T 2038/11 13-06-2013

1. The appeal is admissible.

Main request

2. Admissibility

This request was submitted with letter of the 13 May 2013, ie roughly one month prior to the oral proceedings. The respondent requested that the main request should not be admitted into the proceedings as it was filed late and, due to the deletion of the term "cereal", extended beyond the extent of the appeal.

It is true that compared to the main request submitted with the statement of grounds of appeal, the term "cereal" has been deleted in claims 1 and 10 of the current main request. However, this deletion can be seen as a reaction to the board's preliminary view expressed in the annex to the summons where the allowability of the term "cereal" under Article 123(2) EPC was addressed. As not disputed by the respondent during the oral proceedings, the deletion of this term does not raise any new issues the respondent could not deal with during the oral proceedings.

The board therefore decided to admit the main request into the proceedings (Article 13(3) RPBA).

3. Amendments - Article 84 EPC

3.1 Claim 1 contains the requirement that "after the application of the fresh probiotic micro-organisms the water activity (Aw) of the consumable product at the beginning and during shelf life is less than 0.3" (for the exact wording of claim 1, see point XI above). As the wording "at the beginning and during shelf life" was inserted into the claim by way of amendment after grant, it has to be examined whether the requirements of Article 84 EPC are met in this respect.

3.2 It was a matter of dispute between the parties whether, in view of this insertion, the starting point of the time period during which the water activity has to be less than 0.3 (hereinafter also denoted as "relevant time period") is clear.

3.3 The appellant argued in this respect during the oral proceedings that the requirement in claim 1 "after the application of the fresh probiotic microorganisms" referred to some point in time after the application of the microorganisms and that this point in time was further specified in claim 1 to be the beginning of the shelf life. Hence, the starting point of the relevant time period was the beginning of the shelf life.

3.3.1 However, firstly, this argument is not supported by the claim language, which requires a water activity of less than 0.3 to be present after, rather than at some point after, the application of the microorganisms.

Secondly, the appellant's argument is in contradiction to its own statement on page 2 of its letter of 5 July 2012, according to which the beginning of the shelf life and hence the start of the relevant time period lies before rather than at some point after the application of the fresh probiotic microorganisms ("shelf life of the product starts already prior to adding the fresh biomass to the consumable product and it is absolutely clear to a person skilled in the art upon reading the entire description that the point of time of adding fresh microorganisms is after beginning of shelf life ...").

Thirdly, if indeed the starting point of the relevant time period was the beginning of the shelf life, the wording "after application of the fresh probiotic microorganisms" in claim 1 would in fact be superfluous and the question would then arise why it is contained in the claim at all.

There is thus at the very least some doubt whether, as argued by the appellant, the starting point "at the beginning of shelf life" is a mere re-statement of the wording "after application of the fresh probiotic microorganisms" or whether claim 1 in fact defines two different starting points for the relevant time period, namely firstly the application of the fresh probiotic microorganisms and secondly the beginning of the shelf life. For this reason alone, the amendment of claim 1 renders the claim unclear.

3.3.2 Even if one disregards the above ambiguity as regards the two possible interpretations of claim 1, claim 1 is still unclear. More specifically, irrespective of which of the two interpretations is chosen, the starting point for the relevant time period is always the beginning of the shelf life (either as the only starting point or as one of two starting points). But it is not clear at what point in time the shelf life starts. More specifically, it is unclear whether it starts

- directly after the application of the microorganisms,

- after the application of the microorganisms and one or more of the subsequent treatment steps described on page 6, lines 24 to 28 of the opposed patent, namely exposure to ambient or elevated temperature, freezing or aeration with nitrogen or nitrogen and carbon dioxide,

- after the application of the microorganisms, one or more of the above treatment steps and packaging or

- as argued by the appellant, after the product has left the production site.

3.3.3 The amendment of claim 1 thus renders the starting point of the relevant time period unclear.

3.4 The wording inserted into claim 1 by way of amendment after grant defines a further requirement, namely that the water activity is less than 0.3 "during shelf life". Neither claim 1, nor the remaining part of the patent specification contains any information as regards the conditions during the shelf life. However, depending on these conditions, products first having a water activity of less than 0.3, ie as required by claim 1, can readily exhibit higher water activities outside the range defined in claim 1 later on, for instance due to moisture absorption from the environment. Thus, depending on these conditions during the shelf life, one and the same product may be within or outside the scope of claim 1. This can be illustrated by way of the following example:

An unpackaged bakery product contains probiotic microorganisms and has a water activity of slightly less than 0.3 when sold to a consumer. The consumer keeps the product at home for two days and then, still within the shelf life, eats it.

If this scenario takes place in a country with low air humidity, the bakery product will get drier during the two days at the consumer's home and thus the water activity will further decrease. The water activity will hence stay below 0.3 during the shelf life and the bakery product will be covered by the scope of claim 1. If the same scenario however happens in a country with high air humidity, the bakery product will absorb moisture and the water activity may increase to values above 0.3 before the product is eaten. The bakery product will then not be according to claim 1. So, one and the same bakery product will at the same time be both within and outside of the scope of claim 1.

The appellant argued in this respect that the patent was not addressed to private consumers but to food professionals who would not store bakery products under conditions that lead to an increase of water activity. This argument is however not convincing as claim 1 does not restrict the product in any way in terms of the group of people that uses the product. Furthermore, the shelf life of a product is not restricted to the time during which the product remains at the point of sale (and thus probably in the hand of food professionals). On the contrary, shelf life is the time during which the product can be consumed and thus embraces the time during which the product is in the hands of a private consumer.

Consequently, in the absence of a definition of the conditions during shelf life, it is not possible to tell whether or not a given product is within the scope of claim 1.

Therefore, also the requirement inserted by way of amendment after grant into claim 1 that during the shelf life, the water activity is less than 0.3, renders claim 1 unclear.

3.5 The main request is therefore not allowable.

Auxiliary request 1

4. Admissibility

In the same way as the main request, auxiliary request 1 was filed with the appellant's letter of 13 May 2013.

Claim 1 (and in the same way claim 10) of auxiliary request 1 differs from claim 1 (and claim 10) of the main request in that the requirement has been added at the end of the claim that "the product has a packaging to maintain the water activity (Aw) during the shelf life of the consumable product" (for the exact wording of claim 1, see point XI above).

The respondent requested that auxiliary request 1 should not be admitted into the proceedings as the new feature of a packaging gave rise to new objections under Article 123(2) EPC.

However, the amendment can be considered as a bona fide attempt to deal with the board's objection raised in the annex to the summons to oral proceedings that depending on the conditions during the shelf life, one and the same product may fall within or outside of the scope of claim 1 (point 1.1.1 of the annex). More specifically, it can be argued that due to the fact that the product of claim 1 contains a packaging that maintains the water activity, the water activity of the product during its shelf life no longer depends on the shelf life conditions.

Furthermore, as it was not argued by the respondent that it could not deal with the new request at the oral proceedings, the board decided to admit auxiliary request 1 (Article 13(3) RPBA).

5. Amendments - Article 84 EPC

5.1 Claim 1 still contains the same wording as regards the starting point of the relevant time period as claim 1 of the main request, namely "after application of the fresh probiotic micro-organisms ... at the beginning and during shelf life" (emphasis added). As was acknowledged by the appellant during the oral proceedings, the objection raised in this respect against the main request therefore still applies (point 3.3 above). Therefore, auxiliary request 1 is not allowable.

Auxiliary request 2

6. Admissibility

Auxiliary request 2 was filed during the oral proceedings before the board. This request differs from the main request by the deletion of the objected feature "at the beginning and during shelf life" in independent claims 1 and 10. By way of this deletion, these claims correspond to claims 1 and 12 as granted except that the water activity has been restricted to the preferred alternative of these claims, namely less than 0.3.

The respondent acknowledged during the oral proceedings that it was not confronted with any new issues by the submission of auxiliary request 2. The board therefore decided to admit this request into the proceedings (Article 13(3) RPBA).

7. Amendments - Article 100(c) EPC

7.1 The only requirement present in claim 1 as regards the water activity of less than 0.3 is that it is present "after the application of the fresh probiotic micro-organisms". (for the exact wording of claim 1, see point XI above). Claim 1 in this respect is identical to claim 1 as granted. It was a matter of dispute between the parties whether this feature of claim 1 was based on the application as filed and thus fulfilled the requirements of Article 100(c) EPC.

7.2 The only explicit disclosure of a water activity of less than 0.3 is present on page 11, lines 4 to 7 of the application as filed where it is stated that the water activity at the beginning and during shelf life has to be smaller than 0.3. As set out in point 3.3.2 above, and as was argued by the appellant during the oral proceedings, the point in time when the shelf life begins can be assumed to be later than the point in time when the microorganisms are applied. The relevant question with regard to Article 100(c) EPC is thus whether there is any disclosure of a water activity of less than 0.3 between the application of microorganisms and the later point in time when the shelf life begins.

7.3 The appellant argued during the oral proceedings that an implicit disclosure was present on page 6, lines 29 to 32 and page 7, line 28 to page 8, line 9 of the application as filed. According to these passages, no drying step needs to be applied after the application of the microorganisms. This implies that the water activity after the application of the microorganisms does not change and is therefore the same as that at the beginning of the shelf life.

The board does not find the appellant's argument convincing. All that the cited passages discloses is that a "high temperature treatment" (page 6, lines 30 to 31) and a "destructive drying process" (page 7, line 36) can be avoided such that the microorganisms and their metabolites are not killed or destroyed. The cited passages thus only exclude high temperature destructive drying but not any elevated temperature or any drying process. In fact, as the purpose is to keep the microorganisms and their metabolites alive/undestroyed, it is clear on the basis of these passages that the application of an elevated temperature and/or of a drying process is possible as long as the microorganisms and the metabolites are not killed or destroyed. This is explicitly confirmed by the application as filed on page 15, lines 30 to 32 where it is stated that "[D]epending on particularities and preferences, the food product now comprising probiotics may be exposed to ambient or elevated temperature, in a way that no substantial loss of cfu is taken into account." (emphasis added; "cfu" stands for colony forming units).

The skilled person would thus deduce from the application as filed that after the application of microorganisms and before the beginning of the shelf life, a treatment at elevated temperature is possible, which implies that the water activity may decrease within this time period. This implies in turn that, contrary to the appellant's assertion, the water activity after the application of microorganisms and before the beginning of the shelf life does not necessarily need to be already less than 0.3.

7.4 The same applies to the further passage cited by the appellant during the written proceedings, namely the paragraph bridging pages 12 and 13 of the application as filed as, which states that "[A] high-temperature drying process can be avoided by spraying or otherwise supplying not concentrated or relatively little concentrated biomass to the consumable product, so that the water activity of the overall product does not decisively increase". More particularly, in the same way as the passages referred to by the appellant during the oral proceedings (point 7.3 above), this passage only refers to the avoidance of a high temperature drying step and thus does not exclude the application of elevated temperatures.

7.5 The appellant finally referred in the written proceedings to decision G 1/93 (OJ 1994, 541) and argued that in view of this decision the added feature that the water activity after the application of the microorganisms had to be less than 0.3 is allowable under Article 123(2) EPC. According to this decision "[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 in the sense of Article 123(2) EPC." (headnote 2, emphasis added).

In the present case, it has been acknowledged by the appellant that the feature added to claim 1, namely a water activity of less than 0.3 after the application of microorganisms, provides a technical contribution. It has in particular been stated by the appellant that "... a water activity value below 0.3, gives rise to several unforeseen advantages" and that "a low water activity of the final consumable product ... increases the products shelf life." (Fourth and sixth paragraph on page 24 of the appellant's letter of 13 May 2013). The appellant's argument based on G 1/93 thus must fail.

7.6 Consequently, contrary to the appellant's assertion, the application as filed does not provide a basis for the requirement in claim 1 that after the application of the microorganisms the water activity is less than 0.3. Claim 1 of auxiliary request 2 therefore is not based on the application as filed. This request is thus not allowable under Article 100(c) EPC.