T 1939/11 22-10-2013

Summary of Facts and Submissions

I. This decision concerns the appeal by the joint opponents against the interlocutory decision of the opposition division that European patent No. 1 758 470 as amended met the requirements of the EPC.

II. The joint opponents DF3 SAS and Cosucra Groupe Warcoing had requested revocation of the patent in its entirety on the grounds that the claimed subject-matter was neither novel nor inventive (Article 100(a) EPC), that the patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC) and that the patent contained subject-matter which extended beyond the content of the application as filed (Article 100(c) EPC).

The documents submitted during the opposition proceedings included:

D2: |EP 1 137 424 B1; |

D3: |WO 02/051264 A2; |

A2: |JP 06-217761; and |

A4: |V. van Craeyveld et al., "Structurally Different Wheat-Derived Arabinoxylooligosaccharides Have Different Prebiotic and Fermentation Properties in Rats", J. Nutr. 138, 2008, pages 2348 to 2355.|

III. The opposition division's decision was announced orally on 3 May 2011 and issued in writing on 28 June 2011. In its decision, the opposition division held that the main request (filed on 1 April 2011) met the requirements of the EPC. Claims 1 and 5 of this request, which are the only claims relevant to the present decision, read as follows:

"1. A food or beverage product modulating the human intestinal flora comprising between 0.25 and 5 g of arabinoxylans per serving of said food or beverage product wherein said arabinoxylans have an average degree of polymerisation (DP) of 5 to 7."

"5. The beverage or food product according to any of claims 1 to 4, wherein said food product comprises living bacteria of the genus Bifidobacterium or Lactobacillus."

The opposition division's position can be summarised as follows:

The claims of the main request were based on the application as filed. In particular, the ranges of 5-50 and 7-20 disclosed for the average degree of polymerisation (hereinafter "DP") in the application as filed provided a basis for the range of 5-7 in the claims.

The invention underlying the opposed patent was also considered to be sufficiently disclosed.

It was also novel over inter alia D3, since this document did not disclose the claimed average DP in an unambiguous manner.

The claimed subject-matter was also regarded as inventive. In view of the closest prior-art document D3, the objective technical problem was the selection of a specific arabino-oligosaccharide which made it possible to decrease protein fermentation in the colon, did not have a sweet taste and was easy and cheap to produce. None of the cited prior-art documents taught the selection of an arabinoxylan having the claimed average DP of 5 to 7 in order to solve this technical problem.

IV. On 26 August 2011, the joint opponents (hereinafter: "the appellants") filed an appeal and, on the same day, paid the prescribed fee. The statement setting out the grounds of appeal was filed on 28 October 2011 together with

D53: |Doctoral thesis of H. Gruppen, "Structural characteristics of wheat flour arabinoxylans", 1992, 158 pages; |

D54: |C. M. Courtin et al., "Relative Activity of Endoxylanases Towards Water-extractable and Water-unextractable Arabinoxylan"; Journal of Cereal Science 33, 2001, pages 301 to 312; |

D55: |M. S. Izydorczyk et al., "Cereal arabinoxylans: advances in structure and physicochemical properties", Carbohydrate Polymers 28, 1995, pages 33 to 48; |

D56: |J. I. Sanchez et al., "Arabinoxylan-oligosaccharides (AXOS) affect the protein/carbohydrate fermentation balance and microbial population dynamics of the Simulator of Human Intestinal Microbial Ecosystem", Microbial Biotechnology 2(1), 2009, pages 101 to 113; |

D57: |Experimental report "Reproduction of the procedures described in A2 (Example I [0019]) and D2 (Example III)"; |

D58: |JP 04-053801; |

D59: |Experimental report "ANNEX 1 - Effect of average DP of arabinoxylan preparations on the intestinal development of bifidobacteria, short chain fatty acid production and protein fermentation"; |

D60: |Experimental report "ANNEX 2 - Effect of AXOS administration on bifidobacteria and urinary cresol excretion in healthy humans"; |

D61: |Experimental report "ANNEX 3: Effect of administering arabinoxylan-oligosaccharides (AXOS) to healthy children"; |

D62: |Declaration "ANNEXE 1 Impossibilité de réaliser la revendication 6 du document Main Request du 21/12/2009"; |

D63: |Collection of information on various products, concerning their compositions and serving amounts; |

D64: |"Topics in enzyme and fermentation biotechnology 8", A. Wiseman (ed.), Wiseman/Ellis Horwood Limited, 1984, pages 9 to 30; |

D65: |JP 04-309501; and |

D66: |EP 0 470 870 A1. |

V. With its two letters of 15 March 2012, the proprietor (hereinafter: "the respondent") filed its reply, which contained:

A6: |Doctoral thesis of V. van Craeyveld "Production and functional characterisation of arabinoxylan-oligosaccharides from wheat (Triticum aestivum L.) bran and psyllium (Plantago ovata Forsk) seed husk", 2009, 210 pages; |

A7: |Product information sheet "Cellulase "Onozuka" RS", Serva Electrophoresis GmbH; |

A8: |A.-M. A. Loosveld et al., "Contents and Structural Features of Water-Extractable Arabinogalactan in Wheat Flour Fractions", J. Agric. Food Chem. 45, 1997, pages 1998 to 2002; |

A9: |G. Cleemput et al., "Heterogeneity in the structures of water-soluble arabinoxylans in European wheat flours of variable bread-making quality", Cereal Chem. 70(3), 1993, pages 324 to 329; and |

A10: |Product information sheet "Arabinoxylan (Wheat Flour; Insoluble)", Megazyme International Ireland. |

Apart from the above documents, the letters contained three auxiliary requests. The respondent requested that the appeal be dismissed or that the patent be maintained on the basis of any of the three auxiliary requests, or, as a fourth auxiliary request, on the basis of the granted claims. Lastly, it was requested that the case be remitted back to the opposition division if the appeal was not dismissed.

VI. On 13 February 2013, the board issued its preliminary opinion. The board observed inter alia that the presence of living bacteria as required by claim 5 of the main request appeared to be disclosed in the application as filed only for certain specific food products, rather than food products in general, and that therefore claim 5 appeared not to be based on the application as filed. As regards inventive step, the board considered inter alia D3 to represent the closest prior art. The claimed subject-matter constituted a selection of arabinoxylans with a specific average DP from the disclosure of this document. It had to be discussed during the oral proceedings which problem was solved by this selection and whether, in view of this problem, the selection of the claimed average DP range was obvious.

VII. A reply was filed by the appellants with their letter of 1 August 2013 together with

D67: |JP 05 304950 (abstract and English translation); |

D68: |"Copie tribunal de commerce d'Amiens", Jugement du vingt-huit octobre deux mille onze, N° de PC: 2011RJ329;|

as well as a CV of Mr Joseph Fockedey, an expert in food carbohydrates. It was requested that he be allowed to address the board on technical matters during the scheduled oral proceedings.

VIII. The respondent filed its reply with letter dated 6 August 2013 together with a new first and second auxiliary request replacing the previous auxiliary requests.

Claim 1 of the first and second auxiliary requests reads as follows:

- "1. A food or beverage product modulating the human intestinal flora comprising between 0.25 and 5 g of arabinoxylans per serving of said food or beverage product wherein said arabinoxylans have an average degree of polymerisation (DP) of 7, wherein said average degree of polymerisation (DP) is determined by gas-liquid chromatography by calculating said average DP as the sum of the total xylose and arabinose content divided by the reducing end xylose content." (first auxiliary request)

- "1. The use of an arabinoxylan preparation comprising arabinoxylan molecules with an average degree of polymerisation (DP) of 7 as a food additive in the production of a food or beverage, which comprises between 0.25 and 5 g of such arabinoxylans per serving of said food or beverage, wherein said average degree of polymerisation (DP) is determined by gas-liquid chromatography by calculating said average DP as the sum of the total xylose and arabinose content divided by the reducing end xylose content." (second auxiliary request)

IX. A further reply was filed by the appellants with their letter of 11 September 2013, and by the respondent with its letter of 9 October 2013.

X. On 22 October 2013, oral proceedings were held before the board. At the beginning of the oral proceedings, the respondent withdrew its request for remittal and clarified that the previous fourth auxiliary request was withdrawn as well. In addition to its remaining requests on file, the respondent requested that documents D53 to D68 not be admitted into the proceedings and that a decision on the status of one of the joint appellants be taken, namely DF3 SAS. The appellants maintained their written requests and additionally requested that the first and second auxiliary requests not be admitted into the proceedings.

XI. So far as relevant to the present decision, the appellants' arguments can be summarised as follows:

a) Status of joint appellant DF3 SAS

As evidenced by D68, the insolvency proceedings were still ongoing. Therefore the party status of DF3 SAS was still the same, namely that of an appellant.

b) Allowability of the main request

Claim 5 of the main request was not based on the application as filed. This claim required the presence of living bacteria for all types of products, while the application as filed, in particular page 8, lines 29 to 30 and 35 to 36 and claim 30, was limited in this regard to specific types of product.

The appellants raised a further objection under Article 123(2) EPC or, alternatively, Article 123(3) EPC against claim 11 and under Article 100(b) EPC against claims 1 and 6 of the main request.

c) Admissibility of the first and second auxiliary requests

The first and second auxiliary requests were not convergent and therefore should not be admitted into the proceedings.

d) Admissibility of D53 to D68

D53 to D67 constituted a further substantiation of attacks already made during the first-instance proceedings. D68 was a reaction to the submissions of the proprietor on the status of DF3 SAS. Therefore D53 to D68 should be admitted into the proceedings.

e) Allowability of the first auxiliary request

D3 constituted the closest prior art. This document did not disclose the claimed average DP of 7. However, there was no specific effect linked to this average DP. Example 4 of the patent was not relevant in this respect since the control feed used in this example contained the enzyme xylanase. Upon admixture of this control feed with AXOS-7-0.34, the AXOS-7-0.34 started to degrade such that the average DP decreased. So what was fed to the chicken in this example in fact was an arabinoxylan with an average DP below 7, which was different from the claimed value. Furthermore, the feeds shown in figure 9 did not differ only in terms of the average DP but additionally by the ratio of arabinose to xylose and thus were not comparable. In this context the appellants' expert Mr Fockedey mentioned that the Xylooligo-95P shown in this figure was xylose that was substituted by arabinose to a very minor extent and hence had a very low arabinose/xylose ratio. In the same way, a comparison of the AXOS-7-0.34 feed of figure 9 with the AXOS-15-0.27 feed of figure 10 was not meaningful, since in the first case the control feed present in the AXOS-7-0.34 feed contained xylanase while in the second case it did not. Finally, it could not be deduced from figure 9 that the AXOS-7-0.34 feed resulted in slow fermentation. What this figure actually showed was rather a slower adaptation of the bacteria to the AXOS-7-0.34 feed. The objective technical problem was thus the provision of an alternative and the solution was an arbitrary selection from D3.

As regards the serving amount required by claim 1, this did not limit the claim since it represented a use feature which did not restrict the claimed product. Furthermore, even if it did restrict the claim, it could not establish an inventive step since it did not provide any effect. In this respect, it was important that example 4 of the patent did not even disclose any serving amount. The claimed serving amount hence represented an arbitrary selection.

In addition to the above, the appellants raised further objections under Article 123(2) EPC, Rule 80 EPC and Article 83 EPC against the first auxiliary request.

f) Allowability of the second auxiliary request

D3 already disclosed the use of the nutritional composition disclosed in this document as a food supplement on page 7, line 8. Consequently, the use feature of claim 1 of the second auxiliary request did not constitute an additional distinguishing feature with regard to D3. Therefore, for the same reasons as given for the first auxiliary request, the subject-matter of the second auxiliary request lacked an inventive step in view of D3.

XII. So far as relevant to the present decision, the respondent's arguments can be summarised as follows:

a) Status of joint appellant DF3 SAS

In view of the ongoing bankruptcy proceedings, the party status of DF3 SAS was not clear.

b) Allowability of the main request

Claim 5 was based on the application as filed. More specifically, it was disclosed on page 7, lines 13 to 15 as filed that the arabinoxylan preparations according to the invention had a strong bifidogenic effect. It was therefore implicit that these preparations contained living bifidobacteria. Furthermore, no unwarranted advantage or legal uncertainty was created by the inclusion in claim 5 of embodiments wherein living bacteria were present in food products in general. Therefore, even though these embodiments were not clearly and unambiguously disclosed in the application as filed, the requirements of Article 123(2) EPC were met.

c) Admissibility of the first and second auxiliary requests

The amendments in the first and second auxiliary requests essentially consisted of the inclusion of the measurement method for the average DP in the independent claims and in the deletion of various other claims. These amendments did not add anything and could not surprise the appellants. Furthermore they represented a reaction to the board's preliminary opinion. Therefore the auxiliary requests should be admitted into the proceedings.

d) Admissibility of D53 to D68

The main documents used against novelty and inventive step in the statement of grounds of appeal were those already submitted during the opposition proceedings rather than the ones newly filed in appeal. Furthermore, D56 was not prior art and D67, which was used together with D13 against novelty, was not relevant. Thus, D53 to D67 did not add anything new to the prior art already on file. Therefore, D53 to D68 should not be admitted into the proceedings (no reasons were given for D68).

e) Allowability of the first auxiliary request

D3 represented the closest prior art. This document disclosed arabinoxylan as only one member of a list of oligosaccharides, and furthermore neither disclosed an average DP nor a serving amount as required by claim 1. The objective technical problem solved in view of this document was the provision of improved bifidogenic properties, ie an increased amount of bifidobacteria and a slower fermentation. A comparison of the results obtained in example 4 of the patent for the AXOS-7-0.34 feed, which was according to claim 1, with those obtained for the further feeds in figures 9 and 10 showed that with the AXOS-7-0.34 feed a higher amount of bifidobacteria was obtained. More specifically, after 14 days, the amount of bifidobacteria obtained with the AXOS-7-0.34 feed was higher than that obtained with the AXOS-122-0.66 or the Xylooligo-95P feed in figure 9 or the AXOS-15-0.27 feed in figure 10. The latter was confirmed by the text of example 4 where it was stated that with AXOS-7-0.34, the number of bifidobacteria increased by a factor of about 10**(5), whereas with AXOS-15-0.27, it increased by a factor of 22. Finally, the results in figure 9 showed that the AXOS-7-0.34 feed led to slower fermentation. More specifically, the number of bifidobacteria obtained after a 7-day feeding with AXOS-7-0.34 was lowest in figure 9 while after a longer time, namely 14 days, it was the highest. This slower increase in the amount of bifidobacteria implied a slower fermentation.

f) Allowability of the second auxiliary request

Apart from the distinguishing features already present in claim 1 of the first auxiliary request, the use as nutritional additive constituted a further distinguishing feature of claim 1 of the second auxiliary request. Therefore an inventive step had to be acknowledged.

XIII. The appellants requested that the decision under appeal be set aside and European patent No. 1 758 470 be revoked.

XIV. The respondent requested that the appeal be dismissed (main request), or that the patent be maintained on the basis of the claims according to the first or second auxiliary request, both filed on 6 August 2013.