T 1218/14 - No accidental anticipation

Key points

• In this opposition appeal, the Board does not allow a disclaimer with the purpose of providing novelty over D1. The proprietor had submitted that D1 is an accidental anticipation in the sense of Art. 55 EPC. The Board does not agree.
• Claim 1 is directed to a process for preparing a beverage additive comprising a step of removal of "modified prolamin". The Board: "D1 concerns a method for the separation of gluten and starch from wheat flour using a transglutaminase enzyme (D1, claim 1). It is true, as submitted by the appellant, that the main focus of D1 is the separation of gluten (prolamins) from wheat flour. ... However D1 also discusses the starch fraction obtained from the separation" and D1 also teaches the use of the starch for making glucose syrup, which is a beverage additive.
• "Consequently, D1 deals in a side aspect with the production of a beverage additive. It therefore does not fulfill the criterion in G 1/16 and G 1/03 that it must be so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making or working on the invention." 
• The Board turns to inventive step of an auxiliary request. The attack is based on D2 in combination with D1. The Board rejects this attack because D1 teaches the feature " would have had to remove the gluten from said starting material, something taught in D1 in the context of flour production only".
• The Board then notes that " The above finding that in view of D1 as a secondary document, the claimed subject-matter is inventive may at first sight appear to be in contradiction with the finding that D1 is not an accidental anticipation".
• The Board explains that " the requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention. Consequently, if this criterion is met, it follows that said disclosure is completely irrelevant for assessing inventive step. However, not meeting said criterion does not necessarily imply the opposite, namely that the disclosure in question will contribute to a finding that inventive step is lacking." 

EPO Headnote
The requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention (points 2 and 7).

EPO T 1218/14 - link

VII. Independent claim 1 of the main request (the claims as granted) reads as follows:

"1. A process for the preparation of a beverage, a beverage base, a beverage concentrate or a beverage additive having a reduced prolamin content from prolamin-containing raw materials, comprising the following steps:
(a) contacting the beverage or a precursor of the beverage with cross-linking enzymes to obtain modified prolamin;
(b) removing the modified prolamin at least partially."

Claim 1 of auxiliary request I corresponds to claim 1 of the main request with the following additional text:

"with the proviso of excluding a method for the separation of wheat flour into one gluten fraction and at least one other fraction, comprising the steps of: a) mixing the flour and a liquid and a transglutaminase enzyme obtaining a dough, b) separating the dough into a fraction comprising gluten and at least one other fraction, c) recovering at least the gluten fraction."

Auxiliary request I

2. Allowability of the disclaimer, Article 123(2) EPC

2.1 Claim 1 of auxiliary request 1 contains the following disclaimer:

"with the proviso of excluding a method for the separation of wheat flour into one gluten fraction and at least one other fraction, comprising the steps of: a) mixing the flour and a liquid and a transglutaminase enzyme obtaining a dough, b) separating the dough into a fraction comprising gluten and at least one other fraction, c) recovering at least the gluten fraction."

This disclaimer is an undisclosed disclaimer by way of which the appellant attempted to exclude the relevant disclosure of D1 from the scope of claim 1 in order to establish novelty over this document.

2.2 According to G 1/16, order, first paragraph:

"For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfill one of the criteria set out in point 2.1 of the order of decision G 1/03."

2.2.1 One of those criteria concerns the situation in which an undisclosed disclaimer is introduced in order to restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC (G 1/16: point 45; G 1/03: order, point 2.1, second indent, Reason point 2.2 and sub-points).

2.2.2 G 1/16 (reasons, point 45) states explicitly that the relevant test for assessing whether an anticipation is accidental is "if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention".

Apart from this specific statement, G 1/16 also refers to the reasons of G 1/03, point 2.2 and sub-points, which provide a more detailed explanation of the circumstances under which an anticipation may be considered accidental.

2.2.3 According to G 1/03 (reasons, point 2.2.2):

"Different definitions of accidental anticipation have been put forward ... [several decisions including the referring decision are cited]. These say in similar terms that a disclosure is accidentally novelty-destroying, if it was disregarded by the skilled person faced with the problem underlying the application, either because it belonged to a remote technical field or because its subject-matter suggested it would not help to solve the problem. Thus, according to these decisions, the disclosure has to be completely irrelevant for assessing inventive step. The individual elements of these and other attempts to find an adequate definition cannot be taken in isolation. The fact that the technical field is remote or non-related may be important but is not decisive because there are situations in which the skilled person would also consult documents in a remote field. ... What counts is that from a technical point of view, the disclosure in question must be so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention (In this direction see T 608/96, supra, Reasons, point 6, cited in the referring decision T 507/99, Reasons, point 7.3.1). This should be ascertained without looking at the available further state of the art because a related document does not become an accidental anticipation merely because there are other disclosures which are even more closely related. In particular, the fact that a document is not considered to be the closest prior art is not sufficient to accept an accidental anticipation ... ." (emphasis added by the board)

2.2.4 In a subsequent paragraph of the the same discussion in G 1/03 (reasons 2.2.2), the Enlarged board states:

"It is true that the European patent system must be consistent and the concept of disclosure must be the same for the purposes of Articles 54, 87 and 123 EPC. However, this does not prejudice the question of what is to be considered as technical information disclosing the invention. In the case of an accidental anticipation, its definition (see above) makes clear that it has nothing to do with the teaching of the claimed invention, since it cannot be relevant for examining inventive step. Therefore, a mere disclaimer excluding the subject-matter of an accidental anticipation may be assumed not to change the technical information in the application as filed and, for this reason, also not to change the subject-matter of the application as filed, within the meaning of Article 123(2) EPC." (emphasis added by the board)

2.2.5 It follows from both G 1/16 and G 1/03 that an anticipation is accidental if from a technical point of view it is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention. In addition to the explicit wording contained in G 1/16, G 1/03 requires that the accidental disclosure should be completely irrelevant for assessing inventive step.

2.3 In the present case, it needs to be assessed whether taking G 1/16 and G 1/03 into account, D1 qualifies as an accidental anticipation.

2.3.1 D1 concerns a method for the separation of gluten and starch from wheat flour using a transglutaminase enzyme (D1, claim 1). It is true, as submitted by the appellant, that the main focus of D1 is the separation of gluten (prolamins) from wheat flour with a view to adding it subsequently to flour of poor quality to improve the baking properties thereof (D1, page 1, lines 3-8 and 26-29; page 2, lines 2-7). The field of flours is entirely unrelated to the field relevant to the claimed invention, i.e. beverages, beverage bases, beverage concentrates and beverage additives.

However D1 also discusses the starch fraction obtained from the separation, and the uses thereof (page 5, line 31 - page 6, line 9). In particular, it is stated that "[t]here are a vast number of areas in which starches may be applied, such as glucose syrup production and in sweetening production in general" (page 6, lines 10-12; emphasis added by the board). Furthermore, example 2, as discussed above, is an embodiment of the process of D1 according to which in addition to a gluten fraction, a starch sediment is obtained, liquefied, saccharified and made into syrup. As established above, the resultant syrup is a glucose-rich syrup which the skilled person would consider as a suitable beverage additive.

2.3.2 Consequently D1 deals in a side aspect with the production of a beverage additive. It therefore does not fulfill the criterion in G 1/16 and G 1/03 that it must be so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making or working on the invention.

2.4 It follows that D1 cannot be regarded as an accidental anticipation and the disclaimer of claim 1 at issue does not meet the criteria set out for undisclosed disclaimers in G 1/16 (reasons, point 45) and G 1/03 (headnote, 2.1). Claim 1 thus fails to meet the requirements of Article 123(2) EPC.

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6.3 Obviousness

6.3.1 The respondent argues that starting at D2 or D3, the skilled person would have turned to either of D1 or D6, thereby arriving at the solution provided by claim 1 at issue.

6.3.2 The board does not agree. In order to arrive at the claimed invention on the basis of D2 or D3 in combination with D1, the skilled person would have had to

- go against the teaching which is key to both D2 and D3, namely to use a gluten-free starting material and would have had to use the gluten-containing starting material of D1 instead,

- would have had to remove the gluten from said starting material, something taught in D1 in the context of flour production only, and

- would have had to use the gluten-free glucose syrup resulting therefrom and mentioned in D1 as a side aspect only, as a precursor in D2 and D3 for the production of beer.

This multiple sequence of steps is neither disclosed nor suggested in any of D1, D2 or D3 and if at all, would have been applied by the skilled person only when already knowing the claimed invention, i.e. with the benefit of hindsight. Therefore, the claimed invention is inventive in view of D2 or D3 in combination with D1.

[...]

7. The assessment of whether a disclosure represents an accidental anticipation according to G 1/16 and G 1/03

7.1 The above finding that in view of D1 as a secondary document, the claimed subject-matter is inventive may at first sight appear to be in contradiction with the finding that D1 is not an accidental anticipation (point 2.3.2 and 2.4, above). More specifically, the finding that the claimed subject-matter is inventive in view of D1 as a secondary document may lead to the conclusion that D1 is irrelevant to inventive step. This may in turn be interpreted such that the criterion in G 1/03 that an accidental anticipation should be completely irrelevant for assessing inventive step is met and that hence D1 is an accidental anticipation.

7.2 The board finds it appropriate to provide its reasons in this regard in more detail.

7.2.1 According to the passage of G 1/03 quoted above (point 2.2.3), inter alia the criterion that a disclosure has to be completely irrelevant for assessing inventive step should not be taken in isolation. Said passage then reads "[w]hat counts is that from a technical point of view, the disclosure in question must be so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention". This criterion is essentially identical to that explicitly cited in G 1/16 (an anticipation is accidental "if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention"). Hence, this is the criterion that needs to be met for a disclosure to be considered an accidental anticipation.

7.2.2 In view of this, the requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention. Consequently, if this criterion is met, it follows that said disclosure is completely irrelevant for assessing inventive step. However, not meeting said criterion does not necessarily imply the opposite, namely that the disclosure in question will contribute to a finding that inventive step is lacking.

8. Article 84 EPC

8.1 The respondent objected under Article 84 EPC (in respect of claim 1 of the fifth auxiliary request found allowable by the opposition division) on the basis that it was not clear whether the plural term "enzymes" referred to one or more enzymes and secondly that the term "the beverage" in step a) of claim 1 lacked a proper antecedent. These terms are also present in claim 1 at issue. However, they are also present in claim 1 as granted. Pursuant to G 3/14, a clarity objection against granted claims is not possible in opposition appeal proceedings.

9. Sufficiency of disclosure, Article 100(b) EPC

9.1 The respondent objected to the broadness of the terms "cross-linking enzymes" and "beverage". Broadness as such is however not a valid basis for an objection of insufficiency of disclosure.

9.2 The respondent also alleged that the skilled person would be unable to choose a (mixture of) suitable enzymes for the claimed process. However, as already pointed out by the appellant in its letter dated 12 December 2014, the burden of proof lies with the respondent (opponent) to show that the method of the invention does not work. In fact, there is no reason to doubt that the skilled person in possession of the patent documents as a whole (in particular paragraphs [0012]-[0015],[0025] and [0026]) would be able to choose suitable enzymes for the claimed process.

9.3 Lastly, the respondent submitted that the use of the plural "enzymes" in claim 1 has the consequence that at least two distinct enzymes must be employed in the process. The board does not agree, since "enzymes" could conceivably be interpreted broadly as referring to either a single enzyme (a plurality of identical enzyme molecules, i.e. enzymes), or alternatively, more than one distinct enzyme. This interpretation is consistent with the description (paragraph [0025]) according to which suitable cross-linking enzymes are identified individually, or in combination. Irrespective of this, as set out above, the assertion that the skilled person is unable to identify a suitable enzyme or enzyme mixture is not supported by evidence and consequently must fail.

9.4 It follows that the invention defined in the claims is sufficiently disclosed.

10. Amendments, Articles 100(c) and 123(2) EPC

10.1 No objections have been raised by the respondent either in respect of the ground under Article 100 (c) EPC or, as regards amendments effected in the claims of auxiliary request IV, under Article 123(2) EPC. The board does not see any reason to raise objections in this regard. The claims at issue according to auxiliary request IV therefore meet the requirements of Articles 100(c) and 123(2) EPC.

11. The set of claims according to auxiliary request IV is consequently allowable.