A recent opposition decision of the Australian Patent Office¹ focused on the level of disclosure which is required in a patent specification to properly enable and support the claimed invention. This decision illustrates the importance of providing an enabling disclosure across the full width of the claimed invention and, where possible, providing a principle of general application which can lead a skilled addressee to perform the invention and achieve the desired result.
The patent application concerned a single-serve coffee capsule designed to produce coffee without ‘crema’, the coffee-coloured foam which is commonly formed atop an espresso shot. The claims of the application recited a coffee capsule featuring an internal textile fabric having prescribed ranges of weight and air-permeability. Ranges of the coffee mass in the capsule and coffee grind size were also recited.
The specification referred to numerous parameters including coffee grind and roast, brewing temperature, cut-off size, filter density and flow-rate which worked together to determine the formation of crema, or lack thereof. As examples, the specification included twelve test results comparing various combinations of parameters and noting the resulting taste and crema (if any).
The Opponent was unsuccessful on a number of grounds including novelty, inventive step, clarity and utility with the Delegate finding that the specification satisfied each of these requirements.
However, the opposition was ultimately successful on the grounds that the claims lacked support and that the specification lacked a clear enough and complete enough disclosure of the claimed invention.
Clear and complete enough disclosure
Section 40(2)(a) of the Australian Patents Act requires the invention to be disclosed in a manner which is clear enough and complete enough to be performed (without undue burden) by a person skilled in the relevant art.
The Opponent successfully argued that the specification did not provide clear guidance on which combinations of parameters would produce crema-free coffee. The Delegate agreed that the twelve examples (only half of which prevented crema) did not clearly disclose a principle of general application which would allow a skilled addressee to select an effective combination of parameters. It was found that more than routine experimentation would be required and therefore an undue burden would be placed on the skilled addressee.
Section 40(3) of the Australian Patents Act requires that the claims be properly supported by the subject matter disclosed in the specification. This provision prevents a patentee from obtaining broader protection than is justified by their technical contribution to the art.
Given the finding that the specification lacked a principle of general application to obtain crema-free coffee and noting that only six of the twelve examples prevented crema from forming, the Delegate concluded that the Applicant’s contribution to the art was limited to these six examples.
Claim 1 recited a capsule “for producing a crema-free coffee beverage” which was construed as omitting any capsule that would produce crema. However, the claimed parameters included combinations that would not produce crema-free coffee and the scope of the claim was therefore found to extend beyond the contribution to the art.
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