A decision was made by the Delegate of the Commissioner of Patents (“Delegate”) regarding Kraft Foods Schweiz Holding GmbH v Mars, Incorporated  APO 41 (31 July 2023).
The decision dealt with opposition to the grant of an accepted patent based on lack of clarity, lack of support, lack of sufficient disclosure, lack of utility, lack of inventiveness, and manner of manufacture.
Mars, Incorporated (“Applicant”) filed on 01 December 2016 the patent application 2016365338 entitled “Crumb Chocolate Flavor Compositions” (“Opposed Application”).
The Application relates to a crumb chocolate flavor system which seeks to provide a method of manufacturing milk chocolate or chocolate-like products that replicate the taste of crumb chocolate without the need for a thermal step.
The main invention as disclosed in claim 1 of the Application is:
- A chocolate composition comprising
dry milk chocolate and
an extraneous flavor composition, wherein the extraneous flavor composition comprises
- a) a highly volatile compound which is methanethiol,
- b) a plurality of lactone compounds which are ẟ-dodecalactone, ẟ-decalactone, γ-nonalactone, ẟ-octalactone and γ-undecalactone, and
- c) a caramelic composition comprising dimethylhydroxy furanone, phenylacetaldehyde, and maltol.
The Delegate noted that the Application aims to provide a flavour composition which modifies a final food flavour to resemble the taste of crumb chocolate (“CGC”) without the need for a drying step of the crumbing process. The Delegate construed independent claim 1 as a chocolate composition comprising dry milk chocolate and an extraneous flavour composition. The extraneous flavour composition further comprising a minimum of five flavour compounds selected from three categories: a highly volatile compound, a lactone compound, and a caramelic composition.
The Delegate construed claim independent claim 9 as a flavour composition comprising the same list of compounds from “extraneous flavour composition” of claim 1, to provide enhanced creaminess to a chocolate composition. Lastly, the Delegate construed independent claim 3 as a flavour composition comprising set amounts of nine defined compounds.
Section 40(3) of the Patents Act 1990 (“Act”) requires the claims must be supported by matter disclosed in the specification
The Delegate cited Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) (“Merck”) in defining that claims are appropriately supported if they “correspond to the technical contribution to the art”. Consequently, the Delegate followed the three-step approach set forth in CSR Building Products Limited v United States Gypsum Company  APO 72 (“CSR”) to assess whether the claims are supported by the description:
- construe the claims to determine the scope of the invention as claimed,
- construe the description to determine the technical contribution to the art, and
- decide whether the claims are supported by the technical contribution to the art.
The Delegate likewise stated that in determining support, it is useful to require a comparison of the invention as defined in the claims with the invention as disclosed in the specification.
The Opponent alleged that there is inconsistency between the empirical results disclosed in the specification and what is claimed in the claims. The Opponent made various references to data related to flavour-dilutation factor (FD), selected odorants, odor activity value (OAV), and omission results. For example, the Opponent submitted that several compounds which have higher FD factor in CGC than in dry mix chocolate (“DMGC”) disclosed in the specification were not listed in the claims, and compounds which are prevalent in large amounts in CGC than in DMGC were not included in the independent claims as necessary components of the flavour composition. The Opponent likewise presented that some compounds were included as essential compounds in the claims despite not having a significant contribution to the aroma to the flavour composition of CGC.
Additionally, the Opponent stated that claim 1 is not limited in a meaningful manner that ensures or requires the production of a crumb-flavoured chocolate composition, and that claim 1 is open-ended as it failed to disclose the exact number and relative amounts of the components of the extraneous flavour composition. Therefore, claim 1 allegedly fails to define the invention sufficiently such that “technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed” (Merck).
The Applicant pointed out that the individual data points regarding the quantity, FD factor, and OAV of the compounds do not necessarily form a trend. The Applicant stated in the specification of the Opposed Application that quantitative results acquired in quantitation of odorants (Example 2) may disagree with the dilution analysis results in the identification of major odor-active compounds (Example 1). It is also stated in the specification that distinct differences in OAV are generally evident only if the OAV in one sample was at least twice as much as another.
The Delegate considered that all embodiments have in common the nine essential odorants as listed in claim 1 which contributed significantly towards the creaminess of CGC. The Delegate further stated that while the flavour composition defined in the claims may include additional odorants, the additional odorants does not diminish the general principle that the nine common odorants are used to modify the creaminess of the chocolate composition flavour. The Delegate ultimately acknowledged that the technical contribution to the art brought by the Opposed Application includes the use of the nine essential odorants, in combination and in any suitable concentration, to modify the creaminess of a chocolate composition to resemble the creaminess of CGC.
In determining the sufficiency of the Opposed Application
The Delegate used the steps set forth by Deputy Commissioner Barker in CSR to assess whether the disclosure requirement is satisfied. The steps are:
- construe the claims to determine the scope of the invention as claimed;
- construe the description to determine what it discloses to the person skilled in the art; and
- decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
The Delegate further expounded that In Evolva SA  APO 57, Deputy Commissioner McCaffery reformulated the third step mentioned above as a two-step consideration:
- Is it plausible that the invention can be worked across the full scope of the claim?
- Can the invention be performed across the full scope of the claim without undue burden?
The Opponent alleged that the Opposed Application does not disclose the invention in a matter that makes it plausible that the invention can be performed across the full scope of the claims. The Opponent also asserted that it would not be possible to produce flavour compositions across the full scope of the claims without undue burden. The Opponent cited the following statements of Dr. John Didzbalis from the EIA: “human flavour perception is not an exact science”, “flavour is complex” and that the flavour composition claimed in the Opposed application took significant time and costs to develop. The Opponent argued that producing variations in flavour compositions other than those ultimately devised by Mars would likely require the same investment in time and costs.
The Delegate reiterated his conclusion and stated that the specification disclosed a general principle of using the nine odorants of claim 1 and 9 in combination, and in any suitable concentration to modify the creaminess of a chocolate composition to resemble the creaminess of CGC.
The Applicant submitted in the oral hearing that the significant time of work referred to in the EIA is the time it took to arrive at the entire invention, most of which is in identifying the nine odorants. The Delegate, based on the information presented in the EIS and EIA, understood that once the nine odorants had been identified, it would have been standard practice for a person skilled in the art to formulate a variety of flavour composition based on different combinations of the nine odorants. The Delegate then decided that creating variations in flavour compositions would not likely require the same initial investment or undue burden as alleged by the Opponent.
In assessing the inventive step of the Opposed Application based on common general knowledge and relevant information
The Delegate proceeded with the test set forth in Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The Opponent contended that the conventional processes for developing a flavour compound to replicate a known flavour would have directly led to the claimed composition of the Opposed Application. The Opponent supported this by citing the statement of Dr. Baines from the EIS, wherein Dr. Baines stated that he would have immediately predicted the final composition would contain a list of the cited compounds. The Opponent also asserted that all the odorants listed in the claims of the Opposed Application were well-known flavour compounds at the priority date.
Whilst Dr Baines’ predicted final composition could constitute a flavour composition resembling the flavour of crumb chocolate, the Delegate stated Dr Baines’ predicted final composition does not identify all the specific odorants claimed by the Opposed Application. The Delegate stated that the selecting the nine odorants could not have been predicted based on quantitative information alone as it was earlier established that individual odorants quantitatively described in the specification do not always agree to show a definitive trend. Additionally, The Delegate affirmed that there is no evidence to find that the flavour compounds, at the priority date, were part of the common general knowledge and a matter of routine to arrive at the combination of odorants.
The Opponent also cited prior art documents and submitted arguments to assert the lack of inventive step of the Opposed Application.
However, the Delegate noted that the opponent’s arguments to be the sort of analysis by hindsight which was cautioned by the Full Court of the Federal Court in Elconnex Pty Ltd v Gerard Industries Pty Ltd  FCA 556; (1992) 25 IPR 173, at 193-194:
“Questions of obviousness are frequently difficult because it is very easy to fall into the trap of using hindsight. Once an innovation which is useful comes onto the market, there is an inclination not only for lawyers but also for those in the relevant industry to treat it as the norm and as something which might have been easily thought of by any reasonably competent worker in the industry.”
The Opponent alleged that the Opposed Application is not a manner of manufacture
It was submitted that the Opposed Application relates to a mere admixture of known ingredients wherein the combination thereof was known and obvious at the priority date. The Opponent likewise submitted that each feature of the claims is merely performing its normal function and is not functionally dependent on any other part in any inventive way.
The Delegate objected to the Opponent’s assertion and stated that the evidence presented does not establish there is lack of invention on the face of the specification.
The Applicant submitted that the claimed invention is a particular chocolate composition which is made up of particular ingredients. The Applicant emphasized that the claimed invention does not impinge on a naturally occurring product. Instead, it is an “artificial state of affairs of economic significance” which falls clearly within the boundaries of the established classes of inventions which constitute a manner of manufacture under 18(1)(a) of the Act.
The Delegate agreed with the Applicant that the claimed invention of the Opposed Application is a patentable subject matter.
The Delegate held that:
- the Opponent has not established that any one of the claims of the opposed application lacks clarity;
- the Opponent has not established that any of the claims are not supported by the subject matter disclosed in the Opposed Application;
- the Opponent has not established that there is lack of a clear enough and complete enough disclosure for the invention in the Opposed Application;
- the Opponent has not established a lack of utility for any of the claims of the Opposed Application;
- the Opponent has not established that any of the claims of the Opposed Application lacks an inventive step;
- the Opponent has not established that the invention in any of the claims of the Opposed Application is not a manner of manufacture; and
- the Opposed Application proceed to grant.
The decision served as a reminder to consider the steps mentioned above as guides in determining whether the claims of your patent application are properly supported by the specification, and whether there is sufficient disclosure therein.
The matter provided a good example of why there should be consistency between the claims and the specification when drafting a patent application. Furthermore, the matter also shows the importance of determining exactly what the claimed invention is before undergoing patent prosecution to provide a reasonable and proper coverage for your application. By anticipating oppositions at the very start of the patent journey, a patent application can be drafted with sufficient contingency positions and with such language that it can be more easily defended during the course of an opposition.