The patent relates to wet food compositions having the characteristics of dry food.
Brief outline of the case
The opponent appealed the rejection of the opposition.
The board held that the patent as granted was not sufficiently disclosed. The same applied to AR1-9.
The patent was thus revoked.
Claim 1 as granted reads
A wet food composition comprising……. wherein the composition has a moisture content greater than 45%, and
wherein the composition has the characteristics of a dry food composition having one or more of the following characteristics
(1) the wet food composition is relatively dry to the touch when compared to typical wet food compositions;
(2) the wet food composition is relatively hard, inelastic, and crumbly when compared to typical wet food compositions; and
(3) the wet food composition is generally stable at ambient conditions without preservatives.”
Lack of sufficiency
The opponent’s position
The opponent argued that the invention could not be carried out, so the OD had erred when finding that the ground for opposition under Art 100(b) did not prejudice the maintenance of the patent.
The proprietor’ position
The proprietor argued that the invention could be carried out. The burden of proof was on the opponent to demonstrate that the invention could not be carried out, and there was no reason to shift the burden of proof to the proprietor.
No verifiable facts had been submitted by the opponent which raised serious doubts that the invention could be carried out.
The opponent’s objections represented merely clarity objections which possibly led to a broad interpretation of the claim, but lack of clarity was not a ground for opposition.
The proprietor argued that the Examples 2 and 3 of the patent exemplified ways to carry out the invention. In its view, Examples 2 and 3 fell within the scope of claim 1 since the moisture content, the binder content and the meat emulsion chunk content were fulfilled in Examples 2 and 3.
The board’s position
Claim 1 contains a first contradiction or conflicting features in that it relates to a wet food composition having a moisture content of greater than 45%, which may be up to 90% as mentioned in paragraph  of the patent, but at the same time has the “characteristics of a dry food composition“.
A further contradiction in claim 1 is that the claimed composition has a moisture content of a typical wet food composition which is known to degrade and spoil rather quickly, but claim 1 requires that the claimed composition is generally stable at ambient conditions without preservatives.
The crucial question in the current case was whether there are serious doubts substantiated by verifiable facts that the invention can be carried out.
According to paragraph  of the patent “Dry” food compositions contain less than about 12% moisture.
- They are typically hard, inelastic, and/or crumbly. Also, they are dry to the touch and stable under ambient conditions without the use of preservatives.
According to paragraph  of the patent, wet food compositions contain greater than about 45% moisture, typically from about 65 to about 82%.
- They are usually soft and runny, particularly if they contain gravy. They are moist to the touch.
- They are often messy to process and handle. Generally, they do not contain preservatives and are hermetically sealed and stabilised by heating, e.g. retorting.
- They tend to degrade and spoil within hours if exposed to ambient conditions.
In view of the information given in the patent, wet food composition are, for instance, soft and runny, moist to the touch and suffer from the problem that they tend to degrade and spoil rather quickly.
The information in the patent demonstrates that it was at least a very challenging task to produce a wet food composition having at the same time the characteristics of a dry food composition.
Finding a solution to achieve the conflicting properties of having a wet food but, at the same time, having the characteristics of a dry food was consequently difficult.
This information in the patent qualifies as verifiable facts raising serious doubts that the invention can be carried out.
When considering the overall information given in the patent and the absence of an example falling within claim 1, the board considers that there is only a weak presumption that the invention can be carried out. The board referred to T 63/06, Headnote.
Under the circumstance of this case, the board concluded that the burden of proof has shifted, and it is on the proprietor to demonstrate that the invention can be carried out.
Put differently, it is up to the proprietor to demonstrate how the contradiction in claim 1 can be resolved.
The amount of additional water mixed with the binders before combining this mixture with the comminuted chicken chunks, as done in Examples 2 and 3, cannot be simply added to the chicken chunks. Examples 2 and 3 of the patent do not meet the meat emulsion chunk content required in claim 1.
Producing a wet food composition by combining 90 to 99% of meat emulsion chunks and 1 to 10% of one or more binders defined in claim 1 and adjusting the moisture content to greater than 45% does not automatically lead to a composition having the characteristics of a dry food composition with one or more of characteristics found in the claim.
Given the breadth of the structural features of claim 1, in particular the moisture content which may be up to 85% when considering the upper limit of the more preferred moisture range, this is not credible from a technical point of view.
The skilled person’s common general knowledge does not provide any guidance either.
Lack of sufficiency
It is relatively rare that the onus of proof is shifted to the proprietor.
The present case is one of those exceptions. T 2584/11 is another one. In T 2584/11, in which T 63/06 was quoted as well, the patent had been revoked under Art 100(b) and the board confirmed the revocation.
Although stemming from a totally different technical domain, a contradiction between two features in the independent claim led to a lack of sufficiency, cf. T 2064/19, Reasons 3.4. In T 2064/19, the description did not help in resolving the contradiction.
In T 2284/15, it was held that the fact that the description does not contain an example of an embodiment of an invention does not necessarily lead to the conclusion that it is not sufficiently disclosed. It remains that at least one way of carrying out the claimed invention is to be indicated in detail in the description.
About the procedure in first instance
During the procedure, the European search opinion (ESO) raised an objection of lack of clarity due to the feature “having the characteristics of dry food”. In the reply to the ESO, the applicant dismissed the clarity objection. The rest of the examination revolved mainly around a lack of inventive step.
We have here another case in which a board set aside the decision of the OD. Such cases are appear dramatically increase.
A word of warning:
I do not blame examiners. They do what they can in the time given to them to delete with files.