T 0589/04 06-06-2007

Summary of Facts and Submissions

I. Mention of the grant of European patent No. EP 0 652 712 in respect of European patent application No. 93 907 161.9, filed as International application No. PCT/US 93/01900 on 2 March 1993 in the name of WM. Wrigley Jr. Company was announced on 11 July 2001 (Bulletin 2001/28).

The patent, entitled "Improved wax-free low moisture chewing gum" was granted with twenty nine claims, Claim 1 reading as follows:

"1. A wax-free low moisture chewing gum containing from 0.10 wt% to 2 wt% water and comprising from 10 to 90 wt% of a wax-free gum base comprising:

from 10 to 60 wt% of at least one synthetic elastomer;

at least one natural elastomer in an amount of 30 wt% or less;

from 5 to 55 wt% of at least one elastomer plasticizer;

from 4 to 40 wt% filler; and

from 5 to 40 wt% of at least one fat oil or softener; said chewing gum further comprising from 0.001 to 70 wt% sweetener, and from 0.01 to 10 wt% flavouring agent."

Claims 2 to 29 were, either directly or indirectly, dependent on Claim 1.

II. Notice of opposition was filed by

Perfetti Van Melle S.p.A. - Opponent I

on 10 April 2002

and

Pfizer Inc. - Opponent II

on 11 April 2002.

The opponents requested revocation of the patent in its entirety and based their submissions on the Article 100(a) and 100(c) EPC opposition grounds.

With respect to the opposition grounds according to Article 100(a) EPC the opponents submitted that the claimed subject-matter was not novel and was not based on an inventive step. In support of their submissions they cited, inter alia, the following document:

D1 US-A 5 023 093.

Opponent I also submitted that wax-free chewing gum bases and chewing gums were available to the public by sale well before the effective priority date of the patent. Evidence was provided in order to show that the chewing gum "Happydent" containing the gum base "Every Base TA" was available on the market.

It was admitted by Opponent I that because of its higher water content of 2.3 wt% "Happydent" did not anticipate the claimed chewing gum. However, it was considered obvious to decrease the amount of the moisture-providing glucose syrup in Happydent, thereby reducing its water content to values falling within Claim 1 of the patent.

III. The decision of the Opposition Division was based on Claims 1 to 13 according to the main request and Claims 1 to 13 according to the auxiliary request, both submitted during the oral proceedings held on 21 January 2004.

Claim 1 of the main request read as follows:

"1. A wax-free low moisture chewing gum containing from 0.10 wt% to 2 wt% water and comprising from 10 to 35 wt% of a wax-free gum base comprising:

from 20 to 60 wt% of at least one synthetic elastomer;

from 0 to 30 wt% of at least one natural elasto-mer;

from 5 to 55 wt% of at least one elastomer plasticizer;

from 4 to 40 wt% filler; and

from 5 to 40 wt% of at least one fat, oil or softener; said chewing gum further comprising from 0.001 to 70 wt% sweetener, and from 0.01 to 10 wt% flavouring agent."

Claim 1 of the auxiliary request read as follows:

"1. A wax-free low moisture chewing gum containing from 0.10 wt% to 2 wt% water and comprising from 10 to 35 wt% of a wax-free gum base comprising:

from 20 to 60 wt% of at least one synthetic elastomer;

at least one natural elastomer in an amount of 30 wt% or less;

from 5 to 55 wt% of at least one elastomer plasticizer;

from 4 to 40 wt% filler; and

from 5 to 40 wt% of at least one fat, oil or softener; said chewing gum further comprising from 0.001 to 70 wt% sweetener, and from 0.01 to 10 wt% flavouring agent."

Claim 1 according to the main request differed from the granted Claim 1 in that

the lower limit of the percentage range of the synthetic elastomer was raised from 10 wt% to 20 wt%,

- the amount of the gum base was limited from 10 to 90 wt% to "10 to 35 wt%" and

- the amount of the natural elastomer was quantified as being "from 0 to 30 wt%".

Claim 1 according to the auxiliary request differed from Claim 1 of the new main request in that for the natural elastomer the amount of "30 wt% or less" according to Claim 1 as granted was reintroduced.

IV. With its interlocutory decision, announced in the oral proceedings and issued in writing on 3 March 2004, the Opposition Division maintained the patent in amended form on the basis of the auxiliary request.

The main request was not allowed because it contravened Article 123(3) EPC. The Opposition Division argued that the feature in Claim 1 "comprising ... at least one natural elastomer in an amount of 0-30 wt%" extended the scope of the patent, contrary to Article 123(3) EPC, because this range included "0 wt%", whereas the definition "at least one natural elastomer in an amount of 30 wt% or less" in Claim 1 as granted excluded "0 wt%". By virtue of this change the natural elastomer, which according to the patent as granted was a mandatory component of the chewing gum, became optional.

In the opinion of the Opposition Division, the amendments made in Claim 1 of the auxiliary request complied with Articles 123(2) and (3) EPC.

In particular, the Division did not agree with the objection of the opponents that the range for the natural elastomer "30 wt% or less" (emphasis by the Board) instead of "0 to 30 wt%" as originally disclosed contravened Article 123(2) EPC. In its view "a limitation to a lower or higher value of a claimed ingredient could be allowed by the wording 'more/less than the specifically disclosed value' in case ranges were given" (sic).

The subject-matter according to the auxiliary request was also considered novel over the prior art. With respect to D1 the Opposition Division in particular argued that the chewing gum disclosed there contained from 40 to 90 wt% chewing gum base, whereas the gum base content of the claimed chewing gum was at most 35 wt%.

The Opposition Division did not agree with the opponents that D1 represented the closest prior art for the assessment of an inventive step. It reasoned that D1 sought to provide high gum base chewing gums with an extended flavour sensation in combination with improved shelf life, which was an entirely different problem from that underlying the claimed invention. D1 was therefore not an appropriate starting point for providing low moisture chewing gums having a lower gum base content.

With respect to the alleged prior public use of the chewing gum "Happydent", it was the position of the Opposition Division that the public availability of "Happydent" was not proved "up to the hilt".

V. Notice of appeal was filed by

- Opponent I on 29 April 2004;

- Opponent II on 13 May 2004;

- The patent proprietor on 6 May 2004.

A Statement of the Grounds of Appeal was submitted by Opponent I on 12 July 2004.

With communications pursuant to Article 108 and Rule 65 EPC dated 4 August 2004, Opponent II and the patent proprietor were informed by the EPO that a written statement setting out the grounds of appeal had not been filed by either of them and that it was to be expected that their appeals would be rejected as inadmissible.

Enclosed with a letter dated 3 August 2004 the patent proprietor submitted a Statement of the Grounds of Appeal and a request for restitutio in integrum under Article 122(1) EPC.

As part of the Statement of the Grounds of appeal, maintenance of the patent on the basis of the main request submitted in the oral proceedings before the Opposition Division was requested. Alternatively, it was requested to remit the case to the Opposition Division for further consideration or to maintain the patent in the form of the auxiliary request allowed by the Opposition Division.

With its request for restitutio in integrum the patent proprietor submitted an Affidavit in order to explain why it let the 13 July deadline for filing the Grounds of Appeal pass by in spite of taking all due care.

In response to a communication of the Board dated 20 January 2005 the patent proprietor submitted, with a letter dated 24 March 2005, further documents in support of its request for restitutio in integrum.

VI. Enclosed with a letter dated 23 May 2007 a set of claims as the basis for a further (second) auxiliary request was submitted by the patent proprietor.

With the letter dated 30 May 2007 the proprietor stated that it withdrew its appeal, the second auxiliary request filed on 23 May 2007 and the conditional request for oral proceedings. The proprietor furthermore stated that its sole request was that the patent be maintained in the form of the auxiliary request allowed by the Opposition Division.

VII. Taking the above circumstances into account and given the fact that Opponent II did not file a Statement of the Grounds of Appeal, the only appellant is Opponent I, Perfetti Van Melle S.p.A..

VIII. In the oral proceedings before the Board held on 6 June 2007, which the respondent did not attend, and which therefore took place in the presence of the appellant and Opponent II only, the following issues with respect to the auxiliary request allowed by the Opposition Division were discussed:

(a) Amendments - Article 123(2) EPC;

(b) Inventive Step (Article 56 EPC) vis-à-vis D1 as the closest prior art.

IX. The arguments of the appellant - supported by statements of Opponent II - with regard to the above issues were as follows:

(a) The originally disclosed range of from 0 to 30 wt% for the natural elastomer was divided by the examples into two separate disclosures:

- 0 wt% by examples 1 to 30 and 56 to 74;

- the range lying between 12 wt% and 30 wt% by examples 31 to 55.

It would therefore be justified under Article 123(2) EPC to delete the range 12 to 30 wt%. However no example existed filling the gap between more than zero and 12 wt%.

The exclusion of zero from a range of 0 to 30 wt% was therefore a disclaimer which was not allowable under Article 123(2) EPC.

(b) Contrary to the opinion of the Opposition Division, D1 was an appropriate starting point for the consideration of inventive step.

D1 disclosed a low-calorie chewing gum containing a gum base composition which corresponded to the gum base composition used in the claimed chewing gum. In column 2, lines 42 to 50 and column 3, lines 52 to 56 particular reference was made to an extended flavouring agent and sweetener release while maintaining a soft chew texture, accompanied by a reduction in calories and an improved shelf stability of the chewing gum.

As to the absence of wax, which was nowhere posi tively disclosed in D1, document D1a (US-A 4 872 884), from which D1 was a continuation in part, had to be taken into account. In that document wax was indicated in Claim 1 as one of the essential components of the chewing gum described therein.

The fact that - in contrast to D1a - its continuation in part D1 did not refer to the presence of wax was sufficient evidence for the conclusion that the compositions of D1 should be wax-free.

In column 8, lines 16 to 18 of D1 it was disclosed that "the chewing gum may be anhydrous, substan tially anhydrous or prepared to be moisture containing". Because the term "substanti ally anhydrous" was to be interpreted as referring to a "small but technically insignificant" water content the above disclo sure must be considered to encompass - as one alternative - a low moisture chewing gum in the sense of the invention, ie with a water content lying within the range from 0.1 to 2 wt% as claimed.

The claimed chewing gum differed therefrom only in that the range of the gum base content was lowered from 40 - 90 wt% to 10 - 35 wt%.

Therefore, the problem to be solved was the provision of an alternative chewing gum with a higher calorie content.

It was, however, a matter of routine for a skilled person to reduce the amount of the gum base in favour of an enhanced calorie content. This all the more so as it was disclosed in D1, column 1, lines 28 to 30 that a conventional gum base content amounted to 25 wt% and as no effect was shown by the Respondent caused by the claimed gum base reduction.

X. In its written submissions the respondent argued as follows with respect to points (a) and (b):

(a) According to the language of the auxiliary request the presence of a natural elastomer in the claimed chewing gum was not essential. This was particularly clear from examples 1 to 30 and 56 to 82. The reference to at least one natural elasto mer in an amount of "30 wt% or less" in Claim 1 of the auxiliary request was therefore to be interpreted identically to the feature of "0 to 30 wt%". Following this interpretation, the appellant's argument of added subject-matter was not valid.

(b) According to the teaching in D1 (column 3, lines 52 to 56, column 4, lines 6 to 12, column 5, lines 5 and 6, column 8, lines 10 to 13 and Example 2), chewing gums with a high gum base content, preferably in an amount of 60 to 70 wt%, and a good flavour sensation in combination with improved shelf stability should be provided.

In contrast thereto, the claimed invention was concerned with an entirely different problem namely the undesirable increase with time of the brittleness of wax-free high moisture chewing gums, which was found to be controllable by a reduction of the chewing gum's moisture content subject to the proviso that the gum base and its amounts were strictly defined as specified in Claim 1.

D1 was silent as regards the possibility of a gum becoming brittle over time and therefore a skilled person starting from D1 and trying to overcome this problem would not consider the gum of the claimed invention to be an obvious solution over the gum according to D1.

Furthermore, D1, placing particular emphasis on the requirement of a high gum base proportion, taught away from gum according to the invention in which the maximum amount of the gum base was 35 wt%.

XI. The appellant requested that the decision under appeal be set aside and that the European patent be revoked.

Opponent II supported the appellant's request for reversal of the appealed decision.

XII. The respondent, as its single request, requested that the appeal be dismissed.