Steven Borovec v K-Fee System GmbH
[2018] APO 18
•9 March 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Steven Borovec v K-Fee System GmbH [2018] APO 18
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: 9 March 2018
Hearing Date: 14 December 2017, in Melbourne
Catchwords: PATENTS - opposition under section 104 – provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply - allowability under section 102(1), 102(2)(a) and 102(2)(b) considered – opposition successful – amendments refused – costs awarded against the applicant
Representation: Counsel for the applicant: Ben Fitzpatrick
Patent attorney for the applicant: Collison & Co
Counsel for the opponent: Ian Horak
Patent attorney for the opponent: Churchill Patent 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: 9 March 2018
DECISION
As a consequence of the proposed amendments, some of the claims would not comply with the requirements of sections 102(1) and/or 102(2).
The proposed amendments are therefore refused.
Costs are awarded against the applicant.
REASONS FOR DECISION
BACKGROUND
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.
The applicant filed a request under s104 to amend the complete specification on 26 October 2016. The amendments were considered to be allowable and advertised as such on 15 December 2016. The opponent filed a notice of opposition (s104 opposition) to the proposed amendments on 15 February 2017. The Statement of Grounds and Particulars (SGP) was filed on 15 March 2017 and this was then subsequently amended by an amended statement filed on 18 July 2017. The evidentiary stages were completed on 26 August 2017. The s104 opposition was heard on 14 December 2017 and this decision relates to this opposition only.
THE RELEVANT LAW
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) as the request for examination was not filed before 15 April 2013. Therefore amendments to sections 40 and 102 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(e) and 55(9)(e) of the Raising the Bar Act.
The standard of proof that applies to oppositions under s104(4) for cases proceeding under the Raising the Bar provisions has not been expressly stated in the Act, however as noted by the delegate in Cytec Industries Inc. v Nalco Company [2018] APO 4, “it is a logical inference that the standard required is the balance of probabilities (consistent with the amendment to section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists), and it is the opponent who carries the onus of proof.”[1]
[1] Cytec Industries Inc. v Nalco Company [2018] APO 4 at [18]
The relevant provisions of the Act in this matter are those of subsections 102(1) and 102(2), which are set out below:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)the complete specification as filed;
(b)other prescribed documents (if any).
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40(2) or (3).
The ‘other prescribed documents’ for the purpose of paragraph 102(1)(b) are defined in regulation 10.2A which states:
For paragraph 102(1)(b) of the Act, the following documents are prescribed:
(a) an abstract that was filed with the complete specification;
(b) a missing part or element of a complete specification that was incorporated into the specification, in accordance with regulation 3.5A or Rule 20.5 or 20.6 of the PCT; (c) an amendment that has been made to the complete specification after filing, for the purpose of:
(i) correcting a clerical error or obvious mistake; or (ii) complying with paragraph 6(c) of the Act.
The ‘relevant time’ for the purpose of ss 102(2)(a)&(b) is after the specification has been accepted. Subsections 40(2) and 40(3) of the Act as they apply to the present case are set out below:
(2) A complete specification must:
(a) 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; and
(aa) disclose the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent—end with a claim or claims defining the invention; and
(c) where it relates to an application for an innovation patent—end with at least one and no more than 5 claims defining the invention.
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
GROUNDS OF OPPOSITION
The amended SGP states that the proposed amendments are being opposed under the following grounds:
1. Section 102(1) of the Act - As a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the specification of the Opposed Application as filed (taken together with any other prescribed document(s)) contrary to s102(1) of the Act.
2. Section 102(2)(a) of the Act - A claim of the amended specification would not in substance fall within the scope of the claims of the specification before the proposed amendment.
3. Section 102(2)(b) of the Act - As a result of the amendment, the amended specification would not comply with subsection 40(2) and/or subsection 40(3) of the Act.
EVIDENCE
The opponent’s evidence in support comprises a declaration by Margaret Sally-Anne Watson dated 26 May 2017 (Watson #3).
The applicant’s evidence in answer comprises a declaration by Phillip Higgins dated 26 July 2017 (Higgins #2).
The opponent’s evidence in reply comprises a declarations by Margaret Sally-Anne Watson dated 25 August 2017 (Watson #4).
The parties also referred to earlier declarations filed by Ms Watson and Mr Higgins in relation to the s59 opposition which is yet to be heard. These include the following:
·Declarations by Margaret Sally-Anne Watson dated 23 May 2016 (Watson #1) and 25 October 2016 (Watson #2)
·Declaration by Phillip Higgins dated 24 August 2016 (Higgins #1)
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 existing patented products”[2].
[2] Watson #3 at [6]
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 been directly involved in the research and development of pods for coffee making systems.
SPECIFICATION
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 from the bottom which has been opened by another spike.
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 page 1, third paragraph
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 too large a size will allow the beverage particles to pass through and too small a size 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.
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 page 2, fourth paragraph
The specification then states that this objective is achieved by making the filter element from a non-woven fabric that is formed from plastic and is preferably deep-drawn.
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”[5].
[5] Specification page 2, last paragraph
A number of preferred embodiments are then described with reference to various figures. Figures 4a and 4b are reproduced below:
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 plastics material and is deepdrawn in that it has a three dimensional 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 filter element can also be of an elastic design so that the central area 7'' of the bottom will deform on contact by the piercing spike due to its elasticity.
The claims as accepted have 33 claims. The proposed amendments to the claims have only 32 claims. Amended independent claims 1, 27, 30 and amended dependent claims 12 and 28 are reproduced below and are marked up to show the amendments, with the new matter being underlined and the deleted matter being struck through.
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
in the cavity, 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,preferablydeep-drawn and the filter element is elastic.12. Portion capsule (1) according to claim 11, characterised filter element is a mesh
in thatand the mesh comprises a nonwoven fabric made of polyester fine fibres and/or that the web has a mass density between 40 and 100 grammes per square metre, preferably between 60 and 80 grammes per square metre and more preferably generally 70 grammes per square metre and/or that the nonwoven has a thickness between 0.20 and 0.8 millimetres, preferably between 0.25 and 0.39 millimetres, and most preferably is generally 0.32 millimetres and/or that the mesh has an air permeability at a pressure of 100 Pascal of between 1000 and 3000 1/(m2 s), preferably from 1500 to 2500 (1/m2 s) and particularly preferably generally at 2000 1/(m2 s).27. Method for the manufacture of a portion capsule with a capsule body, and with a filter element
thereinmade 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,preferablydeep-drawn and the filter element is elastic.28. method according to claim
2827, characterised in that the filter element is cut and introduced into the capsule by means ofthea knife, preferably spaced apart from the capsule bottom and connected to the capsule body or the collar edge, and then the portion capsule is filled with powder or tea and the capsule is then sealed with a cover film, characterised in that the moulded filter element is relaxed prior to sealing.30. Process for the preparation of a portion capsule with a capsule body, and with a filter element made of an elastic 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.
GROUND 1 – SECTION 102(1) OF THE ACT
Subsection 102(1) requires that the specification as proposed to be amended does not, as a result of the amendment, claim or disclose matter that extends beyond that disclosed in the complete specification and abstract as filed. As a result I must confine my analysis to a consideration of the consequences that follow as a result of the amendment.
The words 'as a result of the amendment' in s102(1) is not the same as the expression 'after the amendment'. The matter that results from the amendment is determined by considering the specification as it stands with how it would stand after the proposed amendment. (Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814). Any pre-existing deficiencies that are carried over into the proposed amendments will therefore not be “as a result of the amendment”.
The requirement that the specification as proposed to be amended does not claim or disclose matter that extends beyond that disclosed in the complete specification as filed in combination with certain prescribed documents was introduced by the Raising the Bar Act and its application has yet to be considered by the courts. However taking into consideration the purpose for the changes to s102(1) as explained at item 29 in the Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the Explanatory Memorandum) and the approach taken by the UK courts in applying similar provisions in the UK Patents Act, IP Australia’s Patent Examiner’s Manual of Practice and Procedure (the MPP) provides the following guidance as to the approach to be taken in relation to this provision of the Act:
· The effect of sec 102(1) is that an amendment must not add new matter that the hypothetical person skilled in the art could not directly derive by reading the information in the complete specification as filed and other documents prescribed by regulation 10.2A.
· The correct approach when considering whether an amendment would result in the specification claiming or disclosing new matter is to ask whether the person skilled in the art would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn from the complete specification as filed, in combination with the prescribed documents.
· This comparison is a strict one in the sense that subject matter will be added unless it is clearly and unambiguously disclosed in the specification as filed and other prescribed documents.
· However, in considering the extent of the disclosure, examiners should have regard to the explicit as well as the implicit disclosure of the specification as filed and other prescribed documents.
· It is permissible to add a feature to a claim if it simply excludes protection for part of the subject matter claimed and does so in a manner that does not add new subject matter. However, if an amendment would lead to the specification claiming and/or disclosing an invention which is fundamentally different from that disclosed in the specification as filed and other prescribed documents, the conclusion can only be that it adds new matter, contrary to sec 102(1).
· In effect, sec 102(1) requires an applicant seeking to amend a specification to meet the disclosure requirements of section 40 at the time of filing the complete specification.
In the present case the only ‘other prescribed document’ is the abstract that was filed with the complete specification. As the parties agreed that resorting to the abstract will not affect the outcome, I will need to rely only on the complete specification as filed in determining whether the amendments meet the requirements of subsection 102(1).
Deletion of the phrase “in the cavity” in claim 1
The opponent submitted that the deletion of the phrase “in the cavity” in claim 1, changes the scope of claim 1 in a manner that the filter element no longer needs to be situated in the cavity and can now be situated anywhere in the portion capsule.
The relevant definition in amended claim 1 reads “….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…” (emphasis added).
The key word here is “wherein” as it determines where the filter element is situated. In my view, the word “wherein” is a clear reference to the cavity that has just been defined and I can no basis for interpreting it as a broad reference to the capsule per se. Even if there is any ambiguity as to what is the location of the filter element, which I do not accept, this can be easily resolved by reference to the body of the specification. All that the deletion of this term has done is to remove the lack of clarity before amendment where the claim defined that the cavity is formed in the cavity i.e. within itself.
This amendment does not claim matter that extends beyond that disclosed in the complete specification as filed.
Deletion of the word “preferably” in claim 1
The opponent submitted that the amendment changes the relationship between ‘deep-drawn’ and ‘plastically formed’ as understood from the specification as filed and that prior to amendment. More specifically they argued that prior to amendment the fibre material being ‘preferably deep-drawn’ was in the nature of that material being ‘plastically formed’ and refers to the specific form of plastic forming in which the filter element takes on a three dimensional shape whereas after amendment the operations of ‘plastically formed’ and ‘deep-drawn’ are not interlinked and the claim now allows for the actual fibre material of the filter element to be plastically formed prior to the filter element being deep-drawn and to that extent claim 1 as amended embraces arrangements that were not embraced by claim 1 before amendment.
They rely on the evidence of Ms Watson who states that because of the deletion of the term ‘preferably’ in amended claim 1, it is now unclear “whether ‘plastically formed’ refers to the formation of the filter element or the formation of the non-woven fibre material”[6] and that “if "plastically formed" with the amendment now refers to the non-woven fibre material, and if the filter element can be deep-drawn without necessarily being plastically formed, claim 1 as amended embraces capsule arrangements that were not embraced by claim 1 before amendment.”[7]
[6] Watson #3 at [49]
[7] Watson #3 at [54]
The applicant on the other hand, submitted that this deletion does not change the asserted relationship between ‘plastically formed’ and ‘deep drawn’ and all that the proposed amendment seeks to do is to avoid any uncertainty arising from a reference to preferment in the claim language. They further argued that to the extent that Ms Watson and Mr Higgins may differ as to the meaning and scope of the term ‘plastically formed’, that difference does not arise from the deletion of ‘preferably’ and hence is not as a result of the amendment.
The applicant also submitted that when these words in the claim are read in the context of the disclosure as a whole, it is clear that it is the filter element that is plastically formed by deep drawing to give it a three dimensional shape. In particular they referred to the following passages from the specification as filed (with their emphasis added) as providing support for this construction.
“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.”[8]
“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.”[9]
“Preferably the folds are come about in such a manner that a flat filter element can be placed in the capsule body without it plastically deforming.”[10]
“Another object of the present invention is a process for the manufacture of a portion capsule with a filter element made of a non-woven fibre material in which the filter element is plastically formed or preferably deep-drawn from a planar material, preferably a product web or a sheet, plate or the like.”[11]
[8] Specification at page 3
[9] Specification at page 5
[10] Specification at page 10
[11] Specification at page 11
The proper 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.”
The claims also need to be construed in a purposive common sense manner. As Middleton J noted 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.”
The relevant part of claim 1 before amendment reads “the fibre material is plastically formed, preferably deep-drawn”. Hence even before amendment, the reference to being plastically formed was in relation to ‘the fibre material’. On the face of it, this definition could be interpreted as a reference to the fibre material being formed of plastic and deep drawn. However reading this integer in its context in the specification as a whole including the definition provided for the term ‘deep-drawn’, it is quite clear that this definition of the fibre material being plastically formed is not a reference to the manner in which the actual fibre material is created but is instead the manner in which the fibre material of the filter element is plastically deformed and shaped to give the filter element a three-dimensional shape. This is also the construction given by both Ms Watson and Mr Higgins.
However Ms Watson’s view is that by deleting ‘preferably’, there is now ambiguity in the amended claim in that ‘plastically formed’ could now be interpreted as referring to how the fibre material is made.
I am not convinced. Where prior to amendment, neither expert expressed any difficulty in interpreting the feature of the fibre material being plastically formed as a reference to the filter element being plastically formed, I can see no basis for coming to the conclusion that after amendment, the term could now also be interpreted as the fibre material being plastically formed or formed of plastic. Again reading this integer in its context in the specification as a whole it would be clear that it is still a reference to the filter element being plastically formed.
Even if there is any ambiguity, I agree with the applicant that this ambiguity existed prior to amendment and is therefore not as a result of the amendment.
The proposed amendment to delete the term ‘preferably’ does not lead to claiming matter that extends beyond that disclosed in the complete specification as filed.
Deletion of the word “preferably” in claim 27
The opponent submitted that claim 27 also incorporates an impermissible amendment for similar reasons as elaborated in respect of claim 1.
Amended claim 27 defines that “the filter element (7) is plastically formed, deep-drawn” whereas prior to amendment it (claim 28 of the accepted claims) read as “the filter element (7) is plastically formed, preferably deep-drawn”. Unlike amended claim 1, amended claim 27 more clearly defines that the filter element (as opposed to the fibre material) is plastically formed. As I have already found amended claim 1 does not extend beyond the disclosure as filed, it follows that the same conclusion also applies to amended claim 27.
The filter element is elastic in claim 27
The opponent submitted that the scope of amended claim 27 that includes the new limitation that the filter element is ‘elastic’ extends beyond the disclosure in the specification as filed, because prior to the amendment there was no dependent claim to this method that previously defined a method of manufacture where the filter element is elastic and that the only disclosure in the specification as filed of a manufacturing process where the filter element has elasticity is by reference to Figures 4a and 4b, but the method disclosed here is a specific method and the filter element is taught to be deformed by the piercing spike due to its (inherent) elasticity.
There are, in my view, sufficient disclosures in the specification as filed that teach that the filter element can be elastic. These include the following (with my underlining):
“According to another preferred embodiment of the present invention, the filter element is of elastic design. If the capsule bottom is pierced with an external perforation means, the filter element can yield or stretch due to its elasticity upon contact with the perforation means, such that a perforation of the filter element is prevented. Thus the risk that the filter element will be perforated by the perforation means and that the unfiltered beverage substance will be flushed from the unfiltered portion of the capsule is eliminated.”[12]
“Figures 4a and 4b show schematic cross-sectional image views of a portion of the capsule 1 according to a third embodiment of the present invention. In the present embodiment, the filter element is preferably made of a non-woven fibrous material and particularly deep-drawn, i.e. the originally flat fibre material of the filter element is given a three-dimensional form. In its edge region 7', according to the present embodiment, the filter element is attached to the collar edge 5 of the capsule body. This attachment can be accomplished for example by sealing or adhesion. Through fixing of the filter element 7 to the collar edge of the capsule body, a free space exists between the central area 7" of the filter element and the filter bottom 3, in which a piercing spike 16 can penetrate into the portion capsule without piercing the filter element. In any case the central area 7" of the filter element is deformed by piercing spike due to its elasticity. Preferably, the portion capsule is closed by means of a cover film 6 which, particularly preferably, is attached to the edge area of the filter element, for example through sealing or gluing.”[13]
“Portion capsule (1) according to any one of the preceding claims, characterised in that the filter element (7) is elastic.”[14]
[12] Specification at page 7
[13] Specification at page 17
[14] Claim 14 of the specification as filed
Amended claim 27, although a method claim, merely defines that the filter element has the property of being elastic and is not concerned with how this elasticity is achieved. The property of the filter element being elastic is clearly disclosed in the passages that I have identified and I see no reason why the inclusion of this property in a method claim cannot therefore be clearly and unambiguously derived from the specification as filed.
In my view, the amendment to claim 27 does not extend beyond the disclosure as filed.
The moulded filter element is relaxed prior to sealing in claim 28
Claim 28 defines that “the filter element is cut and introduced into the capsule by means of a knife” and that “the moulded filter element is relaxed prior to sealing”.
The opponent submitted that while the specification as filed discloses that the moulded filter element can be relaxed prior to sealing, this is in the context of a specific embodiment that uses a punch to deform and push the filter element into the cavity of the capsule so that the pressure exerted on the filter element by the punch can be reduced before sealing takes place. However there is no disclosure in the specification that the filter element can be relaxed in the context of the embodiment that uses a knife to cut and introduce the filter element into the capsule cavity.
The applicant submitted that when the claim is construed in context having regard to the disclosure as a whole, including the disclosure in page 12 of the specification, it is clear that there is sufficient disclosure for this feature in claim 28.
The relevant disclosure in page 12 is as follows:
“In the procedure according to the present invention, a filter element, disc-shaped for example, is pushed by a punch into the capsule body. Thereby the filter element is deformed such that a part of the filter element rests on the capsule body. Preferably the entire filter element is pushed in, but only far enough that a free space remains between the filter element and the capsule bottom. After the filter element is pushed into the capsule, it is attached to the capsule body or to the collar edge, preferably by sealing. Prior to sealing, the filter element is preferably relaxed. In particular, the portion which is to later become the filter portion is to be relaxed. Thereby, for example, the pressure which the punch exerts on this region can be reduced.”
The only other disclosure of this feature is on page 20 and reads as follows:
“The portion capsule is preferably manufactured such that the filter element is a flat, for example circular, disc which is pressed into the portion capsule by means of a punch until the connecting region 27 of the filter element 7 lies on the capsule body. The filter element will however only be pressed into the portion capsule so far as to allow the spacing between the filter element and the capsule bottom to remain. Subsequently, the filter element is sealed to the capsule body by heat and pressure treatment, for example by means of a heated punch. Prior to sealing, the load on the filter region 28 of the filter element is preferably relieved. This can be done for example so that the punch has two parts and the lower part of the punch is pulled upward, opposite to the direction of motion of the punch. Thereby the load on the filter region 28 will be removed, without reducing the pressure on the connecting region.”
Clearly both of these disclosures relate to introducing and deforming the filter element within the cavity of the capsule body using a punch. Naturally the operation of deforming the disc-shaped filter element using a punch will introduce stresses into the material of the filter element and the invention seeks to relieve these stresses by allowing the filter element to relax before it is sealed to the capsule body. This is clearly understandable in the context of the deforming the filter element using a punch.
However claim 28 defines that the filter element is cut and introduced into the cavity by means of a knife and not a punch. There is no specific embodiment in the body of the specification as filed that describes or illustrates an embodiment that uses a knife to cut and introduce the filter element. There is therefore nothing to suggest that the use of a knife will induce similar stresses within the filter element that would need to be relieved before the filter element is sealed to the capsule body. While there is a generic statement in the body of the specification that states “The disclosure made regarding this embodiment of the present invention applies to the other embodiments of the present invention equally and reciprocally”, that is not in my view a clear and unambiguous disclosure that the need to relax the filter element would also apply when a knife is used to introduce the filter element into the cavity.
I agree with the opponent that as a consequence of the amendment, claim 28 would claim matter that extends beyond the disclosure in the specification as filed.
Introduction of process using an ‘elastic’ non-woven fibre material in claim 30
The opponent submitted that claim 30 as amended refers to a process in which the filter element that is introduced into the portion capsule is “made of an elastic non-woven fibre material”, however there is no previous claim defining such a process or a clear disclosure in the body of the specification that the filter element can be made of elastic non-woven fibre material and consequently amended claim 30 would claim matter that extends beyond the disclosure as filed.
The applicant accepted that while the specification as filed only talks of the filter element as a whole being elastic and not the fibre material itself being elastic, they submitted that this is a distinction without a difference as it would be readily understood that it is the elasticity of the fibre material that confers the elasticity to the filter element.
I am not entirely convinced that if the filter element is elastic, it necessarily means that the non-woven fibres of the filter element are elastic. It would certainly be possible to produce a filter element which possesses elasticity in the sense that it can regain its original shape after being deformed without the material constituting the filter element itself being elastic. This is clearly the view of Ms Watson as well when she states:
“Also, there is no information on whether the elasticity is derived from the elasticity of the material from which the filter element is made or the shape of the filter element made.”[15]
[15] Watson #1 at [47]
Mr Higgins has not provided evidence on this issue.
In my view, it cannot be directly and unambiguously derived from the specification as filed, that the non-woven fibre material of the filter element is elastic. I therefore find that amended claim 30 would claim matter that extends beyond the disclosure as filed.
GROUND 2 – SECTION 102(2)(a) OF THE ACT
The provisions of section 102(2)(a) have not changed with the Raising the Bar Act. The principles to be applied in assessing the allowability of amendments under this section are well established.
Consideration of the prohibition in this section requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. Thus the identification of the amendment is an important first step. However, the comparison is not between a particular amended claim and that claim before amendment. The expression “within the scope of the claims” directs attention to all the claims (Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814; 87 IPR 516 at [40]). For this reason a long standing practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment (Fina Research SA v Halliburton EnergyServices Inc [2003] FCA 251 at [29]).
Deletion of "in the cavity" in claim 1
The opponent submitted that the deletion of the words "in the cavity", as discussed in relation to Section 102(1), broadens claim 1 as the filter element does not necessarily have to be situated in the cavity and therefore this amendment is impermissible and contrary to section 102(2)(a).
I have already found that the deletion of this phrase does not change the scope of the claim in relation to the location of the filter element. Therefore this amendment is not an impermissible amendment under section 102(2)(a).
Deletion of "preferably" in claim 1
The opponent submitted that the deletion of the word ‘preferably’, as discussed in relation to Section 102(1), broadens claim 1 in that the feature ‘deep-drawn’ is no longer necessarily a sub-set of ‘plastically formed’ and may not necessarily be deep drawn involving plastic deformation.
I have already found that the deletion of this term does not change the scope of the claim such that the claim now refers to the fibrous material being formed or made of plastic. Therefore this amendment is not an impermissible amendment under section 102(2)(a).
GROUND 3A – SECTIONS 102(2)(b) AND 40(3) - NOT CLEAR AND SUCCINCT
I have earlier referred to the principles of claim construction as summarised by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228. I also refer to the following statement of Hely J in Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890, in relation to the clarity of claims:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suited to the intended use ... the consideration is whether, on any reasonable view, the claim has meaning ... In determining this, the expressions in question must be understood in a practical, common sense manner ... Absurd constructions should be avoided ... and mere technicalities should not defeat the grant of protection ...”
"the filter element is elastic" in claims 1, 27 and 30
The opponent submitted that the newly added feature that "the filter element is elastic" in claim 1 is not clear as the specification provides no guidance as to the degree of elasticity the filter element must have and hence there is no workable standard by which to assess whether a filter element would be ‘elastic’ as defined in the claim.
The applicant submitted that the feature of the filter element being elastic was already present in claim 14 of the claims before amendment and hence any lack of clarity created by the introduction of this feature in the amended claims is not “as a result of the amendment”. In any event, they argued that feature does not lack clarity as Ms Watson was able to give it meaning in her declaration for the substantive opposition where she has stated:
“I pointed out that the description of the filter element as being "elastic" simply indicates that the filter element is non-rigid and returns to an original state when forces on it are removed. I indicated that there will always be a degree of elasticity to the filter element. This would obviously be the case as at the earliest priority date.”[16]
[16] Watson #1 at [123]
I agree with the applicant. Clearly this feature was present in unamended claim 14 and any lack of clarity of this feature was therefore pre-existing in the claims before amendment and is not as a result of the amendment. Furthermore while the specification does not provide guidance as to the degree of elasticity the filter element should have, I have earlier identified passages on pages 7 and 17 of the specification where it talks about the need for the filter element to be able to yield or stretch upon contact with the perforation spike so that the piercing of the filter element is prevented. I am satisfied that these disclosures provide a workable standard by which to assess whether a filter element would be ‘elastic’ as defined in the claims. The introduction of this feature in claims 1, 27 and 30 is therefore not an impermissible amendment under section 102(2)(b).
Deletion of “in that” in claim 12
The opponent submitted that the deletion of the phrase “in that” while adding the feature “filter element” in claim 12 introduces lack of clarity in the claim.
There can be no dispute that the deletion of this phrase introduces some lack of clarity in the claim. However in my view, this lack of clarity is not significant as to make the scope of the claim unclear or indeterminate. The skilled addressee would readily read these words into the claim when construing it. The deletion of these words is not an impermissible amendment under section 102(2)(b).
"the moulded filter element" in claim 28
The opponent submitted that the amendment to introduce "the moulded filter element" in the last line of amended claim 28 introduces lack of clarity as there is no antecedence for this term, with claim 27 and 28 previously referring to a filter element only without it being qualified as a moulded filter element.
The applicant accepted that there is a lack of antecedence and submitted that they would be prepared to delete the word ‘moulded’ from this claim.
While the term ‘moulded’ does lack antecedence and in that sense the claim could be considered create some ambiguity, in my view, this is an ambiguity that could be resolved when the claim is read in context. This claim is appended to claim 27, which defines that ‘the filter element is plastically formed, deep-drawn’. I have earlier found that this definition is clear and is to be construed as the fibre material of the plastic material being plastically deformed and shaped to give the filter element a three-dimensional shape. It is therefore clear that the reference to ‘moulded’ in claim 28 is a reference to the three-dimensionally shaped filter element after it is plastically formed by deep-drawing. This is also consistent with the view of Ms Watson who has stated that she understands “moulding to include a process where something is done to plastically form a material into a permanent shape.”[17]
[17] Watson #3 at [74]
The inclusion of the term ‘moulded’ in claim 28 is therefore not an impermissible amendment under section 102(2)(b).
GROUND 3B - S102(2)(b) AND S40(2)(a) - LACK OF DISCLOSURE
In order to comply with sec 40(2)(a), the complete specification must provide sufficient information to enable the skilled person to perform the invention over the whole width of the claims, without undue burden or the need for further invention. This is often referred to as an ‘enabling disclosure’.
The concept of an enabling disclosure in the context of similar provisions in the UK Act was discussed by Lord Hoffmann in Biogen v Medeva [1997] RPC 1 at [48]:
“… the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the [specification] discloses a principle capable of general application, the claims may be in correspondingly general terms. The [applicant] need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the [applicant] must enable the invention to be performed in respect of each of them.”
''the filter element is elastic" in claims 1 and 27
The opponent submitted that the specification does not provide sufficient information to enable the skilled person to perform the invention of amended claims 1 and 27 which include the new feature of the filter element being elastic, without undue burden or the need for further invention.
They submitted that the while Ms Watson and Mr Higgins appear to concur that it would require experimentation with materials and arrangements to meet the function of movement without being punctured, it is the view of Ms Watson that the level of experimentation required to make the invention work would be an undue burden as elasticity is simply one material property of the filter and a number of factors would need to be considered in conjunction with this.
" ... there are many variations that affect the performance of the filter during piercing including the force provided for piercing, the spike geometry and the rate of penetration (which is affected by the brewing machine and capsule design). All such variations combine to determine what elasticity characteristics are desirable in a filter material for a given set of filter forms and piercing arrangements to provide satisfactory filter performance. This degree of information is not provided by the Specification."[18]
[18] Watson #4 at [17]
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 where he 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.”[19]
[19] Higgins #2 at [23]
They also submitted that if there is any lack of an enabling disclosure, it is clearly not as a result of the amendment and hence the amendment would still be allowable.
As discussed earlier, there are passages at pages 7 and 17 of the specification that 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 elasticity values and 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 arrive, through routine experimentation and taking into account the other factors noted by Ms Watson and Mr Higgins, at a filter element that will have the required elasticity to avoid being pierced. The specification is clear enough and complete enough.
I also agree with the applicant that even if there is any lack of a complete disclosure, it is clearly not a result of the amendment. There has been no amendment to the body of the specification and therefore all of the disclosure relating to the elasticity and its purpose was always there in the specification as filed. Furthermore claim 14 before amendment also defined the filter element as being elastic.
The introduction of this feature is not an impermissible amendment under section 102(2)(b).
Process step “the moulded filter element is relaxed prior to sealing” in claim 28
The opponent submitted that the amendment introduces a ‘moulded’ filter element in the context of a method utilising a filter element introduced into the capsule via a knife, but however there is no disclosure in the specification of how this might be done.
I have already found that the amendment to introduce this feature in claim 28 extends beyond the disclosure of the specification as originally filed. For similar reasons I also find that there is no enabling disclosure within the specification as to how to how the relaxing would be achieved in the context of introducing the filter element into the capsule by means of a knife. This is also the view of Ms Watson, while Mr Higgins does not make any comment on this issue.
This amendment is not allowable as the specification does not provide a clear enough and complete enough disclosure of this feature.
"elastic non-woven fibre material" in claim 30
The opponent submitted that the amendment to this claim in so far as it introduces the word ‘elastic’ is not sufficiently disclosed to enable it to be made for the reasons discussed in relation to claim 1 and 27 above and additionally there is a lack of sufficient disclosure of such an elastic filter element being inserted using a punch.
I have earlier found that the feature of the non-woven fibre material being elastic extends beyond the original disclosure. However in terms of enablement, I am satisfied that the skilled addressee would know that one way of making the filter element elastic is to use non-woven fibres that are elastic and there is no evidence that would suggest that replacing non-elastic fibre material with elastic fibre material could not be done through routine experimentation and without undue burden.
The amendment to this claim is allowable.
GROUND 3C - S102(2)(b) AND S40(3) - LACK OF SUPPORT
Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. In the UK where similar provisions apply, this has been interpreted as requiring that there must be a basis in the description for each claim and the scope of the claims must not be broader than is justified by the extent of the description, drawings, sequence listing and the contribution to the art. As noted in Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13 at [36]:
“… the definitions in the claims [i.e. the claimed invention] should essentially correspond to the scope of the invention as disclosed in the description. In other words, … the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.”
While this does not mean that the claims should be restricted to the specific embodiments described, the scope of the claims must be properly supported by the matter disclosed in the body of the specification.
Deletion of "in the cavity" in claim 1
The opponent submitted that as the deletion of this phrase broadens the scope of the claim to include the filter also being outside of the cavity, the claim exceeds the contribution to the art as all of the examples in the Specification define a capsule where the filter is in the cavity and consequently claim 1 lacks support.
I have already found that even with this deletion, the claim still requires that the filter element is within the cavity of the capsule. Hence the claim does not lack support.
Deletion of "preferably" in claims 1 and 27
The opponent submitted that the specification defines an interaction between the requirements of
‘plastically formed’ and ‘deep-drawn’ such that they are interlinked concepts, however the deletion of the word ‘preferably’ expands the scope of the term ‘deep-drawn’ beyond the concept as disclosed in the specification and beyond the technical contribution.
I have already found that even with the deletion of ‘preferably’ the reference to plastically formed is still in relation to the filter member and not to the fibre material in the filter elements. It therefore follows that these claims do not exceed the contribution to the art or lack support.
Process step: "the moulded filter element is relaxed prior to sealing" in claim 28
The opponent submitted that the feature of the filter element being relaxed prior to sealing in the context of the filter element being introduced by a knife is not disclosed or corresponds to any technical contribution to the art revealed in the specification.
100. I have earlier found that claim 28 would claim matter that extends beyond the disclosure in the specification as filed. For similar reasons, it also follows that the claim is not supported by the specification.
"elastic non-woven fibre material" in claim 30
101. The opponent submitted that there is no support in the body of the specification for the non-woven fibre material being elastic (rather than the filter element per se).
102. The proposed amendments do not amend the body of the specification which therefore remains unchanged and is still as filed. I have earlier found that the feature of the non-woven fibre material being elastic extends beyond the original disclosure. For similar reasons it follows that this amendment to claim 30 is also not supported by the body of the specification.
CONCLUSION
103. I find that as a consequence of the proposed amendments, some of the claims would not comply with the requirements of sections 102(1) and/or 102(2). I therefore refuse the amendments.
COSTS
104. Both parties have sought costs in this matter. The applicant also submitted that should the opposition be successful only on some of the grounds, then this should also be reflected in the quantum of costs awarded against the applicant. I have found that the opposition succeeds on some of the grounds and that the amendments should be refused. Even when only some of the grounds are made out, it is the Commissioner’s practice to award the full costs according to the schedule except in rare circumstances such as where the conduct of the successful party contributed substantially to the cost, complexity and protracted proceedings of the opposition. I have no basis to conclude that the present situation warrants any variation in costs. I therefore award costs according to schedule 8 against the applicant K-Fee System GmbH.
R Subbarayan
Delegate of the Commissioner of Patents
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