T 1845/21 - CPA is a set of features disclosed in combination; multiple CPA

Key points

• "The specific starting point for assessing inventive step is normally a set of features disclosed in combination in a document, e.g. an embodiment or example."
• " For assessing inventive step it is necessary to establish the distinguishing features over that specific starting point and assess whether it was obvious to arrive at the claimed subject-matter when starting from that specific point (T 1287/14, Reasons 5.2.1)."
• Disclosure, however, can be implicit.
• D3, Example 3 is the closest prior art.
• "The combination of all these features (toddler milk of example 3, which in view of the above [considerations] implicitly comprises LC-PUFA, and [implicitly ] for use in preventing infections) is considered the closest prior art for examining the inventive step of claim 1."
  
  
• "Prior to identifying the closest prior art in its statement setting out the grounds of appeal, appellant 1 extensively outlined what it deemed to be common general knowledge. While a brief introduction of the common general knowledge prior to identifying the closest prior art may occasionally be helpful, an extensive discussion on this matter bears the risk of adding hindsight to a party's argument. Such a discussion might undo the desired effect of the problem-solution approach, namely to assess inventive step as objectively as possible, although the assessment is unavoidably made in full knowledge of the invention. Nevertheless, the board understands appellant 1's submissions ..."

Multiple starting points

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• D45a was also proposed as the closest prior art.
• "A discussion of the entire problem-solution approach starting from a document as a further starting point may be dispensed with if, following a discussion on whether the document is suitable as the closest prior art, the board concludes that this is not the case (see T 1230/15, point 2.4)."
• "The understanding that a party is not generally entitled to orally present an entire problem-solution approach at oral proceedings is also conveyed in R 5/13 (Reasons, 14 and 15). Such an approach ultimately serves procedural economy."
• " D45a relates to an announced study on the effect of growing-up milk on the occurrence of infections in toddlers. The hypothesis underpinning the study is the expectation that drinking growing-up milk with added "prebiotics and LCPUFA" results in a lower occurrence of infections."
• "without the benefit of hindsight, D45a would have provided the skilled person with next to no useful information. ... It is worth noting that in the current case, hindsight is particularly difficult to put aside, the reason being that the results of the study are described in D35, published after the filing date of the patent. D35 is also the document that appellant 1 discussed in detail throughout the appeal proceedings, e.g. in the context of sufficiency of disclosure. Moreover, the results of the study are summarised in example 1 of the patent."
• " To conclude, the disclosure of D45a is vague and blurred, so this document is not considered a more promising springboard than D3 for assessing the inventive step of claim 1." 
• Inventive step over D45a is no further discussed.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t211845eu1

5.5 Disclosure of D3

5.5.1 D3 relates to a method of treatment and/or prevention of a disease or condition in an infant or toddler. The composition used in D3 comprises non-viable bifidobacteria and one or more non-digestible oligosaccharides, preferably galactooligosaccharides and fructooligosaccharides such as fructan. The disease prevented is primarily an allergy, but infections are also mentioned (e.g. claim 17 and paragraphs [0015] and [0018]).

5.5.2 The specific starting point for assessing inventive step is normally a set of features disclosed in combination in a document, e.g. an embodiment or example. For assessing inventive step it is necessary to establish the distinguishing features over that specific starting point and assess whether it was obvious to arrive at the claimed subject-matter when starting from that specific point (T 1287/14, Reasons 5.2.1).

5.5.3 The appellants started their assessments essentially from example 3 of D3. The example discloses a liquid toddler milk formula comprising, among other things, specific amounts of galactooligosaccharides and fructan and a fat blend. The board agrees that example 3 provides a combination of features suitable for beginning the examination of inventive step.

5.5.4 Example 3 does not disclose the medical indication for which the composition is administered. However, in view of the teaching of D3, the skilled person would regard the milk formula of example 3 as suitable for preventing infections.

5.5.5 The composition of the fat blend of example 3 is not disclosed either. Paragraph [0052] is the only passage of document D3 in which the chemical composition of the fat phase of the nutritional formula is discussed. The long list of preferred ingredients of the fat phase includes, among other unsaturated fatty acids, LC-PUFAs. Preferred ingredients are also EPA and/or DHA and/or ARA. Preferred amounts of the various lipids are also listed. Paragraph [0052] concludes with a statement that LC-PUFA reduces intestinal permeability and improves the immune system and that together with the other components of D3, it (allegedly) achieves a "synergistic" effect against allergy, atopic dermatitis and infections.

5.5.6 To be clear, the teaching of D3 is such that its composition does not necessarily include LC-PUFA. No such fatty acid is a mandatory ingredient of the composition of D3, let alone of the toddler formula of example 3.

5.5.7 Nevertheless, in favour of the appellants' line of argument, it is assumed that the skilled person would understand that the milk formula of example 3 also comprises LC-PUFA.

5.5.8 The combination of all these features (toddler milk of example 3, which in view of the above implicitly comprises LC-PUFA, and for use in preventing infections) is considered the closest prior art for examining the inventive step of claim 1.

5.6 Distinguishing features of claim 1

5.6.1 In view of the above, the closest prior art does not disclose at least the following features:

- ARA of less than 0.06 gram per 100 gram fatty acids

- DHA of 0.3 to 0.6 gram per 100 g fatty acids

- EPA of 0.2 to 0.4 gram per 100 g fatty acids

5.6.2 It was in dispute whether the closest prior art also disclosed the amount of oligosaccharides called for in claim 1. However, this point need not be addressed.