Unilever PLC v Nestec SA

[2001] APO 71

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          Patent Application No. 681008 and Petty Patent No. 685040 both in the name of UNILEVER PLC

Title:          ICE CONFECTIONS

Action:          Opposition by NESTEC SA under Section 104 of the Patents Act 1990

Decision:          Issued            .

Abstract

The applicant filed requests to amend both patent application 681008 and petty patent 685040.  Petty patent 685040 is a divisional application of application 681008 and the claims are very similar to those of the parent.

A preliminary question raised by the applicant was whether it is possible to make amendments to the petty patent when its term has already expired.  It was decided that this is possible if the request to amend is found to be allowable.

The difference between the parties was in relation to three changes in claim 1 of 681008 brought about by the amendments.  These changes are:

1. The change in part (iii) to remove the reference of the temperature of the hardening step to the temperature in step (i) and replace with "below -15°C".

2. The change in part (iii) to replace the words "whereby the whole is cooled" to "whereby the whole water ice layer is cooled".

3. The words "in a refrigerated volume at -40°C or below or by immersion in a cryogenic liquid" which are inserted into part (iii) by the amendment.

Issues 1 and 2 are common to both 681008 and 685040 and it was found that these changes do not satisfy the requirements of section 102(2)(a).  As a result, the request to amend was refused and costs were awarded against the applicant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 681008 and Petty Patent No. 685040 both in the name of UNILEVER PLC and oppositions by NESTEC under Section 104 of the Patents Act 1990.

BACKGROUND

Patent application 681008 was filed as application number 16644/95 in the name of Unilever PLC (Unilever) on 1 February 1995 under the provisions of the PCT, claiming priority from EP 94300821 with an earliest priority date of 4 February 1994. This was advertised for opposition purposes on 14 August 1997. A notice of opposition to the grant of the patent was filed by Tip Top Ice Cream Company (Tip Top) on 5 November 1997 and by Nestec SA (Nestec) on 14 November 1997. During the evidence stages of these two oppositions, Unilever filed a request to amend under section 104 on 12 May 1999 with a further statement of proposed amendments being filed on 7 October 1999. Leave to amend was granted and was advertised on 10 February 2000. Nestec filed a notice of opposition to these amendments on 10 May 2000 with the evidence stages being completed on 26 September 2001.

Petty patent 685040 was filed as application number 15089/97 on 4 March 1997 as a divisional of application number 16644/95. The petty patent was sealed on 8 January 1998 and Unilever applied on 9 November 1998 to extend the term of the patent. Section 28 notices were filed by both Nestec and Tip Top on 8 December 1998. On 12 May 1999, Unilever sought leave to amend the petty patent under section 104, with further statements of proposed amendments being filed on 26 July 1999, 7 September 1999 and 8 October 1999. Leave to amend was subsequently granted and was advertised on 10 February 2000. Nestec filed a notice of opposition to the amendments on 10 May 2000, with the evidence stages being completed on 26 September 2001.

The section 104 oppositions to both application 681008 and petty patent 685040 were heard together in Sydney on Tuesday 16 October 2001. Mr John Terry, patent attorney of Griffith Hack, Sydney, represented Unilever, accompanied by Mr Lorne Wood-Roe, also from Griffith Hack. Nestec were represented by Ms Katrina Howard of counsel, instructed by Mr Paul Harrison of Baldwin Shelston Waters, Sydney.

THE EVIDENCE

The same evidence was served in both oppositions.

Evidence in support comprises declarations by Hugh Gordon Ivory, Tanya Jane Reid, Paul Harrison (with exhibit PGH-1) and Dr Motty Sobol (with exhibit MS1).

Evidence in answer comprises a declaration by David J Finney (with exhibits DJF-5 to DJF-7)

Evidence in reply comprises further declarations by Dr Motty Sobol, Hugh Gordon Ivory and Tanya Jane Reid.

I note that in the statutory declaration by Mr Harrison he states that he has included, as exhibit PGH 1, "a copy of a Communication of the Technical Board of Appeal of the European Patent Office issued on 24 March 2000 in respect of the corresponding European Patent Application."  Unilever objected that this evidence is inadmissible, or in the alternative no weight given to it, since Mr Harrison is not a European patent attorney and cannot provide any expert evidence as to the state of European patent law.  However, I note that Nestec placed no reliance on this evidence.  Furthermore, there was some criticism by each party of the credibility and expertise of the other party's declarants.  However, the main issue in this opposition is one of construction of the claims rather than determining the common general knowledge.  I do not feel it necessary to resolve any arguments about the weight of evidence and will refer to the evidence as required in my decision.

DECISION

Under section 104 of the Patents Act, the Commissioner must not allow an amendment that is not allowable under section 102. The relevant parts of section 102 are as follows:

1. What amendments are not allowable

Amendment of complete specification not allowable if amended specification would claim matter not in substance disclosed in the filed specification

1. An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

Certain amendments of complete specification are not allowable after relevant time

1. An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:

   (a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

   (b)the specification would not comply with subsection 40(2) or (3).

Meaning of relevant time

(2A)     For the purposes of subsection (2), relevant time means:

(a)in relation to an amendment proposed to a complete specification relating to a standard patent—after the specification has been accepted; or

(b)………..

1. This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.

The saving provisions in the recent amendments to the Act ensure that the old law continues to apply to petty patents, with certain exceptions.  That is, that section 102(2) applies also to petty patents once the specification has been accepted.  Nestec have opposed the proposed amendments to both patent application 681008 and petty patent 685040 on the grounds of section 102(1), 102(2)(a) and 102(2)(b).

A preliminary point raised by Mr Terry at the start of the hearing related to the fact that petty patent 685040 is a divisional application of application 681008.  Under section 68 (which still applies in this case) the term of the patent is 12 months beginning on the date of sealing the patent.  However, if an extension of term were to be granted, this term would end six years after the date of the patent.  As a divisional application, the date of the patent is the date of filing the complete specification of the parent application, which in this case is 1 February 1995.  Thus the petty patent term expired on 1 February 2001.

Mr Terry's question was concerned with whether it is possible to amend a patent whose term had already expired.  This is an interesting question and one on which I could find very little guidance.  In Leggatt v Hood’s Original Darts Accessories Ld and Hood, (1951) 68 RPC 3, at the date of the judgement of the Court of Appeal, the patent had expired although proceedings for extension were in progress. Although the Court did not order amendment of the specification of the expired patent, it did discuss the issue and believed that it had the power to do so.

In the appeal tribunal in Kyowa’s application, (1969) FSR 183, Justice Lloyd-Jacob found that once a decision to refuse a patent had been made, the Comptroller General is functus officio and that this creates a bar against further proceedings on the patent.

From this it seems that there may be a difference between amending a patent which has been revoked, as revocation effectively goes back to the first date of the patent, and amending an expired patent, which is the case here. Furthermore, there is nothing in either the Patents Act or Regulations which specifically prevents amendments being made in these circumstances. Thus I believe that it is possible for petty patent 685040 to be amended even though its term has expired and will proceed on this basis if the request to amend is found to be allowable.

Turning now to the details of the amendments, I note that the two specifications, while not identical, are very similar.  Both are directed to "splits" which are ice confections having a mass of a milk containing frozen confection, such as ice cream, with a surface covering of water ice.  Both specifications describe a method of preparing such splits comprising three basic steps comprising a step of cooling the ice confection, then immersion of this in the water ice solution, followed by a hardening step.

The main proposed amendment to patent application 681008 occurs in claim 1 and it is these changes to claim 1 which are opposed by Nestec.  Claim 1 is as follows with the amended changes highlighted:

1. A method of preparing a two-component ice confection in which:

1. a surface of a mass of milk containing ice confection is brought to a temperature of below about -15°C -25°C,

1. the surface is immersed in a water ice solution having a solids content between about 15% and about 50% by weight for a time sufficient to allow a layer of water ice to form on the surface, and

1. the whole is subjected to a hardening step to form the water ice layer, whereby the whole water ice layer is cooled to the temperature of step (i) or below a temperature of below -15°C in a refrigerated volume at -40°C or below or by immersion in a cryogenic liquid.

Claim 1 of petty patent 685040 as proposed to be amended is very similar to this.  The only differences from 681008 are that the phrase "about 50%" in step ii) is replaced with "50%" and in step iii), the phrase "in a refrigerated volume at -40°C or below or" is not present.

At the hearing it became clear that the differences between the parties was in relation to three changes in claim 1 brought about by the amendments.  These are the only objections being pursued by Nestec.  These changes are:

1. The change in part (iii) to remove the reference of the temperature of the hardening step to the temperature in step (i) and replace with "below -15°C".

2. The change in part (iii) to replace the words "whereby the whole is cooled" to "whereby the whole water ice layer is cooled".

3. The words "in a refrigerated volume at -40°C or below or by immersion in a cryogenic liquid" which are inserted into part (iii) by the amendment.

Each of these will be considered separately below.  Issues 1 and 2 are common to both patent application 681008 and petty patent 685040 and so it is appropriate to consider them together.

Temperature of the hardening step

The main argument with this amendment provided by Nestec is that it is not allowable under section 102(2)(a) since, as a result of the amendment, the claim would not in substance fall within the scope of the claims of the specification before amendment.  Both parties directed my attention to the decision of the High Court in AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283 which considered the allowability of amendments under a provision corresponding to the present section 102(2)(a). The High Court stated at 289-290:

"The amending claim must in substance fall within the scope of the claims before the amendment.  The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or particular article is an infringement of the patent.  Although each claim is a definition it is well recognised that an interpretation of the claim in the light of the state of the art may and probably will disclose that there are in it what may be described as essential as distinct from inessential integers.  The substance of the claim must be discovered in order to determine whether a particular product is an infringement.  However, at the same time as one does this one must bear in mind that one is interpreting a claim in the nature of a definition and the ordinary rules of interpretation apply to it.  The substance must appear from the language itself interpreted in accordance with ordinary rules of interpretation with a knowledge of the prior state of the art to which the claims relate."

At the hearing it became clear that the difference between the parties lies mainly in a difference in claim construction.  The accepted claim requires that the hardening step (iii) takes place at "the temperature of step (i) or below", with the temperature of step (i) being defined as "below about   -15°C".  Nestec argued that the meaning of the claim is plain and unambiguous and defines a clear link between the temperatures at which the cooling step and hardening steps are performed. 

The amendment to claim 1 results in the claims as proposed to be amended defining the temperature in step (i) as "below -25°C" and the temperature in step (iii) as "below -15°C".  Thus, there is no link between the two temperatures in the amended claim and it is possible for the temperature of step (iii) to now be higher than the temperature of step (i).  According to Nestec, a process which did not fall within the scope of accepted claim 1 would fall within the scope of the amended claim.  Such a process could be, for instance, where the first cooling step is carried out at -25°C and the hardening step at -15°C.  Nestec submitted that this amendment thus does not comply with section 102(2)(a).

However, Unilever disputes this and it is their proposition that the reference in step (iii) of the accepted claim to the temperature of step (i) should be construed as a shorthand way of defining that the hardening step is to be performed at -15°C or below.  On this construction of the accepted claim, step (iii) could be performed at a higher or lower temperature than step (i).  Thus, the amendment results in a claim which does fall within the scope of the claim before amendment.

In order to determine whether or not the amendment is allowable under section 102(2)(a), I believe that I first need to properly construe the accepted claim.  Ms Howard, for Nestec, submitted it should be assumed that the applicant had carefully chosen the wording of the claim and that where the meaning of a claim is clear it is not permissible to resort to the body of the specification to alter that meaning.  In this regard, she directed my attention to Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 177 ALR 460, Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 and Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461. Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (supra) at 466 addresses how a claim should be interpreted:

"Where the question concerns infringement of a claim or the sufficiency of a claim to "define" the invention, it has been held in this court under the 1952 Act that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification.  However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."

However, I do not agree that accepted claim 1 is completely clear and unambiguous in regard to the wording of step (iii).  There appear to be two ways in which this may be interpreted as outlined by the two parties but Unilever’s interpretation seems to be more strained.  It is hard to see why the applicant chose to draft the claim in a shorthand way which, if anything, is more wordy that what they contend the claim actually means.

The rules of construction of claims are outlined by Sheppard J. in Decor Corporation Pty Ltd and Another v Dart Industries Inc 13 IPR 385, see page 400:

"(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document.  But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim."

I believe that I need to refer to the body of the specification to help me resolve this ambiguity.

Page 2 line 34 to page 2a line 9 of 681008 gives a general description of the invention.  It is said that in step (i), the surface of the milk containing ice confection is brought to a temperature of "below about -15°C, preferably below about -25°C and more preferably below about -40°C."  Step (iii) is said to be "performed at the temperature of step (i) or preferably below".  This is different wording to that used in the claim itself ("the whole is cooled to the temperature of step (i) or below") but is still ambiguous.

The method described on page 3 outlines the importance of the temperatures of the two steps.  It appears that the amount of water ice solution picked up on the surface is dependent on the temperature of the core while the ice crystal size is determined predominantly by the temperature of the hardening step.  Thus it seems that a thicker layer can be provided by lowering the temperature of step (i), while the desired size of crystals is obtained by lowering the temperature of step (iii).  The preferred crystal size of 80 microns is said to be "generally obtained by using liquid nitrogen or other cryogenic liquid for both steps (i) and (iii)."  I note also that the examples only show products produced by a process in which the temperatures of the cooling step (i) and the hardening step (iii) are the same although these temperatures range from -15°C to the temperature of liquid nitrogen.  This does not really assist me either since, in the methods described and exemplified, there is no conditional link between the temperatures of the two steps yet the preferred product is obtained using the same temperature for steps (i) and (iii).

The declarants also do not assist in resolving the ambiguity.  Nestec's declarants Ivory, Reid and Sobol point to the importance of the relative temperatures of the two steps in order to obtain the desired thickness and crystal size.  Mr Finney for Unilever asserts that the two steps are distinct and independent and that the temperature of step (iii) must merely achieve crystallisation of the water ice layer without warming the core.  It is his view that the water ice layer would be properly formed at -15°C and that there would be no point in reducing the temperature any further.  Dr Sobol argued that there were other factors to be considered such as the "relative warming" of the core if there were a big difference in the two temperatures.  Thus, the declarants for the two parties do not seem to agree on the mechanism of the cooling process.  However, they all appear to base their interpretation of the specification on how they perceive the mechanism of the cooling process to occur, not what the specification actually says.  I need to determine what the person skilled in the art reading the specification would have understood it to mean and what they would have been led to do.

Unilever particularly pointed out to me the first paragraph on page 5, which they say gives a clear indication that there does not have to be a link between the two temperatures:

"It is not necessary for the second cooling stage to be at the same temperature as the stage cooling the core.  Thus, dependent on the apparatus available, it may be at a higher or lower temperature." (my emphasis)

However, Nestec argued that this paragraph should be disregarded since it is inconsistent with the rest of the specification.  I am inclined to agree with them.  Although this paragraph was present in the specification as filed, I believe it is the only place in the whole specification which gives any indication that the temperature of step (iii) may be higher than that of step (i).  In fact, it is only a couple of words in that paragraph which the applicant is relying on since there appears to be no argument that the claim, both before and after amendment, defines that step (iii) can be performed at below the temperature of step (i).  In any case, an applicant may chose to claim their invention more narrowly than they describe it.  I am not convinced that the claim is necessarily intended to define the situation where the hardening step is at a higher temperature than the initial cooling step.

Although I have gone to the body of the description to help resolve the ambiguity in the claim, I have found that this does not assist me.  The description also is unclear and ambiguous.  I am only able to resolve the matter by turning to the less strained construction of the claim as put forward by Nestec.  This is that the temperature of step (iii) is necessarily linked to the temperature of step (i) and is performed at the same temperature or below it.

The proposed amendment results in a claim in which the temperature of step (i) is defined as below -25°C while the temperature of step (iii) is below -15°C.  This claim includes processes in which the temperature of step (iii) could be higher than the temperature of step (i).  Therefore, applying the infringement test outlined above from AMP Incorporated v Commissioner of Patents  (supra), I find the amendment not allowable under section 102(2)(a).  As a result of my determination above, the amended claim defines a temperature for step (iii) which does not in substance fall within the scope of the claims before amendment.

Nestec also argued that the proposed amendment is not allowable under section 102(1) since a claim to a process in which the temperature of step (iii) is higher than that of step (i) is a claim to matter not in substance disclosed in the specification as filed.  A further ground argued by them was that the amendment is not allowable under section 102(2)(b) since as a result of the amendment, the specification would not comply with section 40(3).  They submit that this amendment results in a lack of fair basis of the claim.  However, since the amendment has been found not allowable under section 102(2)(a), I do not need to determine whether it is also not allowable under sections 102(1) and 102(2)(b).

Whole water ice layer

This amendment to step (iii) of the process is common to claim 1 of both application 681008 and petty patent 685040.  Step (iii) is the hardening step and the claim before amendment defines that "the whole is subjected to a hardening step to form the water ice layer, whereby the whole is cooled…..".  The amendment results in the insertion of the words "water ice layer" after the second occurrence of "whole" only.  As pointed out by Dr Sobol in his first declaration, a reference to "the whole is cooled" implies that the temperature is reached at the core while "the whole water ice layer is cooled" implies a surface temperature.  Thus, there is a different meaning implied by the change of wording here.

It is Unilever’s view that the amendment is in the nature of a minor clarification to show that it is necessary for the whole of the water ice layer to harden in order to obtain the desirable properties of the ice confection.  In Mr Finney's declaration at paragraph 20, he states that "the hardening step (iii) can only refer to the hardening of the whole of the water ice layer as nothing else requires hardening".  It is his view that the milk core would already be sufficiently rigid and so would not require further hardening.

However, Nestec contend that the amendment does not comply with either section 102(1) or 102(2)(a) and, due to this resulting in ambiguity as to when the water ice layer is formed, also does not comply with section 102(2)(b).

Nestec submitted that a normal reading of the word "whole" in the context of the claim before amendment is that it is referring to the whole product, including the milk core and that there is no basis to read it as referring only to the water ice layer.  The word "whole" is used twice in the claim before amendment and it must be given the same meaning at each occurrence.  In Nestec’s view, that meaning is that the whole product is cooled, not just the water ice layer.  They also pointed out that on page 2a of application 681008 it states that "water ice forms during the pick up but the layer is completed in the hardening step".  Thus, the whole water ice layer cannot be subjected to the subsequent cooling, as it has not yet formed.  Furthermore, they further submit that there is no disclosure in the specification of only cooling the water ice layer to the defined temperature.

I do not agree with Nestec on their point about the whole water ice layer not being subject to the hardening step.  It seems to me that although the water ice layer may not be completed until the hardening step, it is clearly formed in step (ii) by immersion in the water ice solution, which is the purpose of step (ii).  However, it seems that where the parties really differ is on the meaning of the second occurrence of the word "whole" and whether the accepted claim defines that the water ice layer and core both had to be cooled to the defined temperature or if the temperature requirement only applied to the water ice layer.  The word "whole" appears twice in the accepted claim and I do not believe that the claim is ambiguous.  There is nothing to convince me that it would not have the same meaning in each case.  Even though I take Mr Finney's point that it is only the water ice layer that needs to be hardened, that does not itself change the plain meaning of the claim which I am convinced is referring to the whole product at each occurrence of the word.

I am of the view that the amendment would change the scope of the claim and result in a claim of the specification not in substance falling within the scope of the claims before amendment.  Thus, this amendment offends the provisions of section 102(2)(a).  Since the amendment is not allowable, I do not need to determine if it also offends section 102(1) and 102(2)(b).

Mechanisms to achieve the lower temperature

This particular amendment only applies to claim 1 of patent application 681008, where the words "in a refrigerated volume at -40°C or below or by immersion in a cryogenic liquid" are inserted at the end of step (iii). 

Nestec submitted that, as a result of this amendment, the claim lacks clarity.  In their view it is not clear from the wording of the amended claim if the requirement that the water ice layer is cooled to below -15°C applies to both methods of achieving the low temperature.  As stated by Mr Ivory at paragraph 13 of his second declaration, the claim could be interpreted as including, as one of the options, cooling the whole water ice layer by immersion in a cryogenic with no limitation that the water ice layer must be cooled to below -15°C.  However, Unilever submitted that cryogenic liquids are at very low temperatures, much lower than -40°C and so immersion in such a cold liquid would inevitably result in the water ice layer being cooled to below -15°C.

Following from the discussion above in relation to the temperature of the hardening step, I am of the view that the specification discloses that the hardening step must take place at the temperature of step (i) or below and that any ambiguity in the claim can be resolved by turning to the specification.  As a result, I find that this amendment is allowable under section 102(2)(b).

Conclusion

I have found above that the proposed amendments to:

a) replace "the temperature of step (i) or below" with "a temperature of below -15°C" and

b) insert the words "water ice layer" after the second occurrence of "whole" in step (iii)

are not allowable amendments as they do not satisfy the requirements of section 102.  Thus, I refuse the requests to amend both patent application 681008 and petty patent 685040 dated 12 May 1999.

COSTS

Since the oppositions have both been successful, I believe it is appropriate to follow the usual practice in regard to the award of costs.  Accordingly, costs are awarded against the applicant Unilever.

Gillian Jenkins
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :  Griffith Hack, Sydney

Patent attorneys for the opponent   :  Baldwin Shelston Waters, Sydney