The applicant appealed against the decision of the Examining Division (ED) refusing the application.
Claim 1 on file before the Board read:
1. Use of a cationic preservative derived from the condensation of a fatty acid and an esterified dibasic amino acid, according to the following formula:
as a preservative in food preparations,wherein the preservative is added to such food products at a concentration from 0,006% to 0.015%. (my emphasis)
The ED held that the amended concentration range from 0,006% to 0,015% in claim 1 was not originally disclosed and that its upper and lower limit was formed by a generalisation of single values taken from the examples. In its view, the concentration of the cationic preservative (hereinafter: LAE) would be influenced by the nature of the food product and it was thus not admissible to isolate features from a set of features which have been disclosed in a specific combination in the examples.
The amendment was, therefore, not in compliance with A 123(2).
The Board disagreed:
 The Board notes that, in the application as filed, the broadest general range relating to the concentration of LAE in food products is from 0,0001% to 1% as disclosed in claim 5. The new range of 0,006% to 0,015% fully lies within this broadest range and therefore constitutes a limitation.
This new range, however, was formed by taking, as end points, single values from examples 2 and 4 relating to the use of LAE as preservative in two different specific food products at different growth temperatures, namely 150 ppm for a chicken product at 10°C in example 2 and 60 ppm for a blackberry juice at 34°C in example 4.
[2.1] In order to assess whether this new range complies with A 123(2) it has to be considered whether a skilled person, in analogy to T 201/83, would generalise these values in the sense that he would recognise them as not only associated with the specific food products and temperatures used in the examples.
In this context, it emerges from table 1 of the application as filed that LAE as preservative is active against a number of gram-positive and gram-negative bacteria as well as fungi and yeast. It is furthermore stated on page 1, lines 4 to 5 from the bottom that “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products”. From this the skilled person would therefore recognise that the preservative effect of LAE is universal and not limited to specific bacteria and food products.
This is confirmed by the results presented in tables 2 to 9 of the experimental part of the application depicting for different food products the growth of bacteria and/or mould & yeast (expressed in the number of colony forming units, cfu/g,) preserved with various LAE concentrations in comparison with the respective control samples without LAE.
The following can be deduced
(a) all examples of the application as filed lie within the new range formed by the end values of 0,006% (60 ppm) and 0,015% (150 ppm) LAE taken from examples 2 and 4;
(b) at the beginning of the test (0 days) the food-specific number of colony forming units (cfu/g), is similar in the respective food samples with and without LAE (control);
(c) with progressing time (after 3, 5, 14 and 43 days) the increase of the number of cfu/g in the control samples is considerably higher than in the samples preserved with LAE in various concentrations and at various growth temperatures;
(d) the observations under (b) and (c) not only apply for the series of examples 1, 3, 5, 7 and 8 with LAE concentrations of 100 ppm, but also for the examples with LAE concentrations higher or lower than 100 ppm, including the two samples with the LAE concentrations of 60 ppm and 150 ppm in examples 2 and 4 forming the end values of the claimed range;
(e) the trend observed under (b) to (d) is common to all examples, regardless of the kind of preserved food products and the bacterial growth temperatures.
[2.2] From the above, the skilled person would conclude that, at least within the new concentration range of 0,006% to 0,015%, the LAE activity is not bound to a specific concentration, food product or bacterial growth temperature. The skilled person would therefore unambiguously extract from the application as filed that, within the broadest general LAE concentration range of from 0,0001 to 1%, the narrow range formed by taking the LAE concentrations of 60 ppm (0,006%) and 150 ppm (0.015%) of examples 4 and 2 as end values can also be generalized.
The range claimed in claim 1 therefore complies with A 123(2). […]
I would say that this finding is quite out of line with the established case law. I guess most Boards would not have accepted such an amendment.
Should you wish to download the whole decision, just click here.
The file wrapper can be found here.
NB: Le blog du droit européen des brevets was quicker in reporting this decision (here).