Inventive step
64 The respondents also allege that each of claims 1, 2, 9, 16 and 17 of the 627 patent is invalid for lack of inventive step.
65 Section 18(1)(b)(ii) of the Patents Act 1990 (Cth) ("the Act") provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, involves an inventive step when compared with the prior art base as it existed before the priority date of that claim. At the relevant times subs 7(2) and (3) of the Act provided:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
66 As to the operation of subs 7(3) of the Act, see AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356 ("AstraZeneca") at [18]-[19] per French CJ, at [68] per Kiefel J (as her Honour then was), at [111] and [115] per Gageler and Keane JJ.
67 The expression "patent area" is relevantly defined in Sch 1 to mean Australia. The expression "prior art information" is relevantly defined to mean information that is part of the prior art base for the purposes of subs 7(3) in relation to deciding whether an invention does or does not involve an inventive step. At the relevant times the expression "prior art base" was defined in para (a) of the definition as:
in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
68 There is no dispute that the priority date of the relevant claims is 14 March 2002. Nor is there any dispute that the person skilled in the relevant art is an engineer working in the field of developing coffee machines and capsules as at the priority date or a team comprising an engineer with more general product development experience working with another person with knowledge in relation to coffee, coffee machines and capsules (such as a food technologist and/or a barista).
69 The respondents' inventive step case was put on the basis of first, the common general knowledge as it existed in Australia at the priority date, and secondly, the common general knowledge together with the information disclosed in the 712 patent which was said to satisfy the requirements of s 7(3) of the Act.
70 Neither party made any detailed submissions in relation to the content of the common general knowledge. The focus of the respondents' attention was on a hypothetical design task undertaken by Mr Winkler for the purposes of this proceeding that was said by the respondents to provide evidence that the claimed invention was obvious. The applicant also focused its attention on Mr Winkler's hypothetical design task and the reasons why, according to the applicant, it did not provide any reliable evidence from which to conclude that the claimed invention did not involve an inventive step.
71 Each of the claims that is alleged to be invalid for lack of inventive step is to a combination. In Garford Pty Ltd v Dywidag Systems International Pty Ltd (2015) 110 IPR 30 ("Garford") the Full Court said at 43 [54]-[55]:
[54] … the question to be addressed in relation to inventive step is directed to the combination. The combination will be taken to involve an inventive step unless it is established that it would be obvious to the notional person skilled in the art in light of the common general knowledge considered separately from, or together with, any available s 7(3) information. As Aickin J observed in 3M at CLR 293:
In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers… It is the selection of the integers out, of perhaps many possibilities, which must be shown to be obvious.
[55] In Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173 (Elconnex FC) Lockhart J (with whom Sheppard and Wilcox JJ agreed) referred to this observation of Aickin J and added (at 184) that in the case of a combination "it is impermissible to determine inventiveness by a piecemeal examination integer by integer".
72 As to whether a combination is obvious, it will often be appropriate to adopt a problem and solution analysis which involves asking whether the hypothetical person skilled in the relevant art, if faced with the same problem to which the invention is directed, 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, if the person skilled in the art would be directly led as a matter of course to take such steps in the expectation that doing so might well produce a useful or better alternative to the prior art: Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aktiebolaget Hässle v Alphapharm Pty Limited (2002) 212 CLR 411 ("Alphapharm") at [50]-[53], Garford at 39-40 [41]-[43], Becton Dickinson Pty Ltd v B. Braun Melsungen AG [2018] FCA 1692 at [303]. Of course, in this context, prior art refers to information that formed part of the common general knowledge at the relevant priority date together with any other information to which regard may be had in accordance with s 7(3) of the Act.
73 The hypothetical person skilled in the art is assumed to possess the common general knowledge in the relevant field in so far as it is relevant to the subject matter of the patent in suit. This will include the background knowledge and experience available to all persons engaged in the relevant field within the patent area and includes publications to which they would refer as a matter of course: Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 ("3M") at 292 per Aickin J, ICI Chemicals & Polymers Ltd v Lubrizole Corporation Inc (1999) 45 IPR 577 at 599 [11] per Emmett J.
74 Although it is correct to say that the hypothetical person skilled in the art is assumed to lack any capacity for invention, it does not follow that this person is taken to be incapable of finding a solution to a known problem that does not require inventive ingenuity. As the Full Court in Garford observed at [44], "[t]he inventiveness required to sustain a patent for a claimed invention is quite small. A "scintilla" of inventiveness is all that is required …". But there must still be "some difficulty overcome, some barrier crossed" per Lockhart J, RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 at 689, or some contribution to the art "beyond the skill of the calling" per Bowen CJ, Beaumont and Burchett JJ, Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 701. Both of these formulations were referred to with apparent approval by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 at 195-196 [52] per Gummow, Hayne, Callinan, Heydon and Crennan JJ.
75 Also relevant is the use that may be made of hindsight or ex post facto analysis in deciding whether an invention lacks an inventive step. Many inventions may seem obvious with the benefit of hindsight. An ex post facto analysis of an invention can be particularly unfair to the inventor of a new combination which involves selecting a number of known integers from a large range of possible alternatives: see the observations of Aickin J in 3M at 293-294.
76 It is necessary to make findings in relation to the common general knowledge as at the priority date. Mr Winkler gave evidence that the field of consumer and commercial product development engineering, including in respect of single serve coffee machines and capsules, was an international field as at the priority date. Mr Winkler also gave evidence as to the different type of machines that were well-known as at the priority date which was unchallenged and which I accept.
77 The following description of single serve coffee machines, traditional espresso machines, and drip coffee machines is based on Mr Winkler's evidence and is consistent with statements appearing in the body of the specification which describe single serve coffee cartridges for preparing espresso coffee in a coffee machine as well-known and in widespread use.
78 A single serve coffee machine is a machine that utilises a capsule containing a predetermined amount of coffee grounds to make a standardised cup of coffee. The single serve coffee machine delivers an amount of water heated to a particular temperature under pressure into the capsule to extract certain flavours from the coffee grounds. The coffee beverage then passes through a filter and exits the machine into a receptacle for drinking.
79 In traditional espresso machines, a portafilter is utilised rather than a capsule. A portafilter has a handle and a filter basket for holding the coffee grounds. Coffee grounds are manually placed into the filter basket by the operator. The operator then uses a tamp to manually compact the coffee grounds in the filter basket. The portafilter is then attached to the espresso machine. The espresso machine then delivers heated water under pressure through the coffee grounds through a shower head mechanism. The shower head provides an even coverage of water over the coffee grounds to ensure that the coffee grounds are fully extracted. The coffee beverage then passes through the filter in the bottom of the filter basket and exits the machine into a receptacle for drinking. The operator then removes the portafilter from the espresso machine and removes the used coffee grounds. Espresso machines are generally considered to produce good quality espresso coffee. However, the manual handling of the coffee grounds can be messy and the process of preparing the coffee beverage can be time consuming.
80 Dr Davis agreed in his oral evidence with Mr Winkler's explanation of the portafilter system. Dr Davis was shown a photograph of a traditional espresso machine portafilter which was admitted into evidence. He agreed that it showed three components of a portafilter. The three components are the exterior part of the portafilter with the handle and two cups (or baskets). He agreed that in use, either one of the two cups (one is larger than the other) is filled with compacted coffee and is then placed inside the main part of the portafilter with the handle.
81 In drip coffee machines, the coffee grounds are held in a large conical paper filter in a brewing basket. Heated water is then fed onto the coffee grounds through a shower head mechanism and the flavours of the coffee are extracted from the grounds. However, unlike in an espresso machine, the extraction does not occur under pressure. Drip coffee machines usually create between 8 to 12 cups of coffee at a time and, therefore, are not suitable for making a single serving of coffee.
82 Drip coffee is made by pouring hot water over the top of coffee grounds, which are held in a filter, and letting the water slowly pass through the coffee grounds and the filter by the force of gravity. In contrast, an espresso coffee is made by pressing hot water at a high pressure through compacted coffee grounds. Drip coffee has a different flavour profile to espresso coffee. Espresso coffee is generally made using darker roast coffee beans which give it a stronger flavour. Drip coffee is made with a lighter roast and has a lighter, more nuanced flavour. The grind profile of an espresso coffee is generally finer than for drip coffee. The finer particles allow for a more compacted coffee bed which increases the resistance of water passing through the coffee bed. This extracts soluble compounds from the coffee grinds, which have a different flavour profile from the coffee grinds used in drip coffee which are generally considered to be sharper and have a different mouth feel. In drip coffee, the heavier grind and larger particles facilitate the passage of the water through the coffee bed under the force of gravity alone.
83 Mr Winkler was asked by the solicitors for the respondents to describe the features that he would have adopted if he was developing a single serve espresso coffee capsule as at the priority date in light of information that he knew and regarded as well-known and generally accepted by engineers working in the field of developing single serve coffee machines and capsules as at that date. He said that he would have included a number of standard features in his design.
84 According to Mr Winkler's evidence, as at the priority date, it was well-known and generally accepted by engineers working in the field of developing single serve coffee machines and capsules that single serve coffee capsules had at least the following features ("the standard features"):
(a) an enclosure for storing the coffee grounds;
(b) an entrance means for the water to enter the enclosure;
(c) an exit means for the water to exit the enclosure;
(d) at least one filter inside the enclosure between the coffee grounds and the exit means to prevent the coffee grounds from exiting the capsule with an open area beneath the filter for the water to flow and exit the enclosure; and
(e) a hermetical seal.
85 Dr Davis accepted that he had no experience in the design of coffee capsules as at 2002. With reference to the paragraph in Mr Winkler's affidavit in which he identifies the standard features, Dr Davis was asked:
May we take it that if you had been asked to develop a coffee machine for use with … single serve coffee capsules at that time you would have familiarised yourself with the products on the market and become aware that these were the standard sorts of features of those capsules at that time.
Dr Davis' response to this question was:
Yes. I agree I would have.
86 Although I can accept that (a), (b), (c) and (e) were standard features as at the priority date, I am not persuaded that there was any coffee capsule shown to be common general knowledge as at the priority date which included feature (d). The Keurig K-Cup included an open area below the filter but it was not shown to have been common general knowledge as at the priority date. Although I accept that the Nespresso capsule was likely to have been well-known as at the priority date, it did not include any open area below the filter.
87 Mr Winkler said that a cup shape is particularly relevant for an espresso coffee capsule because cup-shaped capsules replicate the shape of the portafilter of traditional espresso machines. He said that he would have made a capsule from materials which were able to withstand the pressures required to make an espresso coffee, were impermeable to oxygen, and would be capable of being hermetically sealed. He said that he would have also included an optional second filter between the coffee grounds and the entrance means to act like a shower head to evenly disperse the water across the coffee grounds. This second filter would replicate the shower head of a standard espresso machine.
88 In response to a request from the solicitors for the respondents, Mr Winkler produced three designs using those features on a design software program that he used as at the priority date. He said that the impetus for these designs was to, as much as possible, replicate the features of a portafilter from a traditional espresso machine in the coffee capsule.
89 The first design (Fig 1) was a one piece pod housing design as follows:
Figure 1
90 Both images are cross-sections of the cup-shaped coffee pod design by Mr Winkler. The exploded image shows an upper cover member (1), an upper filter (2), a main body (3) in which coffee is stored and a lower filter (4) which is welded to a lip at the bottom of the main body. The upper filter is described as a "possible entrance filter" which is not essential. The lower filter is essential. It is designed to prevent particulate exiting the main housing into the coffee cup.
91 Mr Winkler also produced what he referred to as a two piece pod housing design as follows:
Figure 2
92 In his second design (Fig 2) Mr Winkler used a two piece housing pod. The two pieces could be either welded or "snap fit" together with a filter made of woven polymer, an injection moulded filter or a plastic sheet material with filter holes punched or sliced into it. The two piece pod design also included provisions for the inclusion of an optional upper filter.
93 In his third design (Fig 3) Mr Winkler incorporated upper and lower exit filters as shown below:
Figure 3
94 There are a couple of points to note about the entrance and exit filter designs. The entrance filter resembles an inverted shower head with cylindrical bosses facing upwards. The exit filter is facing in the opposite direction so that the cylindrical bosses face downwards. The bosses on the exit filter create a space between the base of the filter and the exit lid. According to Mr Winkler's description of his design, this allows the filter to stand off the bottom of the cartridge, allowing coffee to collect and pass to the exit.
95 Both filters were designed by Mr Winkler to be made of injection moulded material. But he said that a simple punched filter made of mylar, polyethylene or other food safe flexible plastic could also be used.
96 None of the asserted claims require that the cartridge include more than one filter. For present purposes, I think the presence of the upper filter in Mr Winkler's design can be disregarded. It is apparent that Mr Winkler's design has all of the features of the cartridges described in claims 1 and 2 subject to the requirement that the fluid director member (ie. the exit filter in his design) have "… a plurality of openings and plurality of embossings, each of said embossings have a raised portion, whereby a plurality of communicating fluid channels is created between said raised portions of said embossings".
97 In his evidence Mr Winkler explained that the main difference between the three designs is the method by which the exit filter is attached. In the first design, the filter is welded to a preformed inner ring inside the capsule. Mr Winkler said that welding a filter in this manner was well-known prior to March 2002. However, he did not point to any specific examples where the filter was welded to a preformed inner ring inside the capsule (as opposed to the base of the capsule) in the prior art capsules described in the evidence.
98 In his second design, the filter is locked into place between the two housings. The filter is made of woven polymer, injection moulded material or plastic sheet material with a filter hole punched or sliced into it.
99 In the third design, the filter is press fit into the capsule and is spaced away from the bottom of the capsule by what he referred to as "stand offs" which form part of the filter. He said that this feature was known more broadly in product development engineering. According to Mr Winkler:
I considered that the third design (the Press-Fit Design) was superior to the others because it provides more versatility as to how to execute the design. The exterior housing for the capsule can be chosen without being limited by the filter material because the filter is press fit into the housing. By contrast, if the filter is welded to the interior of the housing, the housing would need to be made of a material which is compatible with the filter material. Further, if the filter was snapped between upper and lower segments of the capsule, the capsule might be susceptible to leakage, i.e. oxygen might permeate the capsule through leaks in the snapping mechanism.
100 The applicant made a number of criticisms of Mr Winkler's evidence.
101 First, it was suggested that Mr Winkler's design task was artificial in that it would be unusual for a product engineer to be requested to design a coffee cartridge without also being told exactly what type of machine it was to be used in. Whether that is true or not is neither here nor there. The patent specification does not describe the coffee machine in which the cartridge is to be used except in the most general terms. Mr Winkler has approached the design task in much the same way as the specification proceeds, that is to say, he has designed a cartridge for use in a single serve machine adapted to use such a cartridge.
102 Secondly, it was submitted that rather than attempting to design a cartridge for use in a single serve espresso coffee machine, Mr Winkler instead sought to design a cartridge that could be used in a portafilter in a traditional espresso machine. I do not think that is an accurate characterisation of his evidence. Mr Winkler agreed that he took the portafilter of a traditional espresso machine as his starting point and it provided the inspiration for his design. He was seeking to replicate some of the design characteristics of a traditional espresso machine in his cartridge design. Dr Davis agrees that if he was asked to develop a single serve espresso coffee cartridge then that would be a reasonable approach and "one of [his] approaches".
103 Thirdly, it was submitted by the applicant that:
… the key difficulty with Mr Winkler's design task is that there is no satisfactory explanation as to why the non-inventive worker would have included, as he did, (a) a filter element which is solid rather than fabric, and which also acts as a fluid collection member, by incorporating features which stand it off from the base of the capsule so that the beverage can flow beneath it; and (b) a similar solid filter element, constituting a distribution member, inserted at the top of the body of the capsule, when neither feature, or anything like them, existed at all in the prior art …
104 As to the first point, there is nothing in claims 1 or 2 that requires that the distribution member (the exit filter in Mr Winkler's design) be made of any particular material. Mr Winkler said that the filter could be made from an injection moulded material or a simple food safe flexible plastic. Nor is there anything in claims 1 or 2 which requires that the fluid collection member incorporate features which stand it off from the base of the capsule. Although dependent claim 16 requires that the fluid member "… is located in the interior of the cartridge with a certain distance from the bottom of said main body portion or from said cover member" there is no requirement that the "raised portions" stand the filter member off the base of the capsule so that beverage may flow beneath it. That is no doubt a feature of a preferred embodiment (see page 9, lines 1-10 of the specification) but it is not a feature that is carried through into any of the asserted claims.
105 As to the second point, none of the asserted claims require that the cartridge include a filter at the top above the store of coffee. As I have mentioned, Mr Winkler's designs included a "possible entrance filter". The fact that he included an entrance filter is perhaps not surprising if he was trying to, as much as possible, replicate the features of a portafilter from a traditional espresso machine in a coffee capsule. It would seem logical to include in the design a shower head mechanism similar to that found in a traditional espresso machine. Mr Winkler stipulated that the upper filter in his design was optional only. It is not apparent to me why he decided to make this element of his design optional. Curiously, claims 1 and 2 also allow for the cartridge to have only one fluid director member (ie. a second fluid director member is optional).
106 Mr Winkler referred in his evidence to a number of coffee capsules that were, as at the priority date, relevant prior art. These were:
Keurig K-Cup. The K-Cup was a pour-over coffee machine capsule which had a paper polymer filter held within it. The filter was welded directly to the side wall of the pod. Entry and exit was via a cannula. The K-Cup as at 2001 is depicted in the images below (the exit cannula is not shown). The capsule and the Keurig B-100 machine were designed as a system.
Flavia by Mars. The Flavia pack was a foil sealed pack containing coffee with an enclosing made of flexible laminate. Entry was by an injector and nozzle. The filter was a satchel or bag and was contained inside the pack. Exit was by a weakened seal at the bottom, whereby the filter would drop down and liquid would pass through the filter and into the cup. The Flavia pack as at 2001 is shown in the images below.
Kenco Cappio. The Kenco Cappio was a rectangular plastic cartridge that looked similar to an eight-track tape. That cartridge is shown in the image below (save that the exit was not by a nozzle but some form of puncture). Entry was via a nozzle (indicated by the words "Water Flow"). There was a filter in the cartridge made of cloth. Exit was via some form of exit puncture at the location with the words "Freshly Brewed Coffee".
Philips Senseo. The Senseo coffee pod was a soft satchel or bag containing coffee. The coffee was held between two disc-shaped filters made of paper polymer. Water entered through the filter on the top of the pod. Water exited through the underside of the pod into a collection means which had a decelerating feature. The coffee then went through a spout to an exit. The Senseo machine as at 2001 is shown in the images below.
Nespresso. The Nespresso capsule as at 2001 was a cup-shaped capsule containing coffee. Entry was via a canula that entered the pod. It did not have a solid filter inserted in the body of the capsule. The Nespresso machine had plates with pyramid-shaped geometries that pressed onto the lid of the capsule to create openings that allowed the coffee beverage to exit but retain the coffee grounds. The following image is indicative of a Nespresso capsule as at 2001, at least with respect to the exit means.
107 Mr Winkler's evidence as to when the Nespresso system first entered the market is unclear. He said that he first inspected a Nespresso machine at a tradeshow in Chicago in 2001. However, the specification of the 627 patent describes at page 1A, line 10 - page 2, line 13 a system that is the same or very similar to the Nespresso system. Cartridges used in the system described are said to be "well known" in the art. In light of that statement and, in the absence of evidence to the contrary, I am satisfied that the Nespresso system as described by Mr Winkler was common general knowledge as at the priority date.
108 The Nespresso capsules were cup-shaped and made of aluminium. They did not contain a separate internal filter. Rather, once pierced by the machine, the cover of the capsule functioned as a filter through which brewed coffee could exit.
109 At this point it is useful to consider what the applicant says the inventive step is. Although it did not identify the inventive step in terms, it referred in its written submissions to a number of features which were said to distinguish the inventive cartridges described in the specification from the prior art. The following four features were identified by the applicant as distinguishing the cartridge described in the specification from the prior art:
(a) the use of a filter element at the bottom of the body of the capsule made of solid material rather than paper or fabric;
(b) the use of a filter element that acts as a fluid collection member by incorporating features which stand it off from the base of the cartridge so that the beverage can flow beneath it;
(c) a distribution member located at the top of the cartridge that simplifies the coffee machine by removing the need for a distribution mechanism in the machine, providing for a more uniform flow of liquid through the capsule;
(d) the ability to reverse the flow.
110 It is important to note that these are features of various preferred embodiments but are not requirements of claims 1 or 2. The question whether an invention involves an inventive step is to be answered by reference to the invention as claimed. None of the distinguishing features identified by the applicant are requirements of claims 1 and 2.
111 As to the use of a filter element which is solid rather than paper or fabric, this reflects an obvious design choice. If the filter is to be used in a pressurised system it would be both natural and logical to select a material capable of withstanding the pressure. There is nothing in Dr Davis' evidence to suggest that the use of a filter made from a solid material (eg. aluminium or plastic) would be anything other than an obvious design choice. Mr Winkler said that a capsule used to make espresso coffee would need to be able to withstand the pressures used to make espresso coffee. Dr Davis disagreed because, in his opinion:
… many Australian mechanical engineers specialising in product design … would readily recognise both the capsule and the cavity of the coffee machine (in which the capsule is inserted into) must be able to withstand internal pressures in the capsule. In other words, the material used to manufacture the coffee capsule would not need to be able to withstand the pressure in question on a standalone basis as the cavity of the machine needs to provide support to assist the capsule in withstanding internal pressure.
112 While it may be accepted that both the machine and the capsule must be able to withstand the pressures within the system, and that the cartridge would not be required to withstand pressure on a "stand alone" basis, I did not understand Dr Davis to suggest that a product design engineer designing a coffee capsule for use in a pressurised system that was intended to be used to brew espresso coffee would be likely to opt for a capsule made of paper, fabric or some similar material in preference to something more rigid such as lightweight polypropylene or aluminium. But if that is what Dr Davis was suggesting then I prefer the evidence of Mr Winkler on this point.
113 I have already referred to criticisms made by the applicant of Mr Winkler's design task. In my view Mr Winkler's evidence as to how he would have gone about designing an espresso coffee cartridge was helpful and, generally speaking, persuasive. Dr Davis accepted that the approach taken by Mr Winkler was reasonable. He did not suggest that Mr Winkler's approach would be unlikely to be followed by other persons skilled in the art who were seeking to design a new or improved espresso coffee cartridge. In my view, the design pathway followed by Mr Winkler (including its starting point) would have been obvious to a person skilled in the relevant art at the priority date and was one that would have directly led to an espresso coffee cartridge within claims 1 and 2 of the 627 patent subject only to the requirement that the fluid director member have a plurality of embossings (as I have interpreted that word) and fluid channels.
114 The applicant did not suggest that there was anything unusual about the shape or configuration of the embossings in the lower distribution member of the invention claimed in claims 1 and 2. That is hardly surprising in circumstances where the applicant has always contended that the word "embossing" refers to no more than the geometry of any shape that is raised off a surface. That said, it is still necessary to ask whether the shape or configuration of the embossings referred to in the claims, as I have construed them, might somehow involve an inventive step.
115 Whether or not the bosses on the underside of the exit filter in Mr Winkler's third design (Fig 3) are embossings in the sense that word is used in the claim is doubtful. I would not describe their shape as bulging or convex. But on the issue of inventive step I do not regard that as a matter of any real significance. If similar shapes were to be created using well-known manufacturing techniques such as pressing or deep drawing, then they would be likely to exhibit the bulging or convex shapes that would also create fluid channels as described in the claims. The difference between what Mr Winkler produced and what is claimed seems to me to reflect small differences in detail that are of no importance to the inventive step analysis. The fact that Mr Winkler's designs may not in all respects have met the exact requirements of the claims does not diminish the value of his evidence.
116 The applicant submitted that Mr Winkler's evidence must be approached with some caution given that he is a highly experienced and inventive design engineer. The submission was, in effect, that he was not a good proxy for the hypothetical person skilled in the art who lacks any capacity for invention. I do not accept that submission. I found the evidence of Mr Winkler's design task and his explanation for it helpful in understanding the way in which a person skilled in the art would be likely to go about designing a single serve coffee cartridge suitable for making espresso coffee in a pressurised coffee machine as at the priority date.
117 In my opinion the design of an espresso coffee cartridge for use in an espresso machine having the features of the combination defined by claims 1 and 2 would be obvious to a non-inventive product design engineer equipped with the common general knowledge at the priority date. It would not require inventive ingenuity or any contribution to the art that was "beyond the skill of the calling" to design a coffee cartridge within each of those claims as at the priority date: Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 701.
118 None of the dependent claims that are asserted against the respondents add any additional feature to the combination described in claims 1 or 2 that could render it inventive.
119 Claim 9 requires that the exit holes be located in the fluid channels created between the raised portions of the embossings. In circumstances where the function of the fluid channels is to direct brewed coffee out of the cartridge, there cannot be any inventive step arising out of the addition of this requirement. The use of exit holes and channels in the surface of the exit filter reflects a simple design choice that would be well within the capabilities of a non-inventive product design engineer who was tasked with designing aa single serve coffee cartridge suitable for making espresso coffee in a pressurised coffee machine as at the priority date.
120 Claim 16 imposes the additional requirement that the fluid director member be spaced a certain distance from the bottom of the main body portion of the cartridge or from the cover member. Incorporating some form of support (eg. a step in the interior of the main body of the cartridge) to enable the filter to stand off the base of the cartridge would, as Mr Winkler explained, be a means of enabling the beverage to flow out of the exit holes. Given the need for such a spacing, there is nothing inventive about the combination that includes this additional integer.
121 Claim 17 merely specifies the size of the exit holes. There is no suggestion in the specification or the expert evidence that there is anything inventive about the size of the exit holes described which would need to be smaller than the average size of the coffee particles that will be included in the capsule to prevent most of them flowing into the cup in which the brewed coffee will be dispensed.
122 None of what I have said is to be taken to suggest that there are not claims that were not asserted against the respondents that may well involve an inventive step. These include various claims to cartridges that incorporate both a first fluid director member and a second fluid director member as essential features of the defined invention.
123 I should add that the applicant did not call any evidence of any long felt want or need or commercial success with respect to the invention either as claimed or as more specifically described in the body of the specification: see Garford at [91]-[92]. There are no secondary evidence of inventiveness upon which the applicant can rely.
124 In the result, I conclude that each of the asserted claims is invalid for lack of inventive step.
125 As I have mentioned, the respondents' inventive step case was also put on the basis of the common general knowledge together with the information disclosed in the 712 patent which was said to satisfy the requirements of s 7(3) of the Act. Given my conclusion that the asserted claims are invalid for lack of inventive step based on the common general knowledge alone, it is not necessary for me to consider the respondents' alternative case.