CASELAW-EPO - reviews of EPO Boards of Appeal decisions

The patent relates to vegan cheese analogues.

Brief outline of the case

The patent was maintained according to a MR filed during the OP before the OD.

Both opponents appealed.

In reply to the appeal, the proprietor filed a new MR=MR’ and a series of AR. During the OP, the proprietor withdrew all requests on file but the MR’ and AR1a-p-s.

The patent was maintained according to AR1a-p-s.  

The case is interesting in relation to  AR1a-p-s.

Claim 1 of AR1a-p-s reads: “A cheese analogue, comprising water, 10-24 wt.% of a non-modified root or tuber starch or of a waxy root or tuber starch comprising at least 90 wt.% amylopectin, 0.5-8 wt.% native potato protein and a fat component, obtainable by a process comprising……”

The opponents’ point of view

Objections of added subject-matter and lack of clarity were filed during the OP before the board.

The claimed invention was not sufficiently disclosed as the claimed amount of native potato protein was that contained in the cheese analogue rather than that used for its preparation. The patent did not teach how to prepare an analogue containing the claimed amount of native protein or how to determine the amount of that protein because the protein was denatured during the heating step required to prepare the analogue.

The subject-matter of the MR’ did not involve an inventive step starting from D12 as the closest prior art. The claimed subject-matter differed on account of the starch content and, for claim 10, also on account of the ripening step. The “good melt characteristics” depended on the process conditions, the presence of native protein and the type of starch. The claims were not limited by any process condition, and the protein was denatured. Good melt characteristics were not obtained over the whole scope claimed. 

The same objections applied to AR 1a-p-s.

The proprietor’s point of view

The objections of added subject-matter and lack of clarity were filed late and should not be admitted.

The invention was sufficiently disclosed as the substances in claim 1 of both requests on file were the ingredients used to prepare the cheese analogue, not those present in the final product. This was confirmed by common general knowledge, by the EU regulations relating to food products and by the description of the patent. “Cheese analogue” implied a gelatinisation step. Heating was foreseen in the patent but was not essential.

The claimed subject-matter involved an inventive step starting from either D12 or D7a. The claimed subject-matter differed from the cheese of D12 on account of the higher amount and the type of starch used. This difference resulted in cheese having good melt characteristics. Good melt also implied good stretch characteristics.

The board’s decision

Admittance of new objections of added subject-matter and clarity

Before the OP, the opponents had not raised any objection against the requests filed by the proprietor during the appeal proceedings be it against the requests filed in reply to the opponents’ grounds of appeal, or against those filed in reply to the communication issued by the board in preparation for the OP.

The board considered that the objections were not only very late but also prima facie not convincing and therefore not admissible.

Sufficiency of AR1a-p-s

Claim 1 is a product-by-process claim defining the steps for manufacturing the claimed cheese analogue.

As submitted by the proprietor, the skilled person reading claim 1 would understand that the ingredients specified in the first part of the claim and their amounts are those used to carry out the steps of the process defined in the second part of that claim.

Objections raised during the written proceedings no longer apply to AR1a-p-s because the wording of claim 1 makes it clear that the specified ingredients are those used to prepare the claimed cheese analogue.

The ingredients specified in claim 1 were well known at the filing date. The patent teaches how to carry out the claimed process using those ingredients and provides numerous examples of cheese analogues obtained by implementing the process.

Thus, following the teaching of the patent and the common general knowledge at the filing date, the skilled person would have been able to prepare the claimed cheese analogues. The claimed invention was therefore sufficiently disclosed.

Inventive step of AR1a-p-s

The claimed subject-matter differs from the teaching of D12 at least on account of the type and amount of starch: 10 to 24 wt.% of non-modified root or tuber starch or of a waxy root or tuber starch instead of 7 wt.% modified starch.

The opponents submitted that some cheese analogues prepared as specified in claim 1 did not have stretch characteristics.

The patent and the experimental reports provided by the proprietor describe cheese analogues comprising different amounts of waxy starch, potato protein and fat. The amount of these ingredients was varied substantially across the entire scope claimed: that of the potato proteins from 0.5 to 5 wt.%, that of the starch from 10 to 24 wt.% and that of oil from 10 to 35 wt.%.

All these cheese analogues exhibited melt-stretch characteristics. This makes it credible that the claimed effect can be obtained substantially across the entire scope claimed.

Relying on G 1/03, Reasons 2.5.2, non-working embodiments, the board considered that in the circumstances of the case in hand that the patent described a large number of conceivable alternatives and sufficient information for finding appropriate alternatives over the claimed range, with reasonable effort. If a skilled person failed to prepare a stretchable cheese analogue using the amounts of ingredients in an example, they would:

• realise that the conditions used are extreme because the amounts of the ingredients are at the edge of each of the ranges foreseen in the patent
• find in the patent, and in particular in the examples, the teaching that compositions having the desired properties can be obtained by increasing the amount of potato protein and/or decreasing the amount of the oil

The board therefore held that where a single composition at the edge of the scope of the claim and whose ingredients are contained in amounts at the end-values of the claimed ranges, does not achieve a technical effect relevant for the assessment of inventive step, the inclusion of that non-working composition within the scope of the claim is of no harm if there is a large number of conceivable alternatives which achieve that effect, and the specification contains sufficient information on the relevant criteria for finding those alternatives with reasonable effort.

Comments

Further than stating in G 1/03, that in case of non-working embodiments, a disclaimer is neither necessary nor appropriate, the EBA also made clear that “If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step.”

In the present case, the effect, stretchability of the cheese analogue, was not claimed, hence the right objection was lack of IS. The board nevertheless bothered to discuss sufficiency. This was actually not necessary.

The duality of the objection sufficiency-IS depending on whether an effect is claimed or not has been subject of a number of decisions, one important being T 2001/12, cf. Catchword.

As the the late filed objections of lack of clarity and added subject-matter wee prima facie not pertinent, the present board can be followed when it did not admit those.

Merely not admitting objections, especially of lack of clarity and added-matter, due to the mere fact that they are late can be criticised as then patents might be unnecessarily maintained. It can unnecessarily complicate matters in case of litigation.

The role of the EPO is certainly to grant patents, but also not maintain patents which have no reason d’être, The RPBA should not be the pretext to maintain such patents.  

With a very strict application of the RPBA, which after all are only secondary legislation, the aim of not maintaining invalid patents is not fulfilled.

https://www.epo.org/en/boards-of-appeal/decisions/t220629eu1