T 1960/14 09-01-2018

I. This decision concerns the appeal filed by the patent proprietor against the decision of the opposition division revoking European patent No. 2 157 865.

II. Independent claims 1, 10 and 13 as granted read as follows:

"1. A method of preparing biscuits or crackers, said method comprising(i) preparing a dough by combining flour, water, leavening agent, a fat blend and optionally further bakery ingredients; and (ii) baking the dough; wherein the fat blend contains at least 30 wt.% of polyunsaturated fatty acids and comprises:

- 50-85 wt.% of a highly unsaturated oil selected from the group consisting of sunflower oil, soybean oil, rapeseed oil, cottonseed oil, safflower oil, marine oil, corn oil, olive oil, linseed oil and combinations thereof; and

- 15-50 w.% of a palm oil fraction having a melting point within the range of 27-38 °C;

and wherein said fat blend is further characterised by a solid fat content at 25°C of less than 10 wt.%."

"10. Biscuit dough or cracker dough containing 15-50% of fat by weight of flour, 10-20% water by weight of flour and baking soda, said fat containing at least 30 wt.% of polyunsaturated fatty acids and comprising:

- 50-85 wt.% of a highly unsaturated oil selected from the group consisting of sunflower oil, soybean oil, rapeseed oil, cottonseed oil, safflower oil, marine oil, corn oil, olive oil, linseed oil and combinations thereof; and

- 15-50 w.% of a palm oil fraction having a melting point within the range of 27-38 °C;

wherein said fat is further characterised by a solid fat content at 25°C of less than 10 wt.%."

"13. Biscuit or cracker containing 15-50% of fat by weight of flour, said fat containing at least 30 wt.% of polyunsaturated fatty acids and comprising:

- 50-85 wt.% of a highly unsaturated oil selected from the group consisting of sunflower oil, soybean oil, rapeseed oil, cottonseed oil, safflower oil, marine oil, corn oil, olive oil, linseed oil and combinations thereof; and

- 15-50 w.% of a palm oil fraction having a melting point within the range of 27-38 °C;

and wherein said fat blend is further characterised by a solid fat content at 25°C of less than 10 wt.%."

III. In its notice of opposition the opponent requested that the patent be revoked in its entirety on the grounds of Article 100(a) (lack of novelty and lack of inventive step) and (b) EPC. The documents submitted during the opposition proceedings included:

D1: W.G. Mertens, "Fat Melting Point Determinations: a

Review", JAOCS, 1973, pp. 115-119;

D2: EP 0 206 850 A2;

D3: US 4 388 339 A;

D11: Introduction to Fats and Oils Technology, edited

by Peter J. Wan, American Oil Chemists' Society,

1991, pp. 32-33; and

D12: K. Sato et al., "Polymorphism of POP and SOS.

I. Occurrence and Polymorphic Transformation",

JAOCS, 1989(66), pp. 664-674.

IV. The opposition division held that the invention underlying the subject-matter of claims 1, 10 and 13 as granted was not sufficiently disclosed since the skilled person was not able to rework a crucial feature, namely the melting point of the palm oil fraction, with the certainty required in order to estimate whether or not he was working inside the claimed invention. Since the same objection applied to the four auxiliary requests, the opposition division revoked the patent.

V. On 15 September 2014 the patent proprietor (in the following the appellant) filed a notice of appeal against the opposition division's decision. The statement setting out the grounds of appeal was filed on 25 November 2014 accompanied by auxiliary requests 1 to 4 and the following new documents:

D17: WO 2009/012982 A2;

D18: US 2006/0088652 A1;

D19: EP 1 006 806 B1;

D20: EP 0 702 899 A1;

D21: WO 95/24831 A1;

D22: EN ISO 6321 "Animal and vegetable fats and oils -

Determination of melting point in open capillary

tubes (slip point) (ISO 6321:2001)", December

2001; and

D23: Codex Standard for Named Vegetable Oils

CODEX-STAN 210 (amended 2003, 2005), 1-13.

The appellant requested that the decision under appeal be set aside and that the patent be maintained as granted (main request), or alternatively in amended form according to one of auxiliary requests 1 to 4.

VI. With letter of 1 April 2015, the opponent (in the following the respondent) filed its observations on the appeal, as well as the following document:

D24: Malaysian Palm Oil Board, "About Palm Oil",

http://www.palmoilworld.org/about_palmoil.html

VII. With letter of 2 September 2015, the appellant replied to the respondent's observations.

VIII. On 29 September 2017, the board issued a communication under Article 15(1) RPBA in preparation for the scheduled oral proceedings, indicating that it intended to remit the case to the opposition division for further prosecution if it found that any of the requests satisfied the requirements of sufficiency of disclosure.

IX. With letter of 8 November 2017, the appellant commented on the board's communication. It also requested that the board remit the case to the opposition division if it found that any of the requests satisfied the requirements of sufficiency of disclosure.

X. On 9 January 2018 oral proceedings took place before the board.

XI. The relevant arguments put forward by the appellant in its written submissions and during the oral proceedings may be summarised as follows:

- The invention underlying claims 1, 10 and 13 as granted fulfilled the requirements of sufficiency of disclosure. The absence in the patent in suit of a specification of a measurement method for determining the melting point, a common parameter for which standard methods were known, did not inherently mean that the palm oil fraction was so ill-defined that the skilled person, on the basis of the disclosure of the patent as a whole and using common general knowledge, was not able to solve the problem underlying the patent. Although D1 showed that various methods provided different results, D1 was irrelevant because it was an old document - published in 1973 - and did not concern palm oil or palm oil fractions.

- Methods for measuring the melting point of fats belonged to the common general knowledge of the skilled person as apparent from D17-D21. These documents were patent applications and a patent of the respondent which contained patent claims that referred to the melting point of a fat or fat blend, but the claims or the description did not provide any information as to how the melting point should be determined.

- As ISO standard methods were disclosed in the patent specification for determining other parameters regarding the palm oil fraction (paragraphs [0011] and [0013]), it was reasonable to assume that the skilled person would also use a standard ISO method to determine its melting point.

- Contrary to the respondent's assertion, the skilled person would not have considered the method of D2 which was mentioned in paragraph [0005] of the patent in suit, namely AOCS Method Cc 2-38, since this was an old method which had been used 30 years before the priority date of the patent in suit.

- Standard ISO methods for measuring vegetable oils and fats were disclosed by D22. They were ISO 6321 Method A and ISO 6321 Method B (page 1, point 1, "Scope"). The appellant had used method A. This could be determined by the skilled person reproducing example 1 of the patent in suit. Certainly the application of either Method A or Method B depended on the polymorphism of the fat/oil, but the skilled person knew the problems related to polymorphism of palm oil fractions and would have pretreated them.

- D23 (page 4, section 8.2) also disclosed standard methods for determining the melting point of palm oil fractions at the priority date of the patent in suit. They were ISO 6321:2002 and AOCS Cc 3-25(97). These methods must have been equivalent in view of section 3.3 of D23, in which melting points of palm oil fractions were disclosed without specifying which method had been used.

- D22 also showed that the melting points were similar irrespective of the method used. Thus, table B.2 compared method AOCS Cc 3-25 with ISO 6321 Method A and ISO 6321 Method B, and while AOCS Cc 3-25 and ISO 6321 Method B gave almost identical melting point values for palm oil RBD, those of AOCS Cc 3-25 and ISO 6321 Method A showed a marginal difference. According to the respondent's submissions, the mean values varied by only 1.9°C for palm oil RBD.

- It should be borne in mind that the results of table B.2 of D22 arose from inter-laboratory tests carried out in 1982 and 1986 on palm oil samples using ISO 6321 and AOCS methods which were not the same as the standard ISO and AOCS methods used at the priority date of the patent. Thus these results should only be considered at face value.

- The shown similarity of the three available standard methods would enable the skilled person to carry out the claimed invention without undue burden. If an uncertainty/ambiguity of the melting point had resulted from the standard method used, this would have been limited at the edges of the claimed range of 27-38°C. According to the case law of the boards of appeal of the EPO, it was not enough to show that an uncertainty/ambiguity existed in order to deny sufficiency of disclosure. The respondent had to show that such an uncertainty/ambiguity deprived the skilled person of the merits of the invention (T 608/07, Reasons 2.5.1 and 2.5.2, and T 593/09, Reasons 4). Therefore, an alleged uncertainty/ambiguity in the present case did not lead to insufficiency of disclosure.

- The present case was different from that of T 575/05 because only three standard methods were suitable at the priority date of the patent in suit for determining the melting point of palm oil and palm oil fractions, and these three methods were clearly defined and provided reproducible and comparable results.

- It was irrelevant for the issue of sufficiency of disclosure whether the skilled person knew if he was working within or outside the forbidden area of the claims. In fact, this was not a requirement for sufficiency of disclosure under Articles 83/100(b) EPC but a requirement for clarity of the claims under Article 84 EPC, the latter not being a ground for opposition (T 619/00, Reasons 5.3; T 482/09, Reasons 2.1; T 593/09, Reasons 4; T 378/11, Reasons 5.5).

XII. The relevant arguments put forward by the respondent in its written submissions and during the oral proceedings may be summarised as follows:

- The inventions underlying claims 1, 10 and 13 as granted did not fulfil the sufficiency requirements. Neither the claims nor the patent specification disclosed how the melting point of the palm oil fraction was to be determined, with the consequence that the skilled person was unable to reliably identify whether a given palm oil fraction was inside or outside the required melting point of 27 to 38°C. According to the case law of the boards of appeal (see T 256/87, T 583/05 and T 815/07) a patent failed to fulfil the requirements of sufficiency of disclosure if a parameter in a claim could not be reliably determined so as to allow a skilled person to know whether he is operating inside the scope of the claim.

- The melting point of the palm oil fraction was an essential feature of the claimed invention since it was one of the features that differentiated the claimed process from that of D3 (see the grounds of appeal, page 10, fifth paragraph). Thus, the disclosure of its measuring method was necessary in order to enable the skilled person to reproduce the invention.

- It was admitted that D17-D21 did not disclose a method for measuring the melting point of fats/oils. This, however, did not mean that it belonged to the skilled person's common general knowledge. In those documents the melting point was disclosed only in the dependent claims, i.e. it was not an essential feature of the inventions disclosed therein.

- Contrary to the appellant's assertions, the skilled person would not have assumed that an ISO method should also be applied for determining the melting point. Besides the methods disclosed in paragraphs [0011] and [0013] of the patent in suit, there was a further method disclosed in paragraph [0014] which was not an ISO method. In fact, the skilled person looking for guidance in the patent regarding the measurement of the melting point of palm oil fractions would have consulted D2 (see paragraph [0005]) and there would have found a suitable method for this purpose, namely the AOCS Method Cc 2-38, which also was not an ISO method (D2: page 8, lines 18-19).

- The skilled person would also not have derived the required method from his common general knowledge. In view of D1 the melting point of a fat containing a mixture of different triglycerides was not a well-defined single temperature, since it depended on the polymorphism of the triglycerides, the sample pretreatment and the method used (page 115, right column, lines 7-21 and 30-32). Thus the skilled person knew that several different methods had been developed for determining the melting point of a fat, whose results differed substantially and not marginally (page 116, right column, lines 7-11, tables II and III). Hence the appellant's assertion that the known methods gave comparable results was wrong.

- D23 (page 4, section 8.2) disclosed methods available for measuring the melting point of palm oil, and D22 disclosed the variation in the results obtained by some of the available methods. The comparison in Table B.2 of ISO 6321 Method A (the method the appellant admitted to have used) with either AOCS CC 3-25 or ISO 6321 Method B for palm oil RBD showed that there was a variation of 1.9°C between the mean values for RBD palm oil and a variation of 2.5°C between the values for the specific sample 3. In conclusion, the difference between the methods was not marginal but substantial.

- The appellant had argued that the method used in the patent was ISO 6321 Method A. This was contrary to the normal understanding of D22 by the skilled reader, who would have used ISO 6321 Method B and not ISO 6321 Method A, because (i) ISO 6321 Method A was disclosed as giving different and less satisfactory results than ISO 6321 Method B when applied to fats with pronounced polymorphism, and (ii) Method B was disclosed in Table B.1 specifically for palm oil (D22: page 1, section 1. Scope, page 8, table B.1).

- The polymorphism of fats and its impact on their properties was known to the skilled person (D11: page 32, lines 5-8). Pronounced polymorphism of POP and thus of palm oil fractions was known from D12 (page 668, table 2). POP was the major triglyceride of the palm mid fraction according to D24 (page 4, section "palm mid fraction"), the palm mid fraction being the preferred palm oil fraction of the patent in suit (paragraph [0023]).

- D1 also disclosed that the pretreatment of a fat prior to its melting point determination could significantly affect the value measured (page 115, right column, lines 30-33). However, neither the method of determining the melting point nor the pretreatment of the fat had been disclosed in the patent, and the skilled person was unable to reliably identify whether the melting point of a given palm oil fraction lay inside or outside the claimed range of 27-38°C.

- Nor could the skilled person infer from the experimental part of the patent in suit that ISO 6321 Method A had been used to determine the melting point of the unspecified palm oil, which according to example 1 was 38°C. The disclosed palm oil could not be considered a generic one, since the skilled person was aware that the composition of a palm oil and thus its melting point were not constant but varied depending on the country of production and the growing season. D24 disclosed in Table 2 that the palmitic acid content and the stearic acid content in the fatty acid content of palm oils typically varied from 39.2 to 45.8% and 3.7 to 5.4%, respectively, and that the melting point of palm oils varied from 33.8 to 39.2°C. Neither example 2 nor 3 provided the required information, because they both concerned mixtures with an unidentified sunflower oil and involved more than one palm oil fraction, making it even more difficult for the skilled person to derive any information therefrom regarding the measuring method that had been used.

- The present case, where the skilled person could equally use any of the standard methods AOCS CC 2-38 and ISO 6321, was similar to that of T 575/05, where standards were available but the patent did not provide guidance as to which one should be chosen.

XIII. The appellant requested that the decision under appeal be set aside and that the patent be maintained as granted, or alternatively maintained on the basis of any of the sets of claims submitted as auxiliary requests 1 to 4 with the statement setting out the grounds of appeal, or that the case be remitted to the opposition division if the board arrived at the conclusion that the claims as granted or one of the auxiliary requests complied with the requirements of Article 83 EPC.

XIV. The respondent requested that the appeal be dismissed.