Phosphite ions have been long used to prevent infection of citrus fruits with penicillium mold. The treatment is less than successful for treating fruit that is already infected and typically additional chemicals have been used, but these are carcinogenic and thus it is preferable to phase out. This opposition considers the novelty, efficacy and inventiveness of the treatment, including secondary tests for inventiveness. The awkward terminology of ‘solely comprising’ is also construed.
IL 187923 to Xeda International is a patent that relates to treatment of fruit and vegetables by application of phosphite ions to prevent penicillium.
On allowance, Pimi Aggro Cleantech ltd opposed the application issuing. IL 197923 claims priority from FR 0610688 filed on 7 December 2006 and is a divisional application of Il 191496 which has issued.
The patent application includes three independent claims (1, 14 and 15) which all relate to treating fruit and vegetables to prevent penicillium growth solely by the application of H2PO3 ions at a temperature of between 30ºC and 60ºC.
The independent claims are as follows:
“1. Method for treating fruit or vegetables against penicillium comprising applying solely a treatment composition comprising a compound which allows the release of a phosphite ion H2PO3 at a temperature of between 30° and 60° C”
“14. Kit comprising:
a system comprising:
means for packaging the fruit or vegetables in a retention means,
means for forming a bath containing a treatment composition of a compound which allows the release of a phosphite ion H2PO3 at a temperature of between 30° and 60° according to any one of claims 1 to 7,
means for lowering and raising the retention means, and
a unit for controlling the lowering and raising means adapted, on the one hand for controlling the following steps:
lowering the retention means so the fruit or vegetables contained therein are completely immersed in the bath, and
raising the retention means so the fruit or vegetables are completely removed from the bath, and, on the other hand, for controlling, between these two steps, the following intermediate steps:
raising the retention means of the fruit or vegetables contained therein emerge at least in part from the bath, and
lowering the retention means so the fruit or vegetables contained therein are once again completely immersed on [sic] the bath;”
“15. Kit comprising:
A system comprising:
a chamber comprising a band of lateral walls extending in a longitudinal direction, the band delimiting inside the chamber, a housing for receiving the fruit and vegetables to be treated, at least one of the lateral walls being deformable between a configuration for engagement and a configuration for release of a load arranged inside the housing,
a device for feeding treatment composition into the chamber and for removing treatment composition from the chamber,
means for heating the treatment composition, and
a system for deforming the deformable walls
- A treatment composition comprising a compound which allows the release of a phosphite ion H2PO3, said treatment composition having a temperature of between 30° and 60° according to any one of claims 1 to 7.”
The Evidence of the Parties
Pimi Aggro Cleantech ltd submitted affidavits from their CEO Mr. Nimrod Ben Yehuda, Mr. Amnon Sivan and Dr. Yuval Binyamini, and an expert opinion from Dr. Nizan Nadav. The Applicant provided an expert opinion of Professor Ruth Ben Aryeh.
The grounds for the Opposition were lack of clarity of claim 1 and lack of novelty.
Lack of Clarity in Claim 1
The parties disagree regarding the interpretation of claim 1. The Applicant considers that the claim should be understood as relating to a method for treating fruit and vegetables against penicillin infestation with a treatment that only includes a formulation that releases phosphate ions in the specified range of temperatures.
In contradistinction, the Opposer considers that claim 1 should be understood as further comprising other active ingredients. However, the Opposer considers that even if one were to interpret the claim as the Applicant wishes, it is still lacking in novelty
The basis of the disagreement is the combination of the term ‘comprising’ together with ‘applied solely’. The term comprising is generally understood as broader than consisting and implies ‘consisting but not necessary limited to ingredients mentioned in the claim’. This was clarified by the former Commissioner in IL 194774 LANTMANNEN AS-FAKTOR AB
The term comprising is wider than consisting.
“A requirement that a claim “comprises” certain elements does not mean that other elements may not be present: “comprising” does not mean “only consisting of”.“ (Terrel on the Law of Patents, 17thed., pp. 288)”
In light of the above, the Opposer considers that claim 1 should be construed such that the word ‘comprising solely’ indicates that only the treatment composition is used, whereas the second comprising implies that the composition is not limited to a compound which allows the release of a phosphite ion H2PO3 but can include one or more additional ingredients that perform other functions in the stated temperature range.
The Opposer finds support for this construction in the specification, and refers to page 13 which combines calcium phosphite with imazalil which acts against penicillium in a different manner, and applies the two ingredients at 52ºC, and it appears from the table on that page, that the combination is rather better than calcium phosphite alone.
It is noted that the current phrasing of claim 1 was finalized after the opposition was submitted. The amendments accord with Sections 29, 65 and 66 of the Patent Law, 1967. Prior to the amendment, claim 1 included claims directed to combinations of the phosphite ion releasing agent with other fungicides (see claims 2-4, 14-16). The Deputy Commissioner Ms Jacqueline Bracha notes that while the specification does support combining the calcium phosphite ion releasing agent with other materials, it appears that the intention of the amendment was to limit the claim to the phosphite ion releasing agent. This was also how the Patent Office understood the amendment in their Office Action of 8 September 2013.
The Applicant notes that the Opposer did not claim anything regarding the clarity of claim 1 when the Application was amended, and argues that this estoppels the Opposer from raising the issue in Opposition proceeding.
Even if the Opposer did not raise the issue when the amendment was made, this does not prevent him from challenging the meaning of the claims or arguing that they are unclear. This claim was in the corrected Statement of Case whose purpose is to clarify the points of contention between the parties after the amendment and it is reasonable for the Opposer to raise issues after the amendment, caused by the amendment, that were not issues earlier.
It is noted that Regulation 102(vi) of the Patent Regulations (Patent Office Procedures, Procedures before the Court of the Patent Office, Submissions and Fees 1968 allows a hearing to be postponed by amending the specification and then continuing the hearing, assuming that the amendment is compatible with the Law. It is obvious that this state of affairs allows the Opposer or the Commissioner to consider the amendment within the main proceeding.
Additionally, there is no doubt that the Commissioner who is sitting in judgment on an Opposition has to ensure that an allowed patent will be as clear as possible, to avoid the relevant community being confused as to its scope and regarding the amount of protection it gives.
Currently the claim is self-contradictory in that it requires treatment solely by phosphate ion releasing agent but allows addition of other materials that are not detailed. To the extent that the applicant submits that the correct interpretation is treatment solely by phosphate ion releasing agent without additional agents, the Deputy Commissioner is willing to go with that interpretation, but should the Applicant prevail in the Opposition proceeding, the claim should be amended to remove the ambiguity and to clarity this point.
The discussion focuses on claim 1. However, claims 14 and 15 include the term ‘comprising’ but don’t include the term ‘solely’, and thus appear to allow the phosphite ion releasing agent to be combined with other ingredients. In light of this, the discussion will assume that claim 1 is limited to a formulation including the phosphite ion releasing agent only, whereas claims 14 and 15 relate to kits that include other active ingredients.
Lack of Novelty
Section 4 of the Law states that:
An invention is considered novel if it has not been made available to the public in Israel or abroad, prior to the Application date –
- by a description in writing or by exhibition, or by an oral presentation or by another way, such that persons of the art can implement it based on the description.
- By being applied or demonstrated such that persons of the art can implement based on this disclosure.
There is a general rule that a claim will be considered as lacking novelty if there is a single publication that reveals all its elements in a way that is enabling to a person of the art (see 345/87 Hughes Aircraft vs. State of Israel, 105 (2 July 1990). In this regard, it should be noted that a publication is not considered as novelty destroying unless each and every aspect of the invention is taught by the one publication:
The first general rule is that to prove a prior publication that is sufficient to be novelty destroying, one has to be able to point to a document that includes the entire invention and not create a mosaic of teachings taken from different publications to fabricate a collage that teaches the invention.
Also taught in Hughes:
It is not enough for there to be a general description that does not teach how to do the invention, and one cannot rely on signposts that lead towards the invention described in the patent.
The Opposer claims that claim 1 of the Application lacks novelty, whether understood broadly or narrowly. He claims that the lack of novelty is a result of publication of the invention in a number of ways, and each of the publications, when taken alone, are novelty cancelling:
- The label on the PH nidation equipment
- Publication by way of demonstration of the PH nidation equipment
- A publication in writing Y. Gutter, Supplementary Antimold Activity of Phosethyl AL, A New Brown Rot Fungicide for Citrus Fruits, Phytopath. Z., 107 301-308 (1982)
- Publication of the invention in the PHG and Gutter publications.
The elements of Claim 1
Claim 1 includes the following elements:
- Treatment of citrus fruits or vegetables
- Against penicillium
- Solely by a formulation that allows release of phosphite ions
- In the temperature range of 30º to 60º.
The Statements of Case and the summations show that the parties concur that these are the elements, apart from the disagreement concerning the scope of (c), related to above.
Lack of Novelty Due to Use of the PH Nidation Equipment
The PH Canon is a machine that is intended to treat the fungus that causes heat rotting of citrus fruits. There is no disagreement that this machine was known before the filing date of the patent application; that the formulation releases phosphite, and that it is used in a hot water bath. The Opposer alleges that this alone negates the novelty of claim 1 under Section 4(2) of the Law.
Under cross-examination, Professor Ben-Aryeh agreed with the Opposer that even prior to the patent application being filed, persons of the art were using the machine. Professor Ben-Aryeh agrees that this usage includes all the elements of claim 1, however notes the caveat that the usage was against heat rot and not against penicillium. (protocol 3.8 page 8 lines 36-39).
Since one of the elements of claim 1 is that the treatment is against penicillium, and the previous usage was against another problem, this publication is not enough to anticipate the invention.
Cancelling novelty due to the label on the PH Nidation Equipment.
The packaging of the PH nidation equipment includes a label which provides instructions and a description of the purpose. Examination of the label from 2006, which is relevant to the priority date (see the appendix to Nimrod Ben Yehuda’s statement), shows that this includes an instruction that the equipment is intended for use against heat rot, and that it should be used in a hot water bath. It describes combining the phosphite with imazalil. Furthermore, this label notes that ‘the formulation does not prevent infection by rotting fungus and so should be combined with an appropriate formulation” and later on relates to combination with imazalil.
In light of the warning regarding heat rot and that for treatment of fungal rot it should be combined with some other ingredient, it cannot be considered as anticipating treatment of penicillium as claimed in claim 1.
The Report of the Committee for Marketing Citrus Fruits
In the Committee Report which is Appendix 31 of Ben Yehuda’s affidavit, experiments using the PH nidation equipment together with other materials for preventing post-harvest rotting of citrus fruit are described. The researchers conclude that the PH Nidation equipment acts in synergy with an aqueous imazalil solution to reduce penicillium. Thus there is nothing in this document that anticipates treatment by the phosphite ion releasing agents alone.
The Gutter Publication
The Gutter publication deals with treatment of citrus fruits against heat rot by use of Phosethyl Al which is known to release phosphite ions at 36ºC. In the conclusion section of this paper, Gutter notes that use of Phosethyl Al can hinder the development of penicillium (green rot). However, the same paragraph later states that this material can be used against heat rot without causing an increase in penicillium.
The Applicant argues that this publication does not anticipate the invention. The Applicant argues that the publication deals with use of Phosethyl Al only as a pesticide against heat rot, whereas its effect against penicillium is only to prevent its spreading, rather than to remove it. The Applicant does not deny that the publication includes all the elements of the invention, only that the purpose of the formulation and treatment is different than that claimed, and it is thus not novelty destroying.
In the abstract at the beginning of Gutter’s paper the following is stated:
“…In vitro and in vivo experiments have shown that phosethyl Al is capable – although to lesser extent than SOPP and TBZ – of inhibiting growth of P. digitatum and reducing the incidence of decay of citrus fruits, caused by a wild-type, and apparently also by a benzimidazole-resistant strain of this fungus.”
The parties concur that Phosethyl Al allows release of the phosphite ions. So it is clear that the paper teaches (a) treatment of citrus fruit (b) against penicillium (Penicillium digitatum) and (c) that the formulation releases phosphite ions.
In some of the experiments conducted by Gutter and described in his paper, (tests IV and V) the fruit is dipped at 36ºC, which is in the range claimed in claim 1. So this element is also found in the paper.
It is also clear that Gutter examined the efficacy of Phosethyl Al against other formulations such as SOPP and TBZ as restricting the development of penicillium in oranges. The researcher concludes that Phosethyl Al without additional ingredients has an efficacy for preventing penicillium development in oranges. So it appears that all the elements of claim 1 are described in Gutter’s publication.
Professor Ben-Aryeh acknowledged that the Gutter publication teaches the claimed invention to persons of the art. However, he considers that since Gutter does not come to the clear understanding that the formulation can treat penicillium, it is not novelty destroying.
- Amended Claim 1 of the Application is before me, and assuming that it does relate to the formulation without additional active ingredients, can you point out what is claimed that is NOT taught by Gutter?
- Gutter does what is written here.
- But he does not unambiguously conclude that this treatment may adequately prevent penicillium infection.
- Agree with me that the wording of claim 1 is what he does, and he does that which is written in the Application in claim 1 thereof.
- He does.
- Thanks, and he published?
- He published.
Protocol 3.8 pages 45-26 lines 8-35.
The Patent Application describes experiments that the Applicant conducted to show efficacy of the treatment of penicillium in oranges that were not affected, in oranges that were affected. The Applicant’s expert witness argues that Gutter did not show sufficient efficacy of Phosethyl Al in infected oranges. This argument makes it worth looking at the results obtained by the Applicant himself and reported in the Application. In the table on page 13, it is stated that using phosphoric acid alone on infected fruit at 52ºC gave a yield of 42.5% of rotten fruit. The Applicant further claims that the combination of imazalil and phosphoric acid has a symbiotic affect:
“As is evident from the table above, the rate of decay was halved when each product was applied individually (42.5% in contrast to 85%), whereas the rate of decay was 8.5 times lower with a combination of the two products.
These results clearly show the synergistic effect of the combinations according to the invention.”
When Mr. Ben Yehuda was asked what the infection rate should be for a person of the art to consider a treatment successful, he responded:
Deputy Commissioner: What bothers me, and the previous expert asked a similar question, I understand that if one applied phosphite ions at 52ºC then 42.5% which is currently infected will rot, correct? This is a high percentage?
Witness Mr. Ben-Yehuda: It is insane.
Deputy Commissioner: What is the percentage that I should strive for with a treatment that is considered effective? What is the approach of the market, it is clear to me from the previous witness that to dream of 100% remaining fit for sale is an unreasonable expectation, so what should be striven for? 90%?
Witness Mr. Ben-Yehuda: 10% rotten, how was it achieved? phosphite ions and imazalil.
Deputy Commissioner: I understand how that was attained, but you state that 42.5% is not something to be aspired to, and is not a good result.
Witness Mr. Ben-Yehuda: No industry can absorb losses of that magnitude.
From this one can understand that an effective treatment is one that significantly reduces the percentage of fruit that is infected.
One cannot accept the Applicant’s claim that Gutter does not show certainty of the treatment when the Application itself only demonstrates very partial success. Furthermore, the success of penicillium treatment is not actually part of claim 1 as Deputy Commissioner clarifies below:
A further claim that the Applicant raised in the summation, is that while the invention deals with a treatment against penicillium, the Gutter publication deals with a “material that does not accelerate penicillium development”. This claim is only raised in the summation and does not find any support in the Applicant’s evidence. As is clear from Professor Ben-Aryeh’s cross-examination, it does not distinguish between materials that do not accelerate development, and those that actively combat the fungus.
Beyond that which is necessary, the Deputy Commissioner notes that we appear to be talking about synonyms, since fungicides both prevent infection and treat existing infection. To the extent that the Applicant’s claims are that Gutter’s publication does not detail the success of removing penicillium but merely of preventing its spreading, and so one cannot rely on this publication as anticipating the application, one has to reject the argument. The Application describes experiments where 42.5% of the oranges rotted, so it is clear that the Application is only partially effective at treating penicillium with phosphoric acid.
Furthermore, the Deputy Commissioner notes that Claim 1 does not use the term fungicide or preventing the spread, but simply refers to treating, which does not imply a 100% success in killing off the penicillium. In this context she notes that to consider novelty, one can use the ‘infringement test’ wherein one considers whether the publication would be considered as infringing the patent if it were to issue. The answer to this question is positive, and this implies that the claimed invention is not novel. This test does not require usage of the same terminology in the publication and the patent application. It is sufficient that doing that stated in the publication would necessarily infringe the patent to render the patent lacking novelty:
“When the prior inventor’s publication and the patentee’s claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of the words and expressions used in the art and so forth, the question whether the patentee’s claim is new for the purpose of section 32(1)(e) falls to be decided as a question of fact. 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 patent, the patentee’s claim will have been shown lack of novelty, that is to say, it will have been anticipated.” (Terrel p. 118)
See also that stated in the Opposition to IL 179995 Camtek vs. Orbotech ltd, paragraph 56, 20 July 2014.
I accept the Opposer’s claim that the semantic differences between the patent and the invention are not differences relevant to Novelty and Inventive Step. In other words, if the same inventive concept is described in different words in a prior publication, the difference in wording is not sufficient…
Applying this test in the current case by following word for word what Gutter describes in his publication necessarily infringes claim 1 of the patent application, which supports the finding that the claimed invention is not novel.
Finally, the Deputy Commissioner relates to the Applicant’s claims that since prior to filing the Application, penicillium infection was not treated solely by phosphoric acid and heat, the prior art publications cannot anticipate claim 1. She disagrees with the client’s claim. The novelty requirement in claim 4 of the Law does include a requirement to use the prior art for anticipation purposes. It is enough for them to be publically available. In this regard, that which Terrel states is very relevant:
“It has sometimes been said that if prior disclosure is contained only in a document and there is no evidence that such disclosure has given rise to any practical result, this is “mere paper anticipation” and must be appraised in some specially strict manner. It is difficult to understand the relevance of this observation. If the document in fact discloses the invention and is to be found in a place (e.g. a public library) to which the public have access, it is wholly immaterial that in fact no one had ever read it.” (TERREL, ON THE LAW OF PATENTS, 123-124 (1994))
As stated above, independent claims 14 and 15 deal with kits that include formulations that I addition to phosphite ion releasing ingredients, further comprise additional ingredients. So, since claim 1 lacks novelty, claims 14 and 15 clearly do as well. To remove any doubt, all the references brought by the Opposer, individually anticipate claims 14 and 15.
Having found the claims lacking novelty, it is superfluous to consider whether they are inventive. Nevertheless, the Deputy Commissioner notes that she considers the claims as lacking inventive step.
Unlike Novelty, which was discussed above, in re Hughes it was stated that inventive step is considered in light of different prior art publications that can fairly be cobbled together to obtain a general picture of that known in the relevant field.
A basic general rule concerning obviousness is that the complete professional knowledge in the field is considered, and that it is acceptable to discount inventiveness on the basis of several prior art publications taken together to give a general picture. (See 314/77  above, on page 209. However, one must always consider that the combining has to be obvious to persons of the art at the relevant time and if the combination is inventive; if an inventive step is required to couple the teachings together; particularly in cases where crumbs of knowledge are gathered from different places – the general picture is not self-evident and one cannot say that the patented evidence is lacking in inventive step.
Thus for an invention to be considered inventive, one has to consider the prior art taken together and whether the combination of the prior art is inventive or self-evident to persons of the art. (See Appeal 47/87 Hasam Defence and Reliability Systems ltd. vs. Abraham Bahri, p.d. 45(5) 194, and whether a person of the art would be motivated to combine the different teachings – See Opposition to IL 138347 Sarin Technologies led. Vs. Ugi Technologies ltd, 14 January 2008.
In this instance, the parties agree that at the relevant time, persons of the art used phosphoric acid and heat to treat against head rot. Nevertheless, Applicant contends that those same persons of the art would NOT have considered it obvious to try this treatment against penicillium due the significant differences.
However, as is apparent from the citations, the difference in organisms would not have prevented persons of the art from trying the heat rot treatment against penicillium. The parties disagree regarding the conclusions that can be drawn from the experiments, but the fact that the parties attempted the treatment against penicillium indicates that it was a fitting research possibility to explore.
Knowledge in the Field
Once can summarize the evidence of the parties as showing that at the relevant date it was known that putting the active ingredients in a warm water bath increased their efficacy. (see Professor Ben-Arieh’s statement on page 33 lines 4-8 of the protocol). The regular fungicides had caused a resistance to such materials, and imazalil, which was the most effective agent, was considered as carcinogenic and so alternative agents were sought; phosphoric acid was considered as having some efficacy against penicillium. The Deputy Commissioner considers that the combination of these facts would lead persons of the art to attempt the claimed invention, and, as shown in Gutter, this in fact happened.
Publications that Teach Away
The Applicant also argued that at the relevant date, there were a number of publications that taught away from the invention.
For example, G. Eldon Brown, Evaluation of Iprodion and Fosethyl-Al and Other Fungicides for Postharvest Citrus Decay Control, 1992 describes a number of experiments that were made to compare different fungicides. The results in tables 2 and 5 show that imazalil is the most effective treatment against penicillium. The author concludes that “green mold in degreened (Table 2) and non-degreened (Table 5) Valencia oranges was not controlled by Phosethyl -Al “
The main tables that summarize Brown’s experimental results show the following:
Imazalil leaves 3.8% of the fruit rotten. A 4000 concentration of Phosephyl–A1 was shown to leave 8.3% of rotten fruit. At an 8000 concentration, 15.2% of the fruit was rotten, whereas a control group had 14.3% rotten fruit.
The Deputy Commissioner is doubtful whether these results would cause persons of the art to stop researching Phosephyl–A1. Although imazalil is more effective, Phosephyl–A1 does seem to have an effect compared to the results of the control group. The Deputy Commissioner notes that Mr. Nimrod Ben Yehuda considered that Brown’s research did NOT show a clear preference for imazalil, but Brown himself considered that imazalil was preferable. That as may be, Mr. Ben-Yehuda is not an expert in this field, and his testimony can only be considered as interpretation.
Brown’s results are actually better than Applicant’s since the Applicant obtained better results with a combination of imazalil and Phosephyl–A1 than with the phosphite releasing agent alone. One could argue that persons of the art reading the application would conclude that it does not support using a phosphite releasing agent alone for treating penicillium. This conclusion is not surprising, since the original claims related to a combination of the phosphite releasing agent together with imazalil. Consequently, one cannot accept the claim that Brown’s research teaches away from the invention, since the Applicant himself did not show better results.
A further publication considered as teaching away is US 6,797,301 from 2004. The Applicant considers that this publication teaches away from the invention since it teaches that Phosephyl–A1 is not effective against penicillium at room temperature, even if imazalil is added.
As Professor Ben-Yehuda noted in his opinion, this paper related to various fungicides and to treatment of fungi based on an understanding that each operated in a different manner, and with an attempt to widen their efficacy range. In his counter-statement in response, Mr. Ben-Yehuda claimed that the experimental results show that the addition of the Phosephyl–A1 made the difference. It is thus difficult to accept that this publication would distance persons of the art from the invention. Reviewing the results shows that most of the experimentation took place at room temperature and not at elevated temperatures which is generally accepted as improving the efficacy of the treatment. The efficacy of Phosephyl–A1 alone was not tested. The results for Phosephyl–A1 together with fenamidone at room temperature are not far from the Applicant’s results using the PK nidation equipment at elevated temperatures. From here it is not reasonable to conclude that persons of the art would conclude that using a phosphite ion releasing agent alone would not be effective against penicillium.
A further publication that the Applicant refers to is US 5,998,910 from 1999 (Appendix 3 of Ben-Yehuda’s Affidavit). which the Opposer also cited. In this publication it is stated that using phosphite ions creates more pathogens than the fungus. As the Opposer notes, this publication deals with treating the fruit prior to harvesting and so will not be done in an elevated temperature surroundings. Furthermore, of five samples brought in the publication, only one relates to penicillium treatment. For these reasons, this publication cannot be considered as teaching away.
Applicant also relates to J.M. Gaulliard et R. Pelossier “Efficacite de Phosethyl Al en trempage des agrumes (fruits) contre Phytophora parasitica agent de la pourriture brune et contre Penicilium digitatum.” Fruits, 1983, vol. 38, No 10, p. 693-697(Appendix 42 of Ben-Yehuda’s affidavit which claims that use of Phosethyl –Al against penicillium is secondary. The publication shows that the researchers tested Phosethyl –Al against both heat rot and penicillium. The main use was indeed against heat rot, but it was also tested against penicillium and the researchers concluded that it had a prophylactic effect against penicillium rather than an effectiveness against an established infestation. The Deputy Commissioner does not find this publication teaches against use of the material since the results are similar to those obtained by Gutter with the PH nidation equipment.
In this context it is difficult to accept the Applicant’s allegation that these teach away since they were published over a 20 year period, in 1983, 1992, 1999 and 2004, and this shows that despite the ‘adverse publications’, persons of the art continued to consider this research path. After the Opposer has shown that this material has been considered for 30 years and the Applicant has not shown a different trend, one cannot accept that the publications teach away from the invention.
Supplementary Tests for Inventiveness
Although unnecessary, the Deputy Commissioner has considered Applicant’s claims that the invention is inventive due to the ‘long-felt need’ secondary consideration. The Applicant is correct that there is a long-felt need to find non-carcinogenic fungicides, and the prior art supports this, and they date back to the 1980s and on to the 21st century. All the publications describe researchers’ attempts to treat penicillium solely by phosphite releasing agents, but only with partial success.
The “solution” that the Applicant suggests is to use the PH nidation equipment against penicillium, and the label on the equipment advises using it together with imazalil, which was the recommended treatment up until the relevant date. In these circumstances, the Deputy Commissioner cannot accept that their invention was the response to a long-felt need.
In their summary, the Applicants claimed that they had submitted evidence that showed that their solution was commercially successful, and supported this was an Affidavit of their CEO that was submitted during the Examination of the corresponding application in the US and appended to the current proceedings at the request of the Opposer. Since this was not submitted in the evidence stage and the CEO was not cross-examined on the Affidavit, it has little evidentiary weight. That as may be, Mr. Ben-Yehuda testified before the Deputy Commissioner that rotting to the extent described in the Application is not commercially acceptable, and the Deputy Commissioner finds this convincing.
A final attempt to show inventiveness is that the persons of the art responded favorably to the invention. No evidence of this was submitted beyond a statement of Professor Ben Aryeh to the effect that he was not thinking of the invention itself. See cancellation proceedings against IL 155671 to Rontal Engineering Applications 2001 ltd vs. Dr. Elad Barkan, paragraph 122, 23 August 2017. This statement is insufficient to conclude that persons of the art considered the invention revolutionary.
In light of the above, the Opposition is accepted and XEDA International will cover Pimi Aggro Cleantech’s costs of 15000 Shekels and legal fees of 150,000 Shekels + VAT. These costs are based on the complexity, amount of evidence and arguments, number of days of hearing and the complexity of the summations. Payment is due within 30 days.
Ruling by Deputy Commissioner Ms Jacqueline Bracha re Opposition to IL 187923 to XEDA International, 26 June 2018
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