The Proctor & Gamble Company
[2011] APO 14
•11 March 2011
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 of consumer engagement and stimulation, increased product desirability, and serves to build a stronger relationship between the article manufacturer and the consumer.
The specification describes numerous embodiments of the invention in general terms which assists in determining the ambit of the language used in claim 1.
Edible substrate
The expression “edible substrate” embraces any material suitable for consumption that is capable of having an image disposed thereon. Examples include tortilla chips, potato crisps, confectionary, bread, fruit, pasta, sliced meats, cheese, breakfast cereals, ice cream cones, yoghurt, pies, pizza, cakes, muffins, and pet foods.
Image disposed upon the edible substrate
The image disposed upon the edible substrate can comprise one or more graphic elements, one or more text elements, or combinations thereof. Examples include letters, numbers, full or partial words, animals, cartoon characters, popular figures from the media, caricatures, historic events, photographs, trivia quizzes, games, and puzzles.
Interactive component
The expression “interactive component” includes any tactile, audio, visual, flavour, or aroma component that provides contextual meaning to the image that goes beyond the visual appearance of the image itself. The interactive component can be delivered by any suitable means such as printed material, a billboard, another edible substrate, a website, television, radio, or on-line or oral communication.
Message associated with the image
The message links the image to the interactive component. In this context, “links” means communicates to the consumer that the image and the interactive component are related or associated in some way. The message can be printed material attached to or near a container that contains the edible substrate or, alternatively, can be a printed, electronic, or broadcast message associated with the image or edible substrate. Suitable messages can include messages that direct the consumer to engage with the image for entertainment purposes, educational purposes, or as part of a sequence of events (such as in a game or story).
Optional container
Any container from which the edible substrate can be dispensed, presented, displayed or stored is suitable. Examples include bags, canisters, boxes, and cans.
Specific examples
The manner in which a consumer is intended to associate the features of claim 1 with one another can be best understood by reference to a number of specific examples described by the specification.
In one of these, an edible substrate is printed with the graphic of an adult female elephant. Another edible substrate is printed with the graphic of a baby elephant. A message on the container that contains the edible substrates has a message printed thereon which directs the consumer to match the mother elephant with her baby. In a further example, a plurality of edible substrates (such as fabricated snack chips) is printed with a variety of playing card images. The edible substrates are contained in a container. The container has a message printed thereon which directs the consumer to play a game with the “cards”. As an aside I note that it is unclear to me what constitutes the interactive component in this example.
In another example, the interactive component conveys a mystery, and the message directs the consumer to solve the mystery by analysing one or more clues found on one or more edible substrates. Solving the mystery can be a single or multi-step process. In yet another example, the image provides both the mystery and the clue. For instance, Figure 6 depicts a fabricated snack chip (edible substrate) having an image of an incomplete house disposed thereon, and a package insert (interactive component) having a pictorial representation of the complete house. A message on the package that contains the edible substrate directs the consumer to guess what the incomplete object is and to refer to the package insert for the answer.
In other examples, an event can lead to another sequence of events. For instance, a television advertisement can provide information (interactive component) needed to solve a cryptogram (image) that is found on an edible substrate. The message can be found in one or more media, and can inform the consumer that the clues for solving the cryptogram can be found in the television advertisement.
The examiner’s objections
Manner of manufacture
The examiner has objected that:
“The application is not for a manner of manufacture within the meaning of paragraph 18(1)(a) of the Patents Act because it is concerned with the presentation of information which is not patentable. As it is already well-known in the art to provide edible substrates with printed images*, the present invention lies in the message of the image and its link to the interactive component. Furthermore, the interactive component need not even be part of the product or included with the product or its packaging. At page 6 lines 1-5 of the present specification, the interactive component is described as including printed advertisements, billboards, web-sites, on-line communication, television, etc. This means there is no direct link between the image and the interactive component. The message of the image and its link to the interactive component is matter having purely intellectual, literary or artistic connotation and is not patentable. See Pitman’s Application [1969] RPC 646.
* Documents which disclose the printing of images on edible substrates include:
D1 DE 29904938
D2 JP 63-291538
D3 WO 2001/094116
D4 WO 2003/103413
D5 WO 2004/003089”Section 18(1)(a) provides that an invention is a patentable invention if, so far as claimed in any claim, it “is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies”. The High Court in National Research andDevelopment Corporation v Commissioner of Patents [1959] HCA 67; [1959] 102 CLR 252 has provided a definitive statement of the law in this regard which has been summarised as a requirement for “a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour” (CCOM Pty Ltd v Jiejing [1994] FCA 1168 at [128]).
The principles expounded in NRDC have been applied by the courts in a succession of cases including most recently in Grant v Commissioner of Patents [2006] FCAFC 120 at [30] where the Full Federal Court found that the invention in issue was unpatentable since “it does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect”. In its conclusion the Court stated:
“It has long been accepted that “intellectual information”, a mathematical algorithm, mere working directions and a scheme without effect are not patentable. This claim is “intellectual information”, mere working directions and a scheme. It is necessary that there be some “useful product”, some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent. That is missing in this case.”
Although NRDC related to the patentability of a method claim, it is clear that the same principles apply to a determination of whether a claim to a physical device is properly the subject of a patent (see, for example, the decision of the High Court in Wellcome Foundation Ltd v Commissioner of Patents 30 ALR 510).
Returning to the present application, claim 1 defines an article comprising an edible substrate having an image disposed thereon, and a message associated with the image which links the image to an interactive component in the sense of informing a consumer that the image and interactive component are related in some way. In its simplest form, the message comprises printed text or graphics applied to a container that contains the edible substrate, or to another edible substrate. The interactive component is delivered in the same way, or via the edible substrate itself. However, as discussed above, the ambit of claim 1 is so broad as to allow the message and interactive component to be delivered remote from the edible substrate and each other for example through the agency of media advertisements, or even (in the case of the message) oral communication.
I do not consider that the article defined by claim 1 in whatever guise results in some physical phenomenon or effect within the meaning of Grant.
What emerges from the background of the invention is that the article of claim 1 is solely intended to enhance consumer engagement and satisfaction, and from that perspective can be regarded as a means of implementing a business scheme or plan. The presently defined article is, however, quite different from the invention in Re Fishburn’s Application (1938) 57 RPC 245 since it does not lead to any physical consequence.
The article is said to fulfil its intended goal by creating a connection between the image disposed upon the edible substrate and the interactive component via the message. The image is inherently of an intellectual nature. The purpose of the message is to convey information to a consumer which again is entirely intellectual. I note here that information even if presented in a physical way has never been considered sufficient for patentability save for some mechanical advantage or mechanical effect in the arrangement of the information (Fishburn at 247). There is no such advantage or effect in the present case. The so-called “link” created by the message between the image and the interactive component does not serve any mechanical purpose and instead merely provides instructions to a consumer on which they might, or might not, act. The link does not physically affect any of the features of the article defined by claim 1, or the manner in which it is used.
When construed as expressly including a container, the article of claim 1 considered thus far bears obvious similarities to a package plus written directions. However, there is no interaction between the package with its contents (a single edible substrate) and the directions. As confirmed for example in Wellcome, the absence of such interaction would exclude the package from the realms of patentability.
Nevertheless, I cannot ground my decision on the same reasoning as that would be to ignore the inclusion in claim 1 of an interactive component which has no equivalent in a typical “package” claim. For its part, the interactive component allegedly serves to enhance the value of the image to the consumer. However, despite the descriptor “interactive”, there is no reciprocality between this component and the image, and nor does the interactive component have any mechanical effect on the image. Claim 1 speaks of a link between the image and the interactive component, but the link is not functional in a physical sense. Rather, the only effect produced by the interactive component is the stimulation of mental activity by the supply for example of answers to questions or clues for solving a puzzle or mystery. This constitutes mere intellectual information.
The outcome is the same even where the interactive component is embodied in a physical object such as three-dimensional (“3-D”) glasses as described with reference to Figure 4. According to this example, the image printed on the edible substrate has a three-dimensional appearance when the consumer views the edible substrate while wearing the 3-D glasses. The specification explains that the image is constituted by a pair of superposed two-dimensional blue and red images, although other colours can be used. The lenses of the 3-D glasses comprise correspondingly coloured filters so as to in use simulate a 3-D image. A message printed on the 3-D glasses instructs the consumer to wear the glasses to see the image in 3-D.
In my opinion, the simulation of a 3-D image does not meet the requirement of a “concrete effect or phenomenon or manifestation or transformation” called for in Grant at [32]. The 3-D glasses (interactive component) do not in any way modify the content of the image but merely facilitate its viewing. This is apparent from the specification itself which on page 11 states that the glasses “help [the consumer] to understand the image”. Furthermore, and as long understood in the field of 3-D imaging, put briefly the purpose of 3-D glasses is to convey information to the brain whereby to replicate the way humans normally see. Thus the sole effect produced by the 3-D glasses is a purely psychological one in the mind of the consumer by creating the illusion of depth in the (two-dimensional) image. This does not seem to me to be the sort of physical effect that Grant was referring to.
For the reasons set out above, I do not consider that the article defined by claim 1 is a manner of manufacture.
Independent claim 10 differs from claim 1 only in that it replaces the generic feature of an edible substrate with a plurality of fabricated snack chips, and expressly provides a container for containing the chips. While clearly limiting the scope of claim 10 when compared to that of claim 1, in light of the above reasoning these differences do not serve to import the requisite element of patentability missing from the latter claim.
Dependent claims 2, 3, 5 to 9, and 12 to 21 merely elaborate upon the number of edible substrates and the nature of the message and the interactive component, and therefore similarly fall short of defining a manner of manufacture.
Dependent claims 4 and 11 both require the image to be printed on the edible substrate with an ink jet printer. The use of a particular printer is clearly peripheral and subordinate to the substance of the claimed invention and, as held in Invention Pathways Pty Ltd [2010] APO 10, is therefore insufficient to confer patentability.
Accordingly, I find that none of the claims are for a manner of manufacture and consequently do not comply with section 18(1)(a) of the Act.
Other grounds of objection
Given my finding above, it is not necessary to consider these grounds in detail. However, prima facie it appears that the examiner is correct in finding that the claimed invention is not novel and lacks an inventive step. In this respect I note in passing that citation D1 discloses what could be broadly described as variously shaped edible pieces of a puzzle, with each piece of the puzzle having an individual image (graphic) disposed thereon. The consumer is inherently directed to match each piece with another piece so as to form a complete picture. Citation D2 discloses an edible book comprising multiple sheets of edible film (for example, potato chips) on which pictures, letters, or other images are handwritten or printed according to a specific purpose such as to form a picture book. Both citations consequently read directly onto at least independent claims 1 and 10.
Summary of findings
I have found that there are lawful grounds for objection to the present application. In particular I find that the claims are not directed to a manner of manufacture.
Furthermore, I consider that no patentable subject matter is disclosed in the specification and as such an opportunity for the applicant to propose amendments would not serve any useful purpose.
However, before proceeding further, there is another issue which requires attention.
Power of refusal
As it transpires, the present application lapsed by virtue of section 142(2)(d) because the continuation fee due on 2 July 2010 was not paid by that date or within the subsequent grace period provided for under regulation 13.3. No attempt has yet been made to reinstate the application.
The question then arises of whether an application which has lapsed can be refused.
The effect of the lapsing of an application was considered by the High Court in Esso Research & Engineering Co v Commissioner of Patents [1960] HCA 31 at [7] – [8]; (1960) 102 CLR 347 at 350 where it was said:
“[Counsel for the respondent] says that on 5th December 1956 the application lapsed by virtue of s. 54 – that it was dead and nothing could revive it. There was, he says, nothing in existence thereafter with which the Commissioner could deal under the Act, and nothing before me with which the Appeal Tribunal could order him to deal.
So far as the meaning which it attributes to the term “lapse” is concerned, I am disposed to agree with this argument. I think that the word “lapse” in s. 54 connotes finality, and that the intention is that, when the time for acceptance has passed and there has been no acceptance, the application is to be no longer regarded as subsisting …”
The High Court here was looking to section 54 of the Act as it stood in 1955 which provided for the lapsing of an application through failure to gain acceptance in the prescribed time, and as such was the predecessor to section 142(2)(e) of the 1990 Act.
Section 142(2) governs the circumstances under which an application will lapse. It relevantly reads:
“A complete application for a standard patent lapses if:
…….
(d) the applicant does not pay a continuation fee for the application within the
period prescribed for the purposes of this paragraph; or(e) the patent request and complete specification are not accepted within the period
prescribed for the purposes of this paragraph.As indicated above, the present application lapsed by virtue of section 142(2)(d). On the other hand, the decision of the High Court in Esso in essence related to section 142(2)(e). However, section 142(2) provides that an application will lapse if the requirements of either paragraph (d) or (e) are not met, and thus it would be grossly anomalous to suggest that, when applied to section 142(2)(d), the term “lapse” has a meaning other than that ascribed to it by the High Court. As a result, the present application no longer exists for the purposes of the Act.
Conclusion
The present application no longer subsists, and thus there is presently nothing for me to refuse pursuant to section 49(2). Nevertheless, the application could potentially be revived under section 223. Given my earlier finding that no patentable subject matter is disclosed in the specification, I will refuse the present application if and when it is revived.
O L Haggar
Delegate of the Commissioner of Patents
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