The J M Smucker Company v Raymond Leon Lyons and Simon's Natural Fruits Pty Ltd (Formerly Natural Fruits Australia Pty Ltd)

official notice

decision of a delegate of the commissioner of patents

Petty Patent : No. 597225 in the name of THE J M SMUCKER COMPANY

Title: Fruit Juice Mix for Whipped and / or Frozen Applications

Action: Application for extension of term and notices under s68B (3) of the 1952 Act by RAYMOND LEON LYONS and SIMON'S NATURAL FRUITS PTY LTD (formerly NATURAL FRUITS AUSTRALIA PTY LTD)

Decision : Issued . The 1952 Act applies pursuant to reg 23.26(1). The patentee has the right to be heard. Additional late evidence treated as not lodged pursuant to s68B (3) but considered under s68B (5) to (7). The grounds available under s68B (5) do not include s155. The grounds of obviousness, lack of novelty and manner of new manufacture not established. The specification does not comply with s40.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application for the grant of extension of term of Petty Patent No. 597225 by THE J M SMUCKER COMPANY and notices under section 68B (3) of the Patents Act 1952 by RAYMOND LEON LYONS and SIMON'S NATURAL FRUITS PTY LTD (formerly NATURAL FRUITS AUSTRALIA PTY LTD)

background

Olympus Industries Inc lodged petty patent application number 39125/89, for an invention entitled "Fruit juice mix for whipped and/or frozen applications", on 28 July 1989. Later, pursuant to a request from the applicant, the Commissioner directed the application proceed in the name of The J M Smucker Company. The application claims priority under section 51 of the Patents Act 1952 (the 1952 Act) from patent application 61616/86 (now 594358) which itself claims priority from US patent application 872703 filed 10 June 1986. This is the earliest priority date to which the claim of application 39125/89 can be entitled. The Office sealed petty patent 597225 on the application on 17 April 1990. I note that application 594358 is presently the subject of opposition under section 59 of the 1952 Act.

On 30 November 1990 the patentee applied for an extension of the term of the petty patent. On Monday 18 March 1991 Natural Fruits Australia Pty Ltd (later their name was changed to Simon's Natural Fruits and hereinafter called Natural Fruits) lodged a notice under subsection 68B (3). The notice asserts that the facts establish grounds set out in paragraphs 100 (1) (d), (e) and (g) of the 1952 Act, i.e. the invention is not a manner of new manufacture, was obvious and was not novel, respectively.

On 23 April 1991 Raymond Leon Lyons (Lyons) lodged a notice under subsection 68B (3) asserting that the facts established grounds set out in paragraphs 100 (1) (e) and/or (g). As this notice was lodged out of time Lyons sought and was granted an extension from 17 March to 23 April 1991 under s223 of the Patents Act 1990 (the 1990 Act).

The patentee lodged evidence in answer to the evidence of both informants on 13 September 1991. On 10 June 1992 Natural Fruits lodged additional evidence which was outside the eleven month period prescribed by s68B (3). The patentee informed the office on 13 July 1992 that it did not agree to this additional evidence being adduced but on 16 July 1992 submitted additional evidence in answer should the informant's additional evidence be considered.

The hearing was originally set down for 16 June 1992, but was postponed with the agreement of all parties to 20 July 1992. At this hearing, in Canberra, Mr R Macaw QC assisted by Ms M Barker and instructed by Dr P Wyk, patent attorney of Collison and Co, appeared for the patentee. Mr B Caine of counsel instructed by Mr M Wakeham of Carter, Smith and Beadle appeared for Natural Fruits. Mr R Shelston, patent attorney of Carter, Smith and Beadle represented Lyons. Mr S Hansford of Natural Fruits also attended.

On this date Mr Macaw and Mr Caine gave their submissions and the hearing was adjourned until 9 November. Natural Fruits and the patentee lodged concluding submissions in writing on 22 and 24 July 1992 respectively.

At the adjourned hearing of 9 November 1993 the patentee and Lyons were represented as at the initial hearing.

Mr R El-Kilany was the delegate of the Commissioner who presided at the actual hearing but he died before a decision was issued. I was subsequently appointed as the delegate and, with the agreement of all parties concerned, determined the matter on the basis of the tape recording of the hearing.

WHICH ACT APPLIES

The application for the extension of term and the notices from the informants were all filed before the commencement of the 1990 Act. In deciding which Act applies to this proceeding, sub-section 235 (1) and sub-regulation 23.26 (1) of the 1990 Act have been considered. These provisions read as follows:

"235. (1) Subject to this Chapter and the regulations, this Act applies, on and after the commencing day, to any application, request, action or proceeding made or started under the 1952 Act and not finally dealt with or determined under that Act before that day as if the application, request, action or proceeding had been made or started under a corresponding provision of this Act.
"23.26 (1) The 1952 Act applies to an action or proceeding made or started under that Act and not finally dealt with or determined before the commencing day:
(a) in which the validity of a patent is disputed; or
(b) concerning infringement of a patent."

Mr Caine submitted that, prima facie, applications that commenced under the 1952 Act should be dealt with under the 1990 Act in accordance with s235 (1). He argued that the phrase "actions or proceedings" in reg 23.26 (1) is restricted to legal proceedings in courts of law and not apt in this case.

Mr Macaw submitted that the term "proceeding" in reg 23.26 (1) is a broad expression and apt to include an application for extension of term in which informants "oppose" the proceeding.

Furthermore he considered it absurd and unworkable that a notice under s68B (3) using grounds set out in s100 (1952 Act) could later purport to be a notice under s28 of the 1990 Act relying on s18.

It is clear that, by the language of s235 (1) "Subject to ... the regulations", the intention of the legislation is to apply the 1952 Act to the kind of actions or proceedings defined in reg 23.26 (1). I see no reason why the present proceeding - which started under the 1952 Act, had not finally been dealt with or determined and directly involves the validity of a patent - should be considered to be outside the ambit of reg 23.26 (1). I do not agree with Mr Caine's submission that the phrase "actions or proceedings" in reg 23.26 (1) is restricted to legal proceedings in courts of law. If this was the case we would have the undesirable situation where this action proceeds under the 1990 Act but in an appeal, a court of law applies the 1952 Act. Consequently this action will proceed under the provisions of the 1952 Act.

In my opinion it is clear from the legislation that I should determine this matter under the provisions of the 1952 Act. It appears that no party could be disadvantaged by this as both Mr Caine and Mr Macaw are in agreement that the pertinent parts of the 1952 Act all find in material respect kindred provisions in the 1990 Act. In particular, the grounds of invalidity relied upon, paras 100 (1) (d), (e) and (g) have corresponding grounds in the 1990 Act, paras 18 (1) (a) and (b).

rights of patentee

At the hearing Mr Shelston questioned the right of the patentee to lodge evidence and to make verbal representations on the contents of the material presented to the Commissioner. Mr Macaw responded that there is a basic tenet that anybody whose rights were to be affected could be heard and furthermore, that as the Commissioner has to notify the patentee of any notices lodged under s68B (3) and furnish them with a copy of each document, there is a clear intention that the patentee should be given an opportunity to answer this evidence.

The right to lodge evidence was considered by the delegate of the Commissioner in Vulcan v Braemar Appliances (1985) 6 IPR 143 in which he stated:

"There is of course also no specific provisions in s68B or elsewhere in the Act or regulations enabling the patentee to submit evidence to the proceedings. Nevertheless I think it can be easily seen that a patentee may consider it highly desirable to provide evidence to answer particular aspects of an informant's notice and statement of facts, for example to counter statements relating to the ground specified in paras 100 (1) (e) and (g). In such circumstances a patentee should not be deprived a chance to answer contentious allegations by an informant and provide any answering evidence, and here I believe reg 72 would be available for the Commissioner to suitably direct the course of proceedings to allow the patentee to prepare and file answering comments and evidence".

The Act also makes general provisions for hearings in certain circumstances as set out in section 162 and regulation 85, thus:

"162.(1) Where a discretionary power is by this Act given to the Commissioner, he shall not exercise that power adversely to the person applying for the exercise of that power without (if so required by that person within such time as is specified by the Commissioner) giving to that person an opportunity of being heard."
"85.(1) The Commissioner shall, before exercising a discretionary power given to him by the Act or these Regulations adversely to any person, give that person at least ten days' notice of the time and place at which that person may be heard."

Thus, before refusing to grant an extension of term of a petty patent in accordance with s68B (6) the Commissioner would first have to provide the patentee an opportunity to be heard. It is the practice in this Office to hear both parties together for convenience.

additional evidence

The additional evidence lodged by Natural Fruits was outside the eleven month period prescribed by s68B (3). The patentee did not agree to this evidence being adduced.

There are three avenues open to me in respect of this evidence:

(a)to receive the evidence in support of the notice and allow the informant to be heard on the material. Mr Caine submitted that this is the correct approach. He argued that reg 72 enables the Commissioner to exercise this discretion and that it was appropriate in this situation because the patentee had sufficient time to address the new material. He submitted that the relevant delay caused by the late evidence was from 16 June to 20 July 1992 - a period of only a little more than one month. Furthermore, the material was of direct relevance and it was in the public interest for the informant to be heard on the evidence.
In support of this, Mr Caine cited Wright v. Ajax Davey (1987) AIPC 90-405 in which additional evidence was admitted in the public interest.
In that case however both the patentee and informant lodged additional evidence and both parties argued for the admissibility of additional declarations.
Mr Macaw argued that the declarations of the additional evidence were dated from November 1991 to April 1992 but were not served until June 1992. He submitted that there was a suspicion that the informant attempted to gain benefit from this delay and that no explanation had been given as to why the material was not provided earlier.
(b)to not receive the further evidence. This was the course that was followed in Vulcan v Braemar (supra). In that case, however, the additional evidence was tendered at the hearing and the hearing officer concluded that the public interest in receiving this additional evidence did not outweigh the need to have minimal delays in arriving at a decision on the extension of term.
In the present case no extra delay would be involved if the material is received as the patentee has already had the evidence for more than one month before the hearing.
(c)to treat the evidence as not lodged pursuant to s68B (3) but consider it under s68B (5) to (7) which require that the Commissioner shall consider all material which has been brought to his attention as done in reApplicationbyThomas and Stohr (1991) 21 IPR 55.

Although the Commissioner has discretion under reg 72 to direct the practice and procedure to be followed in cases other than opposition, reg 72 should not be used to automatically disregard the provisions of s68B (3). It seems to me that by lodging the material outside the eleven month period the provisions of s68B (3) have not been met and so the informant has forfeited the right to be heard on this material pursuant to s68B (8). If this was not the case there is a danger that the informant might gain some advantage, whether real or merely perceived as such by the patentee, by lodging the material late. In the present case the patentee is suspicious of the informant's motives as the material could have been lodged earlier with the notice.

With regard to the informant and public interest, it is safeguarded by the provisions of s68B (5) to (7) which provide for the consideration of this material.

I am of the opinion that (c) is the correct procedure to follow in this case, that is, I will consider the additional evidence but without giving the informant a further opportunity to be heard thereon. The patentee may, of course, be heard on this material as discussed above.

The Petty Patent Specification

The petty patent specification is entitled "Fruit juice mix for whipped and/or frozen applications". The specification indicates that the invention relates to a fruit juice mix suitable for hard pack applications which is essentially free from non-vegetable ingredients. It describes the frozen fruit juices of the prior art thus:

"Fruit juices including mixtures are available on the market in various forms such as unsweetened and sweetened, frozen and unfrozen, including concentrated and fully diluted. These fruit juices, in the frozen state, are characterized generally as exhibiting a crystalline structure in many cases that breaks into layers or lamina which frequently exhibits a needle-like structure with the crystals being most noticeable. Thus, these commercial frozen juices can, with their needle-like crystal structure, cause injury to the mouth. On the other hand, the frozen juices sold with a stick frozen therein are described as being quiescent in nature but exhibit the harsh feel in the mouth of crystalline ice or needles as contrasted with the soothing feel of the instant whipped or whipped frozen product. The prior art teaches how to avoid or reduce the above disadvantages and have generally added solids for the purpose of aiding the sweetening and freezing of the juices where these solids or additives are other than fruit juice origin and contains refined sugar, corn sweeteners, and the like, including artificial colors and flavors".

The specification then states that there was a desire for a soft frozen all-natural fruit juice which had not been adequately attained because those who practised the prior art found natural fruit juice would not produce a product acceptable to the consumer.

It describes the present invention as relating to "a fruit juice mix which, in the whipped and/or frozen state, exhibits the absence from the mass of a unitary or essentially a unitary crystalline lattice network having shear planes less than about 0.1 up to about 0.5 centimeter in length and good storage ability".

I have two observations regarding the above paragraph. The first is that it is not clear whether the shear planes are less than about 0.1 or less than about 0.5 cm in length; the phrase "less than about 0.1 up to about 0.5" is ambiguous. The second observation is that it is not clear whether the characteristics described are essential features of the invention, i.e. whether the mix or product defined in the claim must be characterised by good storage ability and the specified shear planes. If it must, is it necessary that the claim recites those characteristics. That is, does the product defined in the claim exhibit those characteristics as a matter of course when frozen?

The specification describes as a specific embodiment the "use of ion exchange treated and/or ultrafiltrated juice or juices to give mixtures having improved storage stability at ambient to freezing temperatures and permitting products such as drinks and frozen creams to be made from a mix stored for months at ambient temperature".
There follows a statement of the invention which is the same as the claim.

The various types of fruit juices which may be used are then discussed (page 3 lines 19 to 23):

"Specific types of juices which can be utilized in the present invention include fruit juice, concentrated fruit juice, fruit puree, fruit puree concentrate, juices which have been modified, that is modified juice, as well as modified concentrated juices and the like. Modified juices would include ion exchange treated and/or ultrafiltered juices".

It then states that "the degree of sweetness is generally listed by a brix value. Brix is generally defined as the percent of soluble solids primarily made up of natural sugars" and "brix values are obtained without the use of lactose or refined sugar or corn sweeteners, as is the practice in making ice cream". In order to obtain an overall brix value of 20 to 30 a sufficient amount of water is added to dilute the concentrated juice. The amount of water will vary over a wide range, depending on the concentration of the juice mixture.

The types and amounts of stabilisers and proteins are discussed as well as other ingredients such as flavour enhancers or modifiers. Of the stabilisers the specification states that "lesser amounts tend to result in separation of the various ingredients whereas higher amounts tend to result in a very viscous mixture which is difficult to mix. Lesser amounts also tend to yield whipped aerated hard pack product with weak body, coarse or icy consistency, and poor meltdown stability while higher amounts tend to result in gummy or elastic body and unnatural meltdown qualities".

The specification then describes the mixing of the fruit juice mix as well as the production of the frozen product. It states:

"At the use location, the juice is poured into a machine known to the ice cream trade as a soft serve machine. Here it is cooled and frozen as well as whipped with air or gas to produce a frozen flavorable mixture of soft serve or harder serve mixture, depending on recipe, on the temperature and the time in the machine and the equipment being used. Those of ordinary skill in the ice cream trade will immediately see other apparatus that could be used to process the juice mixes of this invention, including the whipped creams and soft and hard frozen creams".

Seven formulation examples are given using a variety of types of fruit juices.

The specification ends with one claim which reads as follows:

"A fruit juice product adapted to be frozen comprising:
at least one type of fruit juice;
from 0.05 percent to 1.0 percent by weight of at least one stabilizer based upon the total weight of said product wherein said stabilizer is selected from the group consisting of guar gum, locust bean gum, carrageenan, an alginate, a cellulose gum, a pectin, xanthan gum and combinations thereof;
from 0.1 percent to 0.50 percent by weight of an added protein based upon the total weight of said product;
an amount of water and including remaining ingredients selected from the group consisting of flavoring, spices, flavor enhancers and edible organic acids and mixtures thereof such that said product has an overall brix value of from 20-30, and said product being free of added refined sugar and corn sweetener additives and having overrun of at least 20 percent when frozen wherein said frozen fruit juice product has a smooth creamy appearance."

In other words the claim defines a fruit juice product characterised by:

1. its composition, which comprises:
i) fruit juice
ii) 0.05 - 1.0 weight % of at least one stabilizer selected from the group as defined

0.1 - 0.5 weight % of an added protein
iv) water (with any of the ingredients as defined) so that the brix value is 20 - 30
v) no added refined sugar and corn sweetener; and

2. its properties, viz it is suitable for freezing and if frozen, it will have:
vi) overrun of at least 20 %, and
vi) smooth creamy appearance.

THE EVIDENCE

Natural Fruits Evidence in Support of the Notice

The evidence lodged under sub-section 68B(3) consists of a number of declarations of which I have summarised the most relevant below.

1. Mark Andrew Wakeham

Mr Wakeham declares that he is employed by Smith Shelston Beadle as a Technical Assistant and that he was responsible, under supervision, for the professional advice given to Natural Fruits in respect of their alleged infringement of petty patent 597225.

He sets out his reasons why an extension of term of this petty patent should not be allowed. He mentioned that the fruit juice mixture:

(a)is not a manner of manufacture being an unpatentable collocation of known materials having no working interrelationship beyond the expected chemical interactions known as part of common general knowledge and hence exhibiting no synergism
(b)is a substance capable for use as a food, and is a mere admixture of known ingredients and therefore contrary to section 155 of the Patents Act 1952
(c)is not novel in the light of prior use by Natural Fruits
(d)is prior published by recipe disclosures given in Exhibits MAW-A, MAW-B and MAW-C. (This ground was not relied upon at the hearing). (The composition of the recipes do not fall within the scope of the claim and they are silent as to the properties if frozen).
(e)was obvious and did not involve an inventive step. (This ground was not pursued at the hearing).

2. Alan Thomas

Mr Thomas declares that he has been the Production Manager of Natural Fruits or its predecessor Fortrel since 1984.

He states that he consulted the company records and along with his own personal records and recollection of events is aware that since 1984 Natural Fruits produced fruit products. He describes the fruit product thus:

"The product includes the following ingredients:
(a)    Fruit as either puree or concentrate
(b)    Stabilizers being a blend of guar gum, locust gum and xanthum (sic) gum
(c)    Sugar being either cane sugar or fruit concentrate
The ingredients are processed as follows:
The fruit is cooked along with the sugar or fruit concentrate and the stabilizer blend to produce a liquid fruit formulation or solid fruit sorbet formulation".

He states that the product had been sold in Australia before 1986 both in liquid form with the addition of soy protein isolate and in the sorbet formulation.

The composition is not specific enough and hence does not disclose the composition as claimed and there is no reference to the properties if frozen.

3. Eugene Jones

Dr Jones declares that he is Head of the Department of Food Technology, Moorabbin College of TAFE and has held the position since 1975.

He states that he consulted the College records and along with his own recollection of events was aware that since 1985 Natural Fruits had produced fruit products.

His description of the product is essentially the same as that of Mr Thomas.

4. Stuart Ross Graham

Mr Graham was lecturer in Food Science and Technology at the Moorabbin College of TAFE for the period January 1978 to July 1987. In this time he also acted as consultant to the food industry under the registered business name of Food Diagnostic Consultants.

He states that he has consulted his records for Food Diagnostic Consultants and his own recollection of events and describes the ingredients of the fruit products produced by Natural Fruits since 1985 thus:

"Fruit, as either a puree or juice.
Stabilizers, being a proprietary blend of guar gum.
Locusts bean gum and xanthan gum.
Sugar, in the form of sucrose/dextrose/invert sugar.
De-ionised apple and other fruit concentrate.
The ingredients were processed in the following form:
The fruit or juices were cooked with the sugar or fruit concentrate and stabilizer blend to produce a liquid fruit formulation or solid fruit sorbet formulation".

Again the composition is not specific enough and hence does not disclose the composition as claimed and there is no reference to the properties if frozen.

5. Francis A. Cutting

Mr Cutting declares that during 1984 he was employed with Ardmona Fruit Products Co-Operative Company as Food Services Manager, and supplied ion-exchanged fruit juices and fruit concentrates free of added cane sugar in apple and pear varieties to Mr Simon Hansford for the manufacture of fruit sorbets, and tofu (soybean protein) soft serve products free of cane sugar.

6. Julian Madeley

Mr Madeley declares that the range of use of the stabilizer quoted in the patent, together with the very broad application of blends possible, merely encompasses the range of levels and blends currently in use, and allowed by law to be used. He states that he does not consider that the stabilizer mixture conferred a uniqueness to the product.

Patentee's Evidence in Answer to Natural Fruits'

1. Wayne Hage

Mr Hage deposes that he is a technical manager employed by the CCA Beverages (Adelaide) Ltd. (formerly Diverse Products Limited) responsible for the technical development of the soft serve fruit product "VITARI". He has worked in the food industry since 1967 and commenced his current employment in January 1988. He states that CCA Beverages (Adelaide) Ltd. holds an exclusive licence for the Petty Patent. He further states that the product VITARI falls within the claim of the petty patent.

Mr Hage then describes the technical difficulties associated with the invention. He states that it is a well known phenomenon that the use of the type of saccharides from fruit results in a greater freezing point depression than that expected from the disaccharides which include sucrose (cane sugar) or lactose such as used in ice creams, or from sugars of high molecular weight such as found in corn sweeteners/glucose syrups. For this reason, it was not technically desirable to use fruit juices as the source of sweetening and bulking agents. To support this view he referred to exhibit WH1 which is an extract from the book entitled "Ice Cream" by W S Arbuckle (4th Edition).

He states that the use of fruit juice concentrates described in the patent specification provides unusual and unexpected results, with a product akin to ice cream but precluding the use of ingredients that are normally used in ice cream. He states that this represents a major departure from what is stated in the literature as commonly held frozen dessert technology.

Mr Hage then describes the testing of a 1989 composite sample of a product known as "Hi-fruit" and sold by Natural Fruits. He refers to "Exhibit WH2" which is a copy of the Australian Government Analytical Laboratories (AGAL) report of the analysis. From the sugar analysis he concludes that the primary source of sugar in this fruit was likely to be invert sugar, but that there were similar levels of moisture, carbohydrate, protein, fat and cholesterol between Vitari and Hi-fruit. Mr Hage is of the opinion that overall the AGAL analyses were not sufficiently conclusive so as to identify fully the nature of the Hi-fruit product having regard to the parameters defined in the claim.

Mr Hage comments on the declarations lodged as evidence-in-support by Dr Jones, Mr Thomas and Mr Graham. He summarises by stating that they give rise to further inconsistencies and difficulties in interpreting the AGAL reports and in ascertaining the nature of the product allegedly produced, and that the declarations of Dr Jones and Mr Thomas are inconsistent with the AGAL analyses and are inconsistent with Mr Graham's.

In order to determine the actual composition of Hi-fruit, CCA Beverages (Adelaide) Ltd. lodged with the Federal Court of Australia an action for pre-trial discovery. Mr Hage refers to "Exhibit WH6", which is a true copy of an affidavit filed in the Federal Court by Mr Simon Hansford, the managing director of Natural Fruits, and based thereon mentions that the opponent has no record of the product and is not in a position to state with any certainty that such product had been made.

In that affidavit Mr Hansford deposes that they "do not possess production formulation documents, costing formulation documents, or batch formulation documents ... Declarations of Messrs Thomas, Jones and Graham do not refer to any documents or records. From time to time Messrs Jones and Graham undertook micro analysis ... concerning products including the equivalent to what is now known as Hi-Fruit".

Mr Hage also commented on Mr Wakeham's declaration and the exhibited recipes. He calculated the various integers and concluded that none of them disclose the features of the claim.

2.Anthony De Vries

Mr De Vries was associated with the Beverage and Frozen Dessert Industry from 1966 to July 1989. In March 1986 he was appointed the General Manager of the Foods Division of Diverse Products Ltd which produced and marketed VITARI soft serve product.

Similar to Mr Hage, he describes the technical difficulty associated with producing a frozen fruit juice that has smooth and creamy texture comparable to premium grade ice cream. He understands that in order to produce such a product all the integers defined in the claim must be present.

He states that "all the components necessary for making a frozen dessert according to the invention were commercially available before the priority date" and that "the tax benefits accruing from the use of fruit juice concentrates were considerable and provided sufficient motivation to attempt to use fruit juice concentrates as a basis for a soft drink product, a fruit juice product and a premium grade iced dessert".

He declares: "I am not aware of any product that was available before the date of launch of the VITARI product ... that was smooth and creamy fruit juice based frozen dessert that had no sugar or corn glucose syrups added".

3.Anthony Timothy Wall

Mr Wall deposes that he is Manager of Vitari Australia who produce a soft serve product which falls within the claim of the patent under consideration. He provides statistics for the growth in sales and increasing numbers of distributors of Vitari and states a belief that this growth represents a successful product launch.

Natural Fruits Additional Evidence

This evidence consists of further declarations by the original declarants along with additional declarants. I have summarised the most relevant below.

1.Mark Andrew Wakeham

Mr Wakeham declares that the evidence in support filed on 18 May 1991 was, at that date, of the highest quality available to Natural Fruits. He then states that in response to the pre-trial discovery (discussed in Mr. Hage's declaration above) they were required to produce further evidence regarding their products and manufacturing processes and that this evidence has been represented in the form of Statutory Declarations which form the additional evidence.

I note however that Mr Hansford's affidavit that was filed in the Federal Court does not mention such additional evidence.

2.Alan Thomas

Mr Thomas declares that he manufactured sorbets prior to 10 June 1986 but that he did not record precise measurements but essentially followed the formula or recipes communicated to him by Mr Hansford. He has now taken "measurements and readings" of sorbets matching those made prior to 10 June 1986 while in the employ of Fortrel and Natural Fruits. He states that the results of "these tests" show these products contained the following features:

"(A)   (i) a fruit juice product having at least one type of fruit juice;
(ii)    0.05% to 1% by weight of at least one    stabilizer based on the total weight of the product;
(iii) 0.05% to 0.15% by weight of an added protein based upon the total weight of the product;
(iv)    stabilizers which were supplied by Universal Flavors (Australia) Pty. Ltd., including a product   known as "Stabilizer No. 433" and stabilizers supplied by Universal Foods;
(v) an overall brix value of from 20-30;
(vi)    the particular sorbet product was free of added refined sugar and corn sweetener although other products did have refined sugar and corn sweetener. The sorbet product used apple and pear fruit concentrate;
(vii) the product had an overrun of at least 20% when frozen producing a fruit juice product with a smooth creamy appearance."

Mr. Thomas then describes two further products (B) and (C) which are more relevant to the parent application except that (C) includes feature:

"(v) with an amount of water including ingredients consisting of flavouring spices, flavour enhancers including citric acid and organic acids and mixtures thereof".

That is, it has an explicit inclusion of water which formulation (A) omits.

3. Eugene Jones

Dr Jones declares that prior to 10 June 1986 he tested fruit products given to him by Mr Hansford and that some of the products tested had as the sole sweetening agent a fruit juice concentrate.

4. Stuart Ross Graham

Mr Graham states that between 1984 and prior to 10 June 1986 he worked on the development of a liquid fruit, fruit sorbet and ice confection type products at the request of Hansford. His terms of reference were to assist in the development of an ice confection type product that was free of refined sugar or corn sweetener additives.

He declares that during that period both Fortrel and Natural Fruits "produced and sold a product that contained at least the following ingredients:

(a)    a sweetening agent, being either one type of fruit juice (concentrate) or sugar in the form of sucrose, dextrose/invert sugar or de-ionised apple;
(b)    0.05%-1.0% by weight of at least one stabilizer;
(c)    protein in the form of soya isolate or the fruit itself;
(d)    stabilizer blends supplied by Universal Flavours (Australia) Pty. Ltd., Universal Foods, Davis Germantown, Freezer King, or some other supplier. I was aware that the blends contained mixtures of guar gum, locust bean gum and xanthum gum, but I did not at the time know the precise mix of the various constituents of each stabilizer blend;
(e)    having an overall brix value of from 20-30;
(f)    with fruit juice (concentrate) or corn sweetener as the sweetening agent;
(g)    the product had an overrun of at least 20% when frozen, giving the frozen fruit juice product a smooth creamy appearance."

5. Francis Alwyn Cutting

Mr Cutting declares that based upon his observations of Mr Hansford carrying out the manufacturing process, he was aware of his own knowledge that Mr Hansford manufactured prior to 10 June 1986, ice confections which were totally free of cane sugar, with the only sweetening agent being ion-exchanged fruit juices and fruit concentrates in apple and pear varieties.

6. Alan Fletcher Buchanan Smyth

Mr Smyth declares that he is the managing director of Universal Flavors (Australia) Pty. Ltd. He states that a stabilizer product known as '960588 Gelatin Stabilizer No. 433' was supplied to Fortrel in January 1985 and November 1985 and that this stabilizer was a blend of vegetable gum, comprising guar gum, locust bean gum and carrageenan.

7. Taxis Stanton

Mr Stanton deposes that prior to 10 June 1986 he was the managing director of Universal Nominees Pty. Ltd., which traded as Universal Foods and that on several occasions he sold to Simon Hansford a pre-mixture consisting of guar gum, xanthan gum and locust bean gum.

8. Simon John Hansford

Mr Hansford declares that he is the Managing Director of Natural Fruits. He states that he was personally involved in all aspects of the compounding, manufacturing and selling of the ice creams, sorbets and ice confection made by Fortrel, Fortrel Ice Cream and Natural Fruits between 27 November 1979 and 10 June 1986.

Mr Hansford then describes the production of sorbets produced by Fortrel, Fortrel Ice Cream and Natural Fruits in essentially the same way as in Mr Thomas' declaration.

The Patentee's Answer to this Additional Evidence

The patentee did not agree that the additional evidence be adduced. However, they filed a declaration by David Peter Rydon for consideration should the additional evidence be considered.

Mr Rydon deposes that he is a solicitor and had the care and conduct of the application for pre-trial discovery referred to in Mr Wakeham's declaration. He declared that the only documents provided by Natural Fruits were an affidavit by Mr Hansford and a Notice of Conditional Appearance. Mr Hansford's affidavit is the same as that discussed above (Hage's exhibit WH6).

Lyons Evidence in Support of the Notice

In his Notice under section 68B(3) Mr Lyons relies upon the facts set forth in the declarations constituting his evidence-in-support of his opposition to the grant of the parent application no 594358. I have summarised the relevant declarations below. Many references within the declarations are in respect to the opposition to the parent application but the facts are pertinent to the present proceeding.

1. Raymond Leon Lyons

Mr Lyons declares that it is in his capacity as the Executive Director of the Ice Cream Manufacturer's Federation of Australia that he is opposing the subject application. He expresses a belief that he is well versed in the practices in the frozen confectionery industry in Australia as at the priority date of the application.

He states that the claims seem to be confused between a fruit juice mixture and a frozen whipped product made from such a mixture.

Mr Lyons goes on to say that he sees the opposed application as an attempt to achieve an unwarranted monopoly in the use of now readily-available fruit juice extracts as the claims seek to embrace:

"(a)   all types of commercially available fruit juices and fruit juice concentrates, including those excellent sources of fruit sugar which have only recently become commercially available in quantity, namely fruit juices which have been treated with ion exchange resins,
(b)    the entirety of the legally useable range of the most popular stabilisers, and all conventional whipped frozen confectionery invariably include some stabiliser
(c)    all types of whipping proteins, and again their presence is almost a sine qua non of whipped frozen confectionery
(d)    the entire practicable range of overruns - a product with less than about 20% would not be perceived as whipped, certainly not a desirably light or fluffy one, and any with more than 150% would be perceived as lacking substance and quality.
(e)    the entire practicable range of Brix values, below which a frozen product is perceived as too hard or brittle and, if whipped, gritty or not smooth and creamy, and above which the product is far too sweet for most consumers."

He submits that as a result of this a monopoly in the subject invention would be generally inconvenient and contrary to section 6 of the Statute of Monopolies because it would prevent ice cream manufacturers from continuing with the development of any new products containing fruit sugars in lieu of cane or corn sugars because of the fear of patent infringement.

Mr Lyons concludes with the results of a survey he carried out among the fifteen member companies of his Federation concerning the availability of the book "Ice Cream" by W S Arbuckle. He says the results show that eleven of the companies have the book as an on-site technology reference, two companies do not have the book and two did not respond.

2. Garry Richard Baker

Mr Baker is a food technologist specialising in the field of ice cream dessert manufacture and technology.

He declares that before the priority date all the ingredients in the claim were available and widely known, and, for the most part, widely used throughout the frozen confectionery industry in Australia. He qualifies the "widely used" because he contends that fruit juice concentrates stripped of colour and flavour (except for the sweetness derived from the fruit sugar content) by methods such as ion exchange or ultrafiltration, while widely used overseas and known and available in Australia at the priority date, were difficult to obtain locally in commercial quantities until recently.

Mr Baker then describes known products which conform to many of the features of the claim. He states that such products differ, not in the technology on which they are based but rather in the selection of ingredients, formulations, or balance between ingredients and presentation. He then states that where the exemplary embodiments of the invention differ from known products the difference resides in the particular choice of known ingredients and is not due to any extension of technology beyond the common general knowledge of practitioners in the field.

In particular, he states that the use of fruit juice sugars to provide a sweetness and bulking agent functionality does not represent a discovery on the part of the inventor and that all practitioners would have been fully aware at the priority date that solubles such as fruit sugars would have the desired effect.

Annexed to this declaration is exhibit GRB1, an extract from a text book entitled "Ice Cream" by W S Arbuckle. Mr Baker describes the book as the "bible" on ice cream technology and as an abbreviated summary of a part of the common general knowledge of practitioners in the industry in respect of sherbets and ices as it was at the priority date. This publication describes the composition of sherbets and ices. It states that fruit juices may be added for flavour and colour.

Mr Baker then comments on the individual features of the invention:

(a)The stabilizer/emulsifier level of 0.05% to 1.5% by weight is little more than a slight extension of the range of 0 to 1.4% permissible by law. Furthermore the list of substances permitted by law to be used included vegetable gums, specifically xanthan gum, carrageenan, guar gum, locust bean gum and the like.
(b)The technology to produce fruit juice mixtures which are able to be stored at ambient temperature for months was used regularly by a number of food processors and manufacturers in Australia for fruit juice and other liquid foods prior to the priority date.
(c)Vegetable (whipping) proteins were used regularly by Australian manufacturers for at least 10 years prior to 1986.
(d)The information described in the specification is widely known and the brix range specified is typical of all sorbets / sherbet products. Freezing point depression technology relates the molecular weight of soluble solids to the concentration required to achieve a smooth and creamy texture and thus avoids iciness or excessive slippiness in a frozen dessert. This technology was known and applied.
(e)Guaranteed supplies of fruit sugars from single strength or concentrated fruit juices were not available in Australia in sufficient quantities, even though the technology for their manufacture was commonly understood and known to the ice cream industry prior to 1986, to enable products in which the sugar content is derived entirely from fruit juice to be entertained for the mass market by reputable manufacturers.

Annexed to the declaration are two additional exhibits GRB 2 and GRB 3 which are copies of pages entitled Model Food Standards Regulation. None of the exhibits disclose the ranges or combination of constituents as defined in the claim.

3. Bruce Niels Smith

Mr Smith has been associated with the food industry since 1969.

He states that concentrated fruit juices and clarified, filtered fruit juice products have been available for many years, and that additionally, with the advent of ion exchange technology, fruit juices can have their sugar profiles utilized without any flavour impacts, and can be used as a basic bulking agent for freezing point depression.

Mr Smith then discusses the other ingredients in much the same terms as Mr Lyons and Mr Baker. He states that clarified or de-ionised apple juice has been used in Australia as a base fruit juice additive and that incentives were given by the Australian government to use apple juice concentrates in fruit juice products until recent years.

He states further that everything mentioned in the formulation is known and used in products within the Ice Cream Industry. He attached:

(i)a copy of extracts about "The History of Ice Cream" with no publication or availability data;

a sheet headed "Carbohydrate Modifier Mix", with no information as to its source; and

(iii) copies of two sections said to be from "Arbuckle 1966".

Again, none of these documents disclose the ranges and combination of constituents as defined in the claim.

4. Frank Maurice Catanzariti

Mr Catanzariti declares that he is a food technologist with a high degree of specialisation in the field of ice cream and frozen dessert technology with a very good knowledge of ingredients, manufacture and technology used in Australia prior to the priority date.

He states that to his knowledge all the raw materials described in the specification were widely known and used throughout the frozen confectionery industry prior to the priority date. Fruit juice concentrate was used in other industries in the mid 1970s when its use was promoted by the then sales tax laws. These fruit juice concentrates were based on apple and pear juice, stripped of colour and flavour, and used as a source of fruit juice and brix solids. Their high cost, difficulties in local supply and tendency to revert in flavour restricted their use.

To support his assertions Mr Catanzariti referred to Exhibit 1-FMC, which is a copy of a technical publication issued by Grindsted Pty. Ltd. (Grindsted). He states that the publication was widely available to the industry prior to 1986, being published by the company, along with other information brochures, as a service to users of its products.

Mr Catanzariti then proceeds to discuss the features of the claim. Many of the comments are similar to the previous declarants but the following are noteworthy:

-He states that fruit juice concentrates based on apple and pear can be used as a source of brix solids. Fruit juice concentrates contain 85-95% of these brix solids as sugar. The Food Standards Code has regarded these juice concentrates as one of a number of sources of sugar for food products. If fruit juice itself rather than the concentrate was used, then for a typical product sought to be covered by this patent at 25 brix the product would have to contain 250% fruit juice.
-He was aware in 1983 that most, if not all, wet food products based on fruit could be formulated by replacing sugar with apple juice. This was not done because of cost, poor quality, reversion in flavour of the juice and because many companies believed it was unethical to replace refined sugar with concentrated apple juice so as to mislead consumers.

He summarises his assertions thus:

"(a)   The patent application covers a mixture of ingredients - all of these ingredients were known to me as a food technologist before 1984. The key ingredients were known and used by me as early as 1973.
(b)    The practice of using apple and pear juice concentrates dates back to the early 1970's, and was widely used in fruit juice beverages. The typical product using this approach is Ardmona's range of Fruit Pieces in Natural Fruit Juice.
(c)    The patent application is for a "recipe", i.e. a particular combination of well known and common ingredients predating the patent application. That sugar has not been used does not constitute an inventive step, since fruit juice concentrate has been used to my knowledge since 1973 to replace sugar solids in a wide range of products - none of these fruit juice applications within Australia or beyond have led to any patent application to my knowledge".

Turning now to the exhibited document "Grindsted", the following is a summary of its relevant parts.

It describes the preparation of a standard recipe for sorbet which contains 20% sugar, 6% glucose syrup solids, 0.45% stabilizer blend comprising stabilizer and whipping agent (protein).

Following the recipe there is a statement that "these experiments describe the production of a flavoured sorbet, but the results obtained can be applied to sorbets containing fruit juice or fruit juice concentrate". This statement seems to me to refer to a sorbet in which the fruit juice is used for flavouring and there appears to be no reduction in the amount of sugar used.

Under the heading "sugar" it is stated that:

"The quantities of sugar and glucose solids have been kept constant unless otherwise indicated. We have used 42DE glucose syrup with 75% solids. Sugar like dextrose, HFCS, invert sugar and fructose were also tested".

There is no indication as to whether fructose was tested in the absence of sucrose and glucose, or what the results of the tests were.

The document also states that fructose is suitable as a sweetener as well as a solids contributor, that it can be used to achieve a more scoopable sorbet, and that using fructose a cold but very fresh sorbet is obtained with a relatively short structure and a very quick flavour release. In none of these sections is it stated that the sucrose and glucose are omitted.

The Patentee's Evidence in Answer to Lyons

These declarations are very similar to those lodged in answer to Natural Fruits' evidence except for an additional declaration by Mr C Behn. I have summarised the main additional material below.

1. Wayne Hage

Mr Hage makes the following points in relation to the availability of fruit juice concentrates:

(a)Ample quantities of deionised juices were available and used by Coca-Cola Bottlers to produce the beverage sold under the Trade Mark "Coca-Cola". Annexed to the declaration is "exhibit WM4" which is a copy of a statement by a Mr. Victor Fuchs that Coca Cola Bottlers in Adelaide have been buying deionised apple concentrate since 1967.
(b)The fact that sales tax incentives were applicable to products containing Australian juice and that Food Laws have defined the compositional requirements of numerous fruit juice products clearly establishes the availability and use of fruit juices in Australia.
(c)The manufacture of a product according to the invention is not limited to the use of deionized or ultrafiltered juices; simple juice concentrates can be used.
(d)Totally deionised juices i.e. a clear, colourless solution of simple sugars, would be the obvious choice if simplistic replacement of sugar was the aim. A desirable product of the invention utilizes many more of the components of fruit juices other than the simple sugars.

Mr Hage then discusses the products referred to in the declarations of Catanzariti, Baker, Smith and Lyons. He says:

(a)the products described by Mr Catanzariti and shown to have used fruit concentrates instead of sugar are either products not intended for consumption when frozen, or if intended for frozen consumption are not smooth and creamy.
(b)the products said by Mr Baker to conform with many of the main features of the invention either are not smooth and creamy and/or have added sugar or corn/glucose syrup.

Mr Hage then asserts that the use of technology from the Fruit Juice Industry that is remote from the Ice Cream Industry represents an extension of technology beyond that associated with the common general knowledge of practitioners in the field of ice creams.

2. Clement Behn

Mr Behn declares that he is employed by CCA Beverages (Adelaide) Limited. He states that in the late 1960's Coca-Cola Bottlers (Adelaide) Ltd. began to use a singly deionized apple juice concentrate as a major ingredient for Coke and has been using a deionized fruit juice concentrate ever since.

decision

Novelty

Both sides agreed that the test for novelty is the reverse infringement test (see e.g Werner v Bailey Aluminium 13 IPR 513 and Nicaro Holdings v Martin Engineering 16 IPR 545). Thus, any alleged anticipation must disclose all the essential features of the claimed invention. There is no reason to assume anything other than that all the features of the claim are essential features.

It is submitted by Natural Fruits that the patent claim is not novel in the light of prior publication by prior use. I have considered the evidence lodged under s68B(3). This evidence does not disclose a product with all of the features of the claim and cannot be found to anticipate it.

With regard to the additional evidence submitted by Natural Fruits, Mr Wakeham submitted that the material was required in response to the pre-trial discovery action. However, it is clear from the declaration of Mr Rydon that the material was not used in that action.

Mr Macaw pointed to many inconsistencies between the initial evidence and this additional evidence and described these declarations as "inherently incredible" and suggested that in the circumstances in which they were produced they are deserving of no weight whatever.

In the case of Mr Thomas the original declaration was made in 1989 and said to be based on company and personal records. Mr Macaw submitted that as this declaration was made closer in time to the described events than the further declaration, and as it is based on the source material, the declarant would surely have done the best that he could to state with precision the formulation of the product. The same is true with regard to the other declarations.

Mr Hansford has declared that no records or documentation were available. Mr Macaw also questioned why Mr Hansford did not make a declaration initially as he was personally involved in all aspects of compounding and manufacturing the products. I share Mr Macaw's concern about the weight to be afforded to this evidence. In the absence of any supporting evidence or records to substantiate why the description of the products differs in the two sets of evidence, and how more detailed descriptions could be given later it seems reasonable that this later evidence cannot be afforded equal weight to the original evidence.

With regard to the actual description of the products, Mr Macaw contends that the declarations could not provide evidence of prior use because:

- they do not disclose two of the essential features of the claim, namely the correct amount of stabilizer and the addition of water. For example, in Mr Graham's declaration under point (b) it is stated that 0.05% to 1% of stabilizer was added and point (d) also mentions stabilizer blends. Mr Macaw interprets this as disclosing that the stabilizer blends (d) were in addition to the quantities specified in (b). I take Mr Macaw's point but do not think this is the only interpretation.

- the addition of water is omitted from the formulations. Mr Macaw contends that the addition of water is an essential feature. But as the amount of water in the product defined by the claim is "such that said product has an overall brix value of from 20-30" then a product which satisfies this value, whether it is explicitly mentioned or not that it requires additional water, falls within the scope of the claim.

- the language used to describe the formulation of the products is unusual. I agree with this observation. It would be expected that if the formulations represented actual batches of a particular product then the amount of each ingredient would be expressed as a single figure rather than a range. No explanation has been given for the use of ranges or why the amounts were varied.

Although Mr Thomas declares that he took measurements and readings of sorbets matching those made prior to July 1986 he has not provided the relevant recipes or formulae. In fact no formulation has been given by any of the declarants with the actual quantities used. As no records are available it is not at all certain how the declarants could accurately repeat the recipes based on recollection of what they used six years previously.

The declarations do not appear to be accounts of actual products produced but rather general assertions that they fell within the scope of the claim. The language used for some of the features seems to be taken directly from the claim and in fact many of the actual ranges are identical to the ranges in the claim.

In the circumstances of this case I am not prepared to accept this evidence as clear proof of prior use. In reaching this decision I am guided by the comments of Graham J in Seiller's Application [1970] RPC 103 at 106:

"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally, in the absence of cross examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the facts to be proved".

Although the above comments are in respect of opposition proceedings, they apply equally to the present proceeding. In my opinion this assertion of prior use requires corroborating evidence e.g in the form of analysis of documented formulae used in making a batch of the product. As no such supporting evidence was tendered the informants have not discharged the onus of proof the responsibility for which clearly resides with them.

I find that the ground of lack of novelty by prior use has not been established.

Mr Lyons asserts that the invention lacks novelty in the light of the technical publication issued by Grindsted Pty. Ltd (Grindsted). A copy of this publication was annexed to the declaration of Mr Catanzariti. Before examining the question of anticipation I have to consider the status of this information with respect to publication in Australia.

There is no evidence to establish when and where the document was so published nor, so far as I can determine, is it available in the Patent Office or the library of the Patent Office. Although I could rule the material as inadmissible, I have considered the document and found it does not anticipate the invention because it does not disclose the use of fruit juice in the absence of refined sugar and corn sweetener additives.

I am satisfied that none of the material filed by the informants disclose the composition and properties of the product claimed. Therefore, I am satisfied that the claim does not lack novelty.

Obviousness

In considering obviousness I have to take into account what has been established as being common general knowledge in the field of the invention at the priority date of the claim (Minnesota Mining and Manufacturing v Beiersdorf (1980) 144 CLR 253).

I agree with Mr Hage that the field of the invention is ice cream technology and that it is the common general knowledge of practitioners in that field which is relevant.

I have two documents to consider to determine whether their contents are common general knowledge.

1. The technical publication by Grindsted has already been discussed under "Novelty" above. Mr Catanzariti states that the publication was widely available to the industry prior to 1986, being published by the company along with other informative brochures, as a service to users of its products.

It is not sufficient to prove common general knowledge by saying that the material was available to those engaged in a particular art. Mr. Macaw referred to the comments of Luxmoore J. in British Acoustic Films as reiterated in General Tire & Rubber Company v Firestone Tyre & Rubber Company [1972] RPC 457 at pages 482-483.

"A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted ... by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art".

There is no evidence to support the view that the contents of Grindsted were part of the "common stock of knowledge" relating to the art of ice cream manufacture in Australia at June 1986.

2. "Ice Cream" by W S. Arbuckle.

An extract from this book is annexed to Mr Baker's declaration. I will consider it for two reasons. Firstly because the patentee has also used it to establish common general knowledge in an extract annexed to a declaration of Mr. Hage, and secondly because other evidence is given which establishes the fact that it is published in Australia.

Mr Baker describes the book as the world recognised "bible" on ice cream technology. He states that it is an abbreviated summary of a part of common general knowledge of practitioners in the industry in respect of sherbets and ices as it was at the priority date.

When Mr Lyons surveyed fifteen member companies of the Ice Cream Manufacturers' Federation of Australia he found that eleven of the thirteen companies that responded had the book and used it on-site as a reference.

On the other hand, for the patentee, Mr. Hage declares that he was not aware of Arbuckle's book until the opposition proceedings started and that he had to order a copy of the book from the United States of America because the book was unavailable for purchase in Australia. Similarly, Mr. De Vries states that he was unaware of the book.

For eleven of thirteen companies to use the book as an on-site reference suggests to me both that the book is available, i.e published, and that the knowledge contained within it is accepted by the bulk of those engaged in the particular art. In light of the comments of Luxmoore J, I accept Arbuckle as common general knowledge despite De Vries and Hage's comments.

Mr Shelston's submissions on obviousness can be summarised thus:

1.The claim is essentially for a mixture of well known ingredients as at the priority date.
2.Apart from the use of fructose as the sweetening and bulking agent rather than sucrose or other disaccharides, not only were the ingredients known but they were also widely used in the claimed proportions and for the same purposes in prior known sorbet formulations.
3.Although fructose was not widely used its properties and usability were known.
4.Fructose was not used for commercial reasons such as the reliability of quality and supply of its now best source, namely deionized fruit juice concentrates.
5.The patentee asserts that the invention resides in the "discovery" that the use of fructose unexpectedly results in a creamy texture if combined with the stipulated quantities and types of stabilizers and protein.
6.The lack of departure from conventional prior art other than the replacement of sucrose by fructose is indicated by the lack of discrimination in the choice of other factors.

Much of this argument rests on the assertion that fruit juice or fructose was not used because of the lack of reliability of quality and supply. This assertion was not supported by Mr. Lyon's own declarant Mr Smith, by the declarants for Natural Fruits who declare that they used fruit juice concentrates prior to the priority date, as well as by Mr Hage and Mr Behn for the patentee. Mr Hage also pointed out that the invention was not limited to deionized or ultra filtered fruit juices.

I must conclude on this point that some form of fruit juice suitable for use according to the invention was available well before the priority date. Although the treated juice may well have been more expensive and less readily available than sucrose this does not explain why it was not used in even a small scale or experimentally to make products in non-commercial quantities.

Mr Shelston submitted that once the decision to use fructose had been made the person skilled in the art could use the information contained in Arbuckle as a starting point and would know how to adjust ingredients in order to obtain the desired texture.

Mr Catanzariti stated in his declaration that "Fruit juice concentrates based on apple and pear can be used as a source of brix solids"; similarly Mr Smith stated that "fruit juice can be used as a basic bulking agent for freezing point depression" and in connection with a sorbet product that "the Base Mix used in this product can be easily modified to remove all the sucrose and use clarified fruit juice concentrates".
With regard to these statements I am mindful of the undesirability of analysis by hindsight when resolving the question of obviousness. (See for example Minnesota Mining and Manufacturing v Beiersdorf (supra) at page 293 and Meyers Taylor v Vicarr Industries 137 CLR 229 at 242-243). Once it had been demonstrated by the patentees that the product could be made in the absence of sugar by using fruit juice it then would have appeared to be "obvious" to anyone. This ex post facto analysis is not the correct approach. There is no real indication in the declarations whether the statements above are expressions of what was always known by the declarants or whether they are describing, with hindsight, what has now been demonstrated in the present patent.

Mr Catanzariti also refers to the amendment made in 1989 (from discussions from 1983) to the Foods Standard by the NH and MRC to make it clear in labelling where fruit juice is added to a product with the intention of replacing sugar. In his submissions Mr Shelston inferred from this that juice was known as a replacement for sugar. While this may be true as a sweetener in various products the evidence does not show that this statement is true insofar as the replacement of total sugars in products or mixes suitable for iced confections is concerned.

For the patentee, Mr Hage argues that the greater freezing point depression of fructose than sucrose or corn/glucose syrups is well known and is not a favourable attribute for achieving a smooth and creamy product. He refers to an extract from Arbuckle in which the relationship between freezing point depression and sugar type is shown for a number of typical raw materials used in the frozen dessert industry. Figures are also given for the freezing point equivalence factor of various sweeteners. Although no comment is made about the use of fructose in the publication the following is written about dextrose which has the same molecular weight and freezing point equivalence factor as fructose:

"Dextrose lowers the freezing point more than does sucrose because its molecular weight is lower. This effect on the freezing point limits the amount of dextrose that can be used to about 25% of the total desired sugar".

The clear extrapolation of this information is that fructose would also not be a suitable source of total sugars in iced confections.

Mr Macaw also pointed to the commercial success of a product as an indicator of non-obviousness. He argued that there had been a public desire for a fruit juice product with a smooth creamy texture and that tax incentives had provided additional motivation to use fruit juice. Thus the need for the product had existed for some time.

Mr De Vries states in his declaration that the soft serve product marketed under the trade name "Vitari" falls within the claims of the patent application (presumably the parent application). No formulative or other evidence is given to substantiate this statement. The only other information that may be gleaned about this product is from an analysis annexed to Mr Hage's declaration. Included in this is a table with columns for two varieties of Vitari, namely "Vitari tropical" and "Vitari Trop. Gr.", for each variety a quantity named "Brix equiv't" is given which is 35.08 and 32.79 respectively. "Brix equiv't" is not further defined and I cannot be certain whether it is the same as the quantity "brix" which is defined as being between 20-30 in the claim of the petty patent. This information does, however, give uncertainty as to whether or not the product Vitari falls within the scope of the petty patent.

Mr Wall also asserts that the product Vitari falls within the scope of the patent and gives figures which demonstrate a successful product launch.

I accept that the product Vitari shows commercial success, but in the absence of corroborating evidence demonstrating that it actually falls within the scope of the petty patent claim I do not regard this success as an indicator of non-obviousness of the patent claim.

On the question of obviousness, I conclude that the informant has not demonstrated that the invention was obvious having regard to what was known or used in Australia before the priority date. Therefore, I am satisfied that the invention claimed was not obvious.

Section 155

In his declaration Mr Wakeham alleges that the fruit juice mixture according to the claim is contrary to s155 of the 1952 Act. The relevant portion of the section reads as follows:

"155. (1) The Commissioner may refuse to accept an application and complete specification or to grant a patent-
.....
(b)    on the ground that the specification claims as an invention-
   (i) a substance which is capable of being used as food or medicine ..... and is a mere mixture of known ingredients; or
   (i) a process producing such a substance by mere admixture.

Mr Caine submitted that the Commissioner has the discretion to consider this as a ground of invalidity.

S155 uses the words "may refuse to accept an application and specification or to grant a patent". In this case the patent has already been granted and so this section does not apply. Furthermore, s68B(5) limits the grounds in the present proceeding to those set out in s100(1) (b) to (g) which grounds do not include s155. There is no reason to assume that the Commissioner has the discretion to extend these grounds. (Similarly in the 1990 Act the grounds are limited to the grounds set out in s28(1) which does not include the provisions corresponding to s155 of the 1952 Act).

Notwithstanding the above explanation as to why s155(1) will not be considered, it seems to me that these submissions are relevant to the ground of want of patentable subject matter (s100(1)(d)) and will be considered below.

Manner of New Manufacture

Mr Wakeham submits that the fruit juice mixture as defined in the claim is not a manner of manufacture being an unpatentable collocation of known materials having no working inter-relationship beyond the expected chemical interactions known as part of the common general knowledge and hence exhibiting no synergism.

It has not been disputed that all of the materials used in the formulation defined by the claim are known. The patentee submits however that the invention resides in the unusual and unexpected result that was obtained by the use of fruit juice instead of refined sugar in the product.

No evidence of common general knowledge was tendered to support the proposal that it was a known property of fruit juice that it could be used in the absence of refined sugar and corn sweetener additives to form a fruit juice product which, in the frozen condition, is smooth and creamy.

In this case although fruit juices are "known", it appears that this particular property was not known and that the particular combination provides a result beyond the expected chemical interactions of the components. The claim is therefore for a manner of new manufacture.

Mr Lyons declares that the patent is not for a manner of new manufacture on the grounds of "general inconvenience" because it would effectively prevent ice cream manufacturers from continuing with the development of any new products containing fruit sugars in lieu of cane or corn sugars because of fear of patent infringement.

Section 6 of the 1952 Act defines an invention as "any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies".

Section 6 of the Statute of Monopolies specifies that an invention must not result in "general inconvenience". It could be suggested that all patents are "inconvenient" as they give to the patentee a monopoly that prevents others from producing a product or using a process, but the phrase "general inconvenience" in this context is usually limited to the inconvenience incurred if a patent were to be issued for a general claim for things that an ordinary citizen would be entitled to do, such as efficient utilization of tools or materials.

The patent claim is limited to the combination defined, it does not prevent anyone from using any of the ingredients or the combination in different proportions. As the claim of the patent is directed to a new product it is not clear how it can be considered to be "generally inconvenient" within the accepted meaning of this phrase.

I find that the invention claimed is an invention within the meaning of the Act.

Section 40

In his submissions Mr Shelston stated that the specification did not comply with s40 for the following reasons:

1. The phrase "smooth creamy appearance" is not clear.

He submitted that this lack in clarity resulted in the claim being fatally flawed as it does not indicate whether a similar product would be an infringement, as the crux of the invention was indefinite. He submitted that it was texture rather than appearance that is important.

Mr Macaw referred to the words of Aickin J. in Minnesota Mining and Manufacturing v Beiersdorf (supra) at page 274.

"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".

I note that none of the informant's declarants express problems with this phrase and that the declarants for Natural Fruits Australia actually use the same expression to describe their own product.

I agree that it is more accurate to use the term "texture" rather than the term "appearance" as the specification and the patentee's own declarants use the former term. However, I think both terms overlap when used to describe a product as "smooth and creamy" and I accept that on balance it is probably clear to the skilled addressee what is meant by the term "appearance" and that it provides a workable criterion. Therefore, I will leave it to the patentee's discretion to use either term in the claim.

2. The fruit juice should be limited to concentrated fruit juice.

The objection seems to be one of lack of fair basis. Mr. Catanzariti states that as most fruit juices are 8-10% brix then clearly concentrated fruit juices must be used to obtain an overall brix value of 20-30.

Mr. Macaw submitted that there would be no difficulty in the addressee following the specification and obtaining a product which falls within the scope of the claim. The specification itself elaborates on the term "fruit juice" and it is clear that it includes purees, concentrates and modified juices as well as blends of juices.

The limitation on the juice chosen is that the fruit juice mixture or product must have an overall brix value of 20-30. Whilst this can be achieved by using concentrates this is not a requirement of the invention and need not be specified in the claim.

3. The claim is ambiguous as it is not clear whether the claim defines the fruit juice mixture or the frozen product.

The claim defines a fruit juice product (or mix) adapted to be frozen. Thus it is not limited to a frozen product. The product is defined firstly in terms of its composition and then as having "overrun of at least 20% when frozen wherein said frozen fruit juice product has a smooth creamy appearance". These additional features define a capability of the fruit juice product or mix when in the frozen state. Thus the claim defines a fruit juice product with a certain composition and capable of forming a frozen product having certain properties disregarding whether the product is frozen or not. I think that the claim is sufficiently clear in this regard.

I find that the specification complies with section 40, with the exception of the remarks I made earlier under the heading "Petty Patent Specification" regarding:

1. the ambiguity of the phrase "less than about 0.1 up to about 0.5", and

2. clarification of whether the characteristics described at the top of page 2 of the specification are essential features of the invention and if so, should they be recited in the claim.

conclusion

I have found that the grounds of obviousness, lack of novelty and manner of new manufacture have not been established.

However, the specification does not comply with section 40, and I allow the patentee 60 days to propose amendments to overcome the deficiencies mentioned above.

costs

The informants have not succeeded in proving any of the grounds listed in the section 68(B) notices. Although I have found that the specification does not comply with section 40, this was not one of the grounds listed and moreover my decision was not based on any material or submissions provided by the informants. Accordingly , I award costs against the informants.

Vivienne Thom
Delegate of the Commissioner of Patents

Patent attorneys for the patentee : Collison and Co, SA
Patent attorneys for the informants: Carter, Smith and Beadle, NSW and VIC

[1993] APO 66

22 October 1993