Wednesday, 17 April 2013

T 808/09 – Sweet Death

When sloppy drafting meets thoughtless amendments, the outcome may be deadly.

The appeal was against the decision of the Opposition Division (OD) to revoke the patent for lack of novelty.

Claim 1 of the main request before the Board read:
A cartridge (1) for use in a beverage preparation machine, the cartridge containing one or more beverage ingredients (200) and being formed from substantially air- and water-impermeable materials, wherein the one or more beverage ingredients is a liquid chocolate ingredient, characterised in that the liquid chocolate ingredient has a viscosity between 70 and 3900 mPas at ambient temperature. (my emphasis)
The viscosity feature was introduced at the suggestion of the Examining Divison (ED). The patent proprietor explained that it had accepted this amendment in good faith with a view to expediting allowance of the application.

The Board found this claim to lack sufficiency of disclosure.

[2.1] Concerning the issue of sufficiency of disclosure the Board has to criticise the rather short reasoning given in point 2 of the reasons of the impugned decision:
“The OD is of the opinion that the skilled person trying to reproduce a cartridge of claim 1 would use a standard method for measuring the viscosity, which would e.g. be disclosed by the hand book of the device to be used, and thus obtain a cartridge according to claim 1”.
This reasoning is considered to be insufficient with respect to the plurality of different arguments as well as the evidence D1, D24 and D25 submitted by the two opponents 01 and 02 in support of their objection of insufficiency. None of these find any treatment in the impugned decision. It is also not apparent, neither from the decision nor from the minutes of the oral proceedings (OPs), why the OD changed its provisional negative opinion with respect to the viscosity feature as communicated to the parties, into the positive opinion expressed in the decision.

Indeed, the impugned decision is silent with respect to document D25, which has been timely submitted during the opposition procedure by opponent 02 and which both the appellant and respondent 01 confirmed as having been discussed at the OPs before the OD.

By the same token four other documents submitted during the opposition proceedings […] have not been mentioned in the impugned decision either.

[2.2] Taking proper account of the user’s manual D1 and the declaration D25 the Board reaches the opposite conclusion, for the following reasons.

Main request

[2.3] Product claim 1 of the main request comprises the feature of a “liquid chocolate ingredient having a viscosity of between 70 and 3900 mPas at ambient temperature”.

It is, however, evident that the patent in suit provides insufficient information to enable the person skilled in the art to carry out the invention with respect to this feature of the viscosity.

[2.4] In the first place, the patent in suit does not contain a single working example executed with a liquid chocolate concentrate within the scope of the claims as granted; they concerned exclusively ground coffee extract.

[2.4.1] Further, the patent description and particularly the passages quoted by the appellant […] are silent on how the viscosity of between 70 and 3900 mPas is to be determined and which device and which parameters necessary for measuring the viscosity of the liquid chocolate concentrate have to be used:

Paragraphs [0011] to [0014] only specify certain total solids content values of the liquid chocolate concentrates, which may contain a high solids content of cocoa solids and which may be a gel (i.e. thixotropic).

The dilution ratio of between 2 to 1 and 10 to 1 of said liquid chocolate concentrate […] is not helpful either. The presence of the concentrate to be diluted is a prerequisite for said dilution.

The viscosity difference between 1700 and 3900 mPas at ambient temperature and between 5000 and 10000 mPas at 0°C of an embodiment with a solids content of 67 Brix ± 3 mentioned in paragraph [0069] only leads to a huge difference in viscosity of 3300-6100 mPas at different temperatures but likewise does not enable the person skilled in the art to formulate such a liquid chocolate concentrate.

[2.4.2] The patent also does not contain any description how such liquid chocolate ingredients or concentrates should be prepared – there exists no formulation which cocoa solids and which other components need to be blended to achieve a composition having the high total solids content as e.g. specified in paragraphs [0011] to [0014] or [0069] – which at the same time also has a viscosity in the range of 70-3900 mPas at ambient temperature. It could be any combination of ingredients known from the prior art […] but the specification does not help in this respect and therefore places an undue burden on the person skilled in the art.

[2.4.3] It belongs to the common general knowledge of the person skilled in the art that liquid chocolate concentrates are typically both shear-thinning and thixotropic so that their viscosity is dependent on the temperature, applied shear rate as well as the shear time. This means that there is a time-dependent change in viscosity: the longer the fluid undergoes shear stress the lower is its viscosity […].

As a consequence of these properties a single viscosity value for such a concentrate, without any indication of the shear rate and of the measurement time, is meaningless and not enabling a determination of its viscosity.

[2.4.4] D1 does not disclose such a standard method for liquid chocolate concentrates. This fact was also admitted by the appellant at the OPs. D1 only discloses information necessary to make meaningful viscosity measurements, with the emphasis on Brookfield viscometers (see page 7, chapter “3.1 Why You Should Read This Chapter”). It states that it is necessary to record the viscometer model, spindle (or accessory), rotational speed, container size or dimensions, sample temperature, sample preparation procedure (if any), and whether or not the spindle guard was used to ensure reproducibility of the test results (see page 8, chapter “3.3.1 Recordkeeping”; and page 16, chapter “4.7.3 Measuring Conditions”). The patent in suit does not mention any of these parameters.

Thus D1 teaches the person skilled in the art the essential parameters which have to be considered when performing a viscosity measurement but it is silent which device components and which specific parameters have to be selected when in particular the viscosity of a liquid chocolate concentrate is to be measured.

[2.4.5] The reasoning of the OD in its decision to the contrary cannot hold since there is firstly no indication in the patent in suit concerning the device to be used - there exist several manufacturers of viscometers and the Brookfield viscometer mentioned in D1 is only one of them, […] so that the person skilled in the art cannot consult the corresponding viscometer manual for the viscosity measurement […]. Secondly there exists no standard method for measuring the viscosity of such thixotropic suspensions as stated in the decision. The declaration D25 states that there exists no standard method with a standard shear rate or standard measuring time for such concentrated dispersions […].

However, the appellant did not discharge its burden of proof for the existence of such a standard method for shear-thinning and/or thixotropic liquid chocolate concentrates (see Case Law, 6th edition 2010, sections VI.H.5.1.1 and VI.H.5.2). This deficiency has been mentioned in the Board’s communication annexed to the summons to OPs; when asked at the OPs by the Board the appellant admitted that it had no evidence for the existence of a standard method for measuring the viscosity of such liquid chocolate concentrates.

[2.4.6] The appellant’s further arguments cannot hold for the following reasons.

The arguments concerning the case history of the incorporation of the viscosity feature during the examination proceedings are not relevant for the issue of sufficiency of disclosure.

Furthermore, as correctly argued by respondent 01 the responsibility for this amendment remains with the appellant.

The further argument that the Examining Division considered that the disclosure was reproducible without undue burden is not particularly relevant for the appeal proceedings since this issue was actually raised in the opposition proceedings by opponents 01 and 02 who submitted in this context amongst others the documents D1 and D25.

The fact that the OD reached the conclusion that A 83 is complied with, is likewise not considered to be particularly relevant, in view of the extremely short reasoning given (see point [2.1] above) which does not take account of any of the opponents’ arguments and evidence.

The argument that the combined knowledge of D1 and the specification of the patent in suit would enable the person skilled in the art to carry out the invention cannot hold either since the patent does not give the information to use one of the Brookfield viscometers mentioned in D1.

The argument that the declaration D25 would not be relevant as it focuses only on the claims while A 83 requires to take account of the entire specification cannot hold since there is no difference between the subject-matter of claims 1, 2 and 4-12 as discussed in D25 and the disclosure of paragraphs [0011] to [0015] of the patent in suit. The additional viscosity range at 0°C for an embodiment with a specific total solids content according to paragraph [0069] of the patent does not resolve the sufficiency problem either […].

Likewise the argument concerning the missing “hard data” that the invention does not work or that the claimed viscosities cannot be determined cannot hold since the patent in suit already fails at the prior requirement of not disclosing the method, apparatus and the parameters for determination of the viscosity, in particular for the claimed liquid chocolate suspension.

In any case, the appellant did not produce any counter-evidence against the experiments carried out by opponent 02 demonstrating the effect of the shear rate on the viscosity of 13 different liquid chocolate concentrates belonging to the prior art which viscosities were measured at shear rates of 100 s-1 and 1000 s-1. This comparison clearly shows the effect of different shear rates on the measured viscosity.

The absence of any reference to viscosity measurements in D8 or D9, which do not explain in explicit detail how these viscosities were measured, cannot alter this conclusion. While not wishing to enter into a detailed discussion of these documents the Board notes that D8, though a granted patent, is not granted according to the EPC and D9 is a mere application, not a granted European patent.

[2.5] Taking account of the above the Board considers that the patent in suit fails to enable the measurement of the essential parameter of the invention, i.e. the viscosity of the liquid chocolate ingredient.

Considering this fact and in line with the longstanding jurisprudence of the Boards of Appeal (see Case Law, 6th edition 2010, section II.A.1 to II.A.7; compare e.g. T 805/93 (dealing with viscosity measurement at “room temperature”) and T 83/01 and T 1250/01 (both concerning the measurement of an essential parameter, i.e. a specific mean diameter or the Sears number, respectively)), the Board concludes that claim 1 of the main request does not comply with A 83.

The main request is therefore not allowable.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Anonymous said...

"The fact that the OD reached the conclusion that A 83 is complied with, is likewise not considered to be particularly relevant, in view of the extremely short reasoning given which does not take account of any of the opponents’ arguments and evidence."
I'm not sure I agree with that, either on the form (it's not the job of BoA to criticize the job done by the OD) or the substance (the OD gave arguments).

MaxDrei said...

I see that the OD included the Examiner (G.) who wrote for the ED, and so presumably suggested the offending wording for insertion in claim 1. No wonder then, that the OD baulked at finding it to offend Art 83. Where would G. put his face, when the Chair announces the OD's Decision?

I had thought that DG1 policy these days was NOT putting opposition files to the Examiner that handled examination on behalf of the ED prior to grant? Perhaps this case is an exception, it being thought necessary (on grounds of natural justice) to allow Exr G. on the OD, to give him a chance to defend his pre-issue judgement?

NB: Comment anonymised by the blogger.

Myshkin said...

Apparently the proprietor had argued that the fact that the OD considered Art. 83 to be complied with was a reason why the Board should come to the same conclusion.

Of course the mere fact that the OD has reached a particular conclusion is irrelevant. It seems to me that the Board therefore interpreted the proprietor's argument as "we argue that Art. 83 is complied with for the reasons given by the OD". This makes sense: if the OD has given good reasons, then the Board has to explain why they fail. The Board however does not consider the reasons given to be good reasons.

In general I don't see why a Board should not criticise the first instance, especially in a case where the first instance ignored relevant arguments of one of the parties.