T 2135/15 - Board spells out what the ED should do

Key points

• In this examination appeal, the Board finds that claim 1 does not lack essential features, as the ED had decided. Furthermore, "[t]he Board is unable to concur with the reasoning of the examining division with respect to inventive step" because "the reasoning ignores the presence in claim 1 of the feature that the modified sugar beet pectin contains a water-insoluble component". 
• " Hence, none of the objections raised by the examining division against claim 1 are found to be convincing." 
• However, the Board then gives very detailed instructions for the further examination of the case after remittal.
• " Contrary to D1 and D2 relied upon in the contested decision as starting point for assessing inventive step, other documents cited in paragraph [0004] of the present application, in particular [patent numbers], which were also cited in the written opinion of the ISA, appear to disclose a [the key feature of claim 1]."
• The Board then notes that there are multiple independent claims, and clarity issues in claim 1, as well as a product-by-process claim that might be unclear.

EPO T 2135/15 - link

Reasons for the Decision

1. Claim 1 of the main request, which was found by the examining division to contravene the requirements of Articles 84 and 56 EPC, is based on a combination of claims 1, 3 and 4 as filed. The Board is therefore satisfied that claim 1 of the main request meets the requirements of Article 123(2) EPC.

Lack of essential features (Article 84 EPC)

2. Article 84 EPC requires that the claims are clear, concise and supported by the description. According to established case law of the boards, Article 84 EPC is to be interpreted as requiring that an independent claim must recite all the essential features which are necessary for clearly and completely defining a particular invention (see opinion of the Enlarged Board of Appeal G 1/04, point 6.2.4 for the reasons). All features which are necessary for solving the technical problem with which the application is concerned have to be regarded as essential features (see Case Law of the Boards of Appeal, 8**(th) edition 2016, II.A.3.2). Hence, if the claims do not comprise a feature which is described in the application as essential, or which is disclosed in the description as being indispensable for solving the problem defined in the application, then an objection under Article 84 EPC may properly arise (see decision T 2001/12 of 29 January 2015, point 4.2 of the reasons).

2.1 Claim 1 of the pending main request is directed to a modified sugar beet pectin. According to paragraph [0006] of the application as filed, in line with paragraphs [0001] and [0004] the present invention aims at providing a modified sugar beet pectin that can provide an emulsion with excellent properties, particularly emulsion stability, compared to known generally available sugar beet pectin.

The claim does not contain the definition of the heating step at 60 to 100°C of the aqueous dispersion of sugar beet pectin, a step which was considered to be essential by the examining division.

2.2 The problem identified in above section 2.1 with which the application is concerned can be solved according to paragraphs [0007] and [0050] of the application by heating sugar beet pectin in a water-dispersed state. This heating step is indicated to lead to intermolecular or intramolecular bonding of sugar chains via a proteinaceous moiety of the molecule as a linker, which increases the amount of a hydrophobic component that is not dissolved in water when the modified sugar beet pectin is dispersed in water. As can be inferred from paragraph [0008], the heating step results in a modified sugar beet pectin which has a higher molecular weight than natural sugar beet pectin and contains a hydrophobic component (water-insoluble component). Further according to the same paragraph "The present inventors further confirmed that when the modified sugar beet pectin having those properties is used as an emulsifier, an emulsion having a small initial particle diameter of oil droplets and high emulsion stability can be obtained due to an increased amount of adsorption of sugar beet pectin on the surface oil droplet particles. The present invention has been accomplished based on these findings." This also is repeated in paragraph [0018] "In other words, the modified sugar beet pectin of the present invention is more highly polymerized than natural ordinary sugar beet pectin, and contains a large amount of a water-insoluble hydrophobic component (water-insoluble component). It is presumed that the modified sugar beet pectin has high emulsion stability for this reason." Paragraph [0026] makes clear that the amount of water-insoluble component (hydrogel component) can be used as an indicator of the degree of modification of the modified sugar beet pectin, on which depends the ability of the modified pectin to provide the sought emulsifying properties.

2.3 According to paragraph [0022] and in line with the wording of present claim 1 a feature of the modified sugar beet pectin of the present invention is that it contains a water-insoluble component which absorbs water to form a hydrogel when the modified sugar beet pectin is dispersed in water at 25°C to a final concentration of 0.1 mass%. In other words claim 1 contains the feature indicated in the description to be indispensable for solving the problem defined in the application. Accordingly, the Board does not share the view of the examining division that pending claim 1 would not meet the requirements of Article 84 EPC, because it lacks an essential feature. The temperature range of 60 to 100°C which is employed to treat the sugar beet pectin is merely a means indicated in the application to achieve the water-insoluble component. Moreover, it appears that the introduction of such a process feature for the purpose of defining the modified pectin could be held to result in a lack of clarity (see section 6.3 below).

Novelty over D1 and D2

3. Novelty over D1 and D2 was not contested. Neither of these prior art documents describes the parametric features recited in operative claim 1. Also, having regard to the evidence and teaching contained in the application as filed concerning the process steps required to achieve those parametric values (see in particular Table 1 on page 30 and Table 2 on page 35 and section 4.1 below) the Board has no reason to conclude that claim 1 is anticipated by any of those documents, as in particular they have not been shown to disclose the process steps necessary for obtaining the modifications of the sugar beet pectin expressed by the parametric definition contained in claim 1.

Inventive step starting from D1 or D2 as closest prior art

4. The Board is unable to concur with the reasoning of the examining division with respect to inventive step on the following two grounds:

4.1 Firstly, the reasoning ignores the presence in claim 1 of the feature that the modified sugar beet pectin contains a water-insoluble component within the meaning of that claim. In that context the Board understands that the test indicated in claim 1 according to which a hydrogel is formed is indicative of requiring a minimum amount of water-insoluble component in the modified pectin. As can be seen from a comparison of Examples 1 to 3 and Comparative Example 1 (see Tables 1 and 2), an increase in the heating time provides an increase in the amount of water insoluble product accompanied by an improvement of the emulsifying properties (immediately after emulsification and after 3-day preservation at 60°C). Hence, the Board does not agree with the examining division that the problem solved over D1 or D2 (should they qualify as the closest prior art, see additional comments in section 6.1 below) would be the provision of an alternative (or further) sugar beet pectin.

4.2 Secondly, the decision does not contain any indication as to which measures would be known to the skilled person in order to achieve the particular values of the alleged "arbitrary" parameters (weight average molecular weight and the rotation square radius), which, as can be inferred from the application, are the result of a specific treatment.

4.3 Accordingly, there is no justification resulting from the reasons invoked by the examining division to conclude that the subject-matter of claim 1 lacks an inventive step.

5. Hence, none of the objections raised by the examining division against claim 1 are found to be convincing.

Remittal

6. As explained in the communication of 9 March 2018, and agreed upon by the appellant, the Board considers it appropriate to remit the case to the department of first instance for further prosecution (Article 111(1) EPC), because essential issues not addressed by the examining division require attention. Those issues are listed below:

6.1 Contrary to D1 and D2 relied upon in the contested decision as starting point for assessing inventive step, other documents cited in paragraph [0004] of the present application, in particular JP 2006-274226 A and JP 2006-274227 A, which were also cited in the written opinion of the international searching authority relating to the PCT application from which the present application originates, appear to disclose a polymerisation step of the sugar beet pectin or a treatment thereof resulting in an increase of its molecular weight. In addition at least JP 2006-274226 A appears to be concerned with the use of the resulting product as emulsifier. It is referred in this respect to paragraph [0004] of the present application, the abstract of said documents in Patent Abstracts of Japan and the written opinion of the international searching authority. There is therefore a prima facie argument that at least JP 2006-274226, if it does not disclose a modified sugar beet pectin meeting the parametric definition of present claim 1 (which might need to be assessed first) constitutes a more appropriate starting point for assessing inventive step.

6.2 Present claim 4 defines a method for producing modified sugar beet pectin solely defining the step of heating an aqueous dispersion of sugar beet pectin at a temperature of 60 to 100°C. As that step alone does not imply that a product meeting the requirements defined in claim 1 is obtained that claim would necessitate a separate assessment of its patentability. In particular the sole definition of the temperature appears to be necessary but not, on its own, sufficient to ensure that the modification of the pectin meant to provide the beneficial effect provided by the present invention indeed occurs. Also the question might arise whether that claim contains all essential features, as it does not contain the features of the modified pectin which bring about an improvement of the emulsifying properties, namely those recited in present claim 1. Accordingly, the question would arise whether claim 4 is not to be made dependent on claim 1.

6.3 Claim 6 defines a modified sugar beet pectin according to any one of claims 1 to 3 prepared by the method of claim 4 or 5. The question arises whether the definition of the process steps recited in claims 4 and 5, i.e. the use of a certain temperature and of a certain concentration of sugar beet pectin during the preparation of the modified pectin, constitute recognizable features of a product as defined in present claims 1 to 3. Accordingly, the clarity of claim 6 appears to be questionable. The same would therefore apply to claim 7 as it refers to claim 6 for the definition of the emulsifier.

6.4 It appears that claim 9 contains all the features of claim 8 and should be made dependent on that claim.

6.5 The main request contains two independent method claims 4 and 12. The question arises whether those claims can be considered to comply with the requirements of Rule 43(2) EPC. The same question arises having regard to claims 1 and 6 directed to a modified sugar beet pectin.

6.6 Moreover, it appears that both the weight average molecular weight and the root mean square radius of gyration are both "determined by homogenizing a 1.5 mass% aqueous dispersion of the modified sugar beet pectin at a pressure of 50 MPa and subjecting the homogenized dispersion to size-exclusion chromatography coupled with a multi-angle light-scattering detector and a refractive index detector" so that the wording of claim 1 might need to be shortened for the sake of conciseness (Article 84 EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.