T 1497/08 – No Kitting

As we have seen in the preceding post, the main request filed by the patent proprietor was found to lack clarity. During the oral proceedings (OPs) before the Board, the proprietor also filed a seventh auxiliary request claim 1 of which read:

A process for producing a fried flour-based product, comprising the steps of:

(a) preparing a dough comprising flour, water and an added lipolytic enzyme which has phospholipase activity in the range of 0.5-45 kLEU per kg flour,

(b) holding the dough during or after mixing, and

(c) frying the dough to obtain the fried product,

wherein phospholipase activity (LEU) is measured as the release of free fatty acids from lecithin, wherein 50 myl 4% L-alpha-phosphatidylcholine, 4% Triton X-100, 5 mM CaCl2 in 50 mM HEPES, pH 7 to which is added 50 myl enzyme solution diluted to an appropriate concentration in 50 mM HEPES, pH 7, wherein the samples are incubated for 10 min at 30ºC and the reaction stopped at 95ºC for 5 min prior to centrifugation (5 min at 7000 rpm), wherein free fatty acids are determined using the NEFA C kit from Wako Chemicals GmbH, and wherein 1 LEU equals the amount of enzyme capable of releasing 1 mymol of free fatty acid/min at these conditions. 1 kLEU = 1000 LEU. (my emphasis)

The Board finds this request not to be admissible:

[7] During the OPs before the board, the [patent proprietor] submitted a seventh auxiliary request. Claim 1 of this request differs from claim 1 of the previous request inter alia by the requirement that “the free fatty acids are determined using the NEFA C kit from Wako Chemicals GmbH”.

[7.1] The [opponent] requested that this late-filed request should not be admitted into the proceedings. It argued that the NEFA C kit was equivalent to a trademark the meaning of which could change over time. In the present case, an employee of Wako Chemicals had confirmed on the phone that this kit was no longer available. It was thus not clear in the [opponent’s] opinion how the amount of free fatty acids was to be determined. In view of the fact that different methods led to different results, the introduction of this kit into claim 1 rendered the claim unclear. Finally, the [opponent] explained that in order to substantiate the non-availability of the kit, it would need more time to obtain e.g. a declaration from Wako Chemicals GmbH.

Concerning the [patent proprietor’s] argument that a datasheet for the NEFA C kit was available on the Internet and provided sufficient information to determine free fatty acid amounts, the [opponent] argued that this datasheet was not on file. Even if it was, more time would be needed to study the content of this sheet, in particular with regard to its date of publication.

[7.2] In the board’s judgement, if the NEFA C kit should indeed no longer be available and/or the datasheet should not provide sufficient information, the skilled person would not know which method to apply in order to determine the amount of free fatty acids. In this situation, claim 1 would be unclear with regard to the amount of free fatty acids and hence the phospholipase activity, unless all methods led to the same result.

In view of this, the clarity of claim 1 of the seventh auxiliary request hinges on the availability of the NEFA C kit or the information content of the datasheet related to this kit and the question of whether different methods for determining the amount of free fatty acids lead to different results.

[7.3] The [opponent] was confronted with a claim relating to the NEFA C kit at an extremely late stage, namely towards the end of the OPs. As set out above (point 7.2), the introduction of this feature into claim 1 raised new issues that could not be resolved in the OPs. As foreseen by Article 13(3) RPBA, in this situation, the amendment is not admissible. Said amendment and with it the seventh auxiliary request were therefore not admitted into the proceedings (Article 13(3) RPBA).

[7.4] The [patent proprietor] argued that D28 showed that the NEFA C kit had been available in 2008. However, this argument is irrelevant to the above-discussed question as to whether the kit is still available now.

The [patent proprietor] further argued that the seventh auxiliary request constituted a serious attempt to overcome the objections raised by the [opponent] during the OPs and that the request should therefore be admitted into the proceedings. However, this does not alter the fact that the request raised new issues that were not resolvable during the OPs.

The [patent proprietor] finally argued that the subject-matter of the seventh auxiliary request did not diverge from the subject-matter previously claimed and that therefore the seventh auxiliary request should be admitted. However, this is not correct as the NEFA C kit had not been contained in the claims of any of the previous requests before the board and hence, the subject-matter of the seventh auxiliary request in fact does diverge from the subject-matter previously claimed.

[7.5] The [patent proprietor’s] arguments were therefore not convincing and hence could not change the above finding that the seventh auxiliary request could not be admitted into the proceedings.

To read the whole decision, click here. The file wrapper can be found here.