T 0824/06 09-12-2008

1. The appeal is admissible.

2. Procedural matters

2.1 The Board notes that the allegation made by the Respondent 02 of a substantial procedural violation committed by the Opposition Division boils down to the request that the Board condemns this conduct on the basis of an alleged general principle of European Law, according to which each and every objection of a party should be dealt with in a final written decision irrespective of whether such objection was decisive for the relevant decision. In the present case this observation relates to Respondent O2's Article 84 EPC objections, which in its opinion should have been commented upon, irrespective of the fact that it was successful with regard to its overriding request for revocation of the patent.

2.2 The Board does not agree to this position. The fact that the Opposition Division did not specify why in its opinion the requirements of Article 84 EPC were met did not deprive the Respondent of any right and no grievance can be seen: it obtained before the department of first instance the requested revocation of the patent and did not lose thereby its entitlement to pursue its Article 84 EPC objections before the boards of appeal in the event the Patentee appealed, as happened. Indeed the Opponent/Respondent availed itself of the opportunity to resubmit its points of view concerning Article 84 EPC as well as Article 83 EPC.

2.3 In conclusion on this point, the Board adds that the requirement of Rule 111 EPC according to which the decisions of the EPO must be reasoned is to be understood in accordance with its aim. The department making the decision must give the reasons supporting its decision; this does not mean that it has to deal with arguments and/or grounds not relevant for the decision. The Board is not aware of any European regulation requiring it to act otherwise. (cf. Article 125 EPC)

2.4 From the above, the Board concludes that the Opposition Division did not commit any substantial procedural violation.

MAIN REQUEST

3. Amendments (Article 123 EPC)

3.1 Claim 1 of the main request is based on Claim 1 as originally filed but limited to the preserving of a slaughtered chicken in accordance with Claim 14 as filed. It further specifies the nature of the cooling treatment (support page 3, lines 12 - 24 for the first cooling step and page 3, lines 25 - 36 for the second cooling step), the duration of the treatment (support Claim 14 as filed; see also page 5, lines 1 - 3), the temperature of the surface of the chicken during both cooling steps (see Claim 6) and the position of the cooling steps within the general preserving method (support figure and the associated description on page 5, lines 32 - 36 and page 6, lines 23 - 25).

3.2 The Opposition Division rejected the main request because the subject-matter of its Claim 1 included a maximum for the temperature of the surface of the chicken of 15ºC separately for the first and the second cooling steps, this amendment not being supported by the application as originally filed, according to which this temperature maximum was only disclosed in relation to the overall cooling treatment and was not specifically associated with both the first and the second cooling step.

3.3 The Board agrees with this conclusion of the Opposition Division. The application as originally filed is silent about the temperature of the surface of the chicken or part thereof during the separate cooling steps. The application only mentions that "during which first and second cooling steps the surface of the bird of part thereof is cooled to such a temperature that the germ counts of the decay-causing and pathogenic micro-organisms remain below a predetermined value" (see Claim 1). It further specifies in Claim 6 and on page 4, lines 1 to 5 that "the temperature of the surface of the bird or part thereof is brought - emphasis by the Board - to a maximum of 15ºC. This indication that the temperature is "brought" to a maximum of 15ºC can be understood as being the result of the overall process and not as a requirement for each individual cooling step.

3.4 The Appellant argued essentially that the application as originally filed did not specifically indicate that the value of the temperature of the surface was that obtained after conclusion of the whole cooling process. Moreover, reducing the surface temperature to a maximum of 15ºC during the first cooling step would be reasonable because in order to achieve a rapid cooling of the core of the chicken, i.e. a fast heat transfer, it was necessary to cool the surface to appropriately low temperatures.

3.5 The Board agrees with the Appellant that this interpretation is reasonable and would even be within the scope of the disclosure of the application as originally filed. However this is not a sufficient criterion for the allowability of an amendment; indeed for an amendment to be allowable Article 123(2) EPC requires its direct and unambiguous disclosure; a reasonable plausibility is insufficient. This condition is not met here.

3.6 Claim 1 of the main request therefore does not fulfil the requirements of Article 123(2) EPC.

FIRST AUXILIARY REQUEST

4. Amendments (Article 123 EPC)

4.1 Claim 1 of the first auxiliary request corresponds to Claim 1 of the main request but having the amendment discussed above in relation to the main request replaced by the feature: "during which successive steps the temperature of the surface of the chicken or part thereof is brought to a maximum of 12ºC".

This amendment overcomes the objection under Article 123(2) EPC which was responsible for the rejection of the main request because it fully conforms to the original disclosure (Claim 6; page 4, lines 1 to 5).

4.2 Respondent 02 objected to Claim 1 of the first auxiliary request in respect of the maximum cooling time of two hours for the second cooling step.

4.3 Respondent 02 did not dispute that the application as originally filed explicitly mentions that for chickens the second cooling step may take "no more than about 2 hours" (page 5, line 3), but argued that in the light of the overall teaching of the application according to which the second cooling step should be slow and took at least two and at most five hours (Claim 1; page 3, lines 25 to 36) this specific statement must be interpreted to mean that for chickens the second cooling step should be carried out slowly and for "approximately two hours". Since the second cooling step of Claim 1 of the first auxiliary request was not restricted either to slow cooling or to a lower limit of "approximately two hours", but allowed fast cooling for any duration between 0 and 120 minutes, it contravened Article 123(2) EPC.

4.4 The Board cannot accept these arguments of Respondent 02. The amendment finds its explicit basis in the application as originally filed (see also Claim 14) from which the wording has been taken. The statement in the application as originally filed on page 3, lines 25 to 26 relates to a preferred embodiment within the broader scope of the application as originally filed directed to birds in general (including turkeys which, due to their size, require longer cooling times); there is thus no contradiction to the statement that for chickens, to which the current claims are now restricted, the second cooling step takes no more than two hours.

The Board also disagrees with the argument that the subject-matter of amended Claim 1 allows a fast cooling not covered by the original application. Amended Claim 1 requires that during the second cooling step "the core temperature of the meat remains higher than the temperature at which cold-shortening occurs". According to page 2, lines 23 - 27 of the description as filed cold-shortening is a contraction of muscles which occurs if the meat is cooled too rapidly. Consequently, this functional feature ensures that only a 'slow' cooling is covered by the amended claim. In this respect the Board accepts the argument presented by the Appellant, supported by the evidence in the citations, e.g. O10, that the temperature at which cold-shortening occurs is not a constant value, but is highest immediately after slaughtering and becomes lower in proportion to the biochemical phenomena occurring post mortem. The prevention of cold-shortening thus requires a cooling rate slow enough to accommodate these biochemical processes.

4.5 Additionally, the amendments made clearly restrict the scope of the claims.

4.6 The subject-matter of the claims of the first auxiliary request therefore fulfils the requirements of Article 123(2) and (3) EPC.

5. Article 84 EPC

5.1 When amendments are made to a patent during opposition, Article 101(3) EPC requires consideration to be given as to whether the amendments introduce any contravention of any requirement of the Convention, including Article 84 EPC. However Article 101(3) EPC does not allow objections to be based upon Article 84 EPC, if such objections do not arise out of the amendments made (see decision T 301/87, OJ 1990, 335, point 3.8 of the Reasons).

5.2 Concerning Article 84 EPC in the present case the Respondent argues that the terms "heat-shortening" and "core temperature" are unclear. It argues further that several expressions used in the claims ("the temperature of the surface of the chicken or part thereof is brought to a maximum of 15ºC, in particular to a maximum of 12ºC", "the temperature of the surface of the chicken is selected at a value for keeping the germ counts of the decay causing and pathogenic micro-organisms remain below a predetermined value", etc.) are unclear, inconsistent and contradictory to the description.

5.3 The terms and expressions objected to by the Respondent were already in the granted claims (see granted claims 1, 4, 5 and 10) and consequently these objections have no connection with the amendments made. They cannot be objected to under Article 84 EPC at this stage of the proceedings.

6. Sufficiency of disclosure (Article 83 EPC)

6.1 The patent relates to a method for preserving the meat of a slaughtered chicken or a part thereof. The invention aims to obtain a tender product in a relatively short time, in which contraction phenomena are avoided. To achieve this object the method encompasses two different cooling steps. In the first cooling step the chicken is moistened and placed in a cold air stream for no more than 0.5 hours "until the core temperature of the meat is lower than the temperature at which heat-shortening occurs" and a second cooling step in which the chicken is placed in cold air for no more than 2 hours, "in the course of which the core temperature of the meat remains higher than the temperature at which cold-shortening occurs".

Thus in both steps the final temperature to be achieved is defined in functional terms, that is to say by the result to be achieved.

6.2 Although not specifically disclosed in the patent in suit, it is not disputed that it can easily be verified in a shear test whether the claimed method renders a tender product or not, that is to say if heat or cold-shortening has taken place.

The question to be answered in relation to sufficiency of disclosure is thus whether the patent specification provides sufficient guidance for the skilled person, being aware of the general common knowledge in this field, to derive for each cooling step the temperatures which fulfil these requirements, that is to say the temperatures at which heat-shortening and cold-shortening is suppressed.

6.3 The Board is satisfied that this is indeed the case for the following reasons:

6.3.1 The terms "heat-shortening" and "cold-shortening" are well known in the field. Additionally, they are explained in the specification. Thus, according to paragraph [0008] heat-shortening is caused by a disturbance of the normal enzyme action in the muscle tissue, as a result of which the energy conversion occurs in an uncontrolled manner; cold-shortening is a muscle contraction which occurs if the meat is cooled too rapidly to below a temperature which depends on the type, mass and acidity of the meat of the slaughtered bird.

Turning now to the first cooling step, the specification in paragraph [0013] indicates that for avoiding the occurrence of heat-shortening the bird is placed in a cold air stream until the core temperature of the meat is lower than 25ºC. In order to achieve such a core temperature the conditions of the air stream and moisture exposure must of course be adapted to the size of the bird to be cooled; it is evident that for big birds (turkeys) they must be more stringent than for smaller chickens. Finding out the appropriate conditions when starting off with a meat temperature of about 40ºC (or somewhat higher due to scalding) in order to get down to a final core temperature of approximately 25ºC (the temperature above which heat-shortening can occur) or lower in no more than 0.5 hours is however a matter of simple routine experimentation.

6.3.2 Concerning the second cooling step, the patent gives the following guidance:

- the second cooling step takes no more than two hours ending when the core temperature of the meat is lower than 10ºC, in order to avoid the occurrence of cold-shortening [0011],

- for freshly slaughtered poultry the temperature at which cold-shortening happens is approximately 10 to 12ºC [0008], and

- in the second cooling step undesirable muscle contraction is effectively prevented by allowing sufficient cooling time for the acidity of the meat to fall in below a critical value [0010].

Thus, the skilled person is again given the necessary information to put this second cooling step into practice by mere routine experimentation. This second cooling step starts with a meat having a core temperature lower than approximately 25ºC (after the first cooling step) which is then placed in cool air for no more than 2 hours while maintaining its core temperature higher than the temperature at which cold-shortening occurs, this temperature being 10-12ºC for the freshly slaughtered poultry, until the core temperature is sufficiently low, e.g. lower than 10ºC, preferably lower than 6ºC (paragraphs [0011] and [0016]). If during this second cooling step cold-shortening happens, the skilled person knows from paragraph [0010] as well as from his general common knowledge how to avoid this, namely by extending the cooling time up to a maximum of two hours (see also point 6.3.1. above).

6.4 The Opposition Division pointed out that the biochemical processes underlying heat- and cold-shortening during rigor mortis are very complex as they depend on temperature, cooling time and meat acidity and thus put an undue burden on the skilled person when he has to decide which temperature should be applied for the respective cooling steps, especially the second cooling step.

However, in the Board's judgment this complexity does not hinder the skilled person from putting the invention into practice. The skilled person is not required to understand the reasons why cold-shortening happens in order to measure it, this being done by measuring the tenderness of the meat. The information required by the skilled person to carry out the claimed process is merely that, if cold-shortening happens during cooling, this shortening can be avoided by increasing the cooling time.

6.5 For the same reasons the Board cannot accept the arguments of the Respondent 02, relying on O1 (page 1147, left column, last paragraph) and O2 (page 691, last paragraph), that there is in the literature uncertainty concerning the extent to which cold-shortening occurs in poultry meat. As just explained the skilled person would know from the evaluation of initial failures (on "test chickens"), how to react in order to transform the initial failure into success.

6.6 As to the argument of Respondent 02 that there is contradictory information in the specification concerning the core temperature at the end of the second cooling step in that, at the one hand in order to prevent cold-shortening it must not be lower than approximately 10 to 12ºC and on the other it should be lower than 10ºC, preferably lower than 6ºC, and that for that reason the claimed invention could not be carried out, it is answered by the fact referred to above on several occasions, namely that the temperature at which cold-shortening sets in is not a fixed value but decreases according to the biochemical processes occurring post mortem.

6.7 There is also no sufficiency problem related to the preferred embodiment of Claim 8, according to which the chicken is killed in an atmosphere which is high in carbon dioxide gas and the description requiring a certain acidity as argued by the Respondent 02. Indeed the use of carbon dioxide causes acidification of the tissues (see [0017]) and thus accelerates the (normally slow) post mortem falling of the pH of the meat (see [0010]) which is one of the parameters leading to a (desired quicker) drop of the cold-shortening temperature. The respective statements in the specification are therefore not contradictory and are in line with the skilled person's general common knowledge.

6.8 For these reasons and in the absence of pertinent contrary evidence the Board considers that the requirements of Article 83 EPC are fulfilled.

7. Remittal (Article 111 EPC)

7.1 In view of the above findings, the Board concludes that the claims of the first auxiliary request fulfil the requirements of Articles 83 and 123 EPC.

7.2 The patent in suit was revoked for lack of compliance of the first auxiliary request with the requirements of Article 83 EPC. The Opposition Division has not yet taken a decision on the other patentability issues raised by the Opponents, namely novelty (Article 54 EPC) and inventive step (Article 56 EPC).

7.3 The Appellant has requested the remittal of the case to the Opposition Division for further consideration of these issues. Respondent 02 supported this request of the Appellant and Respondent 01 did not object to such remittal.

7.4 Under these circumstances, the Board considers it appropriate to exercise its discretion under Article 111(1) EPC to refer the case back to the Opposition Division for further prosecution.