This is a decision on an appeal filed by the opponent against the maintenance of the opposed patent in amended form.
Claim 1 of the request found allowable by the Opposition Division (OD) read:
1. A non-therapeutic process for improving the glucose metabolism of a companion animal comprising the steps of: feeding said animal a diet containing from 1-11 weight percent of supplemental total dietary fiber, said supplemental total dietary fiber consisting of a blend of beet pulp, fructooligosaccharides and gum talha or gum arabic; and maintaining said animal on said diet for a sufficient period of time to allow said blend to ferment in the gastrointestinal tract of said animal.
The opponent argued that the diet defined in the claims included a one-time administration of the dietary fiber. As it was not possible to obtain the desired beneficial effect after such a short duration, the claimed invention was not sufficiently disclosed.
The Board agreed:
[2] The invention defined in claim 1 of the sole request concerns a non-therapeutic process for improving the glucose metabolism of a companion animal involving a diet in which a certain blend of dietary fibres is fed to a companion animal. The duration of the diet is defined as follows: maintaining said animal on said diet for a sufficient period of time to allow said blend to ferment in its gastrointestinal tract. This instruction is per se very clear: the diet has to be maintained until the blend of dietary fibres is fermented.
As fermentation already occurs after the first administration of the fibre blend, the diet is reduced to a one-time administration: the fibre blend is orally administered, passes through the stomach and enters the intestine, where it is fermented. Then the diet is terminated. Such a one-time administration is in direct contradiction to the term “diet” which implies that a certain schedule concerning the administration of food is followed over a period of time that clearly surpasses a one-time administration. As a consequence, the claimed invention is contradictory in itself, so that the skilled person, trying to put into practice the invention defined in claim 1, is at a complete loss as to what he should do.
The OD argued that the feature “maintaining said animal on said diet for a sufficient period of time to allow said blend to ferment in the gastrointestinal tract of said animal” did not set a definite time limit for the use of the composition. That would be the only logical way to remove the contradiction.
The board, however, concludes that this interpretation would be contrary to the interest of legal certainty, as it would mean that a feature that is perfectly understandable per se would have to be deliberately ignored in order to make the invention workable. Such a step has to be distinguished from a situation concerning clarity, in which an unclear term figuring in a claim is interpreted in the light of the description. There, the unclear feature is not simply ignored. On the contrary, by studying the description, every precaution is taken in order to read it correctly. In the present case, however, the mental deletion of the feature in question would mean switching from the unworkable and thus insufficiently disclosed invention defined in claim 1 to a different invention that is workable but not claimed. The evaluation of sufficiency of disclosure takes account of the entire information to be found in the patent, including claims, description, examples and figures. The board, however, wishes to emphasise that the invention as defined in the claims constitutes the basis of the evaluation. If, as in the present case, the skilled person, taking into account the entire teaching of the patent, is not able to rework an invention which is defined in the claims in a completely comprehensible manner, then the invention is insufficiently disclosed. As a consequence, the requirements of A 83 EPC 1973 are not met.
The Board then revoked the patent.
NB: The Board also drafted a headnote:
There is insufficiency of disclosure if the skilled person, taking into account the entire teaching of the patent, is not able to rework an invention which is defined in the claims in a completely clear and comprehensible manner, unless he disregards a meaningful feature thereof.
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