Warner Lambert Company v Wm Wrigley Jr Company
[1996] APO 4
•18 January 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 617133 in the name of WARNER-LAMBERT COMPANY
Title: CHEWING GUM COMPOSITIONS HAVING REDUCED MOISTURE PICK-UP AND METHOD OF PREPARATION
Action: Opposition by WM WRIGLEY JR COMPANY under Section 59 of the Patents Act 1952
Decision: Issued .
Abstract: The priority date of the claims is the date of filing of the basic document.
The fact that a document may be available to the public does not necessarily mean that it may be considered relevant when considering the "new use of a known substance" under the grounds of "not a manner of manufacture".
Opposition fails on all grounds.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 617133 by Warner Lambert Company and opposition thereto by Wm Wrigley Jr Company.
background
Patent application 617133 by Warner-Lambert Company (Warner) was filed on 2 November 1988. The application claimed priority from US 137396 which was filed on 23 December 1987. The application was advertised accepted on 21 November 1991. On 21 February 1992 Wm Wrigley Jr Company (Wrigley) filed a Notice of Opposition. The serving of evidence was completed on 19 October 1992. On 15 January 1993 the applicant filed a request to amend the specification. These amendments were allowed on 17 August 1994.
As the application was filed before, but accepted after, the commencement of the Patents Act 1990, section 59 of the Patents Act 1952 and Chapter 5 of the Patents Regulations 1991 apply in relation to the opposition.
A hearing to determine the opposition took place in Canberra on 21 July 1995. Warner was represented by Ms Ruth Clarkson and Dr Ian Ernst, patent attorneys of Shelston Waters. Wrigley was represented by Dr Annabelle Bennett of Counsel instructed by Mr John O'Connor, patent attorney of Spruson & Ferguson.
the specification
The patent specification as amended after acceptance is entitled "Chewing Gum Compositions Having Reduced Moisture Pick-up and Method of Preparation". The specification indicates that the invention relates to improved chewing gum compositions and, in particular, to those which provide chewing gum products having a low moisture pickup while retaining good organoleptic properties and shelf-life. More particularly, the inventive compositions provide for chewing gums which, due to a balance of certain non-hygroscopic bulking agents, prevent moisture absorption in the chewing gum and impart a firm texture to the final gum product. This firmness must be sufficiently hard to facilitate coating the gum piece with a crunchy confectionery composition, but not so hard that the chew is unacceptable from a commercial standpoint.
It is stated that in order to retain acceptable sweetness, flavour and texture while retaining good shelf-life, it is important to provide an environment in which the different gum components maintain their characteristic qualities and are not degraded by moisture or other gum components.
The prior art is then discussed and it is stated that it is known to provide chewing gum compositions which have low moisture content and/or low moisture pickup during storage.
In the case of anhydrous gum compositions there still remains a problem in providing sugarless compositions with low moisture pick-up, especially when humectant or hygroscopic materials, such as sugar alcohols, are employed as a means of retaining desirable non-staling and flexible characteristics. Additionally, the use of a high percentage of glycerin further increases the moisture pick-up potential. In the prior art different combinations of gum base ingredients and flavour/sweetener/bulking agent combinations have been tried with varying degrees of success to overcome all of the problems associated with providing a sugarless gum with excellent organoleptic properties yet which is easily coated such that an improved coated gum, e.g., a coated pellet, could be formed.
The present invention is then described in the following terms:
"The present invention provides a unique and highly effective chewing gum composition which can be fine tuned to provide the exact degree of moisture content and pickup desired in the resulting product while retaining acceptable chew properties and facilitating coating if desired."
There follows a summary of the invention in the same terms as the claims. Preferred embodiments and examples are then described. The preferred bulking agent is an isomalt commercially known as Palatinit (Registered Trade Mark) which is a racemic mixture of alpha-D-glucopyranosyl 1,6-mannitol and 1,6-sorbitol. Tests were conducted by using the chewing gum composition of the present invention to compare it with both regular and coated chewing gum confectionery products.
The specification ends with 12 claims of which claim 1 is the only independent claim:
"1. A confectionery coated chewing gum product comprising:
(a) a substantially anhydrous sugarless low-moisture absorbing chewing gum composition comprising a gum base, a high-intensity sweetener and a low-moisture pick-up (non-hygroscopic) bulking agent in an amount sufficient to provide a textural firmness which remains stable over time and having substantially no moisture pick-up and providing an improved structural gum surface for coating, said bulking agent containing isomalt; and
(b) a hard shell confectionery coating on said chewing gum composition, said coating excluding isomalt."
the grounds of opposition
The statement of Grounds and Particulars sets out the following Grounds of Opposition:
That the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification of a patent.
Australian Patent No 612367 (the Wrigley patent) is cited under this ground.
That the invention so far as claimed in any claim, was published in Australia before the priority date of that claim.
Under this ground the following publications are cited:
European Patent No 273000
ii) A Palatinit Infopac
iii) Coating Data Literature, Palatinit GmbH.
That the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim.
The particulars under this ground are based on the assertion that claims 1 and 10 are not novel and that the additional features of the dependent claims were well known in the art in Australia at 23 December 1987.
That the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia.
The particulars of this ground are as set out under 3.
That the complete specification does not comply with the requirements of Section 40.
A number of particulars are set out under this ground.
evidence
The evidence in support comprised a number of declarations. I will refer to them where necessary in this decision. No evidence in answer was filed.
priority
At the Hearing, Counsel for the opponent submitted that the claims were only entitled to a priority date that was the date of filing of the statement of amendments. She submitted that the amended claims claimed matter that was first in substance disclosed as a result of the amendments that were filed on 15 January 1993 and that as a consequence the priority date of the claims, as determined by section 114 and regulation 3.14 of the Patents Act 1990, was that date. This has implications when assessing the novelty of the claims.
Original claim 1 defined a chewing gum composition:
"1. A sugarless low-moisture absorbing chewing gum composition comprising in weight percent:
(a) a gum base in an amount of about 10 to about 75%;
(b) a low-moisture pick-up (non-hygroscopic) bulking agent in an amount sufficient to provide a textural firmness which remains stable over time and having substantially no moisture pick-up and providing an improved structural gum surface for confectionery coating; and
(c) a high intensity sweetener."
Original claim 10 defined a coated chewing gum product:
"10. A confectionery coated chewing gum product comprising:
(a) a chewing gum composition comprising a gum base, a low-moisture pick-up (non-hygroscopic) bulking agent in an amount sufficient to provide a textural firmness which remains stable over time and having substantially no moisture pick-up and providing an improved structural gum surface for coating a high-intensity sweetener; and
(b) a hard shell confectionery coating on said chewing gum composition."
In the amended specification only the coated products are claimed and the hard shell coating excludes isomalt.
In a letter to the Commissioner dated 7 July 1993 Ms Clarkson, for the applicant, states that:
"... the types of coating used are not material to the inventive idea, the inventive idea resides in the actual gum composition and the claims as they presently stand define the inventive concept. Finally, the exclusion of isomalt has been inserted only to distinguish the invention over prior art recently brought to the applicant's attention."
Dr Bennett submitted that for the amendment to successfully avoid the prior claiming objection it would have to change the nature of the invention. This must then constitute new matter which was not disclosed in the specification as filed.
In his judgement in United-Carr Incorporated's Application [1971] RPC 23 Whitford J. held that it was not unreasonable to adopt the principles of Mond Nickels Co Ltd's Application [1956] RPC 189 in comparing the proposed claim with the specification as lodged to determine whether the matter was "in substance disclosed". If the claim was fairly based then the amendment should be allowed.
The Mond Nickel test involves three questions:
Is the alleged invention as claimed broadly (i.e. in a general sense) described in the basic application?
Is there anything in the basic application which is inconsistent with the alleged invention as claimed?
Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?
I believe that the new claims do satisfy the Mond Nickel tests. I note that all of the apparent differences between the original claims and amended claim 1 are disclosed in the description as filed. It is clear from both the specification as filed and as amended, that the inventive concept resides in a chewing gum composition which facilitates coating. In the specification as filed the applicant chose to claim both the coated gum and a gum composition which provided an improved gum surface for coating. In the amended specification the applicant has narrowed the scope of the claim, consistent with the inventive concept, to clearly limit the claims to coated gums only.
In the specification as filed it is stated that the samples were coated by a conventional sugarless coating process. Although the proviso that "said coating excluding isomalt" was not explicitly stated in the specification as filed there was in fact no disclosure of any coating containing isomalt.
Thus there is a real and reasonably clear disclosure of an invention with all of the features of claim 1 in the specification as filed. Although a portion has been excluded from the invention as filed it cannot be said that the claim as amended is inconsistent with the specification as filed. The inventive concept resides in the actual gum composition and this remains the same. The claim does not include any feature which the specification as filed does not contemplate and is consistent with the objects of the invention. The feature that the coating excludes isomalt is an alternative within the original inventive concept and not inconsistent with it.
In the present case it appears that what has happened is that there has been a narrowing of the claim in the filed application to avoid the prior art but that, unlike the situation in Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (11 IPR 20) this choice is not in the nature of a selection which involves an inventive step beyond that disclosed in the specification as filed.
I conclude on this point that the amendments did not result in the claims claiming matter that was not in substance disclosed and therefore the priority date should be determined according to Regulation 3.12. As the specification as filed is substantially identical to the basic document and as the claims of the amended specification are fairly based on this disclosure, the claims are entitled to a priority date of 23 December 1987.
prior claiming
Australian Patent 612367 (the Wrigley Patent) claims priority from US 46665 and has an earliest priority date of 4 May 1987. The specification is entitled "Improved Hard Coated Sugarless Chewing Gum". The specification has 24 claims. Claim 1 reads:
"1. A hard coated sugarless chewing gum comprising a sugarless chewing gum centre and a sugarless hard coating comprising hydrogenated isomaltulose, said gum centre having a water content of 0.001 to less than about 2.5 weight percent based on the weight of the gum centre."
Claims 2 to 10 are dependent on claim 1. Claim 11 reads:
"11. A sugarless hard coated chewing gum comprising a sugarless low moisture chewing gum center and a sugarless hard coating containing hydrogenated isomaltulose, said gum centre comprising in admixture an insoluble gum base, a bulking agent and a softener, said softener having a water content less than about 30 weight percent."
Claims 13 to 24 define methods of manufacturing a sugarless hard coated chewing gum in which the coating syrup comprises isomaltulose.
In the description it is stated that hydrogenated isomaltulose is also known as isomalt and is available under the trademark name "Palatinit". In the description of the specification isomalt is listed as a possible sugarless sweetener which may be present in the gum centre.
Both parties agree that the decision in Kromschroder (G) AG's Patent (RPC [1960] 75) sets out the relevant law. In that decision the view was expressed that the comparison must be made between (and limited to) the claims in the relevant specifications; that is to say, it does not suffice to show that what is claimed in the patent in suit as a subject matter for protection is to be found somewhere comprehended or described in the earlier specification. In the present case the invention as claimed in the opposed application specifically excludes gums wherein the coating contains isomalt whereas the claims of AU 612367 are directed to gums with a hard coating comprising isomalt. I cannot agree that the invention as claimed is the subject of the claims of the earlier patent.
Dr Bennett also argued that, if I decided that the amendments discussed above had not claimed new matter, then these amendments could not have overcome the prior claiming objection which would require a change in the identity of the invention. Although I do not have to decide whether there was a valid prior claiming objection to the claims prior to amendment I cannot agree with
Dr Bennett on this point. It is well known that prior claiming may be avoided by restricting the scope of the claims, see for example Ethyl Corporation (Cook's) Patent 1970 RPC 227 at 231. It is quite possible that in cases where an application claims a different invention from the invention claimed in a granted patent, but where the claim is drafted broadly and includes within its scope part of the previously claimed matter, then the claim of the application might be amended by more narrowly defining the invention and avoiding the prior art. Such an amendment would not necessarily change the identity of the invention or claim new subject matter.
novelty
The generally accepted test for anticipation is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement of a claim occurs when each and every one of the essential integers of the claim have been taken (Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367).
At the hearing, Counsel for the opponent submitted that the presence of the coating was not an essential feature of claim 1. In particular she referred to the extract from Ms Clarkson's letter, supra, and also to the presence in the specification before amendment of a claim defining the uncoated gum composition. Dr Bennett also referred to the statement in the description which indicates that the present invention facilitates coating "if desired" as indicating that the coating was an optional feature.
I have addressed this issue when considering the question of priority dates, supra. Although it is admitted by the applicant that the type of coating used is not material to the inventive idea, it is clear from the specification as a whole that the invention is directed to gum compositions that are suitable for coating. According to the specification the key to the invention is that the isomalt significantly reduces moisture pick-up and provides sufficient firmness to allow for easy coating. The words "facilitating coating if desired" refer to the gum compositions which provided an improved coating surface but are not actually coated. Such compositions were claimed before the amendments and may be considered to be part of the described invention.
After amendment the invention as claimed is clearly limited to coated gums. I consider that the feature that the gums be coated is not merely an arbitrary limitation inserted to avoid the prior art but an essential feature of the invention as claimed.
Three documents are cited under this ground of opposition. Under the requirements of the Patents Act 1952 these document must be published in Australia before the priority date of the claim.
European Patent No 273000
This patent specification was published in Australia on 8 August 1988. As I have determined the priority date of the opposed application to be 23 December 1987, which is prior to the publication date of the EP specification, this publication cannot be considered under the grounds of novelty.
Palatinit Infopac
This document was annexed as an exhibit to a statutory declaration from Mr Anthony Green, General Manager of Bleakley Fine Chemicals.
In his declaration Mr Green declares:
"2. In my capacity as General Manager, I have access to the records of my company. I was aware of Palatinit ever since my company received a Palatinit Infopac which was in May or June 1987.
3. Annexed hereto and market (sic) "AG-1" is a true copy of the cover page, Table of Contents, Product Description pages and Chemicophysical Characteristics pages from that Infopac which relate to the use of Palatinit in chewing gums." (emphasis added).
At the hearing Ms Clarkson submitted that in the absence of corroborating evidence on this publication date it must be based on recollection unsupported by any contemporary document. She submitted further that although the declarant stated that he had access to company records he failed to provide any corroborating record and in the absence of such the publication date is not proven.
When determining questions of fact I am not obliged to decide in accordance with the rules of evidence applicable in a court of law. Deane J., sitting in the Federal Court of Australia, issued a judgement including the following paragraph:
"These technical rules of evidence, however, form no part of the rules of natural justice. The requirement that a person exercising quasi‑judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non‑existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material, which as a matter of reason, has some probative value in the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue."
(Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666).
Mr Green states in a Statutory Declaration that he has access to the records of the company and gives a range of two months within which he received the Infopac. I agree that it is common in matters concerning publication dates for librarians to provide evidence of publication as precise dates as it is a normal procedure in libraries for these accession dates to be recorded but there is no reason to expect that all companies record the exact date on which all brochures are received. Although there is some doubt about the exact date in this case I have no reason to doubt the honesty and accuracy of Mr Green's statement. Furthermore, as the range of dates given precedes the priority date of the claims by at least five months, I believe that it is reasonable to assume that this Infopac was available in Australia prior to the priority date of the claims.
The applicant also pointed out the following paragraph in the Infopac:
"We endeavor to keep you informed about the latest developments. Whenever our own research and studies provide new findings on PALATINIT [registered trade mark], you will receive from us supplements to the technical sheets to include in your PALATINIT-INFOPAC."
Ms Clarkson submitted that I could not be certain that the Infopac had not been updated after the priority date.
Paragraph 3 of Mr Green's declaration refers to "that" Infopac. I have no reason to suspect that the exhibited Infopac differed from the one received in May or June 1987.
The Palatinit Infopac discloses that Palatinit is a sugar substitute that can be used in the place of sugar or glucose for the production of foodstuffs. It states further that this carbohydrate is noted for high chemical and biochemical stability, a pure sweet taste and that it is easily half as sweet as saccharose.
The Palatinit Infopac gives information concerning the use of Palatinit as a sugar substitute and mentions certain properties including that it gives foodstuffs body and texture (presumably leading to its use as a bulking agent) and describes Palatinit as an odorless, white, crystalline, nonhygroscopic substance.
It discloses the use of Palatinit in a chewing gum composition in an example comprising a gum base, sorbitol, glycerin and peppermint oil together with the Palatinit. It appears that this gum is cut into strips and not coated. Elsewhere in the document, under the heading "Sweetening Power, Taste, Synergistic Effects" it is stated that synergistic effects appear when PALATINIT is mixed with other sugar alcohols, for example, xylitol, sorbitol, or Lycasin, or when Palatinit is sweetened with sweetening agents (saccharin, cyclamate, aspartame) but there is no clear direction that these high-intensity sweeteners should be used in the chewing gum composition.
Thus the Infopac discloses a chewing gum composition but it differs from claim 1 firstly in that it does not include a high intensity sweetener within the chewing gum composition. At the hearing Dr Bennett suggested that sorbitol could be considered to be a "high intensity sweetener" but there was no evidence on this point. In fact in his declaration for the opponent Mr O'Donnell agrees that the high-intensity sweeteners listed in the opposed specification were the same high-intensity sweeteners used in the industry. This list does not include sorbitol.
The Infopac also does not disclose a coated chewing gum, nor does it disclose that a gum containing Palatinit might be suitable for coating. Even if I am wrong in considering the coating to be an essential feature I would still consider the "improved structural gum surface for coating" to be essential. As the Palatinit Infopac does not disclose all of the essential features of claim 1, this claim does not lack novelty.
3. Coating Data Literature.
As there is no evidence concerning the date of publication of this document I need not consider it further.
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).
The opponent relies on the evidence of Mr O'Donnell and Mr Reed to establish this common general knowledge.
Mr Reed declares that he is currently Group Leader - New Ingredient Development at Wrigleys in Chicago, Illinois with responsibility for the utilization of new chewing gum ingredients including palatinit. He is the inventor of the inventions which are the subject of 13 patents. There is no indication from the declaration that Mr Reed has worked in the field of chewing gum formulation in Australia or that he was aware of the common general knowledge in Australia at the priority date of the claims. I can therefore place no weight on his evidence insofar as it relates to what was known or used in this country.
Mr O'Donnell is the Senior Director of Manufacturing, Asia Pacific for Wrigley. During the period 1976-1985 he was employed as an Operations Manager and was directly responsible for the production, engineering, purchasing and quality assurance function of chewing gums in Australia. From 1985 to 1992 he was the Manufacturing Manager - Asia Pacific. In view of this background it would seem that I should place considerable weight on Mr O'Donnell's evidence insofar as it relates to what was known or used in the chewing gum industry in Australia at 23 December 1987.
Mr O'Donnell declares that in his opinion the following was known in relation to claim 1 of the opposed specification:
The use of a gum base in an amount of 10 to 75%.
That a firm chewing gum is produced when the chewing gum has low-moisture pick up.
That the stability of firm chewing gums may be controlled by the amount of moisture absorbed in the chewing gum base.
That high-intensity sweeteners were known in the industry.
That hard shell confectionery coatings sweeteners were known in the industry.
By reference to the Wrigley patent (discussed under "Prior Claiming", supra) which states that Palatinit is nonhygroscopic Mr O'Donnell concludes that the use of isomaltulose was known to provide a chewing gum having low-moisture pick-up and maintain a firm base which would remain stable over time.
Mr O'Donnell then refers to the Palatinit Infopac and the Coating data literature to conclude that isomalt had been previously described as providing an improved structural chewing gum surface for coating.
Ms Clarkson for the applicant states that there is no indication of when this information was known. The declaration was made on 15 October 1992 but there was no statement that the above could be considered to common general knowledge in 1987.
Even if the information described in paragraphs 1 to 5 represents an ongoing knowledge by the declarant and could be considered to be common general knowledge the evidence does not establish that the properties and use of isomalt were common general knowledge in Australia at the priority date of the claims. There is no indication whatsoever from the declaration that Mr O'Donnell was aware of the contents of the Wrigley Patent, the Palatinit Infopac, or the coating Data literature prior to preparing the declaration. Although he refers to these documents in his declaration there is no indication that the knowledge obtained from them concerning the properties and use of isomalt formed part of his common general knowledge at the priority date of the claims. The only information about isomalt that appears to come from his own experience is the statement that Palatinit and hydrogenated isomaltulose are synonymous.
As there is insufficient evidence to show that the use of isomalt was common general knowledge at the priority date, I cannot conclude that the use of isomalt in the coated gum product as defined in claim 1 was obvious.
manner of manufacture
The ground of "not a manner of manufacture" was not listed on the Statement of Grounds and Particulars. At the hearing much of the submissions addressed the question of whether the claim defined a "new use of a known substance". Counsel for the opponent requested that such submissions be considered either under the grounds of not a manner of manufacture, or alternatively, under the ground of "otherwise not novel". The applicant agreed that the submissions could be considered under the latter ground.
In the light of the recent High Court decision (Philips v Mirabella, 32 IPR 449) it seems more appropriate for me to consider this issue under the ground of "manner of manufacture".
I note that section 60(2) of the Patents Act 1952 allows me to consider a ground of opposition whether the opponent relies on it or not. In the Patent Office decision, CSIRO v Asterol, (an unreported decision on application 633084, 1994) the delegate considered the question of whether this provision can be applied in relation to oppositions for which Chapter 5 of the Patent Regulations 1991 apply. He concluded that he could take into account a ground of opposition not relied upon by the opponent as long as procedural fairness was applied to the applicant.
In the present case the applicant agreed to my considering submissions concerning the "new use of a known substance" under the ground of "otherwise not novel" and had reasonable opportunity to make submissions themselves. I consider that there will be no disadvantage to either party if I consider these submissions under the grounds of "Manner of Manufacture" instead.
In his declaration Mr Reed states that the use of isomalt being the non-hygroscopic bulking agent merely reflects the use of isomalt for the use that was intended by the manufacturer. It was created to be a bulk sweetener (sugar replacement) with low-hygroscopicity and other benefits. It was submitted by the opponent that the use of isomalt in combination with a high intensity sweetener in a chewing gum composition to facilitate coating could be considered to be merely the new use of a known substance for properties which are known.
In the case of Commissioner of Patents. v. Microcell Ltd., 102 CLR 232 at page 251, the High Court held that there was "in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject‑matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do".
The critical question is whether the properties of isomalt which made it suitable for the coated gum composition of the invention were "known". In this context it is apparent from decided cases that "known" does not have the narrow meaning as being common general knowledge. The admitted prior art in the specification in suit may also give an indication of what is known (Philips, supra).
The specification states:
"Key, however, to the present invention is the discovery of the ability to use a low-moisture pick-up sweetener-bulking agent which can be combined with glycerin or low amounts of sugar alcohol in a sugarless gum composition to: (1) significantly reduce the moisture pick-up over a period of time and (2) to provide sufficient firmness in textural and structural integrity of the gum surface to allow for easy coating with confectionery coating compositions. In particular, the bulking agent used in the present invention is an isomalt commercially known as PALATINIT [registered trade mark] ...
While the isomalt PALATINIT [registered trade mark] is known to have a relative sweetness when compared to sucrose of only from about 0.50 to 0.60, when it is included in the chewing gum composition of the present invention in combination with high intensity sweeteners, the required sweetness level is obtained."
From this it can be concluded that Palatinit was known as a sweetener and a bulking agent. The specification does not indicate whether Palatinit was known to be non-hygroscopic or that it could provide sufficient firmness for coating.
Dr Bennett submitted that I should also consider the contents of the Palatinit Infopac when determining the "known" properties of Palatinit.
In L & G's Application, (1941) 58 RPC 21 it is the applicant's own admissions in the specification that is used as evidence as to what is "known" to demonstrate that the matter claimed is merely the use of a known material in the manufacture of known articles for the reason that it possesses a known property rendering it useful for this purpose.
In Microcell, supra, information was gleaned from the specification itself and the properties of the materials were described as "known generally" or "well known".
In a more recent case (Grace v Asahi, (1993) AIPC 90-974) the specification in suit acknowledged that the product was known and disclosed its properties as well as published articles which were found to form part of common general knowledge.
In Philips, supra, it was the property of luminescence that made the phosphor suitable for use in discharge lamps. The primary judge found that the luminescent qualities of phosphors had "long been known" and he accepted the proposition that they were so "well known" that it was unnecessary to identify the phosphors to be selected for testing (24 IPR 1, at 34). The High Court decision of Brennan J, Deane J and Toohey J stated that the threshold requirement of "an alleged invention" would, notwithstanding an assertion of "newness", remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies. They also considered that it would "border on the irrational" if a process which was in fact but a new use of an old substance could be a "patentable invention" under s 18 if, but only if, that fact were not disclosed by the specification but did not give guidance as to how the relevant information could be disclosed.
Although I understand the word "known" in this context to require something less than that the information was common general knowledge in the art, I cannot find any support for the proposition that all information contained in all publicly available documents is "known" in this context. Although I assumed under the grounds of "Novelty" that the Infopac had been published at the priority date of the claims I have no reason to believe that this document had ever been read in Australia prior to this date and there is no evidence to support the suggestion that, merely because this document was available to the public, the properties of isomalt were "known".
I therefore do not have sufficient evidence to conclude that the claims do not define a manner of manufacture.
Even if I did consider the information in the Infopac as evidence of what is "known" I do not believe that it discloses all of the relevant properties of isomalt. It does not disclose that the Palatinit provides sufficient firmness for coating. Although Mr O'Donnell states that firmness would be achieved as a result of the low moisture pick-up, he does not state that he knew this at the priority date of the claims. Therefore I would still find that there was insufficient evidence as to what was "known" to conclude that the claims did not define a manner of manufacture.
SECTION 40
A number of the particulars under this ground have been remedied by the amendments. The following outstanding problems were identified:
There is no definition for the following terms:
- "low-moisture pick up"
It is stated in the description that the composition as a whole should include no greater than about 3.5% by weight of moisture. In his declaration Mr O'Donnell concludes that this statement refers to the chewing gum composition as having no greater than about 3.5% by weight of moisture. It therefore seems that the skilled addressee could understand the term.
- "a textural firmness which remains stable over time"
Mr Reed states that any bulking agent would provide some degree of firmness and that stability over time would depend on environmental factors such as humidity as well as the specific composition. Mr O'Donnell comments on the lack of definition but does not appear to have any difficulties in understanding the term. The description states that the firmness must be sufficiently hard to facilitate coating the gum piece with a crunchy confectionery composition, but not so hard that the chew is unacceptable from a commercial standpoint. I consider that this is an acceptable definition of firmness. The specification also states that the ultimate gum product can be formulated to provide negligible moisture pick-up throughout the life of the gum while retaining firm structure for gum processing steps, such as coating, and packaging. Again, this provides an acceptable definition to the skilled addressee.
Claim 1 is inconsistent with the objects of the invention. It is stated in the description that the inventive compositions provide for chewing gums which, due to a balance of certain non-hygroscopic bulking agents, prevent moisture absorption in the chewing gum. Claim 1 claims only one bulking agent.
The gum composition of claim 1 comprises a low-moisture pick up bulking agent. This bulking agent contains at least isomalt but that is not to say that it contains only one bulking agent, it may also contain other individual bulking agents as well, for example, sorbitol. Furthermore, the preferred isomalt is Palatinit which is itself a mixture of two stereoisomers each one of which could be considered to be a bulking agent.
Claim 1 is not consistent with the matter described in the specification because it does define the amounts of the components.
Claim 1 is in effect a functional claim in that the quantities are defined as amounts sufficient to achieve a certain result. As the description gives guidelines as to suitable amounts of the various components and as I have no reason to believe that the skilled addressee would not be able to determine suitable amounts without undue experimentation or the exercise of any new inventive facility the claims are fairly based (No-FumeLtd v Frank Pitchford and Co Ltd, (1935) 52 RPC 231).
CONCLUSION
I have found that the opposition fails on all grounds.
costs
It is usual in matters before the Commissioner for costs to follow the event. In this case I have found for the applicant but I note that there were substantial amendments to the specification after the filing of evidence in support. In this case I think it appropriate that I award costs against the applicant up to and including the date of advertisement of allowance of the amendment, that is 8 September 1994, and against the opponent thereafter.
Vivienne Thom
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Shelston Waters
Patent attorneys for the opponent : Spruson & Ferguson
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