T 0657/11 08-11-2013

1. The appeal is admissible.

2. Admissibility of the request

2.1 The appellant's (sole) request for further prosecution on the basis of claims 1-6 as filed during the oral proceedings before the board is based on its previous request filed on 19 June 2013 (granted process claims), the only change made being the correction of the wording "NF permeate" to read "NF concentrate" in the last step of the process of claim 1 (point XII above).

2.2 The appellant argued that the correction was obvious and that the amended claims should not be upheld in a wrong form. The respondent requested that this request should not be admitted into the proceedings because it was late filed.

2.3 The board exercised its discretion according to Article 13(1) of the RPBA to admit the request for the following reason:

The new request did not bring up any new issue into the proceedings which could have taken the respondent or the board by surprise. The meaning of "drying the NF permeate" in the last step of granted claim 6 and claim 1 of the appellant's previous request, respectively, would have had to be discussed in any case, since it is crucial to the present invention.

3. Correction under Rule 139 EPC

3.1 The claims according to the main request before the opposition division (point IV above) and the appellant's initial request in the appeal proceedings (point V) differ from the granted claims only in that the wording "NF permeate" in the last process step of claim 6 was replaced by "NF concentrate".

3.2 As stated by the board in its communication of 25 September 2012 (see point VI above), what was sought by the appellant with this request was actually the correction of an error in the granted version of the patent. Such a correction would have been a matter of Rule 140 EPC in that it related to a purported mistake in a decision of the Office, namely the decision to grant the patent-in-suit as taken by the examining division. However, Rule 140 EPC is not available to correct the text of a granted patent and a request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings (see Headnote 1 of G 1/10, OJ EPO 2013, 194).

3.3 As compared to the claims as granted the claims according to the appellant's final (sole) request were amended beyond the mere removal of an error, namely by limiting them to those granted as (process) claims 6-11. Hence the basis for the decision on the appeal (and, thereby, on the opposition) is no longer that for the decision to grant the patent-in-suit, which decision will definitely lose its effect and be replaced by a new decision. In such a situation any (further) amendment of the claims, even if it aims at the removal of an obvious mistake in the claims as granted, does not constitute a correction of an error or a mistake in a decision of the EPO within the meaning of Rule 140 EPC.

3.4 As pointed out in the decision G 1/10, point 13 of the Reasons, it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such amendment could remove a perceived error. However, an amendment with the (sole) aim to remove a mistake or an error in the claims, but also in the description and the drawings of the patent as granted, cannot be said to be "occasioned by a ground for opposition under Article 100" (see Rule 80 EPC). It follows that such mistakes or errors - here the expression "[nanofiltration] permeate", see below - in the unamended part of the text in question may only be removed by way of a correction pursuant to Rule 139 EPC, which provision and the specific requirements defined therein apply independently from Rule 80 EPC.

3.5 Under Rule 139 EPC errors or mistakes in documents filed with the EPO may be corrected upon request and, if they concern the description, the claims (as in the present case) or the drawings, on condition that the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.

3.5.1 In the present case the request for correction is implied in the appellant's request for further prosecution on the basis of claims 1-6 which are, apart from the correction of a purported mistake (and the renumbering), identical to the claims 6-11 of the patent as granted.

3.5.2 With respect to the correction itself the board agrees with the appellant that it is immediately evident to the skilled person that there was an error in the wording of the process claim as filed. There is an internal inconsistency in the process claim as filed (claim 7, which is the basis for present claim 1). While the penultimate step requires the nanofiltration in order to remove monovalent ions and biogenic amines, the last step uses the nanofiltration permeate containing these undesired by-products to produce the desired marine protein product. There is a further inconsistency between the wording of the claim and several passages in the description as filed which refer to said monovalent ions and biogenic amines as undesired products (see page 6, lines 1 to 3; page 7, lines 26 to 27; the paragraph bridging pages 7 and 8 and the experimental part of the patent).

The board thus accepts that in view of these inconsistencies, the skilled person would have recognised that an error was present in the last step of claim 7 as filed.

3.5.3 It remains to be decided whether the requested correction is obvious in the sense that nothing else would have been intended than what is offered as the correction.

In the board's judgement this is indeed the case. The skilled person is aware that there are only two fractions in a filtration step and that if one fraction (the permeate) is incorrect, the only possible correction is the other fraction (the retentate or concentrate). This conclusion is in line with the concept of the present application that the undesirable biogenic amines pass through the NF membrane whereas the larger desirable amines are retained in the NF retentate (see page 13, lines 25 to 30; see also figure 10, point 7, last sentence). Finally, page 19, lines 23 to 25 discloses that the concentrate of the nanofiltration is to be used to produce the marine protein product.

3.5.4 The board cannot accept the argument of the respondent that the correction was not obvious because the wrong wording of the claim is also to be found in one passage of the description as filed. In fact, apart from this one passage, the rest of the description, the working examples and the figures are in line with the perceived correction as explained above. Thus the skilled person would immediately recognize that the error in claim 7 is also present in this one passage in the description and would automatically understand the process as in corrected claim 1.

As regards the respondent's further objection concerning the separate drying of the concentrates, the board notes that the correction has nothing to do with separate or combined drying of the NF concentrate and the UF concentrate. As set out above, the relevant question is what is dried.

3.5.5 Furthermore, the board can not share the doubts of the opposition division concerning the correction based on the argument that the drying of the NF permeate was something conceivable, since the invention could be carried out on board of ships and the drying of the permeate was a convenient way of not carrying too much water.

Although theoretically and technically possible, the skilled person would immediately reject such a process. Firstly, the compounds contained in the NF permeate are undesired. Secondly, the content of the NF permeate is not considered as hazardous waste so that it can be disposed of directly into the sea. It would make no sense to use energy in order to remove water from an undesired non-hazardous product and to transport the dry undesired product back to the harbour.

3.6 For these reasons the proposed correction has been made in accordance with the requirements of Rule 139 EPC. Such correction is of a strictly declaratory nature and it does not infringe the prohibition of extension under Article 123(2) EPC (cf. G 11/91, point 4 of the Reasons).

4. Amendments

4.1 The opposition division stated in its decision that the amendments made fulfilled the requirements of Article 100(c) EPC.

4.2 The respondent has not raised any objection to the finding of the opposition division and the board sees no reason to raise an objection of its own.

4.3 The amendments made during the appeal proceedings are not to be objected to under Article 123 EPC either. The replacement in the process claim of the reference to the product claim by the wording of this claim does not alter the subject-matter of the claim. Nor does the correction under Rule 139 EPC modify the content of the information given in the application as filed, as explained above.

4.4 The board thus concludes that the amendments made satisfy the requirements of Article 123 EPC.

5. Sufficiency of disclosure

5.1 The patent aims to reduce the level of monovalent ions, biogenic amines and water of hydrolyzed protein products by a multi-step process that is essentially characterized by the combination of ultrafiltration and nanofiltration steps (see claim 1).

5.2 The patent in suit contains experimental data which show the combination of ultrafiltration (UF) and nanofiltration (NF), including the determination of operating conditions of the UF membrane, production trials for the ultrafiltration, and nanofiltration of the UF permeate (see paragraphs [0056] to [0086]). Furthermore, figures 1 and 10 show flow charts of the process according to the invention, which produces a marine product with a reduced level of amines and monovalent ions.

In this context the board notes that ultrafiltration and nanofiltration are two well-known membrane filtration processes. The invention is not based on the selection of specific process parameters but merely on the combination of the two known membrane filtration processes. It is within the common knowledge of the skilled person to select adequate parameters for each process. In this regard the patent in suit provides at least some guidance on how to carry out the claimed invention.

5.3 The respondent argued that the requirement of sufficiency of disclosure was not met because the claimed process embraces a huge number of alternatives due to the lack of information in the claims and in the specification concerning the starting material and the precise conditions of every step of the claim (controlled hydrolysis, nanofiltration and ultrafiltration).

This objection is unfounded. It is correct that the starting material is defined in a broad manner, but this broad definition does not result in a lack of the information necessary to enable a skilled person to carry out the claimed process. As indicated by the appellant, the process can be applied to different fish by-products and there is no information on file showing that the process would not work with other starting material embraced by the claim.

Concerning the hydrolysis, ultrafiltration and nanofiltration, the board notes that these processes are standard processes in the art and that it is within the general common knowledge of the skilled person to select the necessary parameters to carry them out. In any case, the patent specification gives at least some information as to the type of hydrolysis (see [0002]), and the operating conditions for the ultrafiltration (see [0058] to [0061]) and nanofiltration (see [0070] to [0072]) steps.

It is within the common knowledge of the skilled person to select the adequate parameters for the single steps. The patent in suit did not invent protein hydrolysis, ultrafiltration or nanofiltration.

5.4 The respondent disputed in its letter of 6 October 2013 that the results of figure 10 represented an example according to the claim because in its opinion the obtained product had a higher level of monovalent salts and water. It based its objection on a recalculation of the results of figure 10 of the patent.

However, this objection is flawed because the calculation was made using the nanofiltration permeate instead of the nanofiltration concentrate as required by the claim.

5.5 Lastly, concerning the objections of the respondent based on the use of vague expressions such as "reduced level", "homogenizing" and "clarified", these objections concern the question whether the claim clearly defines the subject-matter for which protection is sought, that is to say in relation to Article 84 EPC, which is not itself a ground for opposition. This objection cannot, in the light of what is set out in point 5.3. above, put into question the sufficiency of the disclosure.

5.6 In summary, the patent specification discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Moreover, the objection of the respondent that the invention could not be performed over the whole area claimed is neither well founded nor supported by experimental evidence. The board is therefore satisfied that the requirements of sufficiency are met.

6. Remittal

Taking into account that (i) the opposition division has not yet taken a decision on novelty and inventive step of the present process claims, (ii) the appellant has requested remittal of the case to the opposition division for further consideration and (iii) the respondent did not object to such remittal, the board considers it appropriate to exercise its discretion under Article 111(1) EPC and remit the case for further prosecution on the basis of claims 1 to 6 of the main request.