Zusammenfassung von EPC2000 Art 056 für die Entscheidung T0629/22 vom 19.03.2024

In T 629/22, concerning the inventive step of the subject-matter claimed in auxiliary request 1a-p-s, the board identified D12 as the closest prior art. The claimed subject- matter of a cheese analogue differed from the teaching of D12 at least on account of the type and amount of starch: 10 to 24 wt.% of non-modified root or tuber starch or of a waxy root or tuber starch instead of 7 wt.% modified starch. The board was satisfied that the tests in the patent and in D27 and D29 made it credible that cheese analogues prepared using non-modified tuber and root starch had melt-stretch characteristics. Appellant 1 noted however that example 28 of D38 showed that no stretchable cheese analogue could be obtained using 10 wt.% waxy potato starch, 0.5 wt.% potato protein and 35 wt.% sunflower oil. This demonstrated that the claims were overly broad and that melt-stretch characteristics could not be achieved across the entire scope claimed. The board did not agree with these conclusions. The amounts of potato protein (0.5 wt.%) and starch (10 wt.%) used in example 28 of D38 were the lowest foreseen in the patent whereas the amount of fat (35 wt.%) was the highest. This meant that the allegedly non-working embodiment in example 28 related to a rather peculiar case. The patent and the experimental reports D27 and D55 described cheese analogues comprising different amounts of waxy starch, potato protein and fat. The amount of these ingredients was varied substantially across the entire scope claimed: that of the potato proteins from 0.5 to 5 wt.%, that of the starch from 10 to 24 wt.% and that of oil from 10 to 35 wt.%. All these cheese analogues exhibited melt-stretch characteristics. This made it credible that the claimed effect could be obtained substantially across the entire scope claimed. The board noted the findings of the Enlarged Board in G 1/03 (OJ 2004, 413), point 2.5.2 of the Reasons, that where "...there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort [...] the inclusion of non-working embodiments is of no harm." The board found that in the case in hand the patent indeed described a large number of conceivable alternatives and sufficient information for finding appropriate alternatives over the claimed range, with reasonable effort. If a skilled person failed to prepare a stretchable cheese analogue using the amounts of ingredients in example 28 of D38, they would: realise that the conditions used are extreme because the amounts of the ingredients are at the edge of each of the ranges foreseen in the patent; find in the patent, and in particular in the examples, the teaching that compositions having the desired properties could be obtained by increasing the amount of potato protein and/or decreasing the amount of the oil. The tests in the patent and in D27 and D55 made it credible that if a skilled person followed the teaching in the patent, they would obtain a cheese analogue having the relevant stretch properties. The board concluded the claimed effect could be obtained substantially across the entire scope claimed. Therefore, the presence of a single non-working embodiment was of no harm.