EP 3 071 045 B1 relates to a method of extraction of pea proteins
Brief outline of the case
The patent was maintained according to AR6.
Both proprietor and both opponents appealed. Later, opponent 1 withdrew its appeal.
The patent was eventually maintained according to AR1 filed and admitted in appeal.
Claim 10 as granted reads:
“Pea protein extract obtainable by the method according to any one of claims 1 to 9″.
The board held that claim 10 was novel over the prior art available.
In a parallel blog we explained why, in the eyes of the board, the form of granted claim 10 was not a ground of opposition.
In this blog we will deal with the IS of claim 10.
The opponent’s point of view
The OD considered that the claimed subject-matter involved an IS over what it considered the CPA. The opponent disagreed and suggested alternative CPA.
Opponent 2 argued that as solubility was a relative property, it should not be taken into account for selecting the CPA.
Opponent 2 considered that the underlying technical problem was merely the provision of an alternative method for extracting pea proteins and an alternative pea protein extract.
Opponent 2 argued that the claimed method and the product obtainable by this method did not involve an IS over the CPA, considered alone or in combination with another piece of prior art in which it was taught that heating caused protein precipitation and decreased its solubility.
Thus, for the skilled person confronted with the underlying problem, it would have been obvious to include a heating step, in the method described the CPA.
The board’s decision
Reading the patent, it is clear that the purpose of the invention is, in the first place, the provision of a pea protein composition comprising pea proteins having a low solubility. Hence, as argued by the OD and the proprietor, a document aimed at providing highly soluble proteins cannot be the CPA.
From the patent and the documents used for formulating the inventive-step attacks, it is evident that before the relevant date, the skilled person distinguished pea proteins having a “high” versus a “low” solubility. Thus, even in the absence of precise thresholds, the skilled person distinguished these protein forms.
Starting from the CPA and taking into account the effects shown in the patent, the underlying technical problem is the provision of a pea protein extract and a method for its manufacture, where the extract has a combination of a lower nitrogen solubility index, gel strength and viscosity, this resulting in improvements in processes for manufacturing bakery products and beverages.
For claim 1 to be inventive, it is not necessary to achieve a nitrogen solubility index lower than 15%. This is not an absolute threshold required for the method to be inventive. What is relevant is that the nitrogen solubility index obtained by carrying out the heating step at a pH within the claimed range is lower than that obtained at pHs outside that range.
Therefore, the upper limit of a pH of 5.8 well represents a limit at which a desired decrease in the nitrogen solubility index can be obtained.
Similar considerations apply to the lower pH limit of 4.0 specified in claim 1. When the heating step is carried out at a pH of 3.8, lower than the claimed one, the viscosity and the gel strength are higher than those observed in the tests of the patent, where the extract is heated at a pH within the claimed range.
The fact that the cut-off values 4.0 and 5.8 of the claimed pH range might exclude lower or higher pH values suitable for achieving advantageous effects is not, as such, a reason to consider the selection of the claimed cut-off values “arbitrary” and the claimed subject-matter obvious in view of the prior art.
It would be illogical if a claim defining a feature by reference to a range be considered to lack an IS for the sole reason that the invention could have been claimed more broadly, specifying a broader range.
This would lead to the absurd situation that a claim defining a broad range involves an IS, whereas a claim defining a narrower range, falling within that broad range, does not.
The available evidence makes it credible that subjecting a slurry containing precipitated pea protein at a pH within the claimed range to the claimed heating step induces effects which go beyond those obtainable by carrying out the method of the prior art. Also, there is evidence that both the claimed heating and the pH are relevant for inducing that effect.
Inventive step of claim 10 could thus not be denied.
Comments
The interesting statement of the board is the fact that the cut-off values of a range defining a claimed parameter exclude some lower or higher values suitable to achieve a relevant technical effect is not, as such, a reason to consider the selection of those cut-off values “arbitrary” and the claimed subject-matter obvious over the prior art.
The board held, rightly, that when assessing IS, what matters is that the effect obtained operating within the claimed range goes beyond that achieved following the teaching of the prior art.
As the opponent could not show evidence to the contrary, it had not fulfilled its onus of proof.
Comments
Leave a comment