EP 2 628 396 B1 relates to a powder mix comprising pectin that easily dissolves in cold water.
Brief outline of the case
The opposition was rejected and both opponents appealed the decision.
The opposition was rejected as the OD considered that a public prior use (PPU) was not sufficiently documented. This actually represented a change over the position taken in the annex to the summons.
The board considered that the PPU was sufficiently documented, and considered claim 1 as granted as lacking N over the PPU. The same applied to AR1 and 2. AR3 was lacking IS over the PPU as CPA.
In the present blog entry, we will concentrate on the lack of IS of AR3.
All AR were filed and substantiated in opposition.
Claim 1 of AR3 is based on claim 1+2 as granted.
The opponents’ point of view
The opponents argued that product 5, the PPU (PPU5), was a suitable starting point for assessing IS of the subject-matter of claim 1 of AR3 and referred to case law in which prior uses constituted the closest prior art, for instance, T 1464/05, Reasons 5.2, and T 1054/18, Reasons 4.2.
The proprietor’s point of view
PPU 5 did not constitute a suitable starting point for assessing IS of the subject-matter of claim 1 of AR3. The properties of the product were unknown. The skilled person would have had no motivation to provide the subject-matter claimed.
The proprietor also argued that the objection of lack of IS against the AR3 starting from PPU 5 should not be considered on appeal. This objection had only been formulated after notification of the communication under Art 15(1) RPBA.
The board’s decision
In its statement setting out the grounds of appeal, opponent 1 argued that the PPU 5 constituted the CPA. It did not explicitly raise objections against the subject-matter of the AR, which the proprietor filed with its reply to the appellants’ statements of grounds
On appeal, opponent 2 consistently argued that all auxiliary requests (including the third auxiliary request) lacked inventive starting from a number of documents and in view of the common general knowledge. In its view, the products claimed constituted an amalgamation of features of pectin that were known from the prior art. Thus, throughout the appeal proceedings, objections of lack of inventive step against the third auxiliary request had been raised by appellant 2. The objections were based on the argument that the adjustment of the particle size would have been obvious to the skilled person. This line of argument, namely that when starting from a known powder mix comprising pectin, providing a pectin with a small particle size would have been obvious to the skilled person, remains unaltered when starting from product 5.
Under those circumstances the board considered that the objections consisted of a mere refinement of the appellants’ appeal case, and saw no reason to disregard them under Art 13(2) RPBA.
The board added that, there is sometimes reluctance in the case law of the EPO to treat an object of a PPU as the CPA in an assessment of IS.
Often, neither the technical context of such an object nor how it was produced is disclosed. In such a situation, there is neither information on what the object does and what properties it has in the technical environment in which it is applied nor on how the process for its manufacture could be modified.
These considerations indeed speak against regarding a PPU as a suitable starting point for assessing IS.
The board held that, in the case in hand, the skilled person would face a different situation. They would know the property that the powder mix of the PPU 5 is soluble in cold water and would also consider processing the powder mix further.
All the information available confirms that solubility in cold water is a known, observed property of PPU 5. In other words, the skilled person would be aware of what the powder mix does when put in the technical environment of its intended purpose: the powder is soluble in cold water.
For the board, the claimed solution would have been obvious to the skilled person.
It is considered common general knowledge in chemistry that decreasing the particle size of a solute will increase the rate of dissolution and so enhance solubility. This was confirmed in a handbook on food carbohydrates,
Comments
All AR filed in appeal can be considered as carry over requests and were admissibly raised and maintained.
As the AR were not know to opponent 1, it could not take position on them and merely considered that PPU 5 could be used as CPA.
Opponent 2 took position in its statement of ground of appeal on all AR in opposition, even not knowing which of them would be pursued in the proprietor’s reply in appeal.
Opponent 2 did what was the board requested in T 664/20, commented in this blog, i.e. to take position on all AR even not knowing which one would be submitted by the proprietor.
The board admitted the objection of lack of IS over AR3, as the opponents had argued from the beginning of the appeal against it.
Even if the opponents had not reacted timely enough, the board should not have maintained such a patent in which the only difference lay in the size of particles, so that they dissolve quicker in cold water.
The considerations on the use of a PPU as CPA correspond to those in T 1054/18: a PPU can be used as PPA if the circumstances permit. An enabled PPU is as much prior art as any other piece of prior art.
When the proprietor claimed that PPU 5 was unknown, this was not correct, as a analytical data sheets had been established by a third party
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