T 313/07 – Wrong Approach

Claim 1 of the main request (identical to claim 1 as granted) read :

1. A whey protein dominant baby milk food including hydrolysed food obtainable [in] that those whey proteins or whey powders, which are normally employed in the form of whey powders and/or whey protein concentrates for the production of baby milk foods, are used which originate from

a) sour whey and/or

b) GMP-free or GMP-reduced sweet whey

and which have not been subjected [to] any other change with respect to their protein composition.

NB: GMP is short for the milk protein glycomacropeptide.

The Board deals with the ground for opposition under A 100(b). Having rejected a first argument of the opponent, the Board then goes on to say:

** Translation from the German **

[4.1.2] The other objection [set forth] by the opponent pursuant A 100(b) EPC 1973 is essentially based on [the argument] that the “product-by-process” wording of claim 1 makes it impossible to unambiguously characterise the product. For instance, the starting material is partly subject to considerable variations with respect to the protein profile. Moreover, the feature “which have not been subjected to any other change with respect to their protein composition” was not sufficiently well defined. The skilled person being in possession of the final product could not know whether or not he was within the scope of the claimed invention, i.e. whether or not he infringed the patent.

First it has to be established that A 100(b) and A 83 EPC 1973, respectively, do not concern the question of whether a patent is infringed. Theses articles rather concern the disclosure of the invention, i.e. the question of whether the European patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

However, as far as the present “product-by-process” claim is concerned, it is possible to carry out the invention, for the following reasons:

According to claim 1 as granted whey proteins or whey protein hydrolisates made from a) sour whey and/or b) GMP-free or GMP-reduced sweet whey are to be used. The skilled person trying to carry out aspect b) of the invention, therefore, has to completely or partly remove the GMP from the initial sweet whey. Moreover, the impugned patent unambiguously teaches that besides the step of removing or reducing the GMP, which can be carried out according to document D20 cited in the patent or according to other known processes, and the optional hydrolysis the protein composition must not be modified.

There cannot be any doubt that the skilled person can carry out these process steps using very different starting products and, therefore, carry out the invention. This also means that whosoever carries out the invention also knows which process steps he has carried out. Therefore, he always knows whether he was within our outside the claimed domain of protection.

This is why the present case is not comparable with the problems which T 256/87 and T 252/02 had to deal with. These cases concern the question to which extent an incompletely defined measuring method could have a negative impact on the possibility to carry out the invention.

[4.1.3] The objection of the opponent under A 100 b) EPC 1973 appears to be motivated by the consideration that there could be products which could be identical with the subject-matter of claim 1 in spite of having been produced with a different process. Thus, as a consequence of the varying protein profiles of the starting sweet whey, whey proteins obtained without any GMP reduction could be identical with whey proteins obtained from different sweet whey via GMP reduction. However, the Board is of the opinion that such considerations cannot be treated under A 83 or A 100 b) EPC 1973, respectively. If a whey protein dominant baby milk food containing such identical whey proteins, which had been obtained without a GMP reduction/removal, was available before the filing or priority date, as the case may be, this would have to be taken into account under A 54. In this case the “product-by-process” feature of the claim could not establish novelty any more. If a whey protein dominant baby milk food containing such identical whey proteins was made available to the public only after the filing or priority date, this could indeed constitute an infringement of the patent. This however is not to be decided by the EPO in opposition appeal proceedings.

To read the whole decision (in German), you may click here.