Résumé de EPC2000 Art 056 pour la décision T2363/22 du 10.06.2024

In T 2363/22 the patent at issue related to a dry pet food which comprised a core and a palatability-enhancing coating that contained edible phosphate salt and yeast extract. In both the application as filed and the patent, the reduction in palatability resulting from the decrease in the phosphate salt content was stated to be compensated for by the impact of the yeast extract; that is, the yeast extract enhanced the palatability contribution of the phosphate salt. The patent proprietor had with its reply to the notice of opposition, filed the declaration D15, which included comparative tests intended to provide a basis for comparing the closest prior art with claim 1. The tests in D15 did not compare every composition that the opponent considered a starting point with the subject-matter of claim 1. However, in a situation where an opponent lodges several inventive-step attacks from various starting points, the board held it was understandable that the patent proprietor might choose to formulate comparative compositions that addressed distinguishing features that all starting points had in common. The patent proprietor was not expected to provide comparative tests with respect to each and every starting point. Rather, the question to be answered was whether the set-up chosen supported the conclusion that a technical effect was credibly achieved, and in particular whether the comparative test was representative of the disclosure used as a starting point. In the case in hand, it was not convincing that the difference identified by the appellant had a decisive effect on the conclusions drawn from D15, let alone that it led to results that lacked technical meaning. The board was satisfied that the effects highlighted in D15 were, in the words of G 2/21 (OJ 2023, 85), "encompassed by the technical teaching and embodied by the same originally disclosed invention". The data in D15 illustrated with respect to the specific closest prior art cited how yeast extract compensated for the decrease in phosphate concentration. Considering the technical effect demonstrated, the board determined the problem was to maintain or improve the palatability of a pet food composition. It concluded that contrary to the appellant's view, there was no teaching in D1 or D2 leading to the solution of claim 1. While in these two documents low concentrations of phosphate were suggested and were possible, in principle, there was no indication that this could be done while maintaining palatability. The prior art contained no teaching to this effect, let alone when combined with the use of yeast extract. Therefore, the subject-matter of claim 1 involved an inventive step (Art. 56 EPC).