– A patent application withdrawn before its publication can still form part of the prior art base if it is subsequently claimed as a priority document for a later published patent application.
– Claim construction and expert evidence remain important in establishing whether the claims are novel or inventive.
– Applicants should ensure consistent use of terms in claim sets to avoid ambiguity and hence invalidity for lack of clarity.
This is a decision of IP Australia (the Australian Patent Office) on an opposition filed by Cantarella Bros Pty Ltd (Cantarella) against Australian Patent Application No. 2009347084 (the Patent Application) in the name of Koninklijke Douwe Egberts B.V. (Douwe). The Patent Application was directed to a reinforced coffee pod and an associated dispensing system.
The Patent Application had 17 claims with independent system claim 1, capsule claim 15 and method claim 17. Each of the independent claims defined the feature of “at least one rib extending from the circumferential wall [of the capsule] into the inner space to provide additional stiffness to the capsule” (the Rib Feature). System claim 1 and method claim 17 (but not claim 15) further defined that a fluid dispensing means supplied fluid to the capsule at a pressure of 4 to 20 bar (the Pressure Feature).
Cantarella asserted that claims were invalid for lack of novelty and inventive step. In addition, Cantarella asserted that dependent claims 10 and 11 reciting the feature of “an alternative capsule” lacked clarity.
An issue between Cantarella and Douwe was whether the Rib Feature would include ribs formed by or part of the wall, such as a corrugated wall section, where the corrugations extending inward were the “ribs”. After considering expert evidence from both parties, the hearing officer concluded that, as the Rib Feature defined that the rib extended from the capsule wall, this meant that the wall must have in effect a projection extending from its surface. Thus, the Rib Feature would exclude corrugations or ribs formed in walls as they each do not extend from a surface of the wall.
Eligible prior art
One prior art document was a PCT application that was withdrawn prior to its formal publication, but was later used as a priority document for a later filed PCT application. This later filed PCT application was published after the earliest priority date of the Patent Application. Hence, there was an issue as to whether the first PCT application was part of the prior art base for novelty. The hearing officer reviewed section 88 of the Patent Act and found that the first PCT application would be part of the prior art base if it were published. Cantarella argued that the first PCT application had been published as it became publicly available upon publication of the later filed PCT application. The hearing officer agreed and so the first PCT application was considered part of the prior art base as a “whole of contents” novelty citation.
Despite the success of having the first PCT application included in the prior art base, Cantarella failed on novelty.
The hearing officer found that the claims were novel over the first PCT application as it did not disclose the Rib Feature because its ribs were part of the wall and did not extend from it. Similarly, another prior art document described a corrugated wall and so did not anticipate the claims.
Two other prior art documents were found to disclose the Rib Feature but did not disclose the Pressure Feature. Only one taught a pressure range of 1 to 2 bar, while the other was silent. Cantarella sought to rely on expert evidence that coffee machines operated at up to 10 bar to argue that the Pressure Feature was inherent in these prior art documents. The hearing officer stated that even on this evidence, it was equally likely that the prior art would use a pressure range inside or outside of the claimed range of the Pressure Feature. Thus, independent claims 1 and 17 were novel, as were dependent claims 2 to 14 and 16.
However, as claim 15 did not include the Pressure Feature, it lacked novelty over one of the prior art documents disclosing the Rib Feature. The other prior art document disclosing the Rib Feature did not anticipate claim 15 as it disclosed that the capsule had its own outlet, whereas all the claims of the Patent Application required the beverage to flow out of the capsule to an outlet of an apparatus for holding the capsule.
Cantarella was also unsuccessful on the inventive step ground. The hearing officer found that it was part of the common general knowledge to provide strengthening ribs, but it was undesirable to obstruct the inner space of a coffee capsule. Thus, it was found that the Rib Feature would not have been a routine modification or part of the common general knowledge. Hence, the claims were inventive over the common general knowledge alone.
This finding on common general knowledge helped sway the hearing officer to find that the claims were inventive over the two prior art documents that did not disclose the Rib Feature since the addition of the Rib Feature would not have been routine. Similarly, the hearing officer’s assessment above of the expert evidence in relation to the Pressure Feature led to the finding that it would not have been a routine modification to include the Pressure Feature in any of the cited prior art. Consequently, the claims were inventive over the other prior art documents that did disclose the Rib Feature but not the Pressure Feature. Thus, the claims (except claim 15) had an inventive step.
Cantarella was successful on the clarity issue in relation to claims 10 and 11. The hearing officer found that the term “exchange capsule” (referring to the capsule defined in claim 1) was interchangeably used with “alternative capsule” in these claims. Therefore, the reference to the “alternative capsule” was ambiguous as to whether it referred to the capsule defined in claim 1 or a different type of capsule. Hence, these claims were invalid for lack of clarity.
This case establishes that a patent application withdrawn before its publication can still form part of the prior art base if it is subsequently claimed as a priority document for a later published patent application.
The case also demonstrates the importance of claim construction and expert evidence. Two potentially relevant prior art documents were found not to be relevant based on the construction of the Rib Feature. Expert evidence persuaded the hearing officer to find that the Rib Feature and the Pressure Feature were not routine modifications to the prior art and so the claims were inventive.
Finally, the lack of clarity finding demonstrates that Applicants should be careful in drafting claims so that terms are consistently used to avoid ambiguity.
Authored by Andrew Lowe