T 1264/19 - Kalanchoe cut flowers (and plausibility)

 Key points

Claim 1 in this opposition appeal “ is a product claim directed to a "bouquet of flowers". The bouquet comprises - one or more cut flowers of the genus Kalanchoe having a stem length of at least 35 cm, and - one or more cut flowers belonging to a genus different from Kalanchoe”; the claim recites further functional features.
• Claim 1 of AR-1 is directed to “Use of one or more cut flowers belonging to the genus Kalanchoe having a stem length of at least 35 cm, for prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe.”
• Key questions include inventive step over D3, whether priority is valid so that D3 forms prior art, and sufficiency of disclosure.
• As to the validity of the priority, the point is illustrative as practice point: “The feature "stem length of 35 cm" is disclosed in the priority document on page 4, lines 12 to 15: "Especially varieties that have a mid-size or large stem, i.e. having a stem length of at least 20 cm, preferably at least 35 cm, more preferably at least 45 cm and up to 60 cm or even more, with sufficient stem strength are particularly suitable as cut flowers ...".” 
• The Board finds that the claim without the feature of “sufficient stem strength” is not supported by the cited paragraph of the priority document.
• As to priority, “The appellant  [patentee] further argued that stem strength was an intrinsic feature of a cut flower which was only required for the flowers to stand upright, i.e. for aesthetic reasons. This feature, therefore, was non-technical in relation to the invention, and did not solve the technical problem of longevity. Hence, it should not be considered when assessing the validity of the claimed priority.”
• The Board considers the feature to be technical and adds that “The issue of whether a technical feature contributes to achieving the technical effect of the invention is not relevant for assessing whether or not priority is validly claimed. Here, the relevant criterion is that the "subsequent application is filed in respect of the same subject-matter": such a criterion does not require considerations which belong to the realm of inventive step. The board concludes that the feature "at least 35 cm" is only disclosed in combination with the feature "sufficient stem strength" in the priority document.”
• The argument based on the sufficient stem strength being an intrinsic property, is dismissed for lack of evidence.
• Hence, priority is invalid.
• D3 therefore forms prior art and teaches cut Kalanchoe flowers of "selected ethylene-resistant varieties" having an "antiseptic effect [which] keeps the water clean"; the example varieties are the same as in the patent. Document D3 states that "the elegant flowering stems can be arranged in colourful bouquets" and proposes to "[u]se them also in mixed bouquets".
• The claimed subject-matter differs from the mixed bouquets of cut flowers disclosed in document D3 in that the stem length of the Kalanchoe cut flowers is at least 35 cm and in that cut flowers which are not of the genus Kalanchoe are present in the mixed bouquet.
• Patentee seems to have argued for inventive step mainly based on the feature specifying the stem length. “The only other evidence with regard to a specific effect of a stem length of at least 35 cm of a Kalanchoe was submitted by the appellant [patentee] in the form of document D32. The document, which is not comprised in the state of the art [i.e. post published evidence], discloses that: "having a stem length of up to 15 cm, no such [antifouling] effect was observed. For cut Kalanchoes with a stem of 35 cm we surprisingly observed such effect. This made us to check such effect on different lengths, and it was observed that below 35 cm, the effect was less pronounced, whereas above said length the effect even increased".”
• Turning to the plausibility issue (or closely related issue), the Board: “However, while the objective technical problem does not have to be explicitly disclosed in the application as filed, it must at least be foreshadowed therein (see also decision T 377/14, point 2.1.5, referring to decision T 344/89, point 5.3.1). [emphasis added] Since the patent itself does not disclose a particular effect for a stem length of at least 35 cm, it is not possible to rely on the latter to formulate the objective technical problem. Document D32 cannot influence this finding, not only because it is a post-published document, but also because the effect in question was not disclosed in the application as filed.”
• I recall that there is also some case law saying that the patent should indicate the effect, but not that a specific feature provides the effect.
• “Accordingly, the objective technical problem can be formulated as the provision of an alternative mixed bouquet of cut flowers including Kalanchoe.” The claim is found to lack inventive step.


• For use claim 1 of AR-1: “The opposition division held that the patent did not sufficiently disclose the claimed invention for two reasons. ... the opposition division concluded that "the patent does not make credible that all species of Kalanchoe are suitable to prolong longevity of flowers belonging to a genus different from Kalanchoe, let alone that they may achieve such an effect at any number of flowers in the bouquet and for any genus of the different flowers".
• In the appeal, the respondent [opponent] endorsed both objections of the opposition division, but they have not provided evidence and reasons in support of the objections either. Their arguments therefore do not go beyond unsubstantiated allegations.
• The Board: “ the opposition division formulated the requirement that the patent should disclose either clear and unambiguous proof that an effect (here: "prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe") was obtained or whether attaining this effect was "credible". In doing so, however, the opposition division has followed the wrong principles for assessing compliance with the requirements of Article 83 EPC. Indeed, for sufficiency of disclosure to be denied, serious doubts need to be identified which are substantiated by verifiable facts (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, II.C.7.1.4). The same conclusion applies to the second objection of the opposition division.”. [emphasis added]
• In the recent referral G 2/21, T116/18, the TBA wrote; “While the fact that an effect is part of the problem to be solved or expressed in the claim at issue dictates which provision of the EPC is applicable (G 1/03 [], it does not - at least not in the board's view - have an impact on the considerations applying to the above issue [i.e. plausibility and post-publshed evidence]. Therefore, not only decisions dealing with this issue under Article(s) 100(a) and/or 56 EPC but also those dealing with this issue under Article(s) 100(b) and/or 83 EPC are mentioned below.”
• The Board finds AR-1 to be sufficiently disclosed.
• “The opposition division did not formulate opinions on novelty and inventive step of the subject-matter of auxiliary request 1 (identical to auxiliary request 9 in the opposition proceedings). The board therefore finds that special reasons present themselves to remit the case to the opposition division for further prosecution (Article 11 RPBA).”
• The above appears to be the entire reasoning for departing from the main rule of Article 11 RPBA of no remittal.  The Board does not indicate that it would need to consider more than D3 already on file and studied in detail by it in the present decision.

T 1264/19 - Kalanchoe cut flowers

https://www.epo.org/law-practice/case-law-appeals/recent/t191264eu1.html

Reasons for the Decision

Main request - claim 1

Priority (Article 87 EPC)

1. The feature "stem length of 35 cm" is disclosed in the priority document on page 4, lines 12 to 15: "Especially varieties that have a mid-size or large stem, i.e. having a stem length of at least 20 cm, preferably at least 35 cm, more preferably at least 45 cm and up to 60 cm or even more, with sufficient stem strength are particularly suitable as cut flowers ...".

2. The board cannot agree with the appellant that the feature "sufficient stem strength" applied only to flowers of "60 cm or even more", because a stem length of "at least 35 cm" has no upper limit and thus also includes flowers of a stem length of more than 60 cm.

3. The appellant further argued that stem strength was an intrinsic feature of a cut flower which was only required for the flowers to stand upright, i.e. for aesthetic reasons. This feature, therefore, was non-technical in relation to the invention, and did not solve the technical problem of longevity. Hence, it should not be considered when assessing the validity of the claimed priority. 

4. The board does not agree with this reasoning either. As provided in Article 87(1)(b) EPC, the priority can only be validly claimed if the subsequent application concerns the same subject-matter as the previous application. As clarified in decision G 2/98 of the Enlarged Board of Appeal (OJ EPO 2001, 413), this requirement is met only where the subsequent application concerns "subject-matter which the person skilled in the art can derive directly and unambiguously, using common general knowledge, from the previous application as a whole" (see point 9 of the Reasons).

5. The paragraph referred to in the priority document connects a number of different stem lengths with the feature of stem strength. Stem strength is not a pure aesthetic feature. Instead, it is a structural feature of the flower stem that is required to keep it upright in nature or in a vase; hence, in the board's view, it represents a technical feature.

6. The issue of whether a technical feature contributes to achieving the technical effect of the invention is not relevant for assessing whether or not priority is validly claimed. Here, the relevant criterion is that the "subsequent application is filed in respect of the same subject-matter": such a criterion does not require considerations which belong to the realm of inventive step. The board concludes that the feature "at least 35 cm" is only disclosed in combination with the feature "sufficient stem strength" in the priority document.

7. The appellant has not provided evidence that all Kalanchoe of at least 35 cm stem length have sufficient stem strength so that the latter could be considered "intrinsic" to the stem length. Document D33, cited by the appellant, reports Kalanchoe with very long stem length, but does not disclose that each and every Kalanchoe with stem length of at least 35 cm has sufficient stem strength. In fact, the feature "at least 35 cm" is only disclosed in combination with the feature "sufficient stem strength" in the priority document (see above). Furthermore, the two features are inextricably linked as the skilled person would consider that stem length has an influence on the stem strength. The deletion of the feature "sufficient stem strength" results in subject-matter which is not directly and unambiguously disclosed in the previous application. Consequently, claim 1 cannot benefit from the priority claimed by the patent. Accordingly, document D3 forms part of the state of the art pursuant to Article 54(2) EPC.

Claim construction

8. Claim 1 (see section I) is a product claim directed to a "bouquet of flowers". The bouquet comprises

- one or more cut flowers of the genus Kalanchoe having a stem length of at least 35 cm, and

- one or more cut flowers belonging to a genus different from Kalanchoe.

9. The functional limitation for the Kalanchoe cut flowers in the claim to the effect that they are "capable of conferring elongated freshness to an aqueous nutrient medium for cut flowers by contact of the cut surface of the stems of the said cut flowers with the said aqueous nutrient medium" is a feature of at least the Kalanchoe interspecific hybrids referred to in the patent (see paragraph [0031]: "only a few or even a single cut flower of the genus Kalanchoe is capable to confer prolonged longevity to a plurality of other cut flowers" and Example 3, paragraph [0045]).

10. The functional limitation for the non-Kalanchoe flowers in the bouquet of the claim to the effect of these flowers "having prolonged longevity by contacting the said one or more cut flowers, with the cut surface of the stem thereof, with the aqueous nutrient medium" is a feature of all non-Kalanchoe flowers when brought into contact with the aqueous nutrient medium containing at least the Kalanchoe interspecific hybrids disclosed in the patent (see paragraph [0029]: "[s]aid flowers can be any cut flowers").

Inventive step (Article 100(a) EPC and Article 56 EPC)

Closest prior art

11. Document D3, which the board considers to represent the closest prior art, is a screenshot from a website archived on 16 May 2014 by the Internet Archive WayBackMachine. It discloses cut Kalanchoe flowers of "selected ethylene-resistant varieties" having an "antiseptic effect [which] keeps the water clean". The varieties offered for sale are "Adorable Pink", "Amazing Pink", "Blossom Pink", "Lovable Pink", "Spring Yellow" and "Warm Yellow".

12. It is undisputed that the patent in paragraph [0026] refers to identical varieties "[i]n particular, Kalanchoe interspecific hybrids ... 'Amazing Pink Meadow' (CVPO 2013/1549), 'Adorable Pink Meadow' (CVPO 2013/2836), 'Blossom Pink Meadow' ... 'Warm Yellow Meadow' (CVPO 2013/2835) ... 'Loveable Pink Meadow' ... [which] provide for cut flowers having a stem length of at least 35 cm, 45 cm, 50 cm or more" to those referred to in document D3.

13. Document D3 states that "the elegant flowering stems can be arranged in colourful bouquets" and proposes to "[u]se them also in mixed bouquets".

Formulation of the objective technical problem

14. Having regard to the claim construction above (see points 8. to 10.) the claimed subject-matter differs from the mixed bouquets of cut flowers disclosed in document D3 in that the stem length of the Kalanchoe cut flowers is at least 35 cm and in that cut flowers which are not of the genus Kalanchoe are present in the mixed bouquet.

15. The appellant argued that the technical effect of "conferring elongated freshness to the aqueous nutrient medium" was more pronounced in Kalanchoe with a stem length of 35 cm or more (see document D32). The particular stem length was thus of relevance to the assessment of inventive step of the claimed subject-matter.

16. The patent discloses in paragraph [0005] that: "the invention relates to a bouquet of cut flowers capable of conferring elongated freshness to an aqueous nutrient medium for cut flowers by contact of the cut surface of the stems of the said cut flowers with the said aqueous nutrient medium, said bouquet comprising one or more cut flowers belonging to the genus Kalanchoe having a stem length of at least 35 cm". From this passage it is not apparent whether the stem length of 35 cm was required to achieve a more pronounced effect of "conferring elongated freshness".

17. In paragraph [0016] the patent further discloses that "[l]arger Kalanchoes do not only contribute to the attractive appearance of the bouquet, but it has also been found that the freshness of the liquid medium is elongated even more if the bouquet comprises larger Kalanchoes. Therefore, in a preferred embodiment the cut flowers belonging to the genus Kalanchoe in the bouquet have a stem length of at least 45 cm, more preferably of at least 50 cm, and may even have a stem length of up to 60 cm or more." From this passage it can only be taken that larger Kalanchoes elongated the freshness of the liquid medium for even longer. It cannot be seen as disclosing a specific effect occurring for "Kalanchoe having a stem length of at least 35 cm".

18. Also, in Table 1, all Kalanchoe cut flowers tested except one (see Table 1) are longer than 35 cm. The one flower of 32 cm length ("2009-0938") has a value of "1" for "Fading", "Wilting" and "Ornamental value", i.e. it performed at least as well as the longer flowers. In Example 3 and Table 2 displaying the effect on freshness of the nutrient medium and longevity of other cut flowers, the stem length of the Kalanchoe is not provided. From the patent it is therefore not apparent that 35 cm would be associated with a particular technical effect.

19. The only other evidence with regard to a specific effect of a stem length of at least 35 cm of a Kalanchoe was submitted by the appellant in the form of document D32. The document, which is not comprised in the state of the art, discloses that: "having a stem length of up to 15 cm, no such [antifouling] effect was observed. For cut Kalanchoes with a stem of 35 cm we surprisingly observed such effect. This made us to check such effect on different lengths, and it was observed that below 35 cm, the effect was less pronounced, whereas above said length the effect even increased".

20. However, while the objective technical problem does not have to be explicitly disclosed in the application as filed, it must at least be foreshadowed therein (see also decision T 377/14, point 2.1.5, referring to decision T 344/89, point 5.3.1). Since the patent itself does not disclose a particular effect for a stem length of at least 35 cm, it is not possible to rely on the latter to formulate the objective technical problem. Document D32 cannot influence this finding, not only because it is a post-published document, but also because the effect in question was not disclosed in the application as filed.

21. In view of the above the board concludes that the combination of flowers of the genus Kalanchoe with a particular stem length of at least 35 cm with flowers which are not of the genus Kalanchoe in a bouquet merely has the technical effect that a mixed bouquet with flowers of different genera is obtained.

22. Accordingly, the objective technical problem can be formulated as the provision of an alternative mixed bouquet of cut flowers including Kalanchoe.

Obviousness

23. The skilled person in this case is a customer or a professional in the business of cut flowers. It belongs to the common general knowledge of the skilled person and is usual practice to arrange flowers of different genera and species into mixed bouquets. The board has not seen any argument from the appellant providing a reason why the skilled person preparing a mixed bouquet, as suggested in document D3, would not also use flowers of a genus other than Kalanchoe in such a bouquet. Mixing of Kalanchoe with other flowers was thus obvious to the skilled person.

24. The board has, likewise, not been presented with reasons why the skilled person would not routinely also include Kalanchoe with stem length of at least 35 cm in a mixed bouquet. According to the patent specification itself (see paragraph [0023]) the varieties listed in document D3 are capable of producing such longer stem lengths. Thus, the skilled person could easily obtain such flowers, e.g. by ordering from the website of document D3. A stem length of the cut Kalanchoe of at least 35 cm was thus also an obvious possibility for the skilled person.

25. Thus, even if a more ambitious objective technical problem were formulated, as suggested by the appellant, i.e. provision of a mixed bouquet of cut flowers including Kalanchoe conferring further elongated freshness to an aqueous nutrient medium, this would not result in the subject-matter involving an inventive step. In fact, the skilled person would in any case have arrived at the claimed subject-matter, because both a stem length of at least 35 cm and the mixing of Kalanchoe with flowers of other genera were within the ambit of routine undertakings of a person skilled in the art.

26. In view of the above considerations, the board concludes that the claimed subject-matter does not involve an inventive step (Article 100(a) and Article 56 EPC).

Auxiliary request 1 - claim 1

Sufficiency of disclosure (Article 83 EPC)

27. The claim (see sections IV and VIII) concerns the use of Kalanchoe for prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe.

28. The patent discloses in Example 2 the testing of a number of Kalanchoe interspecific hybrid plants for viability in aqueous nutrient medium. In Example 3 the effect of the Kalanchoe hybrid variety "Amazing Pink Meadow" on the freshness of nutrient medium and longevity of other cut flowers (Rosa, Dianthus, Chrysanthemum and Gerbera) is tested in a single flower test measuring "Fading", "Wilting", "Ornamental value", "Water consumption" and "Transmission" (see Table 2). In Example 4, the effect of the Kalanchoe hybrid variety "Amazing Pink Meadow" on the freshness of nutrient medium and longevity of the decorative greenery Pistacia is tested in a "Bouquet test". In Example 5 a bouquet containing the Kalanchoe hybrid variety "Amazing Pink Meadow" is tested for its longevity in tap water. The patent further discloses in general that Kalanchoe have an "antiseptic effect on the medium wherein they are kept, and may to this end comprise one or more substances that are excreted in the aqueous medium" (see paragraph [0015]).

29. The opposition division held that the patent did not sufficiently disclose the claimed invention for two reasons. Firstly, it held that "the skilled person does not have enough information in the application as originally filed and in the patent to find out the specific species of Kalanchoe flowers which increase longevity of cut flowers of a genus different from Kalanchoe for the whole scope of protection without carrying out an undue amount of experimentation". Secondly, it maintained "that even for the interspecific hybrids it has not been clearly and unambiguously proven that when Kalanchoe flowers are present in a bouquet together with additional flowers they confer prolonged longevity to the other flowers (flowers of a genus different from Kalanchoe) in the bouquet independently on the other type of flowers". For these reasons, the opposition division concluded that "the patent does not make credible that all species of Kalanchoe are suitable to prolong longevity of flowers belonging to a genus different from Kalanchoe, let alone that they may achieve such an effect at any number of flowers in the bouquet and for any genus of the different flowers".

30. The first objection of the opposition division that there was insufficient information in the patent to allow the skilled person to put the invention into practice over the whole breadth of the claims is not found to be persuasive by the board as it is not supported by evidence. On the contrary, the opposition division formulated the requirement that the patent should disclose either clear and unambiguous proof that an effect (here: "prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe") was obtained or whether attaining this effect was "credible". In doing so, however, the opposition division has followed the wrong principles for assessing compliance with the requirements of Article 83 EPC. Indeed, for sufficiency of disclosure to be denied, serious doubts need to be identified which are substantiated by verifiable facts (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, II.C.7.1.4). The same conclusion applies to the second objection of the opposition division.

31. In the appeal, the respondent endorsed both objections of the opposition division, but they have not provided evidence and reasons in support of the objections either. Their arguments therefore do not go beyond unsubstantiated allegations.

32. As regards the first objection, the respondent submitted that the effect of "prolonging longevity of flowers which are not of the genus Kalanchoe", if any, was only obtained with "one type of Kalanchoe, i.e. interspecific hybrid Kalanchoe", because all experiments in the patent had been carried out using such hybrids. In support of this, they only referred to two passages in document D29 stating that "cut flowers of interspecific hybrids of Kalanchoe, independent of the flower type, have a significant effect on the longevity of other cut flowers when kept in the same 1iquid medium, whereas normal Kalanchoe cut flowers do not show this effect; in contrast such Kalanchoe contribute to the fouling" (see page 1, first paragraph), and "[t]hese effects were however not or significantly less observed for normal, i.e. non-interspecific Kalanchoe" (see page 7, second paragraph).

33. However, in the experimental section of document D29 it is demonstrated that normal (non-interspecific hybrid) Kalanchoe do have a positive effect on the longevity of other flowers as exemplified with the rose. This is reflected by the "Ornamental value" (see Graph 1 on page 2, light grey and white columns) and "Water uptake", both parameters correlating with the longevity of the flowers, "as healthy cut flowers take up more water than wilted and wilting ones" (see Graph 3 on page 4 and page 5, second paragraph). Admittedly, the effect on the fouling of the vase water, as measured by optical density, is less pronounced. Still, a reduction is apparent when the value for the combined flowers in one vase is compared with the sum of the values of both flowers alone (an appropriate method of comparing, see document D30, page 2, last paragraph, to page 3, end of page). The board agrees with the latter assessment, because it is common sense that two flowers cause more fouling than a single flower in a vase. Accordingly, also in this respect, the board has not been presented with serious doubts that would merit holding that the claimed invention was insufficiently disclosed in the patent.

34. As regards the second objection of the opposition division, the respondent argued that "the definition of the other flower(s) in the bouquet is too broad since there is only some visible longevity effect shown for Rosa". The respondent relied on two experiments to demonstrate that the effect on longevity was not reproducible, an experiment with a rose and an interspecific, single flower type Kalanchoe, and an experiment with a Dianthus flower and an interspecific, double flower type Kalanchoe (see document D34). The respondent submitted that in both cases "the flower in combination with Kalanchoe starts to wilt before the flower that is alone in the vase".

35. The data in document D34 consist of a single experiment for each of rose and Dianthus. The board considers, not only in view of the variability of biological material, that these experiments do not pass the threshold of statistical relevance and the respondent has not made such an allegation either.

36. The patent on the other hand discloses experimental data for four plant genera which are not from the genus Kalanchoe, i.e. rose, Dianthus, Chrysanthemum and Gerbera (see Table 2). For flowers of plants of each of these genera, at least some of the measured parameters are positively influenced by the presence of Kalanchoe (see the values for the parameters "Ornamental value", "Water consumption" and "Transmission" in Table 2). The patent discloses that "[s]imilar results were obtained when any of the Kalanchoe varieties as mentioned in example 1 were used instead of the Kalanchoe variety 'Amazing Pink Meadow' as described here". Further evidence for the effect on longevity of the rose, Eustoma, Gerbera, Chrysanthemum when kept in a vase with several different Kalanchoe interspecific hybrid varieties has been submitted in post-published document D31.

37. Finally, the respondent developed a further line of argument to the effect that instructions indicating how to obtain the effect of "prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe" were not referred to in the claim and that therefore the claim related to embodiments which did not achieve the effect. Reference was in particular made to the instruction to keep the flowers together in water, the amount of water and the number of flowers of Kalanchoe and of other flowers.

38. However, the board considers it to be part of the common general knowledge and practical knowledge of the skilled person to put cut flowers in water to keep them fresh. Furthermore, the patent also discloses that the cut flowers belonging to a genus different from Kalanchoe have to be in the same water as the Kalanchoe. It also provides an explanation for the effect on longevity, which is likely to be caused by the release of anti-septic substances "which one or more substances are believed to be taken up by the other cut plants, as a result of which these plants obtain the ability to live longer and to wither far later than compared to the situation without a cut flower of the genus Kalanchoe being, or having been in contact with the aqueous nutrient medium wherein the said cut flower is held" (see paragraph [0015]). The skilled person also derives from this explanation that, for the effect to be achieved, the anti-septic substances should not be too diluted (i.e. by using an excessive volume of water or too few Kalanchoe flowers compared to the number of other flowers).

39. In view of the above considerations, and since the board has not been presented with evidence substantiating serious doubts as to whether the invention can be put into practice by the skilled person, the board considers that the disclosure of the patent satisfies the requirements set out in Article 83 EPC.

Remittal to the opposition division (Article 111 EPC)

40. The opposition division did not formulate opinions on novelty and inventive step of the subject-matter of auxiliary request 1 (identical to auxiliary request 9 in the opposition proceedings). The board therefore finds that special reasons present themselves to remit the case to the opposition division for further prosecution (Article 11 RPBA).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution on the basis of the set of claims of auxiliary request 1 as renumbered during the oral proceedings before the board.