CABINET CHAILLOT

T0629/22 - presence of a non-working embodiment

Non-working embodiment, G1/03

T0629/22 - presence of a non-working embodiment
The two opponents (appellants) filed the appeals against the opposition division's decision finding that the European patent as amended met the requirements of the EPC.
Claim 1 of auxiliary request reads:
"1. A cheese analogue, comprising water, 10-24 wt.% of a non-modified root or tuber starch or of a waxy root or tuber starch comprising at least 90 wt.% amylopectin, 0.5-8 wt.% native potato protein and a fat component, obtainable by a process comprising:
- creating a mixture comprising a root or tuber starch, native potato protein and a fat component in water,
- heating the mixture to a temperature of 70-90 °C
- cooling the mixture until solid, and
- ripening the cheese for at least 1 day."
Claim 1 is a product-by-process claim defining the steps for manufacturing a claimed cheese analogue.
D12 is the closest prior art. The claimed subject-matter differs from the teaching of D12 at least on account of the type and amount of starch: 10 to 24 wt.% of non-modified root or tuber starch or of a waxy root or tuber starch instead of 7 wt.% modified starch.
The patent describes several tests showing that cheese analogues prepared by the process defined in claim 1 can be melted and provide good stretch performance in the molten state.
Appellant 1 conceded that the cheese analogues prepared using waxy root or tuber starch, which were described in the patent and in D27, had reasonable melt-stretch characteristics. It noted, however, that example 28 of D38 showed that no stretchable cheese analogue could be obtained using 10 wt.% waxy potato starch, 0.5 wt.% potato protein and 35 wt.% sunflower oil. This demonstrated that the claims were overly broad and that melt-stretch characteristics could not be achieved across the entire scope claimed.
The Board does not agree with these conclusions. As noted by the respondent, the amounts of potato protein (0.5 wt.%) and starch (10 wt.%) used in example 28 of D38 were the lowest foreseen in the patent whereas the amount of fat (35 wt.%) was the highest. This means that the allegedly non-working embodiment in example 28 relates to a rather peculiar case.
The patent and the experimental reports D27 and D55 describe cheese analogues comprising different amounts of waxy starch, potato protein and fat. The amount of these ingredients was varied substantially across the entire scope claimed: that of the potato proteins from 0.5 to 5 wt.%, that of the starch from 10 to 24 wt.% and that of oil from 10 to 35 wt.%. All these cheese analogues exhibited melt-stretch characteristics. This makes it credible that the claimed effect can be obtained substantially across the entire scope claimed.
The following should also be considered. In decision G1/03, when dealing with the issue of non-working embodiments, the Enlarged Board of Appeal stated the following:
"... If a claim comprises non-working embodiments, this may have different consequences [...].
Either there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. If this is the case, the inclusion of non-working embodiments is of no harm. [...]
If this is not the case and there is lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step."
In the circumstances of the case in hand, the board considers that the patent describes a large number of conceivable alternatives and sufficient information for finding appropriate alternatives over the claimed range, with reasonable effort. If a skilled person failed to prepare a stretchable cheese analogue using the amounts of ingredients in example 28 of D38, they would:
- realise that the conditions used are extreme because the amounts of the ingredients are at the edge of each of the ranges foreseen in the patent
- find in the patent the teaching that compositions having the desired properties can be obtained by increasing the amount of potato protein and/or decreasing the amount of the oil
The tests in the patent and in D27 and D55 make it credible that if a skilled person followed the teaching in the patent, they would obtain a cheese analogue having the relevant stretch properties. It is noted that D27 and D55 describe the preparation of cheese analogues which comprise the lowest amount of potato protein (0.5 wt.%) and waxy potato starch (10 wt.%) and the highest amount of fat (35 wt.% oil) foreseen in the patent and that still have melt-stretch characteristics.
This confirms that the claimed effect can be obtained substantially across the entire scope claimed. Therefore, the presence of a single non-working embodiment is of no harm.
The cheese analogue of D12, the closest prior art, does not have any melt-stretch characteristics. It is in fact a spreadable cream cheese having a creamy and smooth mouth feel.
Thus, starting from D12, the objective technical problem is to provide a cheese analogue having melt-stretch characteristics.
The appellants considered that D9 and D10 provided a pointer towards the claimed solution.
The Board does not agree. Neither D12 itself nor D9 or D10 address the issue of providing a cheese analogue having melt-stretch characteristics. In particular, none of them mentions a cheese which can be stretched after being melted.
Therefore, a skilled person relying on the teaching of these documents could not have foreseen that a cheese analogue having melt-stretch characteristics could have been obtained by replacing a modified potato starch with a non-modified or a waxy starch and increasing the amount of the starch in a cream cheese not having any melt or stretch characteristics.
For these reasons, it is concluded that the claimed subject-matter involves an inventive step.
The case is remitted to the opposition division with the order to maintain the patent as amended in the version of claims 1 to 13 according to auxiliary request.

 

---