Unilever PLC v Meadow Lea Foods Limited

[1995] APO 56

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 638307 in the name of UNILEVER PLC

Title:    Edible spread containing a fat phase of which the major part is a single triglyceride.

Action:    Opposition under Section 59(1) Patents Act 1952 by MEADOW LEA FOODS LIMITED

Decision:    Issued            .

Abstract:    The opposition has succeeded on the grounds of obviousness and section 40.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 638307 in the name of UNILEVER PLC and an opposition under section 59(1) of the Patents Act 1952 by MEADOW LEA FOODS LIMITED.

background

Patent application No. 638307 by UNILEVER PLC (Unilever) was filed on 25 January 1991 claiming priority of 29 January 1990 and allocated the Australian application number of 69997/91.  The application was advertised accepted on 24 June 1993.  On 24 September 1993 the opponent MEADOW LEA FOODS LIMITED (Meadow Lea) filed a Notice of Opposition and served a Statement of grounds and Particulars on the applicant on 24 December 1993.

The opposition is proceeding as provided for in section 234(3) of the 1990 Act.  All evidence stages were completed by 6 December 1994 and the matter heard in Canberra on 4 July 1995.

The grounds relied on in the Notice of Opposition are those available under section 59(1) (e), (g), (h) and (i) of the Patents Act 1952.

Meadow Lea was represented at the hearing by Mr Paul Whenman and Dr Trevor Davies of F B Rice & Co (Patent Attorneys) Sydney. 

Unilever presented written submissions and was represented by Mr Cyril Bentley of Clement Hack & Co (Patent Attorneys) Melbourne. 

THE SPECIFICATION

The invention is described in the specification as relating to edible spreads of which the major component is a single triglyceride.

Page 1a lines 7 to 16 provide background to the invention as follows:

Edible oils and fats obtained from plant or animal sources comprise a plurality of distinct triglycerides.  The most commonly occurring fatty acid residues in these triglycerides are those of 16-carbon palmitic acid and the 18-carbon stearic, oleic, linoleic acids ...  Other fatty acids occur in edible oils and fats, but the invention will be described with particular reference to fats containing the above mentioned fatty acids. For convenience these are referred to hereafter as P, S, O and L fatty acids or residues, unless otherwise stated.

The component glycerides of common fats differ widely in fatty acid content such that some fats are rich in P (e.g. palm oil), some are rich in O (e.g. olive oil) and some are rich in L (e.g. safflower oil).

At page 2 line 1 the specification continues

In order to illustrate how far from random the distribution of residues is, further details of the major triglycerides of commonly used edible fats and oils are given in the following table.  In this table `S' is used to mean any fully saturated fatty acid residue, i.e. mostly palmitic plus stearic acids, except for cocoa butter and palm oil where separate data are available.  This information is taken from Gunstone, Harwood and Padley "The Lipid handbook" (pub. Chapman, 1986).

Safflower Oil  47% LLL, 19% LLO, 18% LLS,  7% LOS
Olive Oil     39% OOO, 26% SOO, 13% LOO,  5% OLO
Sunflower Oil  39% LLO, 19% LOO, 14% LLS, 14% LLL
Cocoa Butter   35% POS, 25% SOS, 12% POP,  5% SOO
Palm Oil      25% POP, 18% POO,  7% OPO,  6% PPP
Maize OIL     21% LLO, 17% LLS, 17% LOS, 15% LLL
Soyabean Oil   16% LLO, 15% LLL, 13% LLS, 12% LOS

And at page 4 line 5

The present invention provides an edible spread of which 50-100% of the fat phase comprises a single triglyceride having a carbon number 46-70, preferably 49-70 and more preferably 48-60.

Such spreads find particular application in the treatment of clinical conditions exhibiting aberrant fat metabolism.  However spreads according to the present invention are also suitable for consumption by individuals not exhibiting aberrant fat metabolism ... Typically, the single triglyceride is glyceroltrioleate.

The specification contains 12 claims of which 1, 9, 10, 11 and 12 are independent.

Claim 1

Edible spread comprising a fat phase and an aqueous phase CHARACTERISED IN THAT 50-100wt% of the fat phase comprises a single triglyceride having a carbon number in the range 46-70 inclusive.

Claim 9

Edible spreads comprising a dispersion of an aqueous phase in a fat phase CHARACTERISED IN THAT the fat phase comprises 50-95wt% of a single triglyceride having a carbon number in the range 47-70 and 5-50wt% of a hardstock component.

Claim 10

Edible spreads comprising a dispersion of an aqueous phase in a fat phase CHARACTERISED IN THAT the fat phase comprises 50-90wt% of a single triglyceride having a carbon number in the range 47-70 and the said fat phase is essentially free of trans fatty acids.

Claim 11

Edible spreads comprising a dispersion of an aqueous phase in a fat phase CHARACTERISED IN THAT the fat phase comprises 50-90wt% of a single triglyceride having a carbon number in the range 47-70 and the said phase comprises less that 10wt% on fat phase of saturated fatty acids.

Claim 12

Edible spreads comprising a dispersion of an aqueous phase in a fat phase CHARACTERISED IN THAT the fat phase comprises 50-90wt% of a single triglyceride having a carbon number in the range 47-70 and the sum of trans fatty acids and saturated fatty acids is less than 10wt% of fat phase.

EVIDENCE

Evidence in support consists of statutory declarations from:

1. Keith Rowland Harris of Miranda, New South Wales who is a consultant to the food industry in Australia and the Director of Marbule Pty Limited, together with 22 Exhibits.

1. Kevin Joseph Kearney of Camp Hill, Queensland who has worked extensively in the food industry in Australia and in particular in the field of edible spread formulation and production, together with 2 Exhibits.

1. Peter Paul Rudolf Kaupert of Harbord, New South Wales, who is General Manager and Director of P & H Kaupert Pty Ltd trading as Roseville Bacon Co. who has worked extensively in the food industry in Australia and in particular in the development and manufacture of edible fat products, together with 1 Exhibit.

1. Valerie Joyce Munn of Kogarah New South Wales, who has extensive experience in the food industry in Australia, in particular in the research and development of edible fat spreads, together with 1 Exhibit

1. Hyam Myers of Lane Cove, New South Wales, who is a specialist consultant to the edible fats and oils industry and is presently employed by Tiyole Pty Ltd, trading as Hyam Myers & Associates, together with 1 Exhibit.

1. Ronald Graham Bowrey of Yowie Bay, New South Wales who is Divisional Manager, Research and Development at Meadow Lea Foods Limited, together with 1 Exhibit.

Evidence in answer consists of a statutory declarations by

1. Cornelis Laurentius Sassen, a Dutch subject, of Vlaardingen, The Netherlands, who holds a Doctors Degree in Physical Chemistry from Delft University and has been employed with the Unilever Research Laboratory at Vlaardingen since 1991, working in oil and dairy based foods, in particular in the development of oil based emulsion spreads.

1. Cyril Montague Bentley of Melbourne, Victoria, a registered patent attorney, together with 1 Exhibit.

Evidence in reply consists of statutory declarations by Keith Rowland Harris, Kevin Joseph Kearney, Peter Paul Rudolf Kaupert, Hyam Myers, and Ronald Graham Bowrey mentioned above as providing evidence in support.

SUBMISSIONS

At the hearing Meadow Lea only relied on the grounds of obviousness and non-compliance with section 40.

In summary the major submissions presented by Meadow Lea at the hearing were:

1. The opponent claims that the claimed invention is obvious and does not involve an inventive step. 

.The invention claimed is merely the use of a known material (single triglyceride and in particular glycerol trioleate) having known beneficial nutritional characteristics, in the manufacture of known edible spreads, for the reason that the material has become readily available and possesses a known property rendering it useful for the production of edible spreads.  It simply reflects the substitution of one fat source for another known fat source that has become commercially available and suitable for the production of edible spreads.

.The opponent has shown that the documentary evidence provided by the declarants forms part of the common general knowledge in Australia at the priority date of the opposed application - 29 January 1990.  This has not been challenged by the applicant in any way.

1. The applicant's evidence in answer comprises a statutory declaration by Cornelis Laurentius Sassen.  The applicant has not established that the declarant is in fact a skilled addressee in relation to the present subject matter.  There is no evidence that Sassen was familiar with the common general knowledge in Australia at the priority date.  Furthermore there is no evidence that he was involved in the formulation and production of edible spreads in Australia at that time.  All that can be seen from the Declaration is that he holds a doctor's degree in physical chemistry as of 1991 and following that time he was employed by a division of the applicant company in the Netherlands where he was working in oil and dairy based foods and in particular in the development and composition of oil based emulsion spreads.  It is evident from the declaration that it was one year after the priority date of the present application that he started working in the field in Europe.  It is therefore submitted that the evidence of Sassen should be disregarded. (Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] FSR 449, Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 at 355, General Tyre & Rubber Company v Firestone Tyre & Rubber Company Limited [1972] RPC 457 at 497, 498)

1. The specification does not comply with the requirements of section 40 of the Act due to the use of the word essentially in claims 4 and 10.  In regard to the use of the word "essentially" in claim 4, the term "essentially pure" is defined at page 4 lines 23-27 as being less than 10% or preferably less than 5% of other fats.  It is unclear from the specification whether "essentially" means 10% or 5%.  Similarly with page 6 lines 25-27 in relation to claim 10.  It is submitted that due to the indefinite nature of the word "essentially" that a person wishing to avoid infringement of the invention defined by these claims will be unable to determine the metes or bounds thereof.

1. Claim 7 is not clear with the use of the term "at least" in connection with a range of weight percents.

In summary Unilever presented the following written submissions:

1. Novelty - In Nicaro Holdings Pty Ltd & Ors v Martin Engineering Co & Anor (1990) AIPC 90-670 it was considered for there to be a lack of novelty in the light of a prior publication the prior publication must disclose all the integers of the invention with the possible exception of the substitution of mechanical equivalents to perform analogous purposes. Meadow Lea claim single triglycerides are equivalent to other oils used in spreads and therefore substituting an oil with a single triglyceride is not novel.

It seems hard to understand how Meadow Lea can claim oils were considered equivalent at the priority date of the Unilever patent when there is no evidence of research into any of the properties of single triglycerides and no evidence to show that single triglycerides were equivalent to any other oil.

1. Obviousness - In Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (supra) it was warned that the more documents required to show an invention is obvious, the less likely it is to be obvious.  Meadow Lea have used 37 documents in an attempt to show Unilever's invention is either obvious or not novel.

In The Wellcome Foundation Limited v V.R. Laboratories (Aust.) Propriety Limited 148 CLR 262 the question of obviousness was not whether it would have been obvious to the inventor or some other particular worker in the field, but to a non-inventive worker in the field. In recent decisions such as for example Byrne and Davidson v Firmagood (an unreported decision of the Commissioner of Patents on application No 538392 dated 20 October 1986), where the declarant was a person engaged in research and development, a decision approved in Hood Carpets v On-line 28 IPR 347, Dynamics Plastic v Karl Heinz Stasch (an unreported decision of the Commissioner of Patents on application No 613837 dated 26 October 1994), Austoft Industries Ltd v Barry John McClean (an unreported decision of the Commissioner of Patents on application No 575713 dated 15 October 1993), the Commissioner has excluded declarations as evidence in obviousness cases because he has considered the declarant to be an inventor.  It could be argued that some of the declarants of Meadow Lea have been involved in research and development and therefore should be considered inventors rather than non-inventive, and hence the declarations not taken into account.

It is arguable that Myer's declaration should not be considered as evidence as he admits in paragraph (6) of his declaration that he does not know what the objectives of the invention are.  How can he say an invention is obvious if he does not understand it.

Meadow Lea have failed to show that the invention is obvious for the following reasons

.there is no evidence that the trend in spreads is to move toward single triglycerides.

.In Exhibit KRH3 at page 265, a document put forward by the opponent, the predicted trends in spreads do not include a trend towards single triglycerides as part of the general trends in spreads.

.In declaration 1 paragraph 12 Harris acknowledges that it was not known whether there would be a market driven approach to spreads containing single triglycerides, implying the characteristics of the composition were unknown and therefore it would not be obvious to use them.

.KRH14 predicts oils of the future in spreads.  Surely if it was obvious to use single triglycerides at the priority date of the Unilever application, by 1988 it would have been predicted as an "oil of the future".

.Kearney at paragraph (8) of declaration 1 states that if a single triglyceride was to be incorporated in a composition it would be obvious to use triolein.  Meadow Lea have not shown it would be obvious to use a single triglyceride in the first place.

.No evidence has been produced to show that there had been any research into the use of single triglycerides before the Unilever priority date.  One might expect that if it were obvious to use these oils research would have been carried out to find their nutritional values etc, even though they were expensive.  The documents produced as evidence by Meadow Lea do not predict or even mention compositions containing single triglycerides - further indication that it was not obvious.

.Hyam Myers at paragraph 7 of declaration 2 states that companies and individuals explore the use of new oils and fats.  However there is no evidence to support the testing of spreads containing single triglycerides, as even exploration companies have not incorporated single triglycerides into spreads.

.The declarants seem to be preoccupied with the method of making the composition rather than the composition per se.  Unilever do not claim the process is novel or not obvious.  Argument attacking the process of making the spread is irrelevant.

.The declarants refer to many commonly used oils and to documents disclosing the use of such oils.  However none of these disclose single triglycerides in reference to spreads, nutrition or medical benefits.  These documents do not establish it would be obvious to make compositions comprising single triglycerides.  They do not even refer to single triglycerides.

THE DECISION

Obviousness

The law in Australia in regard to obviousness under the 1952 Patents Act, was laid down in the High Court decision in Minnesota Mining and Manufacturing Company and Another v. Beiersdorf (Australia) Limited, 144 CLR 253. This required that in order that an allegation of obviousness be made out it must be established that the information relied upon had become part of the common general knowledge in Australia of those engaged in the particular art to which the invention belongs, at the priority date of the application in suit. At page 292, Aicken J. stated:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

Firstly, I must determine who is the "non-inventive worker in the field of technology". (American Cyanamid v Ethicon, (1979) RPC 215 and Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd, (1961) ALJR 212). That is, a skilled but non-inventive worker in the relevant field of technology in Australia who knows the common general knowledge in the art in Australia at the priority date of the claims.

The specification is directed to edible spread formulations of which the major fat component is a single triglyceride.  Such spreads find particular application in the treatment of clinical conditions exhibiting aberrant fat metabolism.  The "non-inventive worker" in this case is a food chemist formulating edible spreads.

Keith Rowland Harris, Kevin Joseph Kearney, Peter Paul Rudolf Kaupert, Valerie Joyce Munn, Hyam Myers and Ronald Graham Bowrey  all fit this category.  Submissions by Unilever contend that "some of the declarants of Meadow Lea have been involved in research and development and therefore should be considered inventors rather than non-inventive, and hence the declarations not taken into account".  In my view the description of people as being involved in research and development does not conclusively make them inventors.  There is no indication, for example, in the curriculum vitae of the opponent's experts to show inventorship.  I find nothing else in the applicant's submissions to warrant the exclusion of any of Meadow Lea's evidence from my consideration.

However, Cornelis Laurentius Sassen, on the evidence provided, can not be considered a non-inventive worker in the field at the priority date of the claims.  I cannot rely on Dr Sassen's evidence to draw any conclusions about the common general knowledge in Australia at the priority date as he commenced work in the field, in the Netherlands, after the priority date of the claims and he is consequently not a person possessing common general knowledge in the art in Australia at the priority date of the claims.

The test for obviousness I will use is that given in The Wellcome Foundation Limited v V.R. Laboratories (Aust.) Propriety Limited (supra) where Aickin J. said at page 286

It is still correct to say that a valid patent may be obtained for something stumbled upon by accident, remembered from a dream or imported from abroad, if it otherwise satisfies the requirements of the legislation.  What is important is that the patent itself should involve an inventive step, whether or not it is consciously taken by the patentee and whether or not it appeared obvious to the patentee himself.  The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.

The problem, in my view, is simply the formulation of edible spreads having at least 50% single triglyceride.

Thus, I must be concerned with what steps the hypothetical non-inventive addressee would have taken as a matter of routine which might have led from the prior art to the invention, be they the steps of the inventor or not. 

I must determine whether or not the claimed invention is simply the substitution of known triglyceride sources for others in a predictable manner using the common general knowledge in Australia at the priority date of the claims, as alleged by Meadow Lea.

Each of the opponent's experts contends that "there has been no technological breakthrough or advancement in the art of edible spread formulation or production disclosed in the Application that has led to the claimed invention" (e.g. Harris, declaration 1, paragraph 9).

In my view the evidence shows that the hypothetical addressee would select an "appropriate oil having the characteristics desired for the end product and then use it, subject to the cost and availability of that particular oil" (Kearney, declaration 1, paragraph 7).

Kearney also says in paragraph 8 that

"With the advent of the new genetically modified oils ... a person skilled in the art of edible spread formulation and production would now include this and any other new oil coming on to the market place in his or her choice of oil for a given product ... This would not require any change in the method of production of the edible spread but simply the substitution of one oil type for another that has now become available".

Harris, in paragraph 10 of declaration 1, says that there has been "a continued program of genetic selection of edible oil producing plants ..." and provides evidence in Exhibit KRH6 of "a dramatic increase in the yield of oil since 1940."  In paragraph 11 he talks about the genetic manipulation of oil seed crops and says "... it has been the development of the genetically modified sunflower seed oil containing high levels of triolein and its commercial availability that makes it economically feasible to produce an edible spread according to the application." 

In Exhibit KRH8 Harris provides an article from a technical journal [JAOCS (Journal of the American Oil Chemists Society), Vol 63, no 8, published in August 1986].  This document describes the development of sunflower seed containing high oleic acid content. Table 1 describes the fatty acid composition of high oleic sunflower oils containing from 80.5% to 86.7% oleic acid with the residue fatty acids comprising 19.5% to 13.3% of mainly palmitic, stearic and linoleic acids.  This suggests to me that edible oils (sunflower oils) with a minimum of 60% single triglyceride, in the nomenclature of the specification OOO, have been known to be available since the publication date of the journal. 

To determine the minimum amount of triglyceride that is present in the above examples I have used the following methodology.  If 33% of the fatty acid was non-oleic and the rest oleic acid, and there was one non-oleic residue in each triglyceride molecule there would be no OOO at all, that is 1 - 33/33 = 1 - 1 = 0.  If there is 19.5% non-oleic acid, then the minimum amount of OOO present is 1 - 19.5/33 = 0.4, that is 40%.  At 13.3% non-oleic, the minimum amount of OOO present is 1 - 13.3/33 = 0.6, that is 60%.

It is submitted by Meadow Lea, and I have no reason not to accept, that knowledge of the availability of these type of oils forms part of the common general knowledge.

This document does not describe the use of these oils in edible spreads and consequently does not deprive the claims of novelty.

The evidence establishes, in my view, that edible spread formulations made from these high oleic acid containing oils are obvious to the hypothetical addressee. 

The evidence also establishes that edible spread formulations made from "essentially pure" triglycerides (less than 10% other fats) are obvious to the hypothetical addressee.  For example, Harris says, in declaration 1, paragraph 26 that "one skilled in the art of formulation and production of edible spreads having available to them any pure triglyceride would be able to prepare an edible spread comprising 50-100% single triglyceride as the fat phase.  Furthermore, an economical source of such triglycerides would make it feasible to produce and market an edible spread comprising a single triglyceride."  Munn (declaration 1, see for example paragraphs 6, 10 and 11) and Bowrey (declaration 1, paragraph 7) both indicate that anyone working in the art would be able to do this.

From the evidence I also conclude that edible spreads containing oils chosen for their "physiological or nutritional effect" and "hardstocks", low or zero amounts of "trans fatty acids", "saturated fatty acids", a "dispersion of an aqueous phases in fat phase" and a "plasticised emulsion of a fat phase in an aqueous phase" are part of the common general knowledge in the field. 

For example, Harris, declaration 1 paragraph 23, says that the "application ... is not directed to a new process of production of an edible spread nor to the design or manufacture of a new hardstock nor contributes to the technology of this field."  The other declarants support this view.  Bowrey supports this in declaration 1, paragraph 5.

In my view Meadow Lea has established that a non-inventive skilled addressee would as a matter of routine take the steps necessary to solve the problems associated with the preparation of the single triglyceride edible spreads of the invention. 

The invention claimed involves the substitution of known oils or "essentially pure" triglycerides into edible spread formulations using standard techniques in an obvious manner.

I can find nothing in the submissions of Unilever to dissuade me from this view.

Consequently, the invention claimed is obvious.

Section 40

Meadow Lea submits that "the specification does not comply with the requirements of section 40 of the Act due to the use of the word essentially in claims 4 and 10.  In regard to the use of the word `essentially' in claim 4, the term `essentially pure' is defined at page 4 lines 23-27 as being less than 10% or preferably less than 5% of other fats.  It is unclear from the specification whether `essentially' means 10% or 5%.  Similarly with page 6 lines 25-27 in relation to claim 10.  It is submitted that due to the indefinite nature of the word `essentially' that a person wishing to avoid infringement of the invention defined by these claims will be unable to determine the metes or bounds thereof."

On page 4 lines 24-26 "essentially pure" is defined as containing less than 10% of other fats.  Less than 5% is mentioned as a further preference.  That this definition is made in terms of a preferred embodiment does not lessen its application in the specification as the term is used in the specification in the context of the embodiment.  The term "essentially free" on page 6 lines 25-27 is defined similarly.

The meaning of the word "essentially" in this context is quite clear.  It means anything less than either 10% or 5% in the appropriate context.

Meadow Lea also submits that claim 7 is not clear with the use of the term `at least' in connection with a range of weight percents.

I agree that the use of the term "at least" in relation to a range of values is unclear as one would expect a range to encompass all the values claimed.

Conclusion

I have found the opposition succeeds in all aspects, that is the grounds obviousness and section 40, apart from a minor section 40 matter. 

It is not clear to me how Unilever may overcome my objections, however, I afford them 60 days from the date of this decision to propose amendments to overcome the deficiencies.

COSTS

Normally in actions of this nature costs follow the event.  I have found that the opposition has succeeded.  Consequently, I believe that the opponent has achieved its major objective and has succeeded in its opposition.  Therefore, I award costs against Unilever.

R J Sawyer
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Clement Hack & CO, Melbourne

Patent attorneys for the opponent   :  F B Rice & Co, Sydney