Shanghai Lytone Biochemicals, Ltd. v Fresh Inset S.A. [2026] APO 10

1. Australian patent application no. 2019258844 (the Application), in the name of Fresh Inset S.A. (the Applicant), was filed under the provisions of the Patent Cooperation Treaty on 26 April 2019 and claims priority from Polish provisional applications P.425413, P.425414 and P.425415 filed on 27 April 2018. The Application was accepted on 15 January 2025. While nothing turns on this point, I note that a divisional application AU 2024205079 has been filed and is currently under examination.

1. On 30 April 2025, a notice of opposition under section 59 of the Patents Act 1990 (the Act) to the grant of a patent on the above Application was filed by Shanghai Lytone Biochemicals, Ltd. (the Opponent). A statement of grounds and particulars (SGP) was filed on 30 July 2025 but no evidence in support was filed by the Opponent. Similarly, the Applicant did not file any evidence in answer.

1. The SGP only raised inventive step as a ground of opposition. While the ground is particularised in some detail, I note that the Opponent opted not to file any evidence. Furthermore, with the letter of 15 December 2025, the Opponent indicated that they did not wish to be heard on the matter but that the opposition should nevertheless proceed. Although the Applicant did not file any evidence either, written submissions in support of the Application were received on 26 February 2026.

1. I note that when an opponent has lost interest in prosecuting an opposition, as appears to be the case here, the usual and appropriate course of action is for the opponent to withdraw their opposition. In that circumstance, the Commissioner's usual practice is to consider whether the application should be re-examined on the basis of the material filed in the opposition prior to grant.

1. The present case is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application. Nevertheless, it remains the case that, in proceedings such as these before the Commissioner, the onus rests with the opponent to establish its case.

1. The specification as accepted includes 24 pages of description, followed by 17 claims and 42 figures. According to the specification, the invention relates to a composition that comprises a complex of 1-methylcyclopropene (1-MCP) and α-cyclodextrin (α-CD), and articles that include these complexes.[1]

1. By way of background, it is explained that when storing plant products, it is essential to control the influence of ethylene to prolong the durability of these products, delay their maturation, browning or aging. One of the standard methods used is to inhibit the action of ethylene by blocking ethylene receptors in plant cells with chemicals, such as 1-MCP.[2] When provided in the form of a complex with α-CD, 1-MCP is released upon exposure to water, for example, in the form of humidity.[3]

1. Before construing the specification, I note the comments of Middleton J:

"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."[4]

1. It is well established that many of the issues in an opposition are answered by reference to the person skilled in the art:

"He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious."[5]

1. The hypothetical skilled person works in the field with which the invention is connected and is a non-inventive person or team likely to have a practical interest in the subject matter of the invention.[6]

1. The SGP does not attempt to identify a person skilled in the art. Based on the subject matter of prolonging the durability of plant products, I consider that a person skilled in the art would have an interest in post-harvest plant physiology, plant biotechnology, and materials science. However, in the present case, nothing turns on the exact characterisation of the person skilled in the art.

1. The invention relates to a composition that includes a polymer binder and a complex of 1-MCP with α-CD.[7] The polymer binder is selected from the group consisting of one or more of polyvinylpyrrolidone (PVP) and copolymers thereof, polyvinyl alcohol and copolymers thereof, polyvinyl acetate copolymers, and copolymers of ethylene and vinyl acetate.[8] The composition is capable of releasing the 1-MCP in the form of a gas when exposed to moisture and has a release profile where substantially no 1-MCP is released for at least 1 hour after exposure and thereafter continuously releases 1-MCP for at least 5 hours when exposed at room temperature in a sealed vessel to conditions of 85% relative humidity.[9]

1. The composition may be in the form of a stick that can be manually applied to a surface of a substrate.[10] To form the stick, the complex is combined with a multicomponent mixture comprising polymers, waxes, paraffin, mono- and polyhydric alcohols, dyes, and/or excipients that are moulded into a stick.[11] Use of the stick inhibits the process induced by ethylene, thus delaying the maturation and aging of plant products, by spreading the stick mass on a material for packaging, placing the plant product inside and closing the packaging.[12]

1. Where the composition is designed for use in a label, the composition may be prepared from a precursor composition that includes the complex, polymer binder, and a solvent.[13] Also described is a process for preparing a composite film by coextruding carrier polymers with extruded granulate comprising a mixture of the complex and a copolymer of ethylene and vinyl acetate.[14] The composite film may be used to manufacture of fruit and vegetable storage packaging.[15]

1. The invention is further described by way of 14 worked examples for labels, 8 worked examples for sticks and a worked example for film packaging.[16]

1. The accepted specification includes a total of 17 claims with claim 1 being the only independent claims, which reads as follows:

a) a complex of 1-methylcyclopropene and α-cyclodextrin and > > b) a polymer binder selected from the group consisting of polyvinylpyrrolidone, copolymers thereof, and combinations thereof,

wherein the ratio of polymer binder to complex on a weight to weight basis ranges from about 1:2 to about 4:1, and

wherein the composition is capable of releasing the 1-methylcyclopropene in the form of a gas when exposed to moisture, the composition having a release profile characterized in that when exposed at room temperature in a sealed vessel to conditions of 85% relative humidity, the composition releases substantially no 1-methylcyclopropene for a first time period of at least 1 hour after exposure; and releases 1-methylcyclopropene for a second time period of at least 5 hours that starts after the first time period.

1. Appended claims 2-13, 16 and 17 define additional features relating to the components and additional components. Claim 14 is directed to an adhesive label comprising a substrate, the composition of claims 1-13 provided on a first surface of the substrate and an adhesive provided on the other. Claim 15 is appended specifically to claim 14 and defines that the substrate comprises a paper substrate.

1. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in light of the common general knowledge (whether in or out of the patent area) before the priority date of the relevant claim when considered alone or together with the information mentioned in subsection 7(3).

1. Subsection 7(3) defines the relevant information as:

The information for the purposes of subsection (2) is:

(a) any single piece of prior art information; or

(b) a combination of any two or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

1. Nicholas J provided a succinct statement of principles relevant to assessing inventive step:

"Section 7(2) of the Act uses the word 'obvious' in the course of describing what must be established before an invention can be held not involve an inventive step. Something may be 'obvious' in light of the common general knowledge, or the common general knowledge coupled with the relevant s 7(3) information, if it is 'plain or open to the eye or mind, something which is perfectly evident to the person thinking on the subject' or something which 'would at once occur to anyone acquainted with the subject and desirous of accomplishing the end'.

An invention may also be obvious in light of the common general knowledge if the person skilled in the art faced with the same problem as the inventor 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 or (using the language of the 'modified Cripps question') 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. However, a claimed invention is not obvious merely because the person skilled in the art would consider that it was 'worthwhile to try'."[17]

1. It is important to note the requirement for a reasonable expectation of success which is explicit in the expectation that an approach "might well" succeed, and implicit in the characterisation of steps as those to be taken as a matter of routine.[18] However, success need not be guaranteed.[19] Further, it is possible that the skilled person might be directly led to try more than one alternative expecting that each may well produce a useful or desired result.[20] However, being led to try more than one alternative should be distinguished from a wide-reaching variation of parameters or exploration of a field.[21]

1. Where a claim is directed to a combination of known integers, obviousness is not established merely by identifying each of those features in the prior art or the common general knowledge. This was explained by Aickin J stressing that the question is whether the combination of those features is obvious.[22] In a similar vein, the High Court said that the question of whether it would be obvious to add one integer to a combination of other integers:

"...will turn on what a person skilled in the relevant art, possessed with that person's knowledge, would have regarded, at the time, as technically possible in terms of mechanics, and also as practical. ... Even if an idea of combining integers, which individually may be considered mere design choices, is simple, its simplicity does not necessarily make it obvious."[23]

1. The SGP particularised that the invention as claimed in any one of claims 1-17 does not involve an inventive step in light of common general knowledge, WO 2012/134539 A1 (D1) or US 20170150716 A1 (D2), or any combination of D1 and/or D2 and the common general knowledge.[24] As noted above, I have no expert evidence as to the common general knowledge or what would be routine in light of the prior art documents. This necessarily means that the inventive step analysis is limited, relative to the norm in patent oppositions. I will nevertheless consider the ground based on the information and documents made available to me by the parties.

1. The SGP references the background section of the specification in presenting the following as common general knowledge:

"1) Ethylene affects a wide range of physiological processes in plants and when storing plant products, it is essential to control the influence of ethylene to prolong the durability of these products. See page 1 lines 12-17.

1. One method used to inhibit the action of ethylene is to block ethylene receptor in plants. 1-methylcyclopropene (1-MCP) is a gas that has been used for this purpose. See page 1 , lines 18-20.
2. 1-MCP may be provided in the form of a complex with α-cyclodextrin, is released upon exposure to water, e.g. in the form of humidity. See page 1, lines 20-21. In other words, 1-MCP is released from its complex with α-cyclodextrin, as a gas, when exposed to moisture."[25]

1. Even in the absence of any evidence, I do not consider it controversial to accept that they were indeed common general knowledge in the art at the time of filing. However, the SGP does not provide any reasoning for how these points of common general knowledge would have led a skilled person to the claimed invention. It has not been shown that the common general knowledge alone includes any information about mixing a complex of 1-MCP with α-CD with PVP or an appropriate ratio between the complex and polymer binder such that the composition is capable of releasing 1-MCP according to the claimed release profile upon exposure to moisture. Therefore, claims 1-17 do not lack inventive step in light of the provided common general knowledge alone.

1. The SGP presents D2 as disclosing a laminate for inhibiting plant ethylene response and its preparation method, comprising at least one layer of a polymer composition and at least one layer of a paper substrate, wherein the polymer composition includes an agent that blocks binding sites for ethylene response in plants (where 1-MCP is preferred), encapsulated with cyclodextrin, a solvent in which cyclodextrin is slightly soluble or insoluble, and a polymer (where PVP is preferred) or copolymer soluble in the solvent and water.[26] The SGP goes on to explain as follows:

"Based on the teaching of D2, when combined with the common general knowledge, a person skilled in the art would be led as a matter of course to provide a composition comprising (a) a complex of 1-MCP and α-cyclodextrin and a polymer binder selected from the group consisting of polyvinylpyrrolidone, copolymers thereof, and to adjust the water content to delay the release of 1-MCP according to actual needs. Those skilled in the art would reasonably adjust the ratio of polymer binder to complex according to actual needs. There ratio listed in the claims does not import any patentable weight as it would be determined by a person skilled in the art through routine testing."[27]

1. Although not discussed in the SGP, the worked examples of D2 are based on a blend prepared from 10.99% PVP, 3.75% 1-MCP/α-CD complex, 61.54% ethanol and 23.72% corn starch which is applied on to a substrate surface and naturally dried.[28] I note that the weight ratio of PVP to 1-MCP/α-CD complex in this blend is about 3:1. Therefore, the polymer-complex ratio disclosed in D2 already falls within the claimed range. However, when the D2 laminate was tested at a storage condition of 25 °C at 89.9% humidity, 69% of 1-MCP had released at 1 hour and release was complete by 5 hours.[29]

1. As noted by the Applicant, the release profile of 1-MCP from the D2 composition falls outside the claimed release profile.[30] This is despite the composition of D2 having components falling within the scope of the claimed ranges. It is therefore apparent that not all compositions having these components will achieve the desired release rate - this result is a true limitation on the claim scope. The worked examples in the Application provide guidance for a person skilled in the art to prepare compositions having the claimed 1-MCP release profile and comprising 1-MCP/α-CD complex and PVP or copolymers thereof with additional carrier excipient as well. As such, while claims limited by a result to be achieved can present support and sufficiency issues, in the present case I have no basis to consider that such issues arise.

1. The Opponent has not provided any evidence to support the assumption that a person skilled in the art would, as a matter of routine, alter the polymer-complex ratio (or alter the other additives) in the expectation that the release profile may be effectively tuned such that the composition is capable of releasing the 1-MCP for at least 5 hours that starts after a first time period of at least 1 hour after exposure to 85% relative humidity in a sealed container. Given that D2 already discloses a laminate comprising a polymer to complex ratio falling within the claimed range, it is unclear to me how further tuning the ratio would lead to a different result.

1. Even in the absence of any evidence, I do not consider that a person skilled in the art reading D2 would have any reasonable expectation of achieving the claimed release profile of 1-MCP by further tuning the polymer-complex ratio. Therefore, claims 1-17 do not lack inventive step in light of D2, alone or in combination with the provided common general knowledge.

1. According to the SGP, D1 discloses cyclodextrin complexes, articles and methods including an inclusion complex formed between 1-MCP and α-CD wherein carefully controlling the moisture content during coating, curing, and subsequent storage before use is useful for maintaining the stability of the 1-MCP/α-CD complex.[31] The SGP goes on to state as follows:

"The technical solution protected by Claim 1, as compared to the disclosure in D1, differs in that the composition of Claim 1 also includes a polymer adhesive and further specifies its type and ratio with the complex. The use of the polymer adhesive is provided by D2. Claim 1 further limits the composition to release 1-methylcyclopropene in gaseous form and specifies the release curve. Based on the above differences, the technical problem that Claim 1 actually addresses is how to control the moisture content to delay the release."[32]

1. I note that the compositions of D1 include at least a cyclodextrin inclusion complex of an olefinic inhibitor, such as 1-MCP, and a monomer having one or more unsaturated bonds that are polymerizable by free radical polymerization methods or plasma polymerization methods such as electron beam radiation polymerization.[33] The composition is coated onto at least a part of surface of a packaging material and subjected to radiation to cause bonding or polymerisation with the packaging material.[34]

1. Despite the Opponent's suggestion in the SGP of complementing the disclosures of D1 with the use of the polymer adhesive provided by D2, I cannot find any motivation for a person skilled in the art to substitute the curable monomer required in D1 with PVP and/or copolymers thereof. Subsequent use of adhesives to attach labels to a packaging is suggested in D1.[35] However, the adhesive label of claim 14 requires the composition of claims 1-13 to be provided on a first surface of the substrate and an adhesive on the second surface. Adding a polymer adhesive to the packaging material of D1 does not result in a composition falling within the scope of claim 1 or an adhesive label of claim 14, which requires the composition of claim 1 to be present.

1. Given the volatile nature of 1-MCP, it may be possible to achieve the claimed release profile by controlling the atmospheric moisture levels, as suggested in the SGP. However, that does not equate to a composition having a given release profile when exposed to conditions of 85% relative humidity at room temperature in a sealed vessel.[36] The Opponent has not provided any evidence to show how this may be conceived by a person skilled in the art or how it may be achieved without invention.

1. Even in the absence of any evidence, I do not consider that a person skilled in the art reading D1, would be led to a composition comprising a 1-MCP/α-CD complex and a polymer binder consisting of PVP and/or copolymers thereof. Such an embodiment would require the removal of a core feature from the disclosure of D1. Therefore, claims 1-17 do not lack inventive step in light of D1, alone or in combination with the provided common general knowledge and/or D2.

1. The Opponent has not established that the claims lack inventive step in light of common general knowledge, D1, D2 or any combination thereof.

1. Claims 1-17 do not lack an inventive step in light of common general knowledge, D1, D2 or any combination thereof. The opposition fails on the only ground raised.

1. The normal approach is that costs should follow the event. I see no sufficient reason to depart from this approach. The opposition is unsuccessful. Accordingly, I award costs in accordance with Schedule 8 against the Opponent, Shanghai Lytone Biochemicals, Ltd.

[2] Specification at page 1 lines 12-20.

[3] Specification at page 1 lines 20-21.

[4] Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214 at [139].

[5] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70].

[6] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70]- [72].

[7] Specification at page 1 lines 23-24.

[8] Specification at page 1 lines 23-26 and page 6 lines 11-13.

[10] Specification at page 3 lines 5-6.

[11] Specification at page 4 lines 29-32.

[12] Specification at page 6 lines 6-9.

[13] Specification at page 3 lines 11-13.

[14] Specification at page 6 line 30 - page 7 line 5.

[15] Specification at page 7 lines 18-19.

[17] Hood v Bush Pharmacy Pty Ltd [2020] FCA 1686 at [116]- [117] (with citations omitted).

[18] Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73 at [71].

[19] Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 at [99].

[20] Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 at [91]- [93].

[21] Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [76].

[22] Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [116].

[23] Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 at [111].

[33] D1 at page 11 line 27 - page 13 line 14.

[35] D1 at page 8 line 24 - page 9 line 6.