| Date of decision: | 19 March 2026 |
| Body: | Australian Patent Office (IP Australia) |
| Adjudicator: |
M. Umehara (Delegate of the Commissioner of Patents) |
Introduction
This decision concerns an opposition to the grant of Australian patent application no. 2019258844, filed by Fresh Inset S.A. (the Applicant) and opposed by Shanghai Lytone Biochemicals, Ltd. (the Opponent). The application relates to compositions and articles comprising complexes of 1-methylcyclopropene (1-MCP) and alpha-cyclodextrin (α-CD), which are used to prolong the shelf life of plant products by inhibiting the effects of ethylene. The matter was determined on the papers (absent any filed evidence) by Delegate M. Umehara, with the opposition ultimately failing on the sole ground raised.
Background
The invention addresses a well-recognised challenge in post-harvest plant science, namely, controlling ethylene exposure to delay the maturation, browning, and aging of fruit and vegetables. The specification describes a composition combining a 1-MCP/α-CD complex with a polymer binder — specifically polyvinylpyrrolidone (PVP) or its copolymers — in a defined weight ratio, which releases 1-MCP gas upon exposure to moisture in a controlled manner. The composition is capable of being formed into adhesive labels, sticks, or composite films for use in packaging.
Claim 1 (the only independent claim) reads:
A composition comprising:
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.
The application was accepted in January 2025. The Opponent filed a notice of opposition on 30 April 2025, with a statement of grounds and particulars (SGP) filed on 30 July 2025. Notably, the Opponent filed no evidence in support of its opposition and later indicated it did not wish to be heard, though it declined to formally withdraw the opposition. The Applicant also filed no evidence but lodged written submissions on 26 February 2026. The Delegate observed that, where an opponent loses interest in prosecuting an opposition, the appropriate course is ordinarily to withdraw the opposition, which would then prompt consideration of re-examination before grant.
Key Issues
The sole ground of opposition raised was lack of inventive step. The Opponent argued that claims 1 to 17 would have been obvious to a person skilled in the art in light of: (1) common general knowledge; (2) WO 2012/134539 A1 (D1), relating to cyclodextrin complexes with controlled moisture; (3) US 20170150716 A1 (D2), relating to a polymer laminate for inhibiting plant ethylene response; or any combination of these.
Consideration
The Delegate noted that the burden of proof (on the balance of probabilities) rests with the Opponent. Applying principles from Hood v Bush Pharmacy Pty Ltd [2020] FCA 1686, the Delegate confirmed that obviousness requires more than identifying that something was “worthwhile to try” — there must be a reasonable expectation of success and a direct path from the prior art to the claimed invention.
On common general knowledge alone, the Delegate accepted that the general use of 1-MCP and its complexation with α-CD were known in the art, but found that the SGP provided no reasoning as to how this knowledge would lead a skilled person to the specific combination of PVP binder, the claimed ratio range, and the particular release profile claimed. The inventive step ground therefore failed based on common general knowledge alone.
Regarding D2, the Delegate observed that the worked examples in D2 already disclosed a PVP-to-1-MCP/α-CD complex ratio of approximately 3:1 — falling squarely within the claimed range (of “from about 1:2 to about 4:1”). However, when tested under conditions of 89.9% humidity at 25°C, D2’s composition released 69% of its 1-MCP within the first hour and completed release by five hours. This directly contrasts with the claimed profile, which requires substantially no release in the first hour. The Delegate noted that it is apparent that not all compositions having these components will achieve the claimed release rate. The Delegate further noted that the worked examples in the specification 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 excipients as well. The Delegate concluded that since no expert evidence was provided by the Opponent at all, the Opponent had failed to sufficiently convince the Delegate how a skilled person would, through routine adjustment of the polymer-complex ratio or other additives, arrive at a composition achieving the claimed delayed-release profile — particularly given that D2’s composition, already within the claimed ratio range, failed to achieve it. As a result, claims 1-17 did not lack an inventive step in light of D2, alone or in combination with the provided common general knowledge.
On D1, the Delegate found that there would be no motivation for a skilled person to substitute the curable monomer required in D1 with PVP and/or copolymers thereof as disclosed in D2. The adhesive referenced in D1 served an entirely different function to the polymer binder in claim 1. The Opponent’s suggestion that the claimed release profile could be achieved merely by controlling atmospheric moisture levels was dismissed as not equivalent to a composition having a given release profile when exposed to conditions of 85% relative humidity at room temperature in a sealed vessel. The Delegate noted that the Opponent did not provide any evidence to show how this may be conceived by a person skilled in the art or how it may be achieved without invention. As a result, claims 1-17 did not lack inventive step in light of D1, alone or in combination with the provided common general knowledge and/or D2.
Outcome
The opposition failed. The Opponent did not establish that the subject matter of claims 1 – 17 lacked inventive step in light of common general knowledge, D1, D2, or any combination thereof. Costs were awarded against the Opponent.
Implications
This decision offers several practical insights. First, it underscores the critical importance of filing evidence in patent oppositions — an opponent who fails to support its grounds with expert evidence faces a near-insurmountable burden, particularly on the inherently fact-intensive question of inventive step. Second, the decision illustrates that where prior art discloses compositions with overlapping parameters yet fails to achieve the claimed functional result, a functional limitation in a claim can carry genuine patentable weight. The release profile requirement in claim 1 proved decisive. Third, the Delegate’s comments about the appropriate conduct of opponents who lose interest in proceedings serve as a practical reminder that withdrawal, rather than passive non-participation, is the proper course — and may avoid adverse cost consequences.
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