T 0397/08 24-09-2010

1. The appeals are admissible.

AUXILIARY REQUEST I

2. Amendments (Article 100(c) EPC 1973/123 EPC)

2.1 Claims 1-16 of auxiliary request I are based on Claims 1-10 and 12-17 as granted.

2.2 Independent Claims 1, 2 and 15 of auxiliary request I refer to a "dry or semi-moist" "pet food composition", a feature which was already present in the corresponding granted claims.

2.2.1 This feature was objected to by appellant 01 as not being supported by the application as filed, essentially because the term "dry or semi-moist" appeared in the application as filed only in association with a "pet food" but not with a "pet food composition".

2.2.2 However, the above mentioned feature is disclosed in the application as filed because therein the terms "pet food" and "pet food composition" are used to refer to one and the same subject.

This is clear, for example, from the passage bridging pages 2 and 3 of the application as filed wherein it is stated that "In an embodiment of the invention, the pet food comprises about 200ppm of one or more plant extracts by weight of the food composition" [emphasis by the board].

Furthermore, the disclosure at page 4, lines 30-33 teaches that one aspect of the invention is a method of reducing oral malodour, comprising "...the administration to, or consumption by, the animals in need thereof of a pet food composition which contains at least about 40ppm by weight of the composition of one or more plant extracts."[Emphasis by the board]. It is clear from this paragraph that in the application as originally filed the wording "pet food composition" was used to refer to the pet food product to be fed to the animal, and not to an intermediate composition from which the pet food product is made.

2.2.3 Concerning the argument of appellant 01 that the term "pet food composition" refers only to the mixture of ingredients which are used in the preparation of the (final) pet food product, it is noted that this interpretation is not supported in the application as filed, where the mixture of ingredients from which "the pet food" or "pet food composition" is made is referred to throughout the specification as "a dough" (see page 3, lines 18-19 and the passage from page 6, line 28 to page 9, line 33).

2.2.4 Thus, the feature "dry or semi-moist pet food composition" in Claims 1, 2 and 15 of auxiliary request I does not contravene Article 123(2) EPC.

2.3 During the opposition/appeal proceedings further amendments were made to the claims. These amendments, which were made in order to distinguish the claimed subject-matter from the disclosure of documents D5a, D6a and D7, also fulfil the requirements of Article 123 EPC.

2.3.1 Thus the plant extract(s) referred to in Claims 1 and 2 were limited to the list of specific essential oils as disclosed on page 5, lines 18-28 of the application as filed, from which list lavender oil is deleted.

In Claim 15, the plant extract(s) were limited to essential oils.

2.3.2 Moreover a disclaimer ("other than an animal food product comprising 36.9 to 38.89 wt% beef tallow, 30 wt% protein solids, 30 wt% wheat flour, 1 wt% emulsifier, 0.1 wt% antioxidant and 0.01 to 2.0 wt% rosemary, clove, eucalyptus and/or parsley seed oils") was introduced into Claims 1 and 15 in order to limit the claimed subject-matter from the disclosure of D5a, a document to be regarded as state of the art only in accordance with Article 54(3)EPC. The disclaimer fulfils the criteria for assessing the allowability of a disclaimer as set out in decision G 1/03 (OJ EPO 2004, 413). This was not contested by appellant 01.

2.4 The amendments made also undisputedly restrict the scope of the claims.

2.5 Consequently, the subject-matter of the claims therefore fulfils the requirements of Articles 123(2),(3) EPC.

3. Clarity (Article 84 EPC 1973)

3.1 Appellant 01 contested the clarity of Claim 12. It pointed out that in Claim 12 reference was made to the use of "cinnamon oil" as essential oil, while in Claims 1 and 2 "cinnamon leaf" was mentioned as the source of the essential oil. Taking into account that for example in Claims 1 and 2 reference was made as regards the plant clove to "clove bud" and to "clove leaf", it was not clear from which part of the plant the cinnamon oil of Claim 12 was to be obtained.

3.2 However, Claim 12 is a dependent claim, which refers to the pet food composition "according to any preceding claim". Since "cinnamon leaf" essential oil is the only cinnamon oil mentioned in the preceding claims (cf. Claims 1 and 2), the limitation of the previous claims carries over to the cinnamon oil referred to in Claim 12.

3.3 The subject-matter of Claim 12 is therefore clear and fulfils the requirements of Article 84 EPC 1973.

4. Novelty

4.1 As pointed out above (see point 2.3), the claims were amended during the opposition/appeal proceedings in order to establish novelty. Firstly, a disclaimer was introduced into Claims 1 and 15 in view of the disclosure of D5a (Example 7, Table 9). Secondly, the plant extracts referred to in Claims 1 and 2 were limited to specific essential oils in order to exclude the food compositions of D6a, in particular Example 7 of D6a, and the cookie disclosed in Example 3 of D7. Since, however, document D6a utilised the essential oils as inhibitors for glucosyl transferase, i.e. in order to reduce synthesis of glucan, and document D7 used lavender essential oil as an active ingredient in a food for the treatment of insomnia, the plant extract(s) referred to in Claim 15 ("Use of one or more plant extract(s) for … reducing oral malodour in domestic animals …") were merely limited to essential oil(s).

In fact, the novelty of Claims 1 and 15 was not contested by appellant 01 during the oral proceedings. Nor did the board see any reason to raise an objection on its own motion.

4.2 Appellant 01 maintained that the subject-matter of Claim 2 of auxiliary request I still lacked novelty having regard to the disclosure of Example 7/Table 9 of document D5a. It argued that there was no definition of pet biscuit in the patent in suit and consequently the term should be understood in a broad way. Taking that into account, it concluded that D5a anticipated the claimed subject-matter because the food compositions of D5a contained the same components (cf. Example 7) and were prepared using processing steps that could be used to make a biscuit (cf. page 23, lines 5-21).

4.3 There is, however, no clear and unambiguous disclosure in D5a of a pet biscuit as claimed in Claim 2.

4.3.1 D5a is directed to a dual component animal food product with increased palatability in which, essentially, a hard outer shell surrounds a soft inner filling (see page 7, lines 11-33). Example 7 of D5a describes the preparation of an inner filling having a composition covered by Claim 2, but there is no indication in D5a that this inner filling is used to make a biscuit. In fact, there is no indication in D5a of the exact nature of the pet food prepared with the inner filling of Example 7. The only information given on page 28, lines 8 to 11 is that "The following examples show other embodiments of the present invention having an outer shell made with ingredients similar to that used in the above Examples and having inner lipid softer mixtures as indicated below". It follows that Example 7 of D5a does not disclose a pet biscuit and therefore it does not anticipate the subject-matter of Claim 2.

4.3.2 Moreover the general teaching of D5a also does not anticipate the claimed pet biscuit. There is no information in D5a that the food products prepared according to D5a are used to prepare biscuits. The paragraph on page 23, lines 5 to 21, relied upon by appellant 01, actually relates to a mild drying step (see lines 20-21) and not to a baking as required to prepare a biscuit.

4.4 Hence, there is no clear and unambiguous disclosure in D5a of an embodiment falling within the scope of Claim 2, either in the specific or in the general disclosure of D5a. The subject-matter of this claim is therefore novel over D5a.

5. Inventive step (Article 56 EPC 1973)

5.1 The patent in suit is concerned with reducing malodour in pets. It is based on the finding that essential oils in dry or semi-moist pet food compositions reduce the level of unpleasant volatile sulphur compounds and thus have a breath-freshening effect (see Example 1). The efficacy of the essential oils is said to arise from their anti-bacterial activity (see Examples 2 and 3).

5.2 Closest prior art

5.2.1 The board considers, in agreement with appellant 02, that the closest prior art is represented by D1.

5.2.2 D1 discloses a nutritional drink composition which may include an agent for freshening the breath of an animal, the agent being selected from any known breath freshener including chlorohexidine, thymol and cetylpyridinium chloride, thymol being a compound found in oil of thyme (see column 2, lines 58-62; see also column 5, lines 9-17 and Claim 1). Thus the compositions of D1 containing the same components as the claimed compositions and having the same use represent the closest prior art.

5.2.3 Contrary to this, appellant 01 relied on D6a as the closest prior art. Document D6a utilises essential oils as inhibitors of glucosyltransferases in order to reduce dental caries (Claims 1 and 2). It also discloses pet food containing said oils (see [0016] and Example 7). Appellant 01 relied on D6a as closest prior art basically because in its opinion the compositions of D6a had the most features in common with the claimed invention.

5.2.4 However, in the board's view, D6a does not represent a suitable starting point for the assessment of inventive step for the following reasons:

- According to EPO practice, in selecting the closest prior art, the first consideration is that it must be directed to the same purpose or effect as the invention (see, for instance Case Law of the Boards of Appeal 6th edition 2010 Chapter ID.3.2).

- The compositions of D6a are not used for reducing malodour or to achieve a breath-freshening effect. They are used to avoid the formation of glucan by inhibiting the action of glucosyltransferases in the oral cavity so as to prevent the formation of caries.

- The board cannot accept the argument of appellant 01 that the skilled person would deduce a breath-freshening effect from the compositions of D6a because oral hygiene was intrinsically linked to halitosis. Appellant 01 relied mainly on paragraph [0002] of the patent in suit to support this argument, but appellant 02 convincingly argued that the study referred to in this paragraph was a human study and in any event no reference was made to a causal association. As further explained by appellant 02, the therapy disclosed in D6a, which specifically targets caries-causing bacteria, teaches nothing about the effect of the active agents in reducing oral malodour, in essence because the bacteria which are responsible for oral malodour are abundant in the mouth of a pet whereas the bacteria which cause caries are very rare. Accordingly, it is not possible to infer from the disclosure of D6a that the compositions described therein would freshen the breath of domestic animals.

- Since D6a is not directed to reducing malodour, it does not qualify as closest prior art document.

5.3 Problem to be solved and its solution.

5.3.1 The distinguishing feature of the claimed compositions with respect to the compositions of the closest prior art D1 lies in the presentation form. Thus while the compositions of D1 are liquid compositions, those now claimed are dry or semi-moist compositions.

5.3.2 The objective technical problem to be solved by the claimed subject-matter can thus be formulated as the provision of alternative breath-freshening compositions provided in another delivery format.

5.3.3 The proposed solution to this problem is the claimed dry or semi-moist composition which is useful as a breath-freshening composition.

5.3.4 The results of the examples in the specification demonstrate that this problem has been credibly solved by the claimed compositions. The amount of volatile sulphur compounds in the breath of dogs fed with biscuits containing eucalyptus oil is reduced when compared with dogs fed with biscuit without eucalyptus as can be seen from the results of Example 1 in the patent specification (compare biscuits 1 and 2).

5.3.5 The board is thus satisfied that the technical problem defined above is solved by the claimed compositions. This finding was not contested by appellant 01.

5.4 Obviousness.

5.4.1 It remains to be decided whether, in view of the available prior art documents, it would have been obvious for the skilled person to solve this technical problem by the means claimed, that is to say, if it would have been obvious for the skilled person to modify the drink compositions of D1 to obtain the claimed compositions.

5.4.2 There is no hint to this solution in D1 itself. D1 deals exclusively with liquid compositions, namely nutritional drinks containing approximately 90 to 98 weight percent water (see Claim 1; see also column 2, lines 14-18). The breath-freshening agent therein dispersed would be expected to distribute itself fairly evenly around the animal's mouth, thereby achieving a breath-freshening effect.

In contrast, a dry or semi-moist composition is consumed much more rapidly by the animal. It has a shorter residence time in the mouth and would not be expected to distribute itself evenly round the mouth. Given that difference, the skilled person would not expect that the breath-freshening effect shown by the liquid format of D1 would also be shown by a semi-moist pet food composition and a biscuit, respectively. On the contrary, it is unexpected that solid compositions could achieve a breath freshening effect. There is therefore no hint in D1 as to modify the drink compositions therein disclosed in a manner to arrive at the compositions of Claim 1.

5.4.3 There is also no hint to the claimed compositions in D6a. As stated above the compositions of D6a are directed to caries and the bacteria responsible for caries are rarely present in the mouth of a pet. Consequently, when starting from D1 and addressing the problem of the invention there is nothing to motivate the skilled person to adopt the dry format taught in D6a and use it in D1, as D6a is not concerned with breath-freshening products.

5.4.4 The board can also not accept the argument of appellant 01 regarding a lack of inventiveness that there was no technical obstacle for the preparation of the claimed compositions, since very similar semi-moist and dry compositions were already well known in the art, for instance in D6a.

Although it is correct that there was no technical obstacle to providing the claimed compositions, this issue is, however, not relevant for the assessment of obviousness. The relevant question to be asked is whether or not there was a hint in the prior art for the preparation of the claimed compositions to solve the posed technical problem. For the reasons given above, the answer to this question is clearly no. Moreover it appears that the argument of appellant 01 is based on the ex-post facto knowledge of the invention.

5.4.5 The finding that by using dry or semi-moist compositions comprising essential oils as defined in the present claims, breath freshening compositions for treating malodour can be prepared, is a finding that cannot be deduced from the cited prior art.

5.4.6 Hence, the board concludes that the person skilled in the art having in mind the technical problem to be solved and having the prior art related to this technical field at his disposal would not have arrived in an obvious manner at the claimed invention in the form of Claims 1, 2 and 15 of auxiliary request I. The same applies to dependent Claims 2 to 14 and 16, which represent particular embodiments of the subject-matter of said claims.

6. As auxiliary request I of appellant 02 is allowed, there is no need for the Board to deal with the further requests.