T 1295/22 - Crumb chocolate flavor composition/MARS

Key points

• "The opposed patent relates to the preparation of a chocolate capturing the distinct aroma and creaminess of a crumb chocolate, without the need to prepare a chocolate crumb. As noted by the appellants, paragraphs [0010] to [0012] of the patent teach that the chocolate can be produced by including, in a dry mix chocolate, the flavors which impart the aroma and creaminess on a chocolate crumb. To this end, the flavors common to crumb chocolate were identified and quantified in the experiments described in the patent. The identified flavor compounds are listed in Tables 10 to 13. The claimed flavor compounds are among those identified in those tables. "
• I selected the case simply because it is Food and Beverages Week at Just Patent Law Blog.
• Still, the decision contains some interesting procedural aspects (in addition to some interesting points about novelty and inherent features)
• " With its statement setting out the grounds of appeal, appellant 2 filed D43, an experimental report aimed at supporting its novelty objection over D4. According to appellant 2, D43 showed that methanethiol was present in the crumb chocolate described in example 3 of D4 despite not being mentioned in this document."
• The claim requires the presence of that compound in some defined amount.
• "As noted by the respondent, although D4 had already been filed by opponent 1 with its notice of opposition, opponent 2 (appellant 2) had raised the novelty objection based on this document for the first time at a late stage of the opposition proceedings, namely with its reply to the opposition division's communication issued under Rule 116 EPC."
• " Appellant 2 argued that D43 had been filed to address the opposition division's unexpected finding during the oral proceedings that the crumbs and chocolates of D4 did not contain methanethiol. It also argued that before the oral proceedings held before the opposition division, the proprietor had not contested the presence of methanethiol in the crumbs and chocolates of D4. Up to that point, it had defended novelty by relying on the [claim features] "extraneous flavor composition" and "flavor composition". Hence, in appellant 2's opinion, the experimental report D43 had been filed in due time. " 
• The question is whether D43 should have been filed before the OD (Art. 12(6)(s.2) RPBA)
• " The board does not agree. As noted by the respondent during the oral proceedings, it is immediately evident that the claims as granted and as amended during the opposition proceedings characterise the claimed compositions by specifying that they comprise methanethiol and other specific compounds. It is also immediately evident that D4 does not even mention methanethiol and the other relevant compounds."
• " The principle that a party must contribute to the conduct of the proceedings by substantiating its own requests and objections in a minimum way is a general procedural principle underlying the EPC and not limited to appeal proceedings (for claim requests, see T 1776/18, Reasons 4.5.7, second sentence). Hence, when raising its new novelty objection based on D4 at a late stage of the opposition proceedings, appellant 2 should have fully substantiated its attack, setting out why the entirety of the claimed subject-matter was allegedly directly and unambiguously disclosed in D4 and providing already at that time any additional evidence that may be required for that purpose. In particular, appellant 2 should have addressed the fact that D4 does not mention the compounds characterising the claims by providing an explanation for this and filing any additional evidence to support its view that these compounds were nevertheless (at least implicitly) disclosed in D4. In any case, it cannot be considered objectively surprising that it emerged during the oral proceedings before the opposition division that D4 did not mention the claimed compound methanethiol, regardless of the fact that, until then, the respondent [proprietor] had addressed the novelty attacks by relying on a different argument. 
• "Furthermore, the experimental report D43 raises new complex technical issues and, regarding prima facie relevance, does not provide conclusive evidence that methanethiol was present in the compositions of D4. 
• The document is not admitted.
• The claims are held to be patentable.

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t221295eu1