T 1399/17 - Adapting the description

Key points

• In this opposition appeal, “The parties disagreed as to whether the patent specification had been correctly adapted to reflect the added mandatory feature of claim 1. The respondent [patentee] argued that it considered the adaptation of the description appropriate. The term "natural fat" neither excluded modified triglyceride molecules nor was relevant for the patentability of the claims.”
• The Board: “This is not convincing. Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim.”
• “On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.”

T 1399/17 -

epo.org/law-practice/case-law-appeals/recent/t171399eu1.html

2. Main request - adaptation of the description

2.1 Claim 1 includes the feature, added from a dependent claim as granted, that the "dietary fat is a blend of natural fats". The parties disagreed as to whether the patent specification had been correctly adapted to reflect the added mandatory feature of claim 1. The respondent argued that it considered the adaptation of the description appropriate. The term "natural fat" neither excluded modified triglyceride molecules nor was relevant for the patentability of the claims.

2.2 This is not convincing. Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim. The following non-exhaustive examples are given:

- According to paragraph [0014], last sentence, it is not a mandatory feature but only a desirable one:"Desirably the balance of fatty acids is achieved using a blend of natural fats...".

- In paragraph [0040], it is still stated that

"[p]referably" the dietary fat composition is a blend of natural fats. The entire paragraph and in particular the second sentence, in which it is discussed that the dietary fat composition "is... a structurally modified triglyceride-based dietary fat composition", does not support claim 1.

- In paragraph [0125], it is stated that interesterified fats "may still be used in the present invention". It would be straightforward for the skilled person that interesterified fats are not natural fats. This is confirmed in paragraph [0191] of the patent in suit ("The terms 'natural fat' and 'natural oil' ... does not contain a significant level of triglyceride molecules which have been artificially structurally modified (e.g., by chemical or enzymatic interesterification)...") and also in D11-N (e.g. page 110, left column, third paragraph).

- The section of the patent in suit entitled "Examples" and beginning before paragraph [0208] suggests that interesterified fats are part of the invention.

2.3 On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.