T 2170/17 - Ice cream

Key points

• Claim 1 as granted reads: “1. Stabiliser system of natural ingredients for use in frozen confectionery characterised in that it comprises native rice starch, egg yolk as a natural emulsifier and citrus fibres.”
•  “The patent relates to an "all natural" frozen confectionery which can be manufactured without resorting to artificial ingredients. Standard stabiliser systems which comprise "E numbers" or chemically synthesised compounds can be dispensed with and organoleptic aspects such as creaminess are not compromised. The stabiliser system in the patent comprises native rice starch, egg yolk and citrus fibres. The citrus fibres may be expanded, i.e. processed so as to increase their surface area”
• About novelty over prior use: “However, it appears that this evidence, taken together, still does not allow to conclude that a sample (here: P1 to P3) includes rice starch, more particularly native rice starch. Similar considerations apply also for the (expanded) citrus fibres: O103 and O104 do not appear to show that apple fibres and citrus fibres are analytically distinguishable.”
• About inventive step" “Even if O80 [ a product information sheet, not dated] was considered prior art, in particular closest prior art, there appears to be no motivation or pointer for the skilled person to add citrus fibres to improve organoleptic properties such as creaminess of the ice cream.”
• The claims are considered to be inventive. 

T 2170/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t172170eu1.html

VII. The claims that are relevant for this decision are claims 1, 2, 3 and 8 of the patent as granted (main request):

"1. Stabiliser system of natural ingredients for use in frozen confectionery characterised in that it comprises native rice starch, egg yolk as a natural emulsifier and citrus fibres.

...

2.2 The opponent agreed with the decision and argued that claims 1 and 2 also lacked novelty in view of P1 to P3. The patent proprietor contested the opposition division's decision.

2.3 One of the issues in dispute was whether the composition of P1 to P3 was analysable. Here, the question was whether it would have been possible to determine that P1 to P3 included native rice starch, (expanded) citrus fibres and egg yolk.

2.4 As regards the question of whether the composition of P1 to P3 is analysable, the board's communication sets out the following (in points 4.3 and 4.4):

"... The opposition division considered this analysis 'difficult and tedious' but possible. No further explanations were provided. On appeal, the opponent filed several documents to support its view that the composition of P1 to P3 was analysable (including O96 to O107). The patent proprietor argued that this evidence should not be admitted and that it was not conclusive.

It appears that even if the opponent's evidence is admitted into the proceedings, there will still be uncertainty as to whether the skilled person could have determined analytically the relevant aspects of the composition of P1 to P3. For instance, O97, O98 and O100 show that starch can be identified in a sample and O101 that rice cultivar can be analysed by PCR method. However, it appears that this evidence, taken together, still does not allow to conclude that a sample (here: P1 to P3) includes rice starch, more particularly native rice starch. Similar considerations apply also for the (expanded) citrus fibres: O103 and O104 do not appear to show that apple fibres and citrus fibres are analytically distinguishable.

Consequently, it appears that P1 and P3 do not disclose at least the features native rice starch and (expanded) citrus fibres.

4.4. Thus, on this basis already, the subject-matter of claims 1, 2 and 8 appears to be novel over P1 to P3."

2.5 The opponent did not provide any counter-arguments. Therefore, the board has no reason to review its preliminary opinion.

2.6 The subject-matter of claims 1, 2 and 8 is novel (Article 54 EPC).

3. Main request - inventive step

3.1 The opponent argued that all the claims of the main request, in particular claims 1 to 3 and 8, lacked inventive step. The closest prior art used was P1 to P3, O23 or O80.

3.2 As regards the inventive step of the main request, the board's communication sets out the following (in points 5.2 to 5.6):

"5.2 Whether P1 to P3 may be used as closest prior art depends on whether the composition and structure of these products is analysable, as discussed above. At present this seems to be questionable.

5.3 O23 as the closest prior art

5.3.1 In the context of the discussion on inventive step of auxiliary request 2, the opposition division decided that O23 was available to the public and that it was the closest prior art ...

5.3.4 It appears to be uncontested that the distinguishing features of claims 1 and 3 are native rice starch and egg yolk. O23 does not disclose these ingredients.

5.3.5 The opponent acknowledged that the distinguishing features provide an ice cream composition that does not comprise stabilisers having an E-number and yet has an improved creaminess. Therefore, in line with the patent in suit (paragraph [0052]), the technical problem appears to be to provide a stabiliser system in which "E-numbers" or chemically synthesised compounds are dispensed with and which provides a more appealable product (ice cream) to the consumer.

5.3.6 The opponent argued that the solution would have been obvious in view of O80.

It is observed that the opposition division did not regard this document as prior art and did not admit it into the proceedings, a decision that the opponent contested. Therefore, whether O80 is prior art may have to be discussed.

5.3.7 However, irrespective of whether O80 is prior art, it appears that the skilled person starting from O23 would have had no motivation to turn to the stabiliser of O80 to provide an ice cream with an improved creaminess. There appears to be no pointer in that document to solve the technical problem.

5.3.8 Thus, it appears that starting from O23, claims 1 and 3 involve an inventive step.

5.4 O80 as the closest prior art

5.4.1 As explained above, the first question is whether this document, currently not in the proceedings, should be admitted into the proceedings.

5.4.2 Even if O80 was considered prior art, in particular closest prior art, there appears to be no motivation or pointer for the skilled person to add citrus fibres to improve organoleptic properties such as creaminess of the ice cream.

5.5 The opponent also argued that claims 2 and 8 lacked inventive step, starting from O23 as the closest prior art. In view of what is stated above (points 5.3 to 5.3.8), it appears that these claims too involve an inventive step.

5.6 To conclude, at present it appears that claims 1 to 3 and 8 involve an inventive step. The same applies to dependent claims 4 to 7 and 9 to 14."

3.3 The opponent did not provide any counter-arguments. Therefore, the board has no reason to review its preliminary opinion.

3.4 For completeness, it is noted that the opponent's inventive-step attack based on P1 to P3 concerned claim 1. The opponent started from the assumption that P1 to P3 disclosed native rice starch, citrus fibres and egg yolk and argued that the skilled person would understand these three ingredients to be the natural stabiliser system of the ice-cream composition. However, as set out above, P1 to P3 do not disclose native rice starch and (expanded) citrus fibres. Therefore, the opponent's inventive-step attack based on P1 to P3 is also unsuccessful.

3.5 The subject-matter of claims 1 to 3 and 8 involves an inventive step (Article 56 EPC). The same applies to dependent claims 4 to 7 and 9 to 14.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.