filter element without any further limitation as to how the 3D shape is formed, I disagree.

12. If the phrase ‘with at least one indentation or protrusion’ qualifies the tool that is used to form the 3D shape, then clearly the 3D shape has to be formed by such a tool and not by other means such as, for example, injection moulding.

13. Even if this term were to qualify the 3D shape, I am of the view that the term deep-drawn still has to be construed in the manner that a skilled addressee would. Both Ms Watson and Mr Higgins agree that deep-drawing in the traditional sense involves deforming a flat article using a punch and a die to give it a 3D shape. The present specification also clearly describes deep-drawing of the filter element as involving a process using a punch as a shaping tool. Furthermore, the fact that the specification describes deep-drawing as a preferred form of plastically forming would also suggest that deep-drawing is more than just plastic forming. I can therefore see no reason to not also adopt the traditional understanding of deep-drawing within the ‘dictionary definition’ set up in the specification.

14. In my view, in the context of the Opposed Application ‘deep-drawn' is a manufacturing process whereby a forming tool, such as a punch, having the shape of the object to be formed, is plunged into the fibre material to plastically deform and shape the material from its original flat profile to the shape of the forming tool.

15. Mr Higgins and Ms Watson have slightly different opinions as to what is the minimum aspect ratio in terms of the depth to the diameter of the tool for something to be termed ‘deep-drawn’ as opposed to just ‘drawn’. The specification itself does not provide any specific aspect ratio and I see no reason to limit the term in the claims to any specific aspect ratio, except to note that it requires the filter element to be drawn to a depth sufficient for the purposes of the invention.

    Filter element is ‘elastic’

16. Independent claims 1 and 27 define the filter element as being ‘elastic’.

17. The Macquarie Dictionary Online defines the term ‘elastic’ as “having the property of recovering shape after deformation, as solids” and “flexible, yielding, or accommodating”. Therefore, applying the plain meaning, this term in the claim would be understood as the filter element being flexible and having the ability to deform on application of a suitable force and then also being able to recover its original shape once the deforming force is removed.

18. Ms Watson has also given a similar construction to this term.

    “…being elastic simply indicates that the filter element is non-rigid and returns to an original state when forces on it are removed”.[22]

    [22] Watson #1 at [123]

19. Mr Higgins on the other hand is of the view that the elastic property has to be construed in the context of the ability of the filter element to yield without being pierced by the spike.

    “To my understanding this is straightforward in that the filter element has a
    degree of elasticity to prevent the event where the piecing spike comes into
    contact with the filter element and releasing the unfiltered contents of the
    capsule at an uncontrolled force. To my reading the term "elastic" is used in its
    normal definition in that the material can yield to a predetermine (sic) force prior to
    

    [23] Higgins #2 at [20]

    generating sufficient resistance to allow the piercing feature to penetrate the filter element”.[23]

20. As noted earlier, the specification describes that the filter element is made to be elastic so that it can deform without being perforated when contacted by the beverage dispensing spike. However, in the absence of such a limitation in the claims, construing this term to require that the filter element is able to yield without being perforated by the dispensing spike would be importing gloss from the body of the specification.

21. In my view, this term should be construed as requiring that the filter element is non-rigid and is able to deform on application of a suitable force and to return to its original state when that force is removed.

22. The opponent also submitted that as the claims do not specify the degree of elasticity any amount of elasticity would suffice. While it is true that the claims do not specify the degree of elasticity of the filter element either in terms of its elastic modulus or the ability to deform without being perforated when contacted by the dispensing spike, this requirement in the claim has to be construed in a commonsense manner in the context of the invention. I do not accept that even a miniscule or insignificant amount of elasticity would suffice. Every material has a property of elasticity as defined by its elastic modulus; however, that does not mean that it is elastic. Even a rigid member may have a certain degree of elasticity but that would not make it elastic in the sense that this term is normally understood. What is required is a filter element that is non-rigid and has an ability to deform or yield to a non-insignificant extent under a predetermined force and to recover its original state when that force is removed.

    Wherein a filter element ‘is situated’

23. Claim 1 defines that the portion capsule has a capsule body with a cavity between the capsule bottom and the lid, and wherein a filter element is situated.

24. Mr Higgins is of the view, that the use of the term ‘situated’ implies that the filter element “must be positioned in a certain place such as a shoulder, corner or specific region that would ensure a predetermined location for the filter”.[24]

    [24] PH-4 at claim [1.4]

25. The plain meaning of the term ‘situated’ is to be located or placed and applying this meaning, the claim merely requires the filter element to be located or placed within the cavity of the capsule. I can see no basis for further limiting the placement of the filter element to a specific region within the cavity.

    NOVELTY

26. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J 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”.

    This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).

27. In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 it was noted at [293]–[294]:

    “The touchstone for determining whether a prior publication ... anticipates a claimed invention, is stated in General Tire at 485 to 486:

    When the prior inventor’s publication and the patentee’s claim have respectively been construed by the Court in the light of all properly admissible evidence ... the question whether the patentee’s claim is new ... falls to be decided as a question of fact. If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor’s publications will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.

    If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... a signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.

    The metaphor of planting the flag has been taken up in this Court. For example, in ICI Chemicals, the Full Court at [51], after noting the metaphor, remarked that, in that case, the appellant’s argument involved the skilled addressee rummaging through a “flag locker” to find a flag which the prior art document possessed and could have planted. In Apotex Pty Ltd and Another v Sanofi-Aventis and Another [2008] FCA 1194; (2008) 78 IPR 485 (“Sanofi-Aventis (2008)”), Gyles J at [91] adopted a different metaphor, remarking that “anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun”. Each metaphor underlines the importance of the specificity required in order for a prior art document to anticipate an invention as claimed.”

28. The opponent submitted that some the claims are not novel over each of the following prior art.

    D1: WO 2012/038063

29. The opponent submitted that independent claims 1 and 27 at least lack novelty over D1 as the embodiment of figure 6 of this document discloses all the integers of claim 1.

30. Figures 6a and 6b of this document are reproduced below.

31. These figures show a portion capsule 1 having a capsule body 2, a capsule bottom 3, a cavity 100 for receiving a beverage substrate, a lid 6 and a filter element 7 situated within the cavity, wherein the filter element is a non-woven and is also elastic. While the filter element in most of the other embodiments of this invention is a flat fibre material, in the embodiment of figure 6 it is disclosed as having an edge region 7' that fits tightly against the lower part of the side wall region 102.

32. The opponent submitted that this edge region is a permanent deformation of the filter element leading to it having a three-dimensional shape of a cup and therefore the filter element can be considered to be deep-drawn.

33. I disagree. As I noted earlier, deep-drawn in the context of the claimed invention requires the three-dimensional shape to have been formed by the process of deep-drawing using a forming tool such as a punch. Furthermore the claims require the filter element to be plastically formed, i.e. by some form of plastic deformation. D1 is totally silent on how the filter element of figure 6 is produced. As noted by Mr Higgins, it could well be manufactured in that shape by moulding. I have therefore no basis to find that the integers of plastically formed and deep-drawn are clearly disclosed or clearly inherent.

34. Claims 1 and 27 are therefore novel over D1.

    D2: US 2010/0288131

35. The disclosure of this document is best understood with reference to figure 6 that is reproduced below:

36. This document teaches a portion capsule 50 having a capsule body 40, a capsule bottom 43, a cavity for receiving a beverage substrate, a lid 51 and a filter element 52 situated within the cavity, wherein the filter element is a non-woven fibre material. The filter element is stated to be “formed from porous sheet material 54 shaped to conform to the interior circular shape of the upright seal area 46 and may have fluted sides to form a basket shape having a flat bottom 55 or be in any shape suitable to hold beverage ingredients 53 and for attachment to the lid or cup”.[25]

    [25] D2 at [0071]

37. The opponent accepted that there is no explicit disclosure that the filter element is deep-drawn but argued that as the filter element is formed from sheet material shaped to conform to form a basket, this falls within the scope of deep-drawn.

38. I am not convinced with this argument. The integers plastically formed, deep-drawn as I have construed it requires the fibre material to be drawn by a punch or protrusion so that it is plastically deformed to the shape of the punch or protrusion. Just because the filter element of D2 is shaped to form a basket does not necessarily mean that it has to be plastically formed and deep-drawn. It could well be manufactured by another process that does not use a punch to plastically deform the sheet material. This is the view of Mr Higgins as well.[26] While Ms Watson has stated that this feature is disclosed it is only because she has adopted the construction that all deep-drawn requires is the formation of a three-dimensional shape from a sheet material. In my view, there is no clear and unmistakeable direction that the filter element of D2 is formed through a process of plastic deformation by deep-drawing or drawing. The integers of plastically formed and deep-drawn are not disclosed.

    [26] PH-4 at claim [1.7]

39. The opponent also accepted that there is no explicit disclosure of the filter element being elastic but submitted that as the filter element is made of cellulose polypropylene and has flutes this would inherently confer elasticity to the filter element. Again, I remain unconvinced. Elasticity in the context of the claimed invention requires the filter element to be non-rigid and have the ability to deform and then recover its shape once the deforming force is removed. There is nothing in D2 to suggest that the filter element 52 is non-rigid and has this characteristic. This integer is not disclosed.

40. It follows that independent claims 1 and 27 are novel over D2.

    D3: US 5325765

41. The relevant disclosure of document D3 is best understood with reference to Figure 1 that is reproduced below:

42. D3 discloses a portion capsule 10 having a capsule body 12 with a capsule bottom, a cavity for receiving a beverage substrate, a lid 14 and a filter element 16 situated within the cavity, wherein the filter element is a non-woven fibre material. It states that the “Filter 16 can be drawn or formed as a monolithic structure or may be made in a pattern and then rolled and sealed such as at seam 26”.[27]

    [27] D3 at column [3]

43. I do not accept the applicant’s submission that there is no disclosure of the filter element being deep-drawn. D3 clearly mentions that one of the ways of forming the filter element is by drawing. While it does not mention deep-drawing, I have earlier found that there is no clear disclosure in the opposed specification as to what constitutes deep-drawn as opposed to drawn. Ms Watson and Mr Higgins also have not given a consistent view as to what, if any, is the difference between the two. Even when I look at the illustrations of the filter element in the opposed specification and in D3, the depth to diameter ratio of the filter element is quite similar and there is no reason why the filter element of D3 if produced by drawing would not fall within the scope of having been deep-drawn. Even Mr Higgins agrees that “figure 4 shows a depth typical of ‘deep-drawn’”.[28] I am satisfied that this integer is disclosed in D3. Also as noted by Ms Watson, the process of drawing or deep-drawing would inherently include plastic deformation. Hence this integer is also disclosed.

    [28] PH-4 at claim [1.7]

1. There is no explicit disclosure in D3 that the filter element is elastic. The opponent submitted that as D3 teaches that the filter element may be made of PVC or polypropylene synthetic fibres, the filter element would be inherently elastic.

2. However Mr Higgins is of the view that this integer is not disclosed on the basis that “PVC & Polypropylene, like all polyolefins, are not typically elastic unless they are compounded with elastic materials to reduce yield strength”.[29]

   [29] PH-4 at claim [14]

3. I have earlier found that the term ‘elastic’ is to be construed as the filter element being non-rigid and having the ability to deform when subjected to a suitable force and to regain its original shape when that force is removed. Even if I accept that PVC and polypropylene will inherently have some elastic properties, that is not sufficient for D3 to disclose that the filter element per se is non-rigid and has sufficient elasticity to be able to deform under a suitable forced and to return to its undeformed state when that force is removed. In my view, there is no clear and unmistakeable directions in D3 that the filter element possesses this characteristic.

4. It follows that independent claims 1 and 27 are not anticipated by D3.

   D14: US 2005/0051478

5. The relevant disclosure of document D14 is best understood with reference to Figure 2 that is reproduced below:

6. It shows a portion capsule having a capsule body with a base and lid, a filter element situated within the capsule body and a beverage substrate. The filter element is stated to be “formed from commercially available materials, e.g., paper or polymer materials”.[30] The side walls of the filter element have channels 34 in the form of flutes or pleats to encourage flow in upper regions of the filter wall.

   [30] D14 at [0018]

7. The opponent submitted that as the filter element can be formed from paper, it follows that it is a non-woven and I accept that.

8. The opponent submitted that as the channels 34 are formed by pleats in the filter side wall, this indicates that the material is deep-drawn. However, I am not convinced that I can make this inference. There is no suggestion in D14 that the filter element is formed by deep-drawing and that it involves plastic deformation and it is very possible that it could have been formed by other manufacturing techniques such as moulding which Mr Watson states is a well-known technique for producing cellulose based filter materials. In my view, there is no clear disclosure that the filter element is plastically formed and deep-drawn.

9. In relation to the integer of the filter element being elastic, the opponent submitted that the channels in the side walls would inherently confer elasticity to the filter element. Again, I am not convinced that I can make this inference without any suggestion in D14 to that effect. In fact, D14 states that it is the vertical spacing of the filter bottom from the container bottom that ensures that the filter will be safeguarded from inadvertent puncture by the outlet probe 42[31], thereby suggesting that the filter element is not non-rigid or has the ability to deform on application of a suitable force. This integer is not disclosed in D14.

   [31] D14 at [0023]

10. It follows that independent claims 1 and 27 are not anticipated by D14.

    INVENTIVE STEP

11. In Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120; 90 IPR 457, Jessup J conveniently laid out the relevant principles applying to Section 18(1)(b)(ii) for lack of inventive step:

    “Armed with common general knowledge, and possibly also with one of the kinds of information referred to in s 7(3), the invention in question will have been obvious to the skilled person referred to in s 7(2) if he or she “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”: Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262, 286; Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411, 432 [50]. The content of the concept of “a matter of routine” approved by the High Court in the latter case was that provided by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157, 187-188:

    Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art ... directly be led as a matter of course to try [that which was invented under the patent in suit] ... in the expectation that it might well produce [the solution to the problem which gave rise to the invention in suit]?”.

12. Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59 the High Court stated at [41]:

    “The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”

    The Common General Knowledge (CGK)

13. It is clear from their respective resumes that both Ms Watson and Mr Higgins have considerable experience in the field of coffee capsules and are therefore well qualified to provide evidence in relation to the common general knowledge in this art.

14. Based on the evidence of Ms Watson and Mr Higgins, it appears to be common ground that portion capsules for brewing beverages were CGK in the art at the priority date and such capsules typically included the following features:

    ·A generally frusto-conical capsule body with a base and an open top defining a cavity.

    ·A filter element placed within the cavity of the capsule body.

    ·A beverage substrate placed within the cavity on top of the filter element.

    ·A lid to cover and seal the open top of the capsule body.

15. The method of using these capsules to extract the beverage, typically comprises placing the capsule in a beverage making machine wherein pressurised hot water would be introduced into the capsule through a spike that pierces the lid. The hot water would extract the aromatics from the beverage substrate, pass through the filter element and exit the capsule through another spike that has pierced the base of the capsule and thereafter be dispensed into a cup.

16. In relation to the filter element in the capsule, the experts agree that it is typically made from non-woven paper-based materials.

17. It was also known to make the filter elements from polymers but this was less common as polymer filter elements were expensive and could adversely affect the filtrate.

18. Ms Watson has also stated that paper-based filters were known to be made by moulding. Moulded filter elements could be made either by directly depositing the pulp into a mould or by taking a flat material and shape it in a mould.

    Moulding a filter element from a flat sheet

19. In relation to this CGK method of forming the filter element, Ms Watson has stated the following:

    ·Where the flat sheet is a cellulose based filter material, it is normally steamed to heat and soften the material

    ·The softened material is pushed into a mould and heated to dry it and set it into the shape of the mould

    ·One well-known moulding method was to deposit the pulp into a mould to achieve the required shape.

    ·Another known moulding method was to take a flat material and shape it in a mould using heat and/or pressure.

20. Mr Higgins has not provided a contrary view and I therefore accept these were part of the CGK in the art at the priority date.

    Plastically forming, Deep-drawing of a non-woven filter element

21. While the CGK that I have identified above, includes shaping a flat filter element in a mould using heat and/or pressure, it is clear from my earlier discussion of the integers ‘plastically formed’ and ‘deep-drawn’, that deep-drawn in the context of the invention, is more than shaping a flat fibre material in a mould. It involves using a punch to stretch a non-woven fibre material such that it undergoes plastic deformation and takes on the shape of the punch.

100. Mr Higgins does not identify deep-drawing as a well-known method of making non-woven filter elements.

101. While Ms Watson states that it was known to shape paper filter materials in a mould, she acknowledges that this is not the same as deep-drawing.

“Regarding Mr Higgins' comments at [42] of Higgins #1, I note that at [49] and [50] of my first declaration, I explain that the paper filter materials are formed when they are moist and warm so as to ensure that they are readily formable without there being a need to resort to the use of a pulp as described by Mr Higgins. The fibres are relaxed by the heat and moisture and are therefore more pliable. This is a similar effect to steam ironing of plant fibre-based cloth. It is not using material flow in the classic sense of drawing”.[32]

[32] Watson #2 at [31]

102. Based on the evidence of Ms Watson and Mr Higgins, I cannot be satisfied that plastically forming and deep-drawing of a non-woven filter element for use in portion capsules was CGK in the art at the priority date.

Inserting the filter element into the capsule body

103. Ms Watson has stated that it was known to use the punch that was used to cut the flat filter material to deposit the filter material into the capsule body.[33] As Mr Higgins does not refute this, I accept that this was CGK at the priority date.

[33] Watson #1 at [67]

Elastic filter element

104. In relation to the characteristic of elasticity of the non-woven filter element, Ms Watson has stated that this requires that the filter element is non-rigid and is able to deform and return to an original state when the deforming forces on it are removed and that there will always be a degree of elasticity to the filter element that is made of a polymer.[34]

[34] Watson #2 at [123]

105. Mr Higgins however notes that elasticity of the filter element is determined by the thickness of the material and the material used and just because a filter element is made of plastic does not necessarily mean that it is elastic.[35]

[35] PH-4 at claim [14]

106. As I noted earlier, while technically all materials will have an elastic property, what the claim requires is more than that. This requires the filter element to be non-rigid and be able to deform when a suitable force is applied to it and return to its original shape when that force is removed. As noted by Mr Higgins, it is entirely possible that a filter element made of polymer could be rigid and not be elastic in the sense that it is used in the specification. A classic example would be rigid PVC pipes, which although made of a polymer would not be considered ‘elastic’.

107. Based on the evidence, while filter elements made of polymers were CGK, I am not satisfied that elastic non-woven filter elements for portion capsules in the sense that I have construed this term were CGK at the priority date.

Lack of Inventive Step in the light of the CGK

108. The opponent submitted that independent claims 1, 27 and 30 lack an inventive step as all the integers of these claims are CGK in the art.

109. Claims 1 and 27, both require that the filter element is plastically formed, deep-drawn and also elastic. As I have found that these integers are not CGK in the art, I have no basis to conclude that it would have been a matter of routine to incorporate these features in those capsules that were well known at the priority date. It follows that these claims are not lacking an inventive step.

110. Claim 30 relates to a process for the preparation of a portion capsule, wherein the filter element is made of a non-woven fibre material and is characterised in that a planar filter element is inserted into a portion capsule using a punch and thereby moulded and then connected to the capsule body, preferably by means of sealing.

111. The first thing that I note with this claim is that two key integers that are present in independent claims 1 and 27 are not present in claim 30, namely that the filter element is ‘plastically formed, deep-drawn’ and that it is ‘elastic’.

112. While I have accepted Ms Watson’s statement that it was well known to deposit the filter element into the capsule body using a punch, Ms Watson has not also stated that the step of insertion using the punch also simultaneously moulds the filter element. In fact, she has stated that this process “could be a ‘neat way’ of making the capsule”.[36] Based on the evidence, I am not satisfied that claim 30 is obvious on the basis of the CGK alone.

[36] Watson #1 at [140]

Lack of inventive step in light of D1 or D2 or D14

113. I have found that the integers of being plastically formed and deep-drawn is not disclosed in these documents. As I have also found that these integers are not CGK in the art, I have no basis to conclude that it would have been a matter of routine to incorporate these features in the teachings of each of these documents. It follows that independent claims 1 and 27 do not lack an inventive step over D1 or D2 or D14.

114. In relation to independent claim 30, the opponent submitted that this claim lacks an inventive step over D1 and the CGK. They relied particularly on the disclosure on page 16 and claim 26 where it teaches that the filter element is cut out of a fabric web, inserted into the capsule by the blade and then sealed to the capsule body.

115. Claim 30 requires that the filter element is inserted by a punch whereby it is moulded. While D1 uses a knife to cut and insert the filter element, the disclosure is in relation to flat filter elements and there is no teaching that the step of insertion involves moulding or shaping of the filter element. The use of a punch as opposed to a knife in the claimed invention allows the filter element to be deep-drawn and thereby moulded. I have been presented with no evidence to satisfy me that it would have been a matter of routine to replace the knife of D1 with a punch.

116. Claim 30 does not lack an inventive step over D1.

117. The opponent also submitted that claim 30 lacks an inventive step over D2 and the CGK. They relied on the disclosure in paragraph [0076] that the “filter 52 may be advantageously inserted into the cup 40 and heat sealed …”

118. I am not convinced. There is no suggestion to use a punch to insert the filter element or that the filter element is moulded during such insertion. The teaching of inserting the filter element in D2 appears to be in relation to the formed filter element and not in relation to a planar filter element which is then moulded during the insertion step.

119. Claim 30 does not lack an inventive step over D2.

Lack of inventive step in light of D3

120. I have found that the only difference between the claimed invention and D3 is that D3 does not disclose the integer of the filter element being elastic. I have found that this integer was not CGK at the priority date. I have therefore no basis to conclude that faced with the problem of the spike perforating the filter element it would have been a matter of routine to incorporate this feature into the teaching of D3. It follows that independent claims 1 and 27 do not lack an inventive step over D3.

121. I note that document D1 does disclose a filter element that is elastic specifically for the purpose of preventing perforation of the filter element just as in the claimed invention, but as discussed, earlier, this document does not disclose that the filter element is plastically formed and deep-drawn. While it could be argued that by combining the teachings of D1 and D3, the skilled addressee would have arrived at the claimed invention, the opponent did not make any such submissions. Ms Watson has also not provided any evidence as to whether it would have been a matter of routine to combine these documents. It is also clear that there are ways other than making the filter element elastic in order to prevent it getting perforated, such as spacing the filter element from the base of the capsule. The opponent has not discharged its onus in establishing that the claimed invention would lack an inventive step if the disclosures of D1 and D3 are combined.

Lack of inventive step in light of D9: EP 2093148

122. D9 is titled “A plant for producing single-dose capsules for preparing beverages” and describes a plant in which a forming means forms individual beaker-shaped filter elements which are then placed inside a respective capsule body. Figure 3 of D9 is reproduced below:

123. Filtering material in the form of a tape 13 is unwound from a spool and sent to a forming matrix 30 where a tape ring clamp 35 clamps and holds the tape. A mobile group 37 comprising a cylindrical blade 42, a central punch 43 and a sliding punch 46 is then moved downwardly on to the tape. First the cylindrical blade 42 cuts a disc-shaped portion of the tape. Then the disc of filtering material is pressed against the cone-shaped mouth of a through-cavity 33 in the forming matrix 30 by the central punch, imparting the same form to the disc. The disc is then carried through the through-cavity by the sliding punch thereby further shaping the disc into the beaker-shape. Finally, the beaker-shaped filtering element is deposited by the sliding punch into the capsule body 101 where the upper edge of the filtering element is then welded to the capsule body.

124. The opponent submitted that the above disclosure of how the filter element is cut and shaped is clearly deep-drawing as it involves giving a flat filter material a three-dimensional shape using a punch and die. While they accept that it does not disclose that the filter element is non-woven, the use of non-woven fibre material was CGK in the art and would have therefore been an obvious choice of material to use with the teachings of D9.

125. The applicant submitted that D9 teaches a method of shaping a filter element to a beaker-shape and is not a process of deep-drawing.

126. The present specification teaches that deep-drawing can be performed using a punch and die. Clearly D9 teaches shaping of a flat filter element using a punch and die and on that basis there is an argument that the process of D9 is also deep-drawing. However the claimed invention requires that the filter element is plastically formed and deep-drawn, clearly bringing in the concept of plastic deformation in the process. There is nothing in the disclosure of D9 or the evidence of Ms Watson to suggest that the process of D9 involves plastic deformation of the flat filtering material when it is formed into the beaker-shape. There is no mention of heating in the process which might suggest that some plastic softening or deformation will take place. Based on the disclosure of D9 and the evidence, I cannot be satisfied that D9 clearly and unmistakeably teaches that the filter element is plastically formed and deep-drawn.

127. Even if I am wrong on this point, I also note that there is no teaching in D9 that the filtering element will be elastic. I have already found that while the use of non-woven was CGK the same cannot be said of the characteristic of being elastic in the manner that I have construed this term. Hence the integer of the filter element being elastic is also non-obvious over the teaching of D9 and the CGK.

128. It follows that independent claims 1 and 27 do not lack an inventive step over D9.

129. The opponent also submitted that independent claim 30 lacks an inventive step over D9.

130. From my discussion of the disclosure of D9, it is clear that it teaches a process for the preparation of a portion capsule with a capsule body, wherein a planar filter element 13 is inserted into the portion capsule using a punch 46 whereby it is moulded or shaped into a beaker-shaped filter element 105 which is then connected to the capsule body by welding. Therefore, all of the process steps of claim 30 are disclosed in D9. It is also evident from exhibit PH-4 (at claim 31) that Mr Higgins is also of the same view.

131. What is however lacking in D9, is any teaching regarding the characteristics of the filter material 13.

132. The opponent submitted that as the use of a non-woven filter material was CGK in the art at the priority date, it would have been obvious to use such a material in the process of D9 and by doing so, the skilled addressee would arrive at the invention of claim 30.

133. I am inclined to agree. It is the unrefuted view of Ms Watson that the use of a non-woven fibre material such as deposition style paper was CGK at the priority date. D9 is totally silent on what type of filter material would be suitable for the process described therein. Given this, in my view, the skilled addressee would be led to try different types of well-known filter material in order to establish their suitability to be employed in the described process. This would certainly include non-woven fibre material as these were well-known in the art and there is nothing in D9 that would suggest that this type of material would be unsuitable. By doing so, the skilled addressee would through routine experimentation arrive at the invention of claim 30. Claim 30 therefore lacks an inventive step over D9.

134. Claim 31 which is dependent on claim 30 further defines that “the moulded filter element is relaxed prior to sealing”.

135. While D9 does not explicitly state that the filter element is relaxed prior to sealing, it discloses that the punch returns to its initial position upon termination of the insertion operation and that the capsule is then advanced to a welding station where the welding of the filter element to the capsule body takes place. Mr Higgins is of the view that the discrete steps of withdrawing the punch and then advancing the capsule to the welding station would inherently relax the filter element before it is welded.[37] This is also the view of Ms Watson. This integer is therefore disclosed in D9. It follows that claim 31 also lacks an inventive step over D9.

[37] PH-4 at claim [31]

DISCLOSURE

136. Section 40(2)(a) of the Act requires that the specification must“disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art”.

137. The provisions of s40(2)(a) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72, who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a specification provides an enabling disclosure as required by section 40(2):

• construe the claims to determine the scope of invention as claimed,
• construe the description to determine what it discloses to the person skilled in the art, and
• decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.

Claims 1 and 27 - Elastic filter element

138. The opponent submitted that although the specification describes the elasticity of the filter element by reference to its ability to yield or stretch upon contact with a perforation means, it does not provide any further guidance on how to make the filter element perform that way as there are a number of variables such as the selection of material and the parameters of the perforating means.

139. The applicant submitted that there are numerous explanations for the purpose of elasticity of the

filter member in the body of the specification and the specification therefore provides a workable
standard for the skilled addressee and that this is further supported by the evidence of Mr Higgins
who has stated as follows:

“There is only limited information in the specification to what degree of elasticity is required, save to the reference to page 7 of the specification, paragraph 4, however I consider that it would be well within the realms of those skilled in this field to conduct such test with a force gauge such as an "lnstron Tester" in order to determine precise measurements of elasticity in the filter element required as it may be dependent on not only the type of capsule used but also differ due to the specific beverage machine being utilised in the beverage making process where the piercing spike may sit higher or lower from one machine to the next. The profile of the piercing spike and the speed in which the spike penetrates the filter element would also impact the piercing force measurement”.[38]

[38] Higgins #2 at [23]

140. The passages at pages 7 and 17 of the specification teach that the filter element can be made to be elastic and the purpose of providing such elasticity. While I accept that it does not specify particular materials or elasticity values for the material chosen and also that the degree of elasticity that would need to be provided will be dependent on a number of factors, that does not necessarily lead to the conclusion that the invention is not disclosed in a clear enough and complete enough manner. There is no requirement for patent specifications to provide detailed specifications of every feature of the invention; as long as it provides a workable standard, that is sufficient. In the present case, the specification clearly states that the purpose of making the filter element elastic is to enable it to stretch without being pierced when it is contacted by the piercing spike that has pierced through the bottom of the capsule body. In my view, that is sufficient for the skilled addressee to produce, through routine experimentation and taking into account the other factors noted by Ms Watson and Mr Higgins, a filter element that will have the required elasticity.

141. I am satisfied that the specification is clear enough and complete enough in this regard.

Claim 19 – “direction of indentation”

142. The opponent submitted that while this claim defines an indentation in the direction of the filling side, the disclosure in the specification only illustrates an indentation in the opposite direction.

143. Claim 19 defines that the capsule bottom has an indentation 21 in the direction of the filling side of the capsule. As the opponent submitted this indentation can be seen in figure 3 that is reproduced below:

144. In the description accompanying figure 3, this feature 21 is referred to as a bulge that sits in the indentation of the brewing ladle holder bottom 23.

145. The plain meaning of ‘indentation’ is a cut, notch or recess on the surface of something. Applying that meaning, one could understand feature 21 as an indentation on the bottom of the capsule when looking at the bottom from the top or filling side of the capsule. It appears that the opponent has construed the term ‘in the direction of the filling side’ as a reference to the direction in which the notch or recess extends rather than the direction from which the notch or recess is viewed.

146. While the construction adopted by the opponent may well be a possible construction for this term in the claim, I am mindful that I should adopt a commonsense approach to the construction of terms in the claim and where there is ambiguity resolve it by referring to the body of the specification. In my view, when the claim is read in the light of the specification as a whole, the skilled addressee would readily understand that the reference to the term ‘indentation in the direction of the filling side’ is a reference to an indentation in the capsule bottom when viewed from the filling side. There is an enabling disclosure for this feature in the specification.

Claims 20 and 22 – external perforation means

147. The opponent submitted that the claims do not make clear that the perforation means is part of the beverage preparation device and the perforation means is not specified in the specification.

148. Again, when the claim is read in context, the skilled addressee would understand that the reference to the external perforation means is a reference to the perforating spike in the beverage making machine in which the portion capsules are intended to be used. A perforation means in the form of a brewing spike 16 is clearly disclosed in the specification. There is an enabling disclosure of this feature in the specification.

Claim 25 – “sealing to the capsule bottom”

149. The opponent submitted that the specification does not provide an enabling disclosure of how to seal a plastically formed, deep-drawn filter element to the capsule bottom.

150. The applicant submitted that the skilled addressee would understand how to seal the filter element to the capsule bottom and I agree. The specification does not need to provide every minute detail especially those details that would be readily apparent to or worked out by the skilled addressee. Portion capsules are a well traversed art and the specification states that the filter element can be adhesively fixed to the capsule bottom in an edge region of the capsule bottom.[39] I see no reason why this would not be an enabling disclosure to the skilled addressee.

[39] Specification at page 14

Claim 28 – knife embodiment

151. Claim 28 which is dependent on claim 27 further defines that the filter element is cut and introduced into the capsule by means of a knife and then connected to the capsule body.

152. The opponent submitted that while the description does mention the use of a knife to introduce the filter element into the capsule, it is unclear how the knife can be used to position the filter element so that it can be connected to the capsule body and how the knife can be used to move the filter element if the filter element is cut before moulding. They relied on Ms Watson’s evidence who has discussed this in Watson #1 at [138] and concluded that “…there is no disclosure in the specification of either this or anything which would enable me to put into effect the method defined in claim 29 (now claim 28)”.

153. The relevant disclosure of the use of a knife is on page 12 where it states:

“Preferably, the filter element is cut or die-cut before or after moulding, particularly preferably introduced by the knife into the capsule, and there preferably spaced apart from the capsule base, attached to the capsule body or the collar edge, and then the portion capsule is filled with the beverage or food substrate and the capsule is then sealed with a cover film.

……..

Preferably the filter element which has been cut out is moved at least a certain distance from the knife or particularly the hollow knife which was used to cut it. Preferably, the filter element which has been cut out is further moved and/or pressed onto the capsule, particularly its side wall or collar edge, using a sonotrode, which is required for ultrasonic welding”.

154. There is therefore clear disclosure in the specification for cutting the filter element with a hollow knife before or after the shaping of the filter element and then using the same knife to introduce the filter element at least partly into the capsule body. The filter element can then be connected to the capsule body or its collar edge.

155. Ms Watson’s view is that the knife diameter would need to be less than that of the diameter of the mouth of the capsule in order to be able to introduce the filter element into the capsule and there is no clear disclosure how in this situation, the filter element could be connected to the collar edge which would necessarily have a diameter larger than the mouth of the capsule.

156. Claim 28 specifies two different ways of connecting the filter element to the capsule, one of which is clearly possible using a knife. So even if connecting to the collar edge is not possible as asserted by Ms Watson, that does not mean that there is lack of an enabling disclosure. The skilled addressee would realise that this other way of connecting is not possible and disregard this and stick with the method of connecting to the inside of the capsule body.

157. In any event, I note that claim 28 does not exclude the possibility that the knife could be removed after introducing the filter element into the capsule and then the step of connecting to the collar edge would happen. I also note that it may well be possible for the knife to introduce the filter element into the capsule without the knife having to necessarily fully enter the capsule.

158. I am satisfied that the specification  provides an enabling disclosure of claim 28.

Claim 30 – punch embodiment

159. Claim 30 defines that the non-woven planar filter element is inserted into the capsule using a punch whereby it is moulded.

160. Ms Watson has stated that this is a neat way of making and introducing the filter element into the capsule, but that extensive development work would be required to implement this method as the specification does not provide sufficient details in relation to the following:

·whether the capsule body is being supported during the process;

·how the filter element material is clamped during punching, such that the filter element is moulded;

·how the filter element material is cut;

·the appropriate grades and types of filter element material;

·whether or not heating of the material is necessary;

·the degree of dimensional changes in the material when it is "moulded"; and how much, if any, space should be left between the filter element and the capsule base.

161. Claim 30 broadly defines a method of forming and introducing a planar filter element into the capsule body. This method comprises using a punch to carry the planar filter element into the capsule so that the filter element is shaped or moulded to form a planar shape into a non-planar or three-dimensional shape. The alleged invention lies in this method.

162. It is well established that a patent specification does not need to specify every detail of the method as long as the skilled addressee can perform the method through routine trial and error and without undue burden.

163. In my view, the details mentioned by Ms Watson are finer details that the skilled addressee could arrive at using routine experimentation. Ms Watson herself has stated that it was well known to take a flat filter material and form it using a mould.[40]  

[40] Watson #1 at [49]

164. I am satisfied that the specification provides an enabling disclosure of the invention of claim 30.

SUPPORT

165. Section 40(3) of the Act requires that the claim(s) must be supported by matter disclosed in the specification.

166. The provisions of s40(3) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company [2015] APO 72, who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a claim is supported by the description.

• Construe the claims to determine the scope of the invention as claimed,
• Construe the description to determine the technical contribution to the art, and
• Decide whether the claims are supported by the technical contribution to the art.

Claims 1 and 27 – Elastic

167. The opponent submitted that the feature of the filter element being elastic in these claims does not provide any technical contribution and therefore these claims are not supported.

168. As discussed earlier, the description clearly identifies the contribution of the elasticity of the filter element as providing the ability to deform on contact by the spike without being perforated. This is clearly a technical contribution. While the claims may not explicitly define the purpose of the elasticity, that does not mean there is no technical contribution. The feature of the filter element being elastic is clearly supported by the description. Claims 1 and 27 do not lack support.

Claim 9 – Folds produce multilayered regions

169. Claim 9 defines that the filter element “comprises a plurality of folds (24) or a plurality of multilayer portions (25) which are irregular”.

170. The opponent submitted that according to the description of figure 11, the multilayer portions are created by folds and it does not provide for filter elements that are folded without forming multilayered regions and this disjunction between folds and multilayered is not supported by the specification.

171. When I read the description of figure 11, it is quite clear that the folds and multilayered regions are referring to the same feature and not to two distinct features. However, I do not see the reference to folds and multilayered portions separately in the claim as leading to any ambiguity or lack of support. The skilled addressee would clearly understand the two to be the same. Even if they are construed as being different it is quite possible that the deep-drawing could create folds in the sidewall of the capsule body that do not necessarily also form multilayered portions. It does not mean that the claim exceeds the contribution to the art or is not supported. I am satisfied that claim 9 is supported.

Claim 13 – elastic felt structure and supporting structure

172. Claim 13 defines that the filter element has two felt structures which are preferably separated from each other by a supporting structure.

173. The opponent submitted that while the support structure is only a preferred feature, the specification does not provide any indication as to the arrangement and role of the support structure and that such an arrangement is also elastic.

174. Figures 8a-c and the corresponding description discloses the features of two felt structures that are separated by a supporting structure where the support structure can be a fabric structure. While I agree that it does not explicitly disclose that the filter element of this particular embodiment is also elastic, the reference elsewhere in the specification to the filter element being elastic is a generic reference that is not limited to any particular embodiment. It would apply to the embodiment of figure 8 as well. I am satisfied that this claim does not exceed the technical contribution to the art and is therefore supported.

Claim 25 – sealing to the capsule bottom

175. Claim 25 defines that the filter element is sealed to the capsule bottom.

176. The opponent submitted that there is no disclosure in the body of the specification to a plastically formed, deep-drawn filter element that is sealed to the capsule base and hence this claim is not supported.

177. While figure 1 appears to show the filter element as being flat, the corresponding description discloses that the filter element can be deep-drawn and also be connected to the capsule bottom. I am satisfied that this claim does not exceed the technical contribution to the art and is therefore supported.

Claim 28 – knife embodiment

178. Claim 28 defines that the filter element is cut and introduced into the capsule by means of a knife and connected to the capsule body or the collar edge.

179. The submissions made by the opponent in relation to this feature in the claim are the same as those made in relation to the ground of lack of enabling disclosure of this claim.

180. From the reasons I gave earlier in relation to that ground, it is also clear that this claim is supported.

Claims 30 and 31 – the punch embodiment

181. Again, the opponent’s submissions in relation to lack of support for this claim, relate to requiring extensive development to implement the method.

182. From the reasons I gave earlier in relation to this claim under “Disclosure”, it is also clear that this claim is supported.

Claim 32 – preparation of beverage

183. Claim 32 defines the ‘Use of a portion capsule according to any one of claims 1 to 26 for producing a beverage”.

184. The opponent submitted that the claim does not specify the use of a beverage preparation machine to produce a beverage and as it stands, is broad enough to include poking a hole manually in the capsule to empty the beverage substrate and then adding water to produce the beverage and such breadth is not supported by the disclosure.

185. Using a commonsense approach to claim construction, it would be readily apparent to the skilled addressee that the use of a compatible beverage making machine to produce the beverage is inherent to the use of the portion capsule of this claim. This claim does not lack support.

CLARITY

186. Apart from the clarity issues that I have already addressed under “Claim Construction”, the opponent also highlighted other clarity issues that I will now consider.

Claims 6 and 7 – connecting region

187. The opponent submitted that these claims lack clarity as the feature of ‘connecting region’ lacks antecedent when these claims are appended to claims other than claim 4.

188. Claims 6 and 7 are defined as being dependent to ‘any one of the preceding claims’. The feature of ‘connecting region’ is first introduced in claim 4. I therefore accept that this is the only claim that provides an antecedent for this feature in claims 6 and 7. However that does not mean these claims are lacking in clarity. The proper construction of a claim which is dependent to ‘any one of the preceding claims’, is to adopt a construction in which that claim is dependent on only those preceding claims that give proper antecedent for each and every feature of the claim. In the present instance, that would mean claims 6 and 7 should be construed as being dependent only on claim 4. Claims 6 and 7 do not lack clarity.

Claim 12 – mesh, web and non-woven

189. The opponent submitted that the term ‘the web’ in this claim has no antecedent, and also it is unclear whether this term refers to the material used to make the filter element or to the filter element itself.

190. I agree that the term ‘the web’ has no antecedent and there is therefore ambiguity as to whether it refers to the mesh or some other feature. However, when recourse is had to the body of the specification, it is clear that the web refers to the mesh and it is the mesh that has the specified mass density. It is also evident that the mesh refers to the non-woven fibre material that is used to make the filter element. Any ambiguity in the claim is readily resolvable. This claim is clear.

Claim 14 – filter element sealed to the capsule body or on the collar edge

191. Claim 14 defines “the filter element (7) on the capsule body (2) or on the collar edge (5) is sealed to the capsule, in particular sealed by ultrasound”.

192. The opponent submitted that firstly there is no antecedence for the filter element being either on the capsule body or the collar edge and secondly it is uncertain whether ‘sealed by ultrasound’ is an essential feature of the claim.

193. As I mentioned earlier, the specification has a number of instances where the non-idiomatic translation from the original German specification is apparent. This is one such instance. What is meant to be conveyed by this claim is that the filter element is sealed to the capsule on the capsule body or on the collar edge. When read this way, the claim makes sense. I do not see this as a clarity issue that cannot be readily resolved.

194. In relation to the sealing by ultrasound, my interpretation of the term ‘in particular’ is that it is a preferred option and not a limiting feature of the claim. Claim 14 is clear.

Claim 15 – cover film sealed to filter element

195. Claim 15 which is dependent on any one of the preceding claims, defines that a cover film is sealed to the filter element.

196. The opponent submitted that this claim would lack clarity when dependent on claim 14 as the feature of the cover film being sealed to the filter element would be inconsistent with claim 14 where one of the options is that the filter element is sealed to the capsule body.

197. Applying the rules of construction, the sensible approach with a claim like this is to reject the alternative that the filter element is sealed to the capsule body and limit claim 15 to be dependent on the option of the filter element being sealed to the collar edge. Claim 15 is clear.

Claim 16 – filter element diameter

198. Claim 16 defines that “a diameter of the filter element (17) is greater than a diameter of the capsule bottom (3)”.

199. The opponent submitted that as the diameter of the filter element need not be uniform as shown in figure 4a, this claim is ambiguous at which point the diameter of the filter element is considered.

200. I agree that the claim does not specify that the filter element has a uniform diameter and that the diameter can vary depending on which point it is considered, but that does not make the claim lack clarity. In its broadest form, this claim merely requires that the filter element has a diameter at least at one point which is larger than the diameter of the capsule bottom. This claim is clear.

Claims 17,18 and 19 – the filling side

201. Each of these claims refers to a filling side (4).

202. The opponent submitted that it is unclear whether the filling side refers to the side at which the filling occurs (i.e. the open end of the capsule) or the side or part of the capsule that is filled with the beverage substrate.

203. When one reads the claims in context, it is quite clear that the filling side refers to the open end of the capsule through which the beverage substrate is introduced into the capsule. While reference numerals do not normally limit the scope of the claim, in a situation like this it does confirm that the filling side does indeed refer to the open end of the capsule. These claims are clear.

Claims 20 and 22 – external perforation means

204. The opponent’s submissions on the lack of clarity of this term, essentially mirrors their submissions in relation to lack of an enabling disclosure. I have already found that there is no lack of disclosure for this feature in these claims and for similar reasons I am satisfied that this term is not ambiguous or lacks clarity.

MANNER OF MANUFACTURE

205. The opponent submitted that the claimed invention is not for a manner of manufacture as there is no invention on the face of the specification in the sense described in  Commissioner of Patents v Microcell Ltd. [1959] HCA 71.

206. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[No 2] [2007] HCA 21 made reference to Microcell (supra) at [106] as follows:

“The expression derives from Commissioner of Patents v Microcell Ltd ("Microcell"), which stands for a narrow proposition that a Commissioner of Patents, or his or her delegate, may refuse an application for patent protection where a specification "on its face" shows the invention claimed is not a manner of new manufacture. This may arise, for example, from admissions concerning novelty. The decision in Microcell has not always been properly understood; it does not involve a separate ground of invalidity or a discrete "threshold" test”. (footnote omitted)

207. The opponent submitted that the claims purport to incorporate the following features which are stated on the face of the specification to be already known.

·The general construction of portion capsules

·The configurations in D1 including

ofilter elements which are non-woven,

ofilter elements that are plastically formed including those that are deep-drawn

ofilter elements that are made of plastic.

208. I have earlier found that portion capsules having a non-woven filter element and a beverage substrate were well known in the art at the priority date. While I accept that the specification does seem to suggest at page 2 that filter elements made by deep-drawing were known (“a disadvantage of filter elements produced by plastic injection moulding, deep drawing or embossing processes…”), the High Court in Lockwood (supra) also noted at [109] that “Admissions in a specification on common general knowledge are, without doubt, relevant but they are to be assessed as to their probative force like all other evidence”.

209. As I discussed earlier under the ground of ‘Inventive Step’, the evidence does not establish that plastically formed, deep-drawn filter elements were CGK in the art at the priority date. Hence any such admission in the specification is not supported by the expert evidence.

210. Even if I accept that non-woven filter elements and deep-drawn filter elements as independent concepts would be considered to be well-known on the face of the specification, it is the combination of the claimed features that must be shown to be known on the face of the specification. In my view, that conclusion cannot be made just by reading the specification. I can find nothing in the specification that asserts that non-woven filter element made by deep-drawing involving plastic deformation was well known. I further note that the specification also does not suggest that elastic filter elements were well known. The fact that I have found that none of the claims is lacking novelty lends further support to my view.

211. I am not satisfied that there is clearly no invention on the face of the specification. This ground of the opposition has not been made out.

UTILITY

212. The opponent submitted that the claimed invention lacks utility as it does not achieve the promise of the invention.

The promise of the invention

213. The specification discusses some prior art portion capsules and some of the disadvantages associated with them. In particular, it talks about the need for a separate filter holder to hold the filter element and the area available for filtering.

“Therefore, portion capsules with screen assemblies which avoid these disadvantages are known in the prior art. In US 2778739, EP 1710173 Al and US 5352765, portion capsules with screen assemblies are revealed which consist of a filter holder with relatively large openings which are covered with a filter material. The disadvantage of these arrangements is that additional material and manufacturing costs arise, since they consist of a stable filter holder and the filter material placed in the filter holder and/or the area available for the filter is too small such that the extraction or dissolution process lasts a relatively long time”.[41]

[41] Specification at page 2

214. The specification then identifies what is the object of the invention.

“It is thus the objective of the present invention to make available a portion capsule with a filter assembly which can be more cost-effectively manufactured than the prior art and which at the same time avoids the disadvantages demonstrated in connection with the prior art”.[42]

[42] Specification at page 2

215. The promise of the invention is therefore to provide for a filter element that can be more cost-effectively manufactured, and which overcomes the disadvantages of filter clogging and small effective filtering area.

Is the promise met by the claimed invention?

216. In relation to the small filtering area, clearly the use of a deep-drawn filter element provides for a greater effective filtering area than a simple flat filtering element placed in the bottom of the capsule. The specification also states that the present invention provides for a simple and inexpensive filter mesh and that the filter made from a non-woven material permits cross-flow of the liquid which in turn provides for better mixing and draining and significantly reduced clogging.

217. While Ms Watson states that the promise of the invention is not met, she has not substantiated this assertion with any credible evidence. The opponent has the onus to establish its case and, in my view, a mere assertion by Ms Watson without any test results or comparative manufacturing costs does not discharge that onus.

218. I am not satisfied that the claimed invention lacks utility.

CONCLUSION

219. Claims 30 and 31 lack an inventive step. None of the other grounds of opposition have been made out.

220. I allow the applicant a period of two months from the date of this decision to propose amendments to the specification that would overcome my adverse finding.

COSTS

221. In proceedings such as these, an award of costs is normally made against the losing party and I can see no reason to vary this practice. The opposition has succeeded on one of the grounds. I therefore award costs according to Schedule 8 against the applicant K-Fee System GmbH.

R Subbarayan
Delegate of the Commissioner of Patents