Commissioner Overlooks an Essential Element

Coca-Cola Company v Canada (Attorney General) 2023 FC 424 Furlanetto J

            2,718,279

Coca-Cola’s 279 application relates to plastic beverage and food containers and methods for making them from PET polymers, where the PET polymer comprises a component derived at least in part from bio-based materials [3]. The application was refused on the basis of obviousness [1]. In this decision Furlanetto J held that the Commissioner had erred in law in its assessment of the inventive concept of certain method claims (Claim 18 being representative), because the Commissioner had failed to consider one of the essential elements of the claims in question, namely recyclability of the container [44], [47]. Furlanetto J therefore sent the application back for reconsideration of the affected claims. The finding of obviousness was otherwise upheld.

While the error was one of law, there doesn’t seem to have been any legal principle at stake. Rather, the error seems to have arisen because of a procedural slip. The claims at issue were introduced very late in prosecution; after the Final Action, after the response to the Final Action, after the application was sent to the PAB for review, and after the PAB provided its preliminary review letter that the claims were obvious [11]–[15]. It was only in its response to the preliminary review that Coca-Cola proposed the method claims at issue, in which recyclability was an essential element [16]. After the hearing the Commissioner released the Decision, which “adopted the recommendations of the PAB” [18] and which relied on the preliminary review letter in describing the inventive concept [19]. Since the preliminary review letter had been written before the new claims had been proposed, it did not consider the inventive concept of those specific claims. So, the Commissioner’s decision seems to have been a bit sloppy in having relied on the preliminary review rather than reassessing the inventive concept of the newly proposed claims in question, though of course I don’t know the extent to which the point was emphasized in the hearing.