T 759/10 – Normal Development

This decision deals with an appeal against the revocation of the opposed patent.

Claim 1 of the main request read as follows:

1. A texturizing composition comprising a texturizing agent and a hardstock, the texturizing composition having substantially the same physical properties as hardstocks, characterized in that the texturizing agent consists essentially of one or more phytosterol fatty acid esters, one or more phytostanol fatty acid esters or their mixtures, and in that the texturizing composition comprises at least 70% of the texturizing agent. (my emphasis)

According to the Opposition Division (OD), while the originally filed application provided support for a texturizing agent comprising and consisting of stanol/sterol esters, a texturizing agent consisting essentially of stanol/sterol esters was not clearly and unambiguously disclosed. Such a feature could also not be considered to be inherently supported by the combination of the terms “comprising” and “consisting of”, because the technical meaning of the term “consisting essentially of” was different from that of these two terms.

The patent proprietor filed an appeal. In case the Board was unwilling to allow its requests, it requested the Board to refer the following questions to the Enlarged Board (EBA):

1. In order for amendment of the term “comprising” to “consisting essentially of” to be in accordance with A 123(2), is it necessary for the term “consisting essentially of” to be found expressis verbis in the application as filed?

2. If the answer to question 1 is no, is it nevertheless necessary to consider whether the term “consisting essentially of” is directly and unambiguously derivable from the content of the application as originally filed?

3. If the answer to question 2 is yes, is the term “consisting essentially of” considered directly and unambiguously derivable from the term “comprising” itself, such that no new subject-matter is introduced by an amendment of the term “comprising” to the term “consisting essentially of”?

Here is what the Board had to say:

Amendments - A 100(c)

[3.1] Claim 1 of the main request contains the feature that the texturizing agent “consists essentially of one or more phytosterol fatty acid esters, one or more phytostanol fatty acid esters or their mixtures” (in the following denoted “stanol/sterol esters”). This feature differs from the corresponding feature in claim 1 as originally filed in that the term “consists essentially of” has been substituted for the term “comprises”. It was a matter of dispute between the parties whether this amendment infringed A 100(c).

[3.2] The term “consists essentially of” in claim 1 of the main request implies that apart from the stanol/sterol esters, only certain types and amounts of other components may be present in the texturizing agent, namely those types and amounts that do not materially affect the essential characteristics of the texturizing agent (see the interpretation of the term “consisting essentially of” in e.g. T 472/88 [3]).

[3.3] The application as filed does not contain any explicit disclosure of the term “consisting essentially of” or the possibility that the texturizing agent, apart from the stanol/sterol esters, contains certain types and amounts of other components that do not materially affect its essential characteristics.

It has therefore to be examined whether there is a clear and unambiguous implicit disclosure in the application as filed for the amendment from “comprises” to “consists essentially of”.

[3.4] As has been set out above, claim 1 as originally filed and page 10, lines 20-22 of the application as filed disclose texturizing agents comprising the stanol/sterol esters.

The appellant argued that the term “comprising” encompassed three alternatives, namely (i) “comprising”, (ii) “consisting of” and (iii)”consisting essentially of”, and each of these alternatives would immediately come to the skilled person’s mind when reading the term “comprising”. The term “comprises” is therefore by itself already a sufficient basis for the term “consists essentially of”.

The board cannot accept this argument as each term has a different technical meaning, namely (i) that any further component can be present (“comprises”), (ii) no further component can be present (“consists of”) and (iii) specific further components can be present, namely those not materially affecting the essential characteristics of the texturizing agent (“consists essentially of”). Therefore the skilled person is not at liberty to choose whichever of the three terms he wishes when reading the term “comprises”.

Consequently, the reference to texturizing agents comprising stanol/sterol esters in the application as filed does not provide a clear and unambiguous disclosure of the feature “consists essentially of”.

[3.5] Apart from the disclosure of texturizing agents comprising the stanol/sterol esters, the remaining part of the application as filed refers to texturizing agents consisting of these esters. Reference is made in particular to the following passage on page 8, lines 2-4 as filed:

“The process comprises substituting, for at least a portion of the hardstock, a texturizing agent consisting of fatty acid esters of sterols, fatty acid esters of stanols or mixtures of these” (emphasis added).

As has been set out above, the term “consisting of” has a different technical meaning than the term “consisting essentially of” in that it excludes the presence of any components other than the stanol/sterol esters. The reference to texturizing agents consisting of stanol/sterol esters in the application as filed therefore does not provide a clear and unambiguous disclosure of the feature “consists essentially of” either.

[3.6] Apart from the above disclosures, the passage on page 12, line 29 to page 13, line 7 of the application as filed appears to be relevant with regard to the composition of the texturizing agent. This passage describes the preparation of stanol fatty acid esters (as the texturizing agent) from (i) a fatty acid ester or a fatty acid ester mixture, (ii) a stanol and (iii) an interesterification catalyst. This reaction results in a mixture of stanol fatty acid esters and further fatty acid esters, which mixture can either be purified or can be applied as such. This preparation process is further illustrated by way of a specific example on page 15, lines 1-30, where the preparation of stanol fatty acid esters is described starting from vegetable oil stanol and erucic acid rapeseed oil methyl ester (a fatty acid ester) and resulting in a blend of stanol fatty acid esters and erucic acid rapeseed oil methyl ester. The conversion rate of the esterification process is described to be higher than 99% (page 15, line 29). Apart from the stanol fatty acid esters and erucic acid rapeseed oil methyl ester, the resulting reaction mixture thus possibly contains additionally some unreacted stanol starting material (due to conversion below 100%). This reaction mixture can be used as such or after removal of the erucic acid rapeseed oil methyl ester by vacuum distillation (page 15, lines 24-27).

These disclosures imply that apart from the stanol esters, the texturizing agent may contain some additional fatty acid esters and some unreacted stanol. According to the appellant, these disclosures provide a basis for the term “consists essentially of” in claim 1 of the main request. The term “consisting essentially of” is however not restricted to additional fatty acid esters or unreacted stanol but clearly covers in general any types and amounts of further components that do not materially affect the essential characteristics of the texturizing agent. The specific reference to additional fatty acid esters and unreacted stanol in the application as filed thus does not provide a clear and unambiguous disclosure of the feature “consists essentially of” in claim 1 of the main request.

[3.7] The amendment of the term “comprises” in claim 1 as originally filed to the term “consists essentially of” thus infringes A 100(c).

The main request has therefore to be refused. […]

Request for referral to the EBA of Appeal (EBA)

[5] The appellant requested that, in the event of any of the main request or auxiliary requests 1 and 2 not being granted, three questions be referred to the EBA (in the following “referral questions”) as a divergence existed between, on one hand, decisions T 472/88 and T 975/94 and on the other hand T 868/04 and T 725/08. The appellant in particular argued that in T 472/88 and T 975/94 the respective boards considered the amendment of the term “comprises” to “consists essentially of” to be generally allowable as the term “consists essentially of” was narrower than “comprises”, while in T 868/04 and T 725/08 the respective boards concluded that in the absence of either an explicit or an implicit disclosure of the term “consists essentially of”, such an amendment extended beyond the content of the application as filed.

[5.1] In T 472/88 [4] the board considered the requirements of A 123(2) to be met for a claim containing a number of amendments, one of which was the replacement of the terms “comprising” by the term “consisting essentially of”. The board cited several passages of the application as filed as a basis for the amendments but from inspection of the application in the public file (the cited passages are not quoted in the decision), it appears that the passages are not concerned with the amendment of “comprises” to “consisting essentially of” but with the other amendments. Rather, it therefore appears to be the case that the board considered the term “comprises” by itself to be a sufficient basis for the amendment from “comprising” to “consisting essentially of”: see point [4], penultimate paragraph. In T 975/94 [1.1], it was decided that the amendment of “comprises” to “consists essentially of” met the requirements of A 123(2) as the term “consists essentially of” was narrower in meaning than the term “comprises”, so that no new subject-matter was introduced by this amendment. No further explanation as regards this amendment is present in the decision.

The present board therefore agrees with the appellant that the two boards in decisions T 472/88 and T 975/94 appear to have considered the term “comprises” by itself to be a sufficient basis for the term “consists essentially of”.

[5.2] However, since these two decisions, the jurisprudence of the boards has further developed, in particular by way of the two later decisions of the EBA in G 2/98 and G 1/03.

In G 2/98 (OJ EPO 2001, 413; point 9), the EBA held as follows:

“... priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.”

Hence, this decision establishes the criterion of clear and unambiguous derivability with regard to the concept of “the same invention” referred to in A 87(1). According to G 1/03 [2.2.2; 4], the same criterion has to be applied with regard to both A 87 and A 123(2):

“It is true that the European patent system must be consistent and the concept of disclosure must be the same for the purposes of A 54, A 87 and A 123.” (point [2.2.2])

“In order to avoid any inconsistencies, the disclosure as the basis for the right to priority under A 87(1) and as the basis for amendments in an application under A 123(2) has to be interpreted in the same way.” (point [4]).

Consequently, the criterion of clear and unambiguous derivability referred to in G 2/98 has to be applied also to the requirements of A 123(2) and thus A 100(c). This is further confirmed by G 2/10, where the EBA used this criterion in the context of “disclosed disclaimers”:

“An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes A 123(2) if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.” [order 1a].

In line with these decisions of the EBA, more recent decisions of the boards of appeal, e.g. T 868/04, T 725/08 and T 903/09 have applied the criterion of clear and unambiguous disclosure to decide on the allowability of the amendment of the term “comprises” to “consists essentially of”.

T 868/04 [2.2]:

“In order to determine whether or not an amendment [concerning the amendment of “comprising” to “consisting essentially of”] offends against A 123(2) it has to be examined whether technical information has been introduced which a skilled person would not have objectively and unambiguously derived from the application as filed...”. (Insertion in squared brackets by the present board).

T 725/08 [3.2; 3.3.1]:

“[3.2] This expression [“consisting essentially of”] is not mentioned explicitly in the application as originally filed. Thus the board has to examine on the basis of the submissions of Appellant I whether it is directly and unambiguously derivable from the content of the application as originally filed...

[3.3.1] It is, therefore, concluded that in the absence of either an explicit or an implicit disclosure of a process involving a milling mixture “consisting essentially of”, the process defined in Claim 1 of the main request extends beyond the content of the application as originally filed.” (Insertions in squared brackets by the present board).

T 903/09 [8.1-8.2]:

“[8.1] With respect to claim 1 of the main request ..., the feature “comprising” was replaced by “consisting essentially of”. This feature is not explicitly disclosed in the application as originally filed, where the feature “comprising” is always mentioned ... The question is nevertheless whether the person skilled in the art would regard the subject-matter now claimed as implicitly but unambiguously disclosed in the application as filed.

[8.2] Even it might be conceded as contended by the respondent, that the feature “consists essentially of” represents a limitation to identify more specifically the most essential elements of the invention, the question, which is different, is whether this new subject-matter meets the requirements of A 123(2) as defined above.”

[5.3] Consequently, a uniform approach has been developed by the jurisprudence of the boards of appeal, according to which an amended feature must, explicitly or implicitly, be directly and unambiguously disclosed to the skilled person using common general knowledge in the application as filed in order to be allowable under A 123(2)/100(c).

[5.4] On the basis of this uniform approach, the first referral question can be answered in the negative by the present board without the need for any referral, i.e. it is not in doubt that in order for the amendment of the term “comprising” to “consisting essentially of” to be in accordance with A 123(2), it is NOT necessary for the latter term to be found expressis verbis in the application as filed.

[5.5] Equally on the basis of this uniform approach, the second referral question can be answered in the positive by the present board without the need for any referral, i.e. it is not in doubt that it is indeed necessary in the context of A 123(2) to consider whether the term “consisting essentially of” is directly and unambiguously derivable from the content of the application as filed.

[5.6] As to the third referral question, namely whether the term “consisting essentially of” is to be considered directly and unambiguously derivable from the term “comprising” itself, in the more recent decisions which have applied the criterion of clear and unambiguous derivability (T 868/04, T 725/08 and T 903/09) the boards have considered this criterion not to be automatically fulfilled by the term “comprising” alone. This difference from the earlier decisions in T 472/88 and T 975/94 is part of the ordinary development of the jurisprudence of the Boards of Appeal and does not mean that a reference to the EBA is required for ensuring uniform application of the law: see G 3/08 [4].

More to the point, however, what the skilled person would clearly and unambiguously derive from an application as filed is a question that can only be answered by reference to the application in question. No general answer to the referred question is therefore possible and it is not a suitable subject-matter for a reference to the EBA.

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