EP 3 021 691 B1 relates to methods and systems for incorporating nicotine into oral products, e.g. a nicotine containing chewing gum.
Brief outline of the case
The OD decided revocation of the patent for lack of N of claim 1 as granted over D3, and AR1-3 infringed Art 123(2).
The proprietor appealed.
The board decided that N over D3 was given and remitted for further prosecution.
The claim at stake
A method for forming an oral product,….., wherein the cellulosic fibre ……. comprises fibres selected from the group consisting of wood pulp, cotton, sugar beets, bran, citrus pulp fibre, grass fibres, Salix, tea, Populus, bamboo fibres, and combinations thereof.
The question to be answered is whether microcrystalline cellulose (MCC), which is disclosed in example 1 of D3 falls within the scope of claim 1.
Paragraph [0013] of the description
In Paragraph [0013] of the description the following is to read:
For example, cellulosic fibres can be selected from the following: sugar beet fibre, wood pulp fibre, cotton fibre, bran fibre, citrus pulp fibre, grass fibre, willow fibre, poplar fibre, and combinations thereof.
Cellulosic fibre used in the methods, systems, and oral products provided herein may be chemically treated prior to use. For example, cellulosic fibre used in the methods, systems, and oral products provided herein can be CMC, HPMC, HPC, MCC, or other treated cellulosic material.
The proprietor’s point of view
The expression “consisting of” in claim 1 should leave no doubts as to the scope of the limitation of the nine enumerated cellulosic fibres and combinations thereof.
MCC is a different material from any of the enumerated cellulosic fibres and was not one of the nine enumerated fibres that were used in the claimed method as defined in claim 1.
Paragraph [0013] simply stated another possible embodiment of the disclosure which was not part of the claimed invention as defined in claim 1 of the patent as granted.
The proprietor noted that this paragraph enhanced their argument that MCC was a different material which was not claimed. MCC could have been easily included in claim 1 if wanted.
The opponent’s point of view
The opponent argued that the subject-matter of claim 1 was not novel over D3 as example 1 of D3 disclosed the nicotine in the gum being prepared by sorbing liquid nicotine onto microcrystalline cellulose (MCC).
The patent disclosed that the cellulose used in the alleged invention could be processed to be in the form of e.g. MCC, see [0013]. Thus, the cellulose used in example 1 of D3 was the same as that defined in claim 1, and was used in the same way as defined in claim 1.
The opponent further argued that the expression “consisting of” in claim 1 only categorized the group of potential fibres. This is terminology used in US patent law. “Cellulosic fibre” merely comprised fibres of “wood pulp, cotton, sugar , etc.”. It did not consist of “wood pulp, cotton, sugar , etc.”.
The board’s decision
The Board noted first that claim 1 was clear and that there was no contradiction between the subject-matter of claim 1 and paragraph [0013] of the patent.
Claim 1 defines the cellulosic fibres comprising fibres selected from an exhaustive list of materials and combination thereof. The expression “consisting of” limits the materials to the ones listed in the claim and their combinations.
Paragraph [0013] of the patent discloses cellulosic fibres used in the methods for forming an oral product.
The first list of examples provided in paragraph [0013] encompass cellulosic fibres disclosed in claim 1.
The second list of examples, which concerns the chemically treated cellulosic fibres has not been claimed.
The first list of cellulosic fibres is distinct from the second list of chemically treated cellulosic fibres.
For the board, the subject-matter of claim 1 does thus not encompass MCC and the subject-matter of claim 1 is not anticipated by example 1 of D3.
Comments
The board is right in stating that MCC is not part of the substances claimed.
The claim might be clear, but reasonable doubts are permitted as to whether the claim is properly supported by the description.
The problem is indeed to be seen in the lack of adaptation of the description before grant.
Paragraph [0013] discloses indeed two types of cellulose fibres, those stated in claim 1 and chemically treated cellulosic fibres.
When the patent was granted, it should have been made clear that the second group of cellulose fibres were not claimed. This could have avoided a lack of N as ground of opposition.
In spite of what might have been said in T 56/21, support of the claims by the description requires adaptation of the description and clarification of what falls under the claim.
From the two options, one is not claimed. This should have been clarified.
D3 was CPA in examination and claim 1 as granted corresponds to the claim filed when entering the regional phase.
In reaction to this claim, the ED considered that this claim was lacking IS over D3 as it considered that the “selection of the specific cellulose fibre source can only be considered inventive if it presents unexpected effects or properties in the relation to the rest of the cellulose fibre sources”. The ED requested comparative tests to this effect.
In view of the position of the ED, it is surprising that it did not request the adaptation of the description before grant.
In view of the way the examination was conducted and the information found therein, the position of the OD is difficult to follow. The opponent must have been very persuasive, but for the wrong reasons. No member of the ED appeared in the OD.
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