T 1402/14 - A source of protein

Key points

• After two oral proceedings on added subject-matter, this opposition appeal (filed in 2014) is remitted back for examination of novelty, inventive step and insufficiency of disclosure.
• The claim is directed to " A clear fruit-juice based beverage composition comprising:
(a) a source of protein ... , (b) a source of carbohydrate ... (c) a source of edible acids... (d) a source of fruit juices".
• The Board: " In summary, the "source of" language does not have any delimiting or explanatory meaning. Claim 1 has to be interpreted as simply referring to the four components - protein, carbohydrate, edible acids and fruit juices - present in the beverage composition in the indicated amounts." (this was also argued by the patentee  in appeal, under Article 123(2) EPC). 
• " It might be worth mentioning at this juncture that this was the respondent's (then opponent's) initial interpretation of the "source of" language in its notice of opposition, according to which the words "a source of" have to be disregarded." (I assume for novelty and inventive step).
• Claim 1 is given in full below for the interested reader. The technical feature appears to be essentially that the protein source is whey protein isolate. 

Claim 1 as granted reads as follows:

"1. A clear fruit-juice based beverage composition comprising:
(a) a source of protein in an amount from 2 to 8 wt% of the composition, wherein the protein source is whey protein isolate or a combination of whey protein isolate and whey protein hydrolysate, and wherein the whey protein hydrolysate comprises up to 20 wt% of the combination;
(b) a source of carbohydrate in an amount from 1 to 30 wt% of the composition;
(c) a source of edible acids in an amount from 0.01 to 3 wt% of the composition;
(d) a source of fruit juices in an amount from 5 to 40 wt% of the composition."

The subject-matter of claim 1 of auxiliary request 1, the only auxiliary request relevant to this decision, derives from the subject-matter of claim 1 as granted with the following features added at the end:

"wherein the composition has a pH of 4.0 or less, and has a viscosity of less than 40 centipoises".

IX. Oral proceedings were held before the board on 18 May 2018, as scheduled. During the discussion relating to the interpretation of the expressions "source of carbohydrate" and "source of edible acids", the respondent requested that the oral proceedings be adjourned in order to verify whether HFCS 42 and HFCS 55 cited within a list of carbohydrates in the application as filed (page 3, lines 21-25) were indeed "carbohydrates" or "a source of carbohydrate" (a syrup of carbohydrates containing water).

At the end of the oral proceedings the board gave the following decisions:

• - the main request is found to be not allowable;
• - auxiliary request 1 is admitted to the proceedings;
• - the appeal proceedings are to be continued in writing; and
• - the respondent is given a time limit of three months from the notification of the minutes to file observations and/or evidence on the issue of HFCS, and in particular HFCS 42 and HFCS 55, containing water.

X. By letter of 10 September 2018, the respondent essentially reiterated its arguments, in particular that there was a difference between a "source of compound x" and "compound x (obtained from a source)".

XI. Second oral proceedings were held before the board on 6 December 2018.

 Reasons for the Decision

3. Interpretation of claim 1

3.1 Both claim 1 as granted and claim 1 of auxiliary request 1 refer to a source of protein, carbohydrate, edible acids and fruit juices in certain amounts. It was a matter of dispute as to how the "source of" language in relation to the amount of protein, carbohydrate, edible acids and fruit juices was to be interpreted:

- The appellant [proprietor] considered that the "source of" language related to the total amount of compound x, i.e. proteins, carbohydrates, edible acids and fruit juices, in the final beverage composition.

- In contrast, the respondent [opponent] and the opposition division considered that the "source of" language referred to a source that contained compound x, i.e. protein, carbohydrate, edible acids, and fruit juices, and provided it in the indicated amount to the beverage composition. In other words, the indicated amount did not relate to the total amount of the ingredient/component.

3.2 In the board's view, the only technically meaningful interpretation of claim 1 is indeed that of the appellant, namely that the "source of" language defines the total amount of the four components, protein, carbohydrate, edible acids and fruit juices, in the beverage composition. The skilled person would understand that what matters in a beverage composition is the total amount of the four components and not the contribution of an individual source of a component. In a situation where more than one carbohydrate source is present, defining only the amount from one individual carbohydrate source would lead to a virtually meaningless feature in claim 1. Thus, the person skilled in the art would rule out the respondent's interpretation of the "source of" language. This finding is also supported by the application as filed as a whole, and in particular by the following passages (emphasis added by the board):

[...]

3.4 In summary, the "source of" language does not have any delimiting or explanatory meaning. Claim 1 has to be interpreted as simply referring to the four components - protein, carbohydrate, edible acids and fruit juices - present in the beverage composition in the indicated amounts.

It might be worth mentioning at this juncture that this was the respondent's (then opponent's) initial interpretation of the "source of" language in its notice of opposition, according to which the words "a source of" have to be disregarded.

[...]

4.3 In summary, the claims of auxiliary request 1 do not contain any subject-matter extending beyond the content of the application as filed.

5. Remittal

In the decision under appeal the grounds for opposition relating to insufficiency of disclosure, lack of novelty and lack of inventive step were not dealt with. Furthermore, the appellant requested that the case be remitted to the opposition division for the assessment of these grounds for opposition, and the respondent consented to this. The board therefore decides to remit the case to the opposition division for further prosecution.

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 claims 1 - 20 of auxiliary request 1 filed with the statement setting out the grounds of appeal dated 23 July 2014.