EP 2 900 070 B1 relates to the use of a smoke condensate for browning and smoking a protein containing food.
Brief outline of the case
The patent was revoked for lack of sufficiency.
The board considered that sufficiency was given, and the problem was at best a problem of IS. The case was thus remitted to the OD.
The proprietor’s point of view
Claim 1 as granted excluded the presence of compounds other than those explicitly referred to. Still, the invention as granted was sufficiently disclosed.
Furthermore, acids could be removed from smoke condensate. This technique was well-known to a skilled person.
Neutralising agents could be used to adjust the pH of liquid smoke condensates, and the neutralised acid components could easily be removed from the aqueous compositions by standard methods.
In line with this finding, the patent used a smoke condensate without acids in order to avoid contamination of the oven.
Hence the ground for opposition under Art 100(b) did not prejudice maintenance of the patent.
The opponent’s point of view
The smoke condensate as specified in claim 1 as granted could only contain the explicitly mentioned components since the wording “and the rest water” gave rise to a closed formulation thereof.
Acids, however, invariably formed in liquid smoke during the pyrolysis of the starting material. The concentrations and types of acids varied according to the process.
With claim 2 as granted being dependent on claim 1, the scope of claim 1 had to include a smoke condensate having a low pH.
By definition, an acidic solution of claim 1 having a low pH was an acidic solution comprising acids. By contrast, the smoke condensate called for in claim 1 comprised phenols, carbonyls and polysorbates but no acids.
Hence at the same time acids had to be absent from the smoke compositions but had to be present in order to achieve a low pH.
Insufficiency arose from this contradiction.
According to the opponent, claim 2 as granted was a “false dependent claim” because it altered the closed composition of an allegedly closed independent claim 1.
The board’s decision
The parties agreed that claim 1 relates to a closed composition, i.e. a smoke condensate that does not include other components than those stated in claim 1.
For the board, claim construction, namely the meaning that a skilled person would give to the wording of a claim, is a question of law. In determining this, the board is not bound by the parties’ views on the matter.
Consequently, the board observed that the smoke condensate composition defined in claim 1 is introduced by the term “comprising.” Due to the open-ended nature of this formulation, the inclusion of additional ingredients is, in principle, not excluded.
The scope of claim 1 includes smoke condensates having a low pH of between 2.0 and 3.5.
The board considered that this requirement also teaches against interpreting claim 1 as being directed to a “closed” smoke condensate composition, and supports the board’s interpretation.
Likewise, claims 2 and 3 contain further limitations which are not in line with a “closed” interpretation of claim 1. Such a closed interpretation would rule out the presence of ash and/or tar components called for in claim 3 as granted.
In the present case, if the opponent’s view were accepted, the conclusion would be that claim 1 does not encompass smoke condensates having such a low pH, since this would necessarily require the presence of acids.
That conclusion, however, would be at variance with the opponent’s argument that claim 1 includes variants having such a low pH. It would also be at odds with the corresponding core teaching of the patent itself as regards the preferred pH range.
Rather than signalling a closed formulation of the smoke condensate, the indication “and the rest water” in claim 1 means that the residual mass up to 100 wt% is made up of a corresponding amount of water.
his, however, does not rule out the presence of further components in the smoke condensates, as long as water complements the composition to 100 wt%.
Such an interpretation of claim 1 makes technically sense. By contrast, it is in line with e.g. claims 2 and 3 when interpreted as “truly dependent claims“. Unlike the interpretation of claim 1 as being directed towards a closed formulation of the smoke condensate, this interpretation leads to a scenario which is not at variance with the teaching of the patent itself.
With the board construing claim 1 as relating to the use of an “open” composition, no insufficiency of disclosure arises from the subject-matter of claim 1. The reason is that smoke condensate compositions comprising acids or any other additional component(s) fall within the scope of claim 1. Similarly, pH values as recited in claim 2, in the light of this interpretation, can be achieved using acid-containing smoke condensates.
No lack of enablement consequently results from the feature combination of granted claim 2, which in the view of the board is also encompassed in the scope of claim 1 as granted.
Since claim 1 does not call for any technical effect to be achieved, the fact that not all compositions falling within the scope of claim 1 might be non-contaminating the oven might have implications for the assessment of IS, but does not give rise to insufficiency of disclosure, cf. G 1/03, Reasons 2.5.2.
Comments
Firstly, the board made clear that it is not bound by an interpretation agreed by the parties.
Secondly, the board made clear that in claim of the form “comprising” combined with “and the rest water” does not give rise to a closed formulation. Other components can be present, provided that with water it adds up to 100 wt%.
As far as the distinction between an objection of lack of sufficiency and lack of IS, the catchword of T 2001/12 is abundantly clear as it also deals with the relationship between Art 83 and Art 84.
At least G 1/03 should have been known to the OD.
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