T 0412/04 24-01-2006

1. Main request

Claim 1 of this request is directed to a method for preserving fresh meat product in order to retain the characteristics of fresh meat. It is undisputed that the feature "in order to retain the characteristics of fresh meat" has no literal support in the application documents as originally filed.

1.1 The board does not accept the appellant's argument that the expression "to retain the characteristics of fresh meat" is equivalent to the expression "to extend the shelf life of the meat product", originally disclosed in the application. The reasons for this finding are given below, with respect to the third auxiliary request (item 3.1).

1.2 Implicit disclosure

1.2.1 In order to assess whether the feature in question could be considered as implicitly disclosed in the original documents, it is first necessary to establish the meaning of the expression "characteristics of fresh meat".

It is common ground that odour and colour are two characteristics of a meat product (see for example original description, paragraph bridging pages 3 and 4). However, the original description itself, in its discussion of freezing food as a way of retarding the growth of bacteria, points at texture, consistency and taste as further relevant properties of fresh meat which are impaired by the thawing of frozen meat (page 2, lines 23 to 25). Further, it is mentioned that fresh meat is also characterised by a pH within the range of about 5.3 to about 7 (page 27, lines 21 to 22). To the board, the fact that these criteria are discussed in the context of fresh meat demonstrates that they are clearly considered to be part of its characteristics.

Moreover, the appellant itself has submitted that "the invention intends to provide a method of preserving fresh meat wherein generally the characteristics of fresh meat, particularly but not exclusively color and odor (emphasis added), are kept so that the shelf life of the product is extended" (Statement of the grounds of appeal, page 4, second paragraph). In a subsequent letter, it is further stated that "the invention provides for such changes where the extension of shelf life of the fresh meat allows enzymes in the meat to degrade the meat fibre, thus making the meat more tender. Thus such a change may occur, when using the invention, while retaining the characteristics of fresh meat, such as colour and odour" (see letter dated 6 December 2005, page 3, last paragraph).

The board therefore concludes from the application documents as well as from the appellant's submissions that the "characteristics of fresh meat" involve other aspects than merely the odour and colour of the meat.

1.2.2 This conclusion is furthermore fully in agreement with the explanation in the original description concerning the gist of the claimed invention, namely to competitively inhibit and/or exclude the propagation of spoilage and pathogenic bacteria which are the source of malodours and discoloration and thereby extend the shelf life of the food. This effect is achieved by inoculating fresh meat with euhygienic (non-spoilage, non-pathogenic) bacteria (page 10, lines 18 to 27, and page 33, lines 7 to 25).

1.2.3 In summary, there is no indication in the application documents that the inoculation with non-spoilage, non-pathogenic bacteria as defined in Claim 1 is effective for retaining any characteristics of fresh meat other than its odour and colour. As indicated above, however, the term "characteristics of fresh meat" encompasses several other characteristics than odour and colour. The board therefore concludes that the subject-matter of Claim 1 extends beyond the original disclosure. In consequence, Claim 1 does not satisfy the requirements of Article 123(2) EPC.

1.3 Technical contribution / redundancy

1.3.1 The appellant argued that, pursuant to the decision G 1/93, the feature "to retain the characteristics of fresh meat" could be maintained in the claim without its infringing Article 123(2) EPC. This argument was based on the contention that this feature "is just a limitation that describes a "result" and neither give (sic) any technical contribution to the claim nor alone distinguished it from the prior art". According to the appellant, "the question of whether an added feature made a technical contribution or merely limits the scope of protection was discussed in T 384/91", ie the decision giving rise to the afore-mentioned decision G 1/93 (see letter dated 6 December 2005, page 5, second and last paragraphs).

1.3.2 The following point of law was referred to the Enlarged Board of Appeal by the cited decision T 384/91 of 11 November 1992 (OJ EPO 1994, 169):

"If a European patent as granted contains subject-matter which extends beyond the content of the application as filed and also limits the scope of protection conferred by the claims, is it possible during the opposition proceedings to maintain the patent in view of paragraphs 2 and 3 of Article 123 EPC?".

In the ensuing decision G 1/93 (OJ EPO 1994, 541), the Enlarged Board of Appeal answered as follows:

"A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent which includes such a feature." (Headnote 2 and item 2 of the Order).

In the further decision T 384/91 of 27 September 1994 (OJ EPO 1995,745), the responsible board took into account the instructions contained in G 1/93 and, addressing the substantive issues of the case, found that the feature "substantially free of stria" correlated with other features in the claim. It therefore concluded that the feature concerned provided a technical contribution to the subject-matter of that claim so that the condition stated in paragraph 2 of the Enlarged Board's order was not fulfilled (see Headnote 2 and items 5 and 6 of the decision).

1.3.3 According to the appellant, present Claim 1 is directed to a method defined by the essential features of:

(i) preserving fresh meat product in order to retain the characteristics of fresh meat,

(ii) inoculating a fresh meat product with an amount of non-spoilage, non-pathogenic bacteria effective to competitively inhibit the growth of spoilage and pathogenic bacteria prior to packaging the fresh meat product in a substantially oxygen impermeable package, and

(iii) the non-spoilage, non-pathogenic bacteria comprising predominantly Lactobacillus delbrueckii and/or Hafnia alvei".

As pointed out by the board, the aim "to retain the characteristics of fresh meat" in feature (i) is only achieved under appropriately tailored conditions of the bacteria inoculation ((sub)species and number of euhygienic bacteria used, kind and concentration of undesired bacteria, type of meat, temperature and other environmental conditions). This view is consistent with the original description and not refuted by the appellant (page 11, lines 17 to 26 and page 32, lines 9 to 19). All these parameters, thus in particular the features (ii) and (iii), have to be chosen in view of the directive established by the feature "to retain the characteristics of fresh meat". Taking into consideration the criterion set out in the decision T 384/91 of 27 September 1994 , it thus follows that, irrespective of the concrete meaning of the term "characteristics of fresh meat", the feature "to retain the characteristics of fresh meat" provides a technical contribution to the method of Claim 1.

1.3.4 The appellant also asserted that the feature "in order to retain the characteristics of fresh meat" in Claim 1 was redundant with regard to the statement "for preserving a fresh meat product". For this reason alone, it could not infringe Article 123(2) EPC.

While the board accepts that "to preserve" may have the meaning "to keep something as it is" or "to protect from harm", to "preserve a fresh meat product" cannot in practice be equated with to "retain (all) the characteristics of fresh meat". In the board's judgment the former statement is rather vague and does not address specific characteristics of the meat. In fact, according to the description, the problem of preserving meat would rather address the shelf life of the meat, ie the time span in which meat maintains saleable (page 10, last lines 18 to 27 and page 15, lines 3 to 5). This is by no means identical to the time span in which (all) the characteristics of fresh meat are retained. This issue is discussed in detail in section 3 below.

1.3.5 The board therefore concludes that the subject-matter of Claim 1 of the main request does not meet the requirements of Article 123(2) EPC.

First and second auxiliary requests

2. Claim 1 of each of these requests is directed to a method comprising the functional feature "to retain the characteristics of fresh meat". The above finding with respect to Claim 1 of the main request therefore applies mutatis mutandis to the subject-matter of these claims. In consequence, these requests are also unallowable under Article 123(2) EPC.

Third auxiliary request

3. Claim 1 of the third request is directed to a method for preserving a fresh meat product in order to extend the shelf life of the fresh meat. Thus the functional feature "to retain the characteristics of fresh meat" in Claim 1 as granted is now replaced by a new objective to be achieved, namely "to extend the shelf life of the fresh meat".

3.1 According to the description, the term "shelf life" means the period of time that a food product remains saleable to retail customers (page 15, lines 3 to 5). The extent of shelf life of fresh meat is described to be dependent of the number of spoilage and pathogenic bacteria present on the meat which cause "malodors, discoloration or poisoning of the food" (page 14, lines 5 to 11 and page 15, line 5 to page 16, line 27). Since the non-spoilage, non-pathogenic bacteria create essentially no malodours or discoloration of food products, such as meat, and since they competitively inhibit and/or exclude the growth of pathogenic and spoilage bacteria, they act to extend the shelf life of these food products (page 10, lines 21 to 27). Thus, the application teaches that the extent of the shelf life of the meat essentially corresponds to the time span during which the meat retains its odour and colour. The reader cannot infer from any part of the description that all the other characteristics of the meat are also retained during that time span. As a consequence, the technical feature "to extend the shelf life of the fresh meat" cannot be considered as equivalent to the stipulation "to retain the characteristics of fresh meat" in Claim 1 as granted.

At the oral proceedings, the appellant in fact submitted that the shelf life of fresh meat is longer than the time span during which the fresh meat still essentially retains its characteristics (cf. section IX above). This statement is fully in agreement with the criterion set out in the patent itself, namely that of the time span of saleability of the meat being solely governed by the inhibition of malodours, discoloration, and possibly poisonous by-products (see also item 1.3.4). In the board's judgement, the present amendment therefore cannot be accepted as a limitation with respect to Claim 1 as granted. On the contrary, the wording of present Claim 1 would confer protection on embodiments which are not encompassed by Claim 1 as granted, namely to methods for preserving fresh meat for the extent of shelf life even when the characteristics of fresh meat are no longer retained (emphasis added). For this reason, the incorporation into present Claim 1 of the feature "to extend the shelf life of the fresh meat" to replace the feature of "to retain the characteristics in fresh meat" in Claim 1 as granted amounts to an extension of the scope of protection conferred, contrary to the requirements of Article 123(3) EPC.

Fourth and fifth auxiliary requests

4. Claim 1 of each of these requests is directed to a method comprising the functional feature "to extend the shelf life of the fresh meat". The above finding with respect to Claim 1 of the third auxiliary request therefore applies mutatis mutandis to the subject-matter of these claims. In consequence, these requests are also unallowable under Article 123(3) EPC.

Sixth to eleventh auxiliary request

5. Claim 1 of each of the sixth to eleventh auxiliary requests is directed to a method for preserving a fresh meat product in order to "retain the color and odor characteristics associated with fresh meat for an extended period of time". Thus the functional feature "to retain the characteristics of fresh meat" in Claim 1 as granted is now replaced by this new objective.

5.1 As already observed above, according to the patent in suit "the shelf life" of fresh meat is the time span during which the meat has not developed malodours or undergone discoloration (item 3.1). In the board's judgement, the feature "to retain the color and odor characteristics associated with fresh meat for an extended period of time" is therefore equivalent to the functional feature "to extend the shelf life" in the sense of the patent in suit. As a consequence, the above finding in respect of Claim 1 of the third auxiliary request also applies to Claim 1 of the sixth to eleventh auxiliary requests, which are therefore not allowable under Article 123(3) EPC.

5.2 The board does not ignore the appellant's contention that the definition of the bacteria to be inoculated is more restricted in Claim 1 of the ninth to eleventh auxiliary requests than in Claim 1 as granted. However, this restriction has no bearing on the difference in scope of the two functional definitions "to retain the characteristics of fresh meat" and "to retain the color and odor characteristics associated with fresh meat for an extended period of time". As a consequence, these functional features in Claim 1 of the ninth to eleventh auxiliary requests still confer a scope of protection which is extended to embodiments not covered by Claim 1 as granted. The appellant's argument therefore is not susceptible of changing the above finding by the board.