The Proctor & Gamble Company - [2011] APO 14

AUSTRALIA
AUSTRALIAN PATENT OFFICE
The Proctor & Gamble Company [2011] APO 14

Patent Application: 2008221560

Title:Article of commerce comprising edible substrate, image, and message

Patent Applicant:  The Proctor & Gamble Company
Delegate:  O L Haggar
Decision Date:  11 March 2011
Catchwords:  PATENTS – examiner’s objections – article of commerce having means to enhance the value of an image disposed upon an edible substrate through interaction with a consumer– whether a manner of manufacture – means of enhancement does not result in a “physical phenomenon or effect” – no patentable subject matter disclosed – whether a lapsed application can be refused- application has lapsed and therefore no longer exists for the purposes of refusal - application will be refused if and when it is revived.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008221560

Title:Article of commerce comprising edible substrate, image, and message

Patent Applicant: The Proctor & Gamble Company
Date of Decision: 11 March 2011
DECISION
Patent application 2008221560 has lapsed and therefore no longer exists for the purposes of refusal pursuant to section 49(2). As a consequence, there is presently nothing for me to refuse. Nevertheless, I will refuse application 2008221560 if and when it is revived.
REASONS FOR DECISION

This matter concerns examiner’s objections in respect of the present application and whether I should exercise the Commissioner’s power to refuse the application under section 49(2).
Background
Patent application 2008221560 (the present application) was filed by The Proctor & Gamble Company on 18 September 2008 as a divisional application of application 2004253568 (the parent application).
The parent application was subject to four adverse examination reports maintaining that the claimed invention was not directed to a manner of manufacture, was not novel, and did not involve an inventive step. The parent application ultimately lapsed for failure to gain acceptance in the prescribed time.
An adverse report has issued in relation to the present application raising objections equivalent to those taken against the parent application and, consequently, indicated the intention of the Commissioner to set the matter for hearing. The applicant subsequently confirmed that it would not be attending the hearing, nor intended to file written submissions.
The specification
The subject matter of the present application concerns edible substrates having an image disposed thereon which purportedly provides value beyond the aesthetic value of the image through interaction with the consumer.
The specification ends with twenty-one claims of which claim 1 is the broadest claim and reads as follows:
“1. An article of commerce comprising:
(a) an edible substrate;
(b) an image disposed upon said substrate;
(c) a message associated with said image, wherein said message links the image to
an interactive component; and
(d) optionally a container for containing said edible substrate.
The specification states that the invention enhances and sustains the value of the image disposed upon the edible substrate by creating a connection between the image and the interactive component via the message. This connection according to the specification leads in turn to a sustained level…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: The Proctor & Gamble Company [2011] APO 14
Case: [2011] APO 14
Decision Date: 11 March 2011

CaseChat Overview and Summary

In the case of The Proctor & Gamble Company, the Australian Patent Office faced a patent application from Proctor & Gamble regarding an article of commerce that includes an edible substrate with an image and a message linking the image to an interactive component. The key legal issues centered on whether the invention was a manner of manufacture under the Patents Act, and if it constituted patentable subject matter. The court examined the specification to determine if the claims described a physical phenomenon or effect, as required by case law. The specification described the invention as enhancing consumer engagement through intellectual interaction rather than a physical change or effect. The court found that the invention lacked the necessary physical phenomenon or effect to be considered a manner of manufacture, as it primarily provided intellectual information and did not result in a concrete, tangible, physical, or observable effect.

Additionally, the court noted that the application had lapsed due to non-payment of a continuation fee, which rendered it non-existent for the purposes of refusal under the Act. However, the court stated it would refuse the application if it were revived, given that it found no patentable subject matter in the claims. The decision highlights the requirement for patentable inventions to result in a physical phenomenon or effect, and the consequences of an application lapsing due to non-compliance with procedural requirements.

Orders