WM Wrigley Jr. Company v Intercontinental Great Brands LLC - [2016] APO 24

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
WM Wrigley Jr. Company v Intercontinental Great Brands LLC [2016] APO 24

Patent Application: 2006251543 and 2006251544

Title:Confectionery composition including an elastomeric component, a cooked saccharide component, and a modified release component.
Confectionery composition including an elastomeric component and a cooked saccharide component.

Patent Applicant:                   Intercontinental Great Brands LLC
Opponent:  WM Wrigley Jr. Company
Delegate:  K. Wagg
Decision Date:  29 April 2016 (corrected on 28 June 2016)
Hearing Date:  21 October 2015 with further evidence completed on 15 December 2015. Section 104 amendments on 2006251544 allowed on 27 January 2016.

Catchwords: PATENTS – Claims found to be novel and possess an inventive step- cooking saccharides or polyols- chewing gum-Claims are clear-the tensile strength could be determined by using the ASTM 638 standard- the water absorption value of the delivery system is not fairly based on the description- the description discusses the water absorption value of the encapsulating material- encapsulating material considered to differ from the delivery system-opposition successful on ‘544 and unsuccessful on ‘543-costs follow the event.

Representation: Patent applicant: Written Submissions from Griffith Hack
Opponent:Julian Cooke of Counsel, instructed by Dr Aaron Olsen of Spruson & Ferguson

CORRIGENDUM
Decision of 29 April 2016 has been corrected on 28 June 2016 as follows:

Under “DECISION” on page 1, costs for the opposition on ‘543 awarded against the opponent has been added.

Under “Costs” on page 25, costs for the opposition on ‘543 have been awarded against the opponent.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006251543 and 2006251544

Title:Confectionery composition including an elastomeric component, a cooked saccharide component, and a modified release component.
Confectionery composition including an elastomeric component and a cooked saccharide component.

Patent Applicant: Intercontinental Great Brands LLC
Date of Decision: 29 April 2016 (corrected 28 June 2016)
DECISION
Claims 1,2,7-10 of ‘544 are not fairly based.
The claims of ‘543 are fairly based. The grounds of novelty, inventive step and clarity have been unsuccessful against the particulars and evidence raised by the opponent.
Costs are awarded against the applicant on ‘544 and costs are awarded against the opponent on ‘543. The applicant has 60 days to file suitable amendments before a final determination is made.
REASONS FOR DECISION
Background

Patent application number 2006251543 (‘543) and patent application 2006251544 (‘544) were filed on 23 May 2006. The applicant for both applications is now Intercontinental Great Brands LLC (the Applicant).
The ‘543 application was examined and advertised as accepted by the Commissioner on 28 October 2010. On 28 January 2011, WM Wrigley Jr. Company (the Opponent) filed a notice of opposition to the grant of the ‘543 patent.
The ‘544 application was examined and advertised as accepted by the Commissioner on 7 October 2010. On 7 January 2011 the opponent filed a notice of opposition to the grant of the ‘544 patent.
As both patents relate to the similar subject matter a hearing was held on 21 October 2015 in Sydney to decide both oppositions. The opponent was represented by Julian Cooke of Counsel instructed by Dr Andrew Olsen of Spruson and Ferguson. The applicant chose to appear by written submissions.
The applicant filed amendments to the claims of ‘544 on 19 October 2015. These amendments were examined and advertised on 26 November 2015. The amendments were then allowed by the Commissioner on 27 January 2016.
The requests for examination were filed prior to 15 April 2013. As a consequence, substantive amendments of the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. I also note that any subsequent reference to the Patents Act relates to the Patents Act1990 (the Act), prior to amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
Standard of proof
The onus of proof in this opposition proceeding rests with the opponent, who must demonstrate that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [67]; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18]; 79 IPR 426).
The opposition
The amended statements of grounds and particulars identified the following grounds of opposition for both patent applications:
1. That the claims are not novel
2. That the claims do not involve an inventive step
3. That the complete specification does not comply with ss 40(2) or (3)
The opponent also contested the priority claims of both applications. As the priority date did not relate to a specific ground of opposition and no document cited for novelty or inventive step was published after the priority date I will not make a decision in relation to the fourth point above.
The parties relied upon evidence by several declarants. In many instances there was little difference between the evidence on the ‘543 application to that on the ‘544. Passages referred to in one declaration for ‘543 can be found at the same or similar location in the corresponding declaration on ‘544.
Evidence in support on the ‘543 application consisted of a declaration by Martin Edward O’Brien signed on 28 October 2011; a declaration by Douglas P. Fritz signed on 30 April 2011 (Fritz #1); a declaration by John Lee signed on 8 October 2012; a second declaration by Douglas P. Fritz signed on 27 June 2013 (Fritz #2); a second declaration by John Lee signed on 28 June 2013; a declaration by Aaron Heath Olsen signed on 28 June 2013.
Evidence in support on the ‘544 application consisted of declarations which were largely identical to those on the ‘543 application. It consisted of a declaration by Martin Edward O’Brien signed on 7 October 2011; a declaration by Douglas P. Fritz signed on 10 April 2011; a declaration by John Lee signed on 8 October 2012; a second declaration by Douglas P. Fritz signed on 5 July 2013; a second declaration by John Lee signed on 5 July 2013; a declaration by Aaron Heath Olsen signed on 8 July 2013.
Evidence in answer for ‘543 is a declaration by Lisa Jane Clark dated 10 February 2014.
Evidence in answer for ‘544 is a declaration by Janelle Suzanne Borham dated 13 May 2014.
The evidence in answer for both applications includes a document annexed to the declaration. It is the ASTM 638-02a standard for measuring tensile strength.
Evidence in reply consists for the ‘543 case of a declaration by Rafael Bras dated 27 June 2014 and a second declaration by Aaron Heath Olsen dated 30 June 2014.
Evidence in reply for ‘544 consists of a declaration by Rafael Bras signed on 13 August 2014 (Bras #1) and a further declaration by Aaron Heath Olsen singed on 14 August 2014.
Further evidence
A request for further evidence was filed on 9 October 2015 on both the ‘543 and 544 applications.
Both requests for further evidence consisted of a declaration by Aaron Heath Olsen both dated 9 October 2016 and a declaration by Rafael Bras dated 7 October 2015.
The applicant was asked to file submissions in relation to the further evidence for the hearing and the outcome was provided in a letter from me dated 11 November 2015. In the letter I made directions to give the applicant the opportunity to respond to the further evidence, noting that extensions of time would be available under the old legislation.
The applicant did not file any response to the further evidence.
The specifications
The ‘543 specification relates to an edible confectionery composition which has a cooked portion comprising a sugar and/or polyol and an elastomeric portion which are put together either in layers or in a modified release system to create multimodal effects. The specification ends with 16 claims and Figures 1/4-4/4. Claims 1,2,3 and 16 are independent with claims 4-13 being dependent on claim 2 and claims 5,8-10,12-15 being dependent on claim 3. Claim 16 is an omnibus claim.
The ‘544 specification again relates to an edible confectionery composition which has a cooked polyol or saccharide. The composition can have a delivery system or form a homogeneous mixture with multimodal effects. The specification ends with 26 claims and Figures 1/4-4/4. Claims 1,2,3,4 and 26 are independent. Claims 5-25 are dependent. Claim 26 is an omnibus claim.
What is the invention as described
Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
The background to the invention
Both specifications provide background at paragraph [0003]. This passage is identical in both applications. It states that:
“Some confectionery compositions where the finished product is formed by combining cooked saccharide syrups with chewing confectionery bases are known …. However, these compositions result in confectionery products that lack long lasting sensory characteristics and have a narrow range of texture characteristics. Furthermore, these compositions have not been used to create multi-modal effects.”
The aim of the invention
The aim of the invention can then be gleaned from the following sentences provided in the same passage ([0003]).
“Therefore, a need exists for confectionery compositions including cooked saccharide syrups and elastomeric components that demonstrate long lasting sensory attributes, offer a range of texture attributes, and/or provide multi-modal effects. There also exists a need for confectionery compositions that include cooked polyol syrups such as isomalt and elastomeric components.”
The nature of the invention
The invention in both patent applications relate to confectionery composition. The confectionery composition is made from a cooked polyol or saccharide and an elastomeric portion. The end confectionery product has specific qualities such as multi-modal effects, delivery systems and is defined in different ways. The end product essentially being a chewing gum with multi-modal effects and characteristics.
Paragraph [0002] of ‘543 states the following about the field of the invention:
“The present invention relates to confectionery compositions including cooked saccharide including isomalt, an elastomeric component, and multiple encapsulation component including at least sucralose. The compositions may have or may provide long lasting characteristics and or variable textures. Optionally, components that create multi-modal effects are included in different portions of confectionery composition.”
Paragraph [0002] of ‘544 states the following about its field of invention:
“The present invention relates to confectionery compositions including cooked saccharide including polyols such as maltitol, erythritol, and isomalt, and a chewing gum base. The compositions may have or may provide long lasting characteristics and/or variable textures. Optionally, components that create mult-modal effects are included in different portions of confectionery compositions.”
Saccharides, such as isomalt, are well known in the art. The applications both discuss what is meant when it is “cooked” at [00361] of ‘544 and [00358] of ‘543 and this is as follows:
“…the cooked saccharide component can be created by applying a heat process that increases the solids content of the cooked saccharide component by removing moisture from an aqueous saccharide syrup. In other embodiments, the cooked saccharide component can be created by increasing the solids content of a saccharide syrup without a heat process such as by incorporating solid saccharides into an aqueous saccharide syrup.”
This definition of the cooked saccharide or polyol is further discussed later in this decision.
The term multi-modality is defined at paragraph [0032] of ‘544 and [0029] of ‘543. It is defined as follows:
“the term ‘multi-modality” refers to the perception by an individual of at least two characteristics that are complementary, opposed, i.e. distinct, or different in intensity from one another. The multi-modal characteristics may be flavors, sensations, tastes, functionalities or combinations thereof.”
The Examples
The examples in both applications are identical. They give general instructions to produce the chewing gums with percentages of the components provided in tables 1-4.
The examples in table 1 make a homogenous confectionery mass with a saccharide solution made from granulated sugar and corn syrup which has been heated to 145C to form a candy mass.
The examples in tables 2 and 3 also yields a homogeneous confectionery mass with the cooked saccharide portion made by dissolving isomalt in water and cooking to 172C to form a candy mass.
The examples in table 4 give a product with a softer texture using fat and hydrocolloids. In one example a fat blend of hydrogenated vegetable fats is added along with a hydrated gelatin blend. The cooked saccharide portion is made by dissolving sugar and corn syrup in water and heating to 172C. The gelatin mixture is added to the sugar syrup and a candy mass is made. The candy mass is mixed with a separately prepared gum base to form the final confectionery composition.
The claims
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification"
It is useful to present the independent claims here.
Claim 1 of the ‘543 application reads:
“An edible composition comprising:
a. a cooked portion comprising isomalt;
b. an elastomeric portion; and
c. a multiple encapsulation sucralose composition comprising sucralose, a first encapsulation forming a first layer, and a second encapsulation forming a second layer;
d. wherein the first layer encapsulates the sucralose and the second layer encapsulates the first layer;
e. wherein the first encapsulation comprises polyvinyl acetate and the second encapsulation is selected from the group consisting of gum arabic, gelatin, and combinations thereof;
f. wherein the multiple encapsulation sucralose composition is in the elastomeric portion; and
g. wherein the cooked portion and elastomeric portion are in the form of a homogeneous mixture.
Claim 2 of the ‘543 application reads:
“A confectionery composition, comprising:
a. a cooked portion comprising a sugar and/or a polyol; and
b. an elastomeric portion;
c. wherein at least one of the cooked portion and the elastomeric portion comprises at least one modified release component;
d. wherein the modified release component is a delivery system having a tensile strength of at least 6,500 psi; and
e. wherein the cooked portion and elastomeric portion are in the form of a homogeneous mixture.
Claim 3 of the ‘543 application reads:
“A confectionery composition, comprising:
a. a cooked portion comprising a sugar; and
b. an elastomeric portion;
c. wherein at least one of the cooked portion and the elastomeric portion comprises at least one modified release component;
d. wherein the modified release component is a delivery system having a tensile strength of at least 6,500 psi; and
e. wherein the cooked portion and elastomeric portion are in the form of a homogeneous mixture.
Claim 16 of the ‘543 application reads:
“An edible composition or a confectionery composition substantially as herein described with reference to the accompanying examples.”
Claim 1 of the ‘544 application reads:
“An edible composition comprising a cooked saccharide portion and an elastomeric portion, wherein the cooked saccharide portion includes a polyol selected from the group consisting of maltitol, erythritol, isomalt, and combinations thereof, and wherein the cooked saccharide portion and the elastomeric portion form a homogeneous mixture, and wherein the elastomeric portion comprises a delivery system which has a water absorption value of up to 15% as measured according to ASTM D570-98.”
Claim 2 of the ‘544 application reads:
“An edible composition comprising an elastomeric portion and a cooked polyol wherein the cooked polyol is selected from the group consisting of isomalt, erythritol, lactitol, galactitol, and combinations thereof, and wherein the cooked polyol and the elastomeric portion form a homogeneous mixture, and wherein the elastomeric portion comprises a delivery system which has a water absorption value of up to 15% as measured according to ASTM D570-98.”
Claim 3 of the ‘544 application reads:
“An edible composition comprising a cooked saccharide portion and an elastomeric portion, wherein the cooked saccharide portion consists of isomalt, and wherein the edible composition further comprises sorbitol powder in an amount from 5% to 35% by weight of the edible composition, and wherein the cooked saccharide portion and the elastomeric portion form a homogeneous mixture.”
Claim 4 of the ‘544 application reads:
“An edible composition comprising a cooked saccharide portion and an elastomeric portion, wherein the cooked saccharide portion includes a polyol selected from the group consisting of maltitol, erythritol, isomalt, and combinations thereof, and wherein the elastomeric portion further comprises a delivery system which has a tensile strength of 6,500 psi.”
Claim 26 of the ‘544 application reads:
“An edible composition substantially as herein described with reference to the Examples and/or Figures of the invention.”
Clarity
It is a requirement of subsection 40(3) of the Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
Tensile Strength of 6500 psi
The opponents alleged that claims 2 and 3 of the ‘543 application and claims 4 and 6 of the ‘544 document lacked clarity because of the use of the term “tensile strength”. The claims refer to a tensile strength of 6500 psi.
When a feature in the claim is ambiguous the PSA may look to the specification to clarify the meaning. The description states on page 80 paragraph [00250], last sentence of ‘544 and paragraph [00247], last sentence of ‘543:
“The tensile strength can readily be tested according to ASTM-D638”.
The opponent argues at paragraph 44 of their submissions that:
“[The o]nly method for measuring tensile strength in the specification is ASTM D638-02a (although this is not referred to in the claims). This method includes a number of different methods and allows for a range of sample parameters (sample size, conditioning time and temperature, the immersion procedure used and the time of immersion), each of which will return a different tensile strength measurement for the sample. A ‘tensile strength’ measured with ASTM D638-02a only has meaning within the scope of the very specific variables used to make those measurements (Bras #1, para 1.40). Those variables are not specified in the claims or description. The term “tensile strength” alone is meaningless in the case of polymers (Bras #1, para 1.40).”

The evidence relied on in Bras #1 follows a discussion on tensile strength and the use of the ASTM D638-02a. The ASTM-D638-02a standard is in evidence as RB-3 and was also filed by the applicant as evidence in answer. This document provides standards for measuring tensile strength of polymers including those used as the elastomeric portion of the chewing gums claimed.
The opponent’s argument is that without the precise measurement conditions, such as the exact temperature the analysis is carried out at, the PSA would not know if they have produced a composition with a tensile strength of 6500 psi that is within the scope of the claims.
The applicant responded to the grounds under section 40 generally. The following passage is their submission on clarity:
“The Opponent has not adduced any evidence that shows that the relevant terms have been inconsistently used in the complete specification of the Application or that a person skilled in the art would not understand each of the relevant terms used in the complete specification of the Application. In fact, with respect to the latter, each of the technical declarants was able to give a reasonable meaning to each of the relevant terms to understand the invention as described in the Application and thus understand the scope of the claimed invention.”
They did not address the issue of measuring the tensile strength directly.
In Bras #1 the declarant discusses the difficulties with measuring tensile strength in chewing gum and that it would be different when chewed and moistened by saliva (paragraph 1.29).
In looking at ASTM D638-02a Bras states the following (at paragraph 1.28):
“ASTM D638-02a states at paragraph 9.2 that tests should be conducted at 23 ± 2 ºC (74.4 ± 3.6 ºF) and 50 ± 5 % relative humidity, unless other specified by contract of the relevant ASTM material specification.”
He goes on to give his expert opinion on these conditions:
“I would expect that even the ± 2 ºC variation allowed by ASTM D638-02a would cause significant variability in tensile strength for polymer specimens close to their glass transition temperature. As noted above, the glass transition temperature of PVAc is 25 ºC, so I would expect that the ± 2 ºC variation permitted under ASTM D638-02a would be particularly significant in causing variation in any measurement of tensile strength of PVAc. In the case of hydrophilic polymers, such as PVAc, humidity can also have a significant effect on the tensile strength as the polymer will absorb water and become placticised. Thus, I would expect that the 5% variation in humidity allowed by ASTM D638-02a would cause significant variability in tensile strength for hydrophilic polymers.”
He further notes at 1.33:
“While ASTM D638-02a defines in Table 1 a specific range of testing speeds to be used for a given measurement during testing, there is sufficient variance in that range to impact tensile strength measurements.”
This leads to his statement at 1.38 which is relevant to determining the scope of these claims, here he discusses the issues with consistency of sample size and the need for more specific test conditions. He then states that:
“…a tensile strength measurement obtained using ASTM D638-02a could not be used as an objective reference without all relevant variables being defined.”
The ASTM D638 document does however provide the relevant variables and while there may be issues with the variations of ± 2 ºC and 5 % humidity for some polymers like PVAc, this was recognised by Bras and I therefore think a person skilled in the art would also be able recognise this issue and adjust the permissible variations accordingly.
The ASTM D638-02a document does provide the length of the specimens for both rod and tube specimens in Fig. 3 and Fig. 2. Furthermore the conditioning section at 9.2 on page 52 of the document under the section titled “reference testing conditions” it states:
“to settle disagreements, shall apply tolerances of ± 1 ºC and 2 %”
If the PSA was faced with the issues outlined by Bras, it is reasonable to conclude that they would apply narrower tolerances and obviate the issues.
I find that a person skilled in the art would be able to determine the tensile strength as outlined in the claims.
Lack of antecedent
The opponent alleged a lack of clarity existed for claims 7, 11, 12, 18, 20 and 21 of ‘544 because of a lack of antecedent. This has been overcome by the amendments.
Vigorous mixing
The opponent alleged a lack of clarity against claim 18 of ‘544 because of the composition has to have the ability to withstand “vigorous mixing without the incorporation of air into the said mixture” and that there were no boundaries to this. No evidence was cited in relation to this feature being unclear and whether or not a person skilled in the art would be able to determine what is meant by this phrase.
When read in the context of the specification as a whole the vigorous mixing without the incorporation of air into the said mixture is in the context of a chewing gum. A chewing gum when vigorously mixed (chewed) does not incorporate air and I cannot find any evidence to show that a person skilled in the art would require specific boundaries to this feature. As a result I do not find that this claim is unclear.
Desired texture
The opponent alleged that claim 21 lacks clarity because the feature “selected to provide a desired texture” is not clear because any texture may be desired and therefore this feature is not limiting on the claim. I agree that any feature may be desired but the claim is merely to the composition when a selection process is carried out to achieve any desired texture. It is about the selection itself. Consequentially I find that this claim is clear.
Surface gloss appearance
The opponent alleged that claim 23 lacks clarity because the claim states that the “surface gloss appearance that is the same as the surface gloss appearance of a hard panned product as measured by optometric equipment” where a hard panned product may have any surface gloss appearance. However, no evidence has been cited to show that a hard panned product may have any surface gloss appearance. It appears that one would need to prepare a hard panned product and compare it to the composition using any optometric equipment and determine if they are identical. As I have no evidence cited that this process would be unclear to the person skilled in the art, I find that is must fail.
Conclusion on clarity:
This ground of opposition fails.
Fair basis
It is a requirement of subsection 40(3) of the Act that the claims must be fairly based on the matter described in the specification. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69], 217 CLR 274 at 300 approved the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:
"the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification"
The ‘544 application
The opponent alleges that claims 1,2 and 7-10 of ‘544 lack fair basis because there is no real and reasonably clear disclosure of a delivery system with a water absorption value given in the description.
The specification discusses it in the consistory clause, but nowhere else and the absorption of the “encapsulating material” is discussed at [00256].
Evidence from Bras #1 at 1.74 and 1.81 tells me that the water absorption in the delivery system would be different to that in the encapsulating material.
There appears to be a distinction between the encapsulating material and the delivery system made in the specification.
At [00256] the specification discusses the selection of the encapsulating material for the delivery system and then [00257] the water absorption of the encapsulating material is discussed.
Paragraph [00257] reads:
“…the absorption properties of the encapsulating material can be selected to be from 0.0 % to about 5% or up to about 15% (as measured according to ASTM-98).”
It appears that there is only a real and reasonably clear disclosure for the encapsulating material having the water absorption value claimed and the encapsulating material is distinct from the delivery system.
There is thus an inconsistency between the claimed water absorption properties of the delivery system and the disclosure of the specification.
It follows that there is no real and reasonably clear disclosure of the delivery system with a water absorption of up to 15 % when measured by ASTM D570-98. Therefore these claims are not fairly based.
The opponent then alleges that claim 26 lacks fair basis. As mentioned above, this claim is an omnibus claim and therefore claims the examples.
The opponent states that the “invention as herein before described” should be construed as being what is said at paragraph [0002] of the specification:
“The present invention relates to confectionery compositions including cooked saccharide including polyols such as maltitol, erythritol and isomalt, and a chewing gum base”.
They then state that none of the examples use polyols. However, isomalt is used in examples 200-330 show in tables 2 and 3 on pages 116-117. Therefore this assertion is incorrect and this allegation fails.
In view of the above I therefore conclude claims 1, 2 and 7-10 of ‘544 are not fairly based.
An additional particular to fair basis was discussed at the hearing. The applicant was informed of this matter in the letter 11 November 2015. The applicant was asked to respond to this matter and chose not to. This matter relates to claims 4 and 6 where they require the tensile strength to be “at least 6,500 psi” (my emphasis). The description discusses the limits of tensile strength at paragraph [00245]. The opponent contended that the upper limit should be added to these claims. Paragraph [00245] is reproduced below:
“In some embodiments, the tensile strength of a delivery system which can be at least 6,500 psi, including…”…(list of numbers)…”200,000 and all ranges and subranges there between, for example, a tensile strength range of 6,500 to 200,000 psi.”
I note that the above disclosure only provides the upper limits “in some embodiments” and “for example” and in this context it is not telling the reader that the invention must have an upper limit. Furthermore, there is a consistory clause at paragraph [0009b] which matches the wording in the claim.
In view of this I do not consider that claims 4 and 6 lack fair basis.
The ‘543 application
The opponent alleges that claims 1-16 of ‘543 lack fair basis because these claims do not contain all the features set out in paragraph [0002]. Paragraph [0002] states:
“The present invention relates to confectionery compositions including a cooked saccharide including isomalt, an elastomeric component, and multiple encapsulation component including at least sucralose”.
It is useful to look for these features in the independent claims 1, 2, 3 and 16.
The feature of the saccharide is the isomalt (a) in claim 1, the sugar and/or polyol (a) in claim 2, the sugar (a) in claim 3.
The elastomeric component is the elastomeric portion (b) in all of claims 1, 2 and 3.
In claim 1 the multiple encapsulation component including at least sucralose is present as feature f.
In claims 2 and 3, however, the modified encapsulation component would correspond to the modified release component and this does require the inclusion of sucralose.
There is thus an inconsistency between claims 2 and 3 and paragraph [0002]. However, it is incorrect to force the claim to be limited to one paragraph in the description, rather the claims are to be fairly based on the specification as a whole.
Encapsulation is discussed on page 75 and mentions other materials such as polymers like PVAc. I therefore consider there is a real and reasonably clear disclosure of this feature.
With regards to the omnibus claim, the opponent alleges the examples do not include isomalt, however, the examples in ‘543 are identical to those in ‘544 and as outlined above isomalt is included.
The opponent further alleges that claim 16 lacks fair basis because the examples do not include a multiple encapsulation component including sucralose.
The terms in claim 16 “the invention as herein before described with reference to the examples” does not limit the invention described in [0002]. It is the invention in the specification as a whole. It is essentially a claim to the examples. In that context I do not consider claim 16 to lack fair basis.
At the hearing claim 3 was said to lack fair basis as the opponent believed there should be an upper limit to the tensile strength (see above paragraph 85). The discussion at paragraphs 85 and 86 also apply to the ‘543 document with paragraph [00242] using the terms “in some embodiments” and “for example” and there being a consistory clause at paragraph [0005]. It follows from the discussion at paragraph 86 that claim 3 of the ‘543 application is fairly based.

100. Thus, the ‘543 application is fairly based.
Conclusion on Fair Basis
101. Claims 1, 2 and 7-10 of ‘544 are not fairly based. The claims of ‘543 are fairly based.
Novelty
102. It is a requirement of subsection 18(1) of the Patents Act (the Act) that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel in the light of the prior art. A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim.
103. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 137 CLR 228 at 235:
"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"

104. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
105. Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 (the General Tire case) at 485 – 486:
"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented: Flour Oxidizing Co. Ltd. v. Carr & Co. Ltd. (1908) 25 R.P.C. 428 at 457, line 34, approved in B.T.H. Co. Ltd. v. Metropolitan Vickers Electrical Co. Ltd. (1928) 45 R.P.C. 1 at 24, line 1). A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."

106. The opponent relied on the following documents as particulars to this ground:
·     US 5,198,251 A (SONG ET AL) 30 March 1993 (D1) was filed in evidence as exhibit RB-11.
·     US 5,229,148 A (COPPER) 20 Jul. 1993 (D2) was filed in evidence as exhibit DPF-8.
·     US 4,726,953 A (CARROLL ET AL.) 23 Feb. 1988 (D3) was filed in evidence as exhibit MOB-17.
·     US 4,491,596 A (ELIAS) 1 Jan. 1985 (D4) was filed in evidence as exhibit MOB-3.
·     US 4,981,698 A (CHERUKURI ET AL) 1 Jan. 1991(D5) was filed in evidence as exhibit MOB-12.
107. All of the above documents were published before the priority date of the opposed applications and therefore form part of the prior art.
108. The opponent contended that claims 1-25 of ‘544 and claims 2-15 of ‘543 were parameteritis. Though not a ground of invalidity, parameteritis is now established in Australian Patent law to refer to particular parameters in a claim that are an arbitrary convenience and do not give any technical effect or reflect any discovery or new scientific insights (Williams Advanced Materials Inc v Target Technology Co LLC [2004] FCA 1405 at 48; Euroceltique S.A. v Sandoz Pty Ltd [2009] APO 21 at 112).
109. The parameters which were said to be arbitrary relate to water absorption value in claims 1,2 and 7-10 of ‘544, the sorbitol powder amount in claim 3 of ‘544 and the “tensile strength of at least 6500 psi in claims 4 and 6 of ‘544 and claims 2 and 3 of ‘543.
110. While these parameters may pose a problem when comparing the current specification to prior art documents which do not disclose them, I do not accept that they have no technical significance. In the context of chewing gum one would expect it to possess particularly characteristics such as a particular water absorption value and a particularly elasticity. These features distinguish a chewing gum from other confectionary products.
111. The opponent also asserts that the claims lack novelty because in carrying out the invention in the prior art there is an inevitable consequence that the person skilled in the art does something that falls within the scope of the claims (Novozymes A/S v Danisco A/S [2013] FCAFC 6 at 145).
112. The applicant says that the prior disclosure falls short of a complete disclosure and that the evidence falls short of demonstrating the person skilled in the art can perceive, understand and, where appropriate, apply the prior disclosure necessary to obtain the invention (H Lundbeck A/S v Alphapharm Pty Ltd (2009) 81 IPR 228 at 190).
113. These are merely different ways of approaching the question of whether or not the prior art is an anticipation and a good metaphor to use is from General Tires and states that the prior art must:
“contain clear and unmistakeable directions to do what the patentee claims to have invented”

114. The applicant’s submissions on ‘543 and ‘544 are reproduced below:
“The Opponent’s technical declarants do not approach the issue of novelty correctly. Rather, their approaches to novelty is by reference to a statement of principle said to be derived from the Full Court’s decision in Novozymes A/S v Danisco A/S (2013) 99 IPR 417. That is, anticipation by the notion of an ‘enabling’ disclosure.

The starting point for the Opponent’s novelty attack is, therefore, an implicit admission that there is no piece of prior art (whether a document or act which discloses all the features of those forming the combinations in each of the claims of the Application.”

115. The Applicant stated the following in response to novelty in paragraphs 45-51 of the ‘544 submissions (the same words are found in the ‘543 submissions):
“In the present case, the Opponent cannot fit its novelty submissions within either of the categories identified by Bennett J in Lundbeck…
The Opponent does not assert that any prior publication clearly discloses the combination of features defined by the claims of the Application.
The Opponent’s submissions also do not align with the second category, where the skilled reader understands the disclosure of an asserted prior publication to fall short by not expressly including a particular integer.
Moreover, the Opponent’s submissions suffer from an evidentiary hiatus (required by the principles in Lundbeck above), namely that it cannot point to the evidence of any technical declarant which clearly states that such a person, armed with knowledge of any terms of art and the nature and extent of any prior disclosure, is able to perceive, understand and apply the prior disclosure to obtain the invention.
By reason of the above, the Opponent fails to discharge the heavy onus cast upon it to show that, by reason of lack of novelty in light of specific pieces of prior art, the Application is practically certain to be invalid.

It should also be noted that the evidence adduced by the Opponent, namely the first and second Fitz declaration and the first and second Lee declarations, were made before the requests to amend the complete specification of the Application referred to in paragraph 6 above. Therefore, neither Fitz nor Lee has considered the currently pending claims of the Application, that is, the accepted claims as amended. As a consequence, the evidence adduced by Opponent from these two technical declarants is deficient with respect to the currently pending claims.

The Applicant submits that the Opponent has not established the ground of lack of novelty.”

116. I will look at the disclosures of each document in turn to determine if they provide a disclosure which would meet the requirements to destroy novelty of the claims in question.
Novelty and D1
117. It was alleged that D1 anticipates claims 1,2, 4, 6-14, 17-19, 21, 24 and 25 of ‘544 and claims 2-5, 10, 11, 13, 15, 16 of ‘543.
118. D1 is entitled “Gradual Release Structures for Chewing Gum”. In D1 the gum base is mixed with the active agent (this is a water soluble substance that will be gradually released, in their examples they use aspartame) at a high temperature and extruded through a die (see abstract and column 1 Field Of The Invention). The result gives small structures or granules of the active agent dispersed throughout the gum so that as chewing takes place the active agent is gradually exposed to the saliva where it dissolves.
119. The gum with the active portion then has the water soluble bulk portion added (see column 5 lines 9-10).
120. The water soluble portion is defined in column 6 and is said to include sugar sweeteners as well as:
“Nonsugar sweeteners can include sorbitol, mannitol, and xylitol.”

121. To make the final product the document states in column 6 lines 50:
“Generally, the ingredients are mixed by first melting the gum base and adding it to the running mixer. The base may also be melted in the mixer itself. Color or emulsifiers may also be added at this time. A softener such as glycerine may also be added at this time along with syrup and a portion of bulking agent…. The flavouring agent is typically added with the final portion of the bulking agent.

122. The document goes on to state that:
“Those skilled in the art will recognize that many variations of the above described procedure may be followed.”

123. The examples said to anticipate these claims are examples 3, 6 and 12.
124. Example 3 and 6 are in table 1 on column 9 and make a chewing gum with Aspartame 17 wt % in PVAc (Melt Blended) and Aspartame 29 wt % in PVAc (Melt Blended). The “Melt Blended” is defined in column 8 to mean “samples were prepared for extrusion by directly blending the Aspartame with a polymer melt of the wall material in a heated beaker at 140 ºC”.
125. Example 12 is on column 12 and uses 10 % Aspartame and PVAc with a molecular weight of about 50,000 to 80,000 as the wall material was extended at 100 ºC.
126. The opponent provided evidence that this material would have tensile strengths within the scope of the claim (Bras #1 paragraphs 1.56-1.58) and that the water absorption value would be below 15% as measured according to the ASTM D570-98 (Bras #1 paragraph 1.75).
127. In his declaration, Bras is making inferences drawn from the declaration of Boghani, which was filed as exhibit RB-10 to Bras #1. The Boghani declaration was a declaration filed before the USPTO and while it may be in relation to a patent family member of the opposed applications it was made in a different context to the current opposition.
128. In the Boghani declaration tensile strength measurements showed that the molecular weight of the PVAc and the presence of solvent impacted the tensile strength and lasting sweetness (see paragraph 22).
129. In view of this the inferences made by Bras do not weigh heavily.
130. The next feature of the claims is the cooked saccharide or polyol. There is a lengthy discussion of what is meant by cooking in the evidence. This is because the application states that it can be achieved by adding further powdered ingredients (see paragraph [00361] of ‘544):
“the cooked saccharide component can be created by applying a heat process that increases the solids content of the cooked saccharide component by removing moisture from an aqueous saccharide syrup. In other embodiments, the cooked saccharide component can be created by increasing the solids content of a saccharide syrup without a heat process such as by incorporating solid saccharides into an aqueous saccharide syrup.”

131. D1 does not mention cooking the saccharide or polyol. Instead the saccharide or polyol is added to the gum after the granules of aspartame have been mixed in and then the mixture may be cooked all together. This process would affect the gum as a whole and not the saccharide/polyol itself. There is no teaching to cook the saccharide/polyol in a way that would increase its solid content.
132. The person skilled in the art would have to make variations to arrive at this. There are no clear and unmistakable directions to make these variations.
133. The evidence does not establish that the saccharide portion would inherently be cooked and the polyol would be chosen from a list of sweeteners.
134. I therefore find that D1 is not prejudicial to the claims of either the ‘544 or 543 applications.
Novelty and D2
135. D2 incorporates D1 by reference. It is through this incorporation that it has the same disclosure as D1. The opponent argued it anticipates ‘544 and ‘543 for the same reasons as D1. D2 refers to sugar alcohols but similarly does not disclose the “cooked” feature.
136. It follows that D2 does not anticipate the claims of either ‘544 or ‘543.
Novelty and D3
137. The opponent alleges that D3 anticipates claim 1, 7-14, 18, 19 and 21 of ‘544. These claims use maltitol, erythritol or isomalt.
138. D3 is entitled “Sweet Flavorful Soft Flexible Sugarless Chewing Gum.” Under “Field of the Invention” in column 1 the following is disclosed:
“The present invention relates to soft, flexible sugarless chewing gum compositions which contain ≥ 2% by weight moisture and ≥ 8% by weight of cooked hydrogenated starch hydrolysate and which have improved sweetness and flavour characteristics over extended periods of mastication time.”

139. The cooked hydrogenated starch is said to be:
“The cooked aqueous hydrogenated starch hydrosate used in the composition of the present invention has a moisture content of about 30 ± 6 %, and preferably of about 10 ± 4 %. This cooked hydrogenated starch hydrolysate is prepared by cooking, or heating, commercially available solutions of the hydrogenated starch hydrolysate, which have moisture contents of about 20 to 30 %, at a temperature of about 250 º C to the desired low moisture content of the cooked material is attained.”

140. The cooked hydrogenated starch is considered to be a cooked saccharide portion as the definition at paragraph [00161] of ‘544 states that:
“…a cooked saccharide portion includes cooked saccharide (sugar or sugar free) syrups along with other ingredients such as, but not limited to, starches”

141. However, nowhere in D3 is maltitol, erythritol, or isomalt mentioned. In column 4 of D3 the hydrogenated starch hydrolysate is said to contain polyols such as sorbitol and mannitol. Furthermore, there are no clear and unmistakable directions to use the saccharide(s) of the current claims.
142. It follows that D3 does not anticipate the opposed claims.
Novelty and D4
143. The opponent contends that D4 anticipates claim 26 of ‘544 and claim 16 of ‘543. Claim 26 is an omnibus claim. This document discloses a chewing gum which is similar to example 100 in both of the opposed applications.
144. I note that both the omnibus claims are independent and therefore an example in the prior art that is the same as the examples in either ‘544 or ‘543 would anticipate these claims.
145. The opponent contended that the example in D4 was identical to example 100 in table 1 of both opposed applications.
146. Examples 100-130 and D4 both make a chewing gum using sugar and corn syrup which is heated under vacuum at 230 ºF (110 ºC). This differs from example 100 in that the candy mass is not prepared under vacuum but is heated to 145 ºC. In D4 the candy mass and gum base are mixed at a temperature of 180-185 ºF (82 ºC) and then flavourings and colours are added. In example 100 the colour and flavours are added to the candy mass and high intensity sweeteners are either added to the candy mass and or the gum base. After this addition, in example 100, the gum base and candy mass are kneaded at 70-90 ºC. The product is then shaped in both documents.
147. The product of D4 is made from 50 pounds of liquid sugar and corn syrup that has been heated and put under vacuum. I was not provided with any evidence which allows me to determine whether this would equate to the percentages of component given in table 1. Although a similar list of ingredients is used, the methods do differ. Furthermore, the concentration step in D4 (using the vacuum) means I do not know the amounts of the ingredients in the end product. Therefore I do not have enough evidence to say if the product of example 100 is identical to that of D4.
148. Therefore D4 is not prejudicial to the novelty of ‘543 or ‘544.
Novelty and D5
149. D5 is alleged to anticipate claim 1 of ‘543. This claim has “a cooked portion comprising isomalt”.
150. D5 is entitled “Multiple Encapulated Sweetener Delivery System And Method of Preparation”. In regards to the cooked polyol being isomalt, the opponent has relied on the following disclosure in column 11 lines 37-45 :
“In the instance where auxiliary sweeteners are utilized in addition to those in the delivery system, the present invention contemplates the inclusion of those sweeteners well known in the art, including both natural and artificial sweeteners. Thus, additional sweeteners may be chosen from the following non-limiting list: sugars such as sucrose, glucose (corn syrup)….

151. Then at line 53-54 it states:
“…and sugar alcohols such as sorbitol, sorbitol syrup, mannitol, xylitol and the like” (my emphasis).

152. I do not consider the phrase “and the like” when referring to sugar alcohols in a long list of possible sweeteners to be clear and unmistakable directions to use cooked isomalt as required by the current claims.
Conclusion on Novelty
153. The evidence does not establish that the prior art contains clear and unmistakable directions that would arrive at any of the opposed claims. This ground of opposition fails.
Inventive step
154. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge (CGK), considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (subsection 7(3)).
155. The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286 Aickin J stated:
"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."

156. The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411 approved this approach.
157. In the present case both applications address the same problem. They both produce chewing gums with multimodal effects. The opponent alleged that the claims of ‘544 and ‘543 lacked an inventive step in light of CGK and parameteritis and that D1 and CGK destroy the inventive step of claims 1,2,4 and 20 of ‘544 and claims 2 and 3 of ‘543 and that D5 and CGK destroy the inventive step of claim 1 of ‘543.
158. Again, parameteritis is not a ground of opposition, however, the opponent argued that that the features of the water absorption value, tensile strength value, amount of sorbitol powder are not part of the invention and are arbitrary parameters and as such only the remaining features are part of the common general knowledge. I have made a decision in relation to whether or not I consider these features to be “parameteritis” above. I found that they do provide a technical meaning to the claims in that they would be unique to chewing gum and different to other confectionery. The same argument applies here and as a result I do not find that the claims of either ‘544 or ‘543 lack an inventive step over CGK and parameteritis.
159. The applicant made the following submission in relation to inventive step at paragraphs 62-66 after discussion 3M:
“With this in mind, it is clear that no real attempt has been made to establish lack of an inventive step over common general knowledge.
If a component is not disclosed in a prior art document, the technical declarants generally state that there does not appear to be any reason why that component would not have been included in the prior art composition. However, the test for inventive step is whether a person skilled in the art, in all circumstances, would directly be led as a matter of course to try the subject matter claimed, in the expectation that it might produce a useful result. The technical declarants do not give any reasons as to why a person skilled in the art would be directly led, as a matter of course, to include the missing component in the prior art compositions.
If the Opponent wished to establish lack of an inventive step in the present opposition proceedings it would have to establish that (i) the hypothetical person skilled in the art before the Priority Date, could be reasonably expected to have ascertained understood and regarded as relevant and, where applicable, to have combined them, the prior art information relied upon and (ii) the hypothetical person skilled in the art would have been motivated to modify the prior art information to arrive at the invention claimed in the Application with a reasonable expectation of success of producing an edible composition or confectionery product with the desired properties (e.g. long lasting characteristics).
The Opponent has failed to do so, and certainly not discharged the high onus that each of these criteria is met.
Accordingly, the Applicant submits that the Opponent has not established the ground of lack of inventive step.”

The Person Skilled in the Art (PSA)
160. The subject matter of the opposed patents is chewing gum. Fritz provided evidence on this industry in Australia. He stated that chewing gum companies do not manufacture the raw materials (Fritz #1 at 1.27). However, a research group would consist of people with a background in polymer chemistry, flavourings, colourings, sweeteners, organoleptic properties, processing and chemical synthesis (Fritz #1 1.29).
161. Fritz further states that in Australia, the cost of importing the finished chewing gum products generally exceeds the cost of importing the raw materials and using domestic materials (Fritz #1 at 1.30).
Ascertained understood and regarded as relevant
162. In view of the evidence it is reasonable to conclude the person skilled in the art is a team involved in chewing gum manufacture.
163. The opponent’s declarant, Fritz, stated in Fritz #1 at 1.26 that:
“Most published information pertaining to research and development in the chewing gum industry is contained within patent literature… Indeed, it is commonplace for any person working in research and development in the chewing gum industry to regularly review patent literature”.

164. Given this and the subject matter of patents cited I accept that D1, D4 and D5 would be ascertained understood and regarded as relevant.
Inventive step in light of the common general knowledge
165. The opponent cited the following pieces of evidence as common general knowledge in their submissions at paragraph 202 quoting Fritz #2.
“Generally speaking, the more a saccharide or sugar alcohol syrup is cooked (i.e., the more its moisture content is reduced), the harder the cooked syrup will become (for example a hard candy has a lower moisture content than a chewy candy)”

166. The opponent also quotes Fritz #2 at paragraph 196:
“…an additional step of cooking [by moisture reduction using heat] the sweetener was included in some chewing gum making processes as early as 1977… abovemetioned products and processes would have been well known among people working in research in the chewing gum industry at 23 May 2005”

167. In view of this evidence and without any evidence to the contrary I accept that it would have been common general knowledge to the person skilled in the art that cooking a saccharide would decrease the moisture content and that a cooked saccharide portion would be common general knowledge. The opponent cited the following evidence on this point, also at paragraph 196 of their submissions:
“Saccharide-containing chewing gums typically comprise[d] a gum base, a saccharide syrup (e.g., corn syrup), a powdered saccharide as bulk sweetener, a humectant (e.g., glycerine), colouring and flavours.” (Fritz #1 at para 1.31).;

168. In a saccharide-free (or sugar-free) gum a polyol syrup and powdered polyol replaces the saccharide syrup and powdered saccharide.
169. Fritz also stated in #1 at para 1.48 that:
“Polyols such as maltitol, erythritol and isomalt (hydrogenated isomaltulose) became commercially available around the early to mid-1980s and xylitol became commercially available around the mid-1970s. Each of these polyols was well known in the industry and commonly used in research and manufacture of chewing gum products at 23 May 2005.”

170. This evidence supports the view that the use of a polyol and indeed isomalt would have been a matter of routine to the person skilled in the art.

171. While I accept that individually the features of the claim are in the common general knowledge and that the parameters would be typical to any chewing gum. The evidence does not establish that the person skilled in the art would be directly led as a matter of routine to all the features of the claims as a whole. There is no motivation to cook the saccharide or polyol and to choose isomalt when making a chewing gum with multimodal effects in the evidence as common general knowledge.
CGK and D1
172. The opponent alleged that claims 1,2,4 and 20 of ‘544 and claims 2 and 3 of ‘543 lack an inventive step over D1 when combined with the common general knowledge. As outlined above at paragraph 113, D1 discloses gum with multimodal effects using aspartame and mentions saccharides and polyols can be used.
173. I have accepted that the evidence shows that cooking the polyol or saccharide is common general knowledge (paragraph 165) and that using isomalt chewing gum is also common general knowledge (paragraph 168).
174. There is, however, no evidence that the person skilled in the art would be directly led as a matter of routine to choose isomalt and to cook that polyol. The routine steps that the person skilled in the art would take have not been set out in the evidence. The declarations do not say that it would be routine to try cooking the polyol or saccharide mentioned in D1, nor is there any direction established.
175. In view of the evidence a lack of inventive step for claims 1,2,4 and 20 of ‘544 and claims 2 and 3 of ‘543 in view of D1 and the common general knowledge has not been established.
CGK and D5
176. The opponent further contended that claim 1 of ‘543 lacked an inventive step in the light of D5 when combined with the common general knowledge.
177. The multiple encapsulation in D5 comprises the following when PVAc is used (columns 7 and 8):
A. At least one solid sweetener
           B. An emulsifier
           C. A first inner coating of PVAc
           D. A second outer coating of a hydrophilic polymer containing a second sweetener.

178. As outlined above for novelty D5 does not mention isomalt itself, but does state that non-sugar alcohols like xylitol “and the like” can be used. As mentioned above at paragraph 168 xylitol has been commercially available since the mid-1970s and isomalt has been commercially available since the mid 1980s.
179. The document does not teach a multiple encapsulation sucralose composition to be within a separate elastomeric portion.
180. There is no evidence that shows the routine steps needed to arrive at a composition comprising each of the features of claim 1 in a single composition.
181. In view of this I find that D5 and the CGK do not destroy the inventive step of claim 1.
CGK, D4 and the omnibus claims
182. The opponent cited Bennett J in Williams Advanced Materials Inc v Target Technlogy C LLC (2004) 63 IPR 645; [2004] FCA 1405 at [59] where she states that the omnibus claim 38 incorporates into it the invalidity of an earlier claim. The current omnibus claims differ from the claim being discussed by Bennett J. The claim before her honour was dependent on claim 9 and claim 9 had within its scope example 1. Bennett J had found example 1 was not novel. In the opposed applications the examples fall outside of the scope of the other claims. Therefore circumstances are different in this case.
183. The question of whether or not the omnibus claims are obvious is whether the person skilled in the art would be directly led as a matter of routine from D4 to example 1.
184. As I have outlined above at paragraphs 145 and 146 the difference between D4 and the omnibus claims is that the specified weight percentages of the ingredients given in example 100 are not disclosed in D4. The process steps at paragraphs [00375] of ‘543 and [00378] of ‘544 are similar to D4 but they are not identical, for example, D4 uses a vacuum to prepare cook the syrup.
185. There is no evidence which establishes that the person skilled in the art would tweak the conditions in D4 so as to arrive at the current examples. Nor is there any evidence that this would be a matter of routine.
186. In view of this, D4 and the CGK does not destroy the inventive step of the omnibus claims.
Conclusion on inventive step
187. The evidence has not established a lack of inventive step, this ground of opposition fails.
Conclusion
188. Claims 1,2 7-10 of ‘544 are not fairly based.
189. The grounds of novelty, inventive step and clarity have been unsuccessful.
190. The applicant has 60 days to file suitable amendments before a final determination is made.
Costs
191. The parties submitted that costs should follow the event. I see no reason to depart from that result. Costs should be awarded against the applicant for ‘544 and costs should be awarded against the opponent on ‘543.
K. Wagg
Delegate of the Commissioner of Patents