Zusammenfassung von EPC2000 Art 056 für die Entscheidung T2004/21 vom 05.12.2023

In T 2004/21 the claimed invention related to a chewing gum which provided a hydration or "mouthwatering" sensation to a consumer. The appeal was against the decision of the opposition division finding that the European patent as amended according to auxiliary request 1 met the requirements of the EPC and in which decision the claimed subject-matter was considered by the opposition division to have involved an inventive step over the teaching of D1 and D2. The board considered that since D2, like the opposed patent, related to a chewing gum inducing a pleasant sensory experience in the consumer, it was, as argued by the respondent, the closest prior art. D1 focused on maintaining the mechanical properties of a chewing gum after long storage rather than on the sensorial effects induced in a consumer. Thus, the board found that D1 was not the closest prior art. Although D2 did not mention the mouthwatering effect, the results in the patent made it credible that the chewing gum disclosed in D2, which contained erythritol granules, induced it. There was no evidence that the chewing gum according to the invention induced a stronger mouthwatering effect compared to that of D2. The board did not agree with the appellant, however, that mouthwatering was an inherent property of the chewing gum of D2 and that this document already provided a solution to the problem of providing a chewing gum inducing mouthwatering. It referred to the established case law as set out in Case Law of the Boards of Appeal, 10th ed. 2022, I.D.4.5., "Alternative solution of a known problem". Although the chewing gum of D2 had "inherent" mouthwatering properties, D2 disclosed neither these properties nor the problem of providing a mouthwatering effect in a user. "Mouthwatering" was not mentioned in any of the cited prior-art documents. The claimed chewing gum could therefore not be considered an alternative solution to a known problem. When assessing inventive step, an interpretation of the prior-art documents as influenced by the problem solved by the invention where the problem was neither mentioned nor suggested in those documents had to be avoided, such an approach being merely the result of a posteriori analysis (Case Law of the Boards of Appeal, 10th ed. 2022, I.D.6., "Ex-post facto analysis"). Formulating the problem as the provision of an "alternative chewing gum" which was meant, explicitly or implicitly, to solve the problem of inducing mouthwatering would imply that this problem, as well as its solution, was known at the filing date. This would require reading into the teaching of D2 the technical contribution which the patent made over the prior art, namely the finding that erythritol granules induced a mouthwatering effect. This would inevitably result in an ex-post facto analysis. For these reasons, starting from D2, which disclosed chewing gums preventing an abrasive sensation, the underlying objective technical problem was to be formulated as the provision of a chewing gum inducing a mouthwatering effect in a consumer. Considering obviousness, the board held that none of the cited prior-art documents mentioned the problem of providing a chewing gum providing a mouthwatering effect. This problem was apparently not even known at the filing date. Therefore, to arrive at the claimed chewing gum without hindsight knowledge of the patent in suit would have required inventive skills. For these reasons alone, the skilled person confronted with the underlying problem would have had neither any reason nor guidance to prepare the claimed chewing gum by increasing the amount of coarse particles in the chewing gum of D2. Furthermore, D2 did not suggest providing a chewing gum comprising the claimed amount of coarse erythritol granules and taught away from the claimed solution. The subject-matter of claim 1, as well as that of the following claims, which were narrower in scope, therefore involved an inventive step over the prior art. For these reasons the board dismissed the appeal.