T 1736/06 – This Way Won’t Lead To Novelty

The single claim of the patent read:

Procedure for the production of stirred and drinking fermented milk products, characterized by the production of two or more individual different products made in a set of parallelly arranged fermenters, cooled and mixed in a desired proportion to make a new product.

The Opposition Division revoked the patent for lack of novelty over document D12. In its appeal, the proprietor argued the description had to be used to interpret the claims in line with A 69. Therefore, Claim 1 had to be read as being directed to a process wherein one and the same starting material - raw milk - was used and wherein different subjects of fermentation were applied in each of the parallelly arranged fermenters. In view of this, novelty had to be acknowledged.

The Board disagrees:

[2.1] The appellant argued that Claim 1 as granted had to be read in the light of the description pursuant to A 69. Therefore, the process of Claim 1 was, in the appellant’s view, restricted inter alia in that different subjects of fermentation had to be used in each of the parallelly arranged fermenters.

[2.2] However, the appellant’s approach is not in line with the established jurisprudence of the EPO, according to which A 69 does not offer any basis for reading into a claim features which can be found in the description.

Reference is made for instance to

• T 1129/97 [2.1.9]:

“...the practice of using an ambiguous and therefore imprecise term in the wording of a claim, and relying for its interpretation on an implicit but essential reference to the description, must remain prohibited. The principle of the self-sufficiency of the claim must be retained.”;

• T 1208/97 [4(b)]:

“A 69 does not offer any basis for reading into a claim features which can be found in the description when judging novelty.”; and

• T 223/05 [3.5]:

“A 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims. ... In particular, A 69 does not offer any basis for reading into a claim features which can be found in the description when judging novelty (see T 1208/97 [4(b)].”

[2.3] According to the appellant, its view on the interpretation of a claim was confirmed by T 476/89, T 544/89, T 565/89 and T 952/90. These decisions refer exclusively to cases in which a claim contains an unclear feature whereas in the present case there is no ambiguity in Claim 1 as granted.

It is unambiguously clear from the wording of Claim 1 that any subject of fermentation, including both the same or different subjects of fermentation, can be present in the parallelly arranged fermenters. The decisions cited by the appellant are thus irrelevant to the present case.

Moreover, the description does not contain any indication that the invention is restricted to different subjects of fermentation present in each of the fermenters. Therefore such a restriction could not be read into the claim even if one were to take the description into account. […]

[2.5] Consequently, the subject-matter of Claim 1 of the main request lacks novelty in view of D12. A 100(a) thus prejudices the maintenance of the opposed patent as granted.

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A post on a similar decision can be found here.