T 2118/08 – It’s Factual

This decision deals with an appeal against the revocation of the patent by the Opposition Division (OD).

Claim 1 of the patent as granted read:

1. Fat based food product wherein the food product is a yellow fat spreads[sic] containing vegetable fat and/or animal fat such as butterfat, a dressing, a coffeecreamer, a shortening, a filling or a topping, comprising natural fat components which have a blood cholesterol lowering effect in amounts sufficient to obtain a blood cholesterol lowering effect, wherein the product comprises at least 4 wt% phytosterol weight percentages being based on the total weight of the fat based food product, wherein the fat used in the product is a fat comprising at least 30 wt%, and preferably at least 45 wt% of pufa rich triglycerides, calculated on the total weight of the fat present in the product.

The ED had held that the claimed combination of the following features, contained in Claim 1 of all requests, could not unambiguously be derived from the parent application as filed:

(A) yellow fat spreads; 

(B) the product comprises at least 4 wt.% phytosterol weight percentages being based on the total weight of the fat based product; and 

(C) the fat used in the product is a fat/fat blend (for the auxiliary requests) comprising at least 30 wt.% of pufa rich triglycerides, calculated on the total weight of the fat present in the product.

Claim 1 of the main request before the Board corresponded to Claim 1 of the first auxiliary request before the OD and read as follows:

1. Fat based food product wherein the food product is a yellow fat spread containing vegetable fat and/or animal fat such as butterfat, comprising natural fat components which have a blood cholesterol lowering effect in amounts sufficient to obtain a blood cholesterol lowering effect, wherein the product comprises at least 4 wt% phytosterol weight percentages being based on the total weight of the fat based food product, wherein the fat used in the product is a fat blend comprising at least 30 wt% of pufa rich triglycerides, calculated on the total weight of the fat present in the product.

The auxiliary requests contained further limitations.

The proprietors argued that the subject-matter of the main request did not extend beyond the content of the earlier filed patent application because the features, namely (A), (B) and (C) were combinable. A patent specification was addressed to the person skilled in the art, who surely would understand that the best products would be obtained if the preferred features were combined, even if there was no explicit statement that they were combinable. In the mechanical and electromechanical arts it was routine to combine features which were not disclosed in a single embodiment but taken from the more general passages in the original text, even though combinability was not explicit ...

The proprietors also requested the Board to refer a set of questions (cited in the body of the decision, below) to the Enlarged Board (EBA) in case it envisaged to reject their requests for lack of compliance with the requirements of A 123(2).

The Main Request

[2.1] The OD in its appealed decision […] held that the subject-matter of Claim 1 extends beyond the content of the earlier application as filed, namely WO 96/38047, because it comprises a combination of features which was not disclosed in the parent application as filed.

[2.1.1] The subject-matter of Claim 1 relates to a fat based food product which comprises the combination of the following features:

(A) the food product is a yellow fat spread;

(B) the product comprises at least 4 wt% phytosterol weight percentages being based on the total weight of the fat based product; and

(C) the fat used in the product is a fat blend comprising at least 30 wt% of pufa rich triglycerides, calculated on the total weight of the fat present in the product.

[2.2] It is undisputed that each feature (A), (B) and (C) is individually disclosed in the earlier application as filed. Particular reference is made to WO 96/38047, page 11, lines 7-10 for feature (A)

“The invention is in particular very suitable for yellow fat spreads, dressings, cheese, shortenings and cooking and frying oils, and more in particular for yellow fat spreads which can comprise 0 (zero) to 90% fat (usually 5-80%).”;

page 5, lines 23-28 for feature (B)

“In a more preferred embodiment the fat based food product comprises at least 1.2 wt%, preferably at least 4 wt% phytosterol or at least 1.2 wt% preferably at least 4 wt% oryzanol or a mixture thereof in their relative weights.”;

and page 13, lines 8-11 for feature (C)

“If a fat blend is used, it is preferred that it comprises at least 30%, and more preferred at least 45% of polyunsaturated fatty acids, based on the total weight amount of the fat in the fat based food product.”.

[2.3] Nevertheless, it remains to be examined whether the combination of these features also has a basis in the earlier application as filed.

[2.3.1] First of all the board notes that the combination of features (A), (B) and (C) is not explicitly disclosed in the earlier application as filed, so that the relevant question to be answered is whether or not this combination is, at least implicitly, directly and unambiguously derivable from the earlier application as filed.

[2.3.2] As to whether or not the generation of a fresh particular combination contravenes A 123(2) (and the same criteria apply for A 76(1)), T 686/99 [4.3.3] states:

“The content of the application as filed must not be considered to be a reservoir from which individual features pertaining to separate sections can be combined in order artificially to create a particular combination. In the absence of any pointer to that particular combination, this combined selection of features does not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed.”

This approach is established jurisprudence of the boards of appeal and has been applied in, for example, T 296/96 [3.1] and T 1402/07 [2.1.2]. It might be worth mentioning at this juncture that the boards of appeal apply the same criteria when assessing novelty over a piece of prior art (e.g. T 305/87 [headnote], and T 763/07 [3.1]).

[2.3.3] The [patent proprietors] argued […] that

“... the patent specification is addressed to the person skilled in the art. If the person skilled in the art reads of a number of preferred features, surely that person will understand that the best products will be obtained if those preferred features are combined, even if there is no explicit statement that they are combinable. Obviously, that would not be the case if the text said explicitly that, these preferred features were not combinable.”

However, apart from this argument, the [patent proprietors] have not cited any passage of the earlier application as filed which contains a pointer motivating the skilled person to combine features (A), (B) and (C) of present Claim 1. In fact, these features are presented in the earlier application as filed rather in a parallel manner than with a connection to each other. This is corroborated by the fact that none of the examples, which is usually the place where the skilled person would look for the best products in a patent application, falls within the scope of Claim 1. In the only two examples describing the preparation of a spread, namely Examples V and VI of the earlier application, no phytosterol at all was used. Also none of the claims of the earlier application as filed provides a hint to the combination required in Claim 1. Although Claim 6 of the earlier application as filed relates to a yellow fat spread, a fat content of 0 to 60% is a requirement of the said claim. Such a requirement is completely absent in Claim 1 of the main request.

[2.3.4] In summary, the board agrees […] that the combination of features (A), (B) and (C) in Claim 1 is not clearly and unambiguously derivable from the application as filed. In fact, the subject-matter of Claim 1 appears to be […] firstly a rather arbitrary combination of features in order to draft a claim which is novel over the cited prior art, and secondly a combination which is not hinted at by the earlier application as filed.

[2.4] Therefore, Claim 1 of the main request contains subject-matter which extends beyond the content of the earlier application as filed, contrary to the requirements of A 76(1). That is also what was clearly intended by the OD and what was understood by the parties, even if the OD referred to A 123(2) in this context.

Consequently, the main request must be refused.

First to fifth auxiliary requests

[3] The subject-matter of Claim 1 of the auxiliary requests also comprises the combination of features (A), (B) and (C), which as set out above does not meet the requirements of Article 76(1) EPC. Therefore the auxiliary requests mutatis mutandis must be refused.

Referral to the EBA

[4.1] The [patent proprietors] alleged that there was a dichotomy in the case law concerning the standards applied when assessing whether a European application or patent fulfils the requirements of A 123(2). They argued that it appeared that a more stringent standard was often applied in the chemical and related arts than in the mechanical and electromechanical arts, where it was routine to combine features which were not disclosed in a single embodiment but taken from the more general passages in the original text, even though combinability was not explicit. This dichotomy has led to two different strands of case law, one comprising “liberal” decisions and the other comprising “strict” decisions. The [patent proprietors] considered that in order to clarify the relevant law the case should be referred to the EBA. Although they held that the formulation of the questions would ultimately be at the discretion of the board, they considered that the following appeared to be relevant:

(i) Does an amendment which combines preferred or particular features which are not disclosed in a single embodiment always contravene A 123(2)?

(ii) When considering combinations of features from different embodiments, what actually constitutes an “embodiment”?

(iii) In order to contravene A 123(2), to what extent do the members of a combination created by way of amendment need to be already combined, or be indicated as potentially combinable, in the original disclosure?

[4.2] The board […] considers that the combinability of features taken from different embodiments disclosed in a European application or patent is not a legal issue but a factual one. Thus, depending on the circumstances of each particular case, a board must decide whether a claimed combination of features is or is not directly and unambiguously derivable from the content of the originally filed application.

[4.3] Furthermore, the board has not identified any dichotomy in the case law. Whether a board has decided in favour of or against a claimed combination of features is the result of the evaluation of each individual case on its own merits following the requirement developed in the jurisprudence of the boards of appeal of the EPO, namely as to whether or not a claimed combination is directly and unambiguously derivable from the application as filed.

[4.4] The [patent proprietors] have even admitted in their statement of grounds of appeal […] that “(t)he problem is where the Board will draw the lines, in any particular case, with regard to what is, or is not, directly and unambiguously derivable, from the application as filed, and whether there is a technical contribution to the subject-matter of the invention”. This is exactly what this board has done in the present case: by considering the particular technical constellation of the present case, it has decided that the claimed combination of features is not directly and unambiguously derivable from the earlier application as filed.

[4.5] Under these circumstances there is no reason to refer the case to the EBA. […]

The appeal is dismissed.

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