T 2029/22 - Clear beverage/CARGILL

Key points

• Today's decision is a bit fact-specific but still is illustrative of the examination of inventive step.
• Claim 1 reads: "1. A clear beverage having a turbidity of less than 5 NTU, said beverage comprising an oil-in-water emulsion wherein the oil is an essential oil, wherein said emulsion comprises [...] n-octenyl succinic anhydride (nOSA) starch, wherein the nOSA starch and essential oil are in a ratio of between 1.2:1 and 8:1 (wt.%) and wherein the essential oil comprises citrus oil."
• "The opposed patent relates to a clear beverage having a turbidity of less than 5 NTU which comprises an emulsified essential oil, namely citrus oil. Furthermore, it relates to a process for manufacturing that beverage. "
• "The parties did not contest the opposition division's finding that D1 is the closest prior art. The board has no reason to diverge from this choice. Like the opposed patent, D1 relates to a process for preparing a clear beverage comprising emulsified essential oils such as lemon, orange, clove, mint and cinnamon oil. The process involves the use of an emulsifier and entails emulsification, homogenisation, dilution and pasteurisation steps"
•   The only two practical examples of the disclosed invention [of D1] are the beverages of examples 1 and 2. These contain a citrus oil (from orange or lemon) and sucrose monopalmitate in a 2:1 ratio. The turbidity of these beverages is "around 3 FTU", which corresponds essentially to 3 NTU and is therefore within the claimed range."" 
• "D1 suggests a long list of alternative surfactants for preparing the disclosed beverages. Among these surfactants, mention is made of nOSA starch (see the list in Table 1 on pages 2 and 3 and the reference to "sodium octenyl succinate starch"). However, D1 does not describe even one beverage comprising the surfactants enumerated in this long list, let alone nOSA starch."
• " the claimed beverage differs from the beverages exemplified in D1 in that:

  - nOSA starch is used as the emulsifier [and]  the ratio between the nOSA starch and essential oil is between 1.2:1 and 8:1"

• "The appellant [opponent] argued that nOSA starch was not a distinguishing feature because it was disclosed in Table 1 of D1. This argument is not persuasive. As mentioned above, the beverages of examples 1 and 2 of D1 are the starting point for assessing inventive step.
• Note, for the PSA, indeed the disclosed embodiments are the starting points / reference points for determining the distinguishing features of the claim, not the whole document.

• "the [objective] technical problem is the provision of an alternative clear beverage containing an essential citrus oil and a process for making it."

• "The appellant [opponent] argued that, when confronted with the [] technical problem, the skilled person would have found in D1 the incentive to replace the sucrose monopalmitate used in the beverages exemplified in this document with nOSA starch and to use this emulsifier in the claimed ratio with essential oil. Paragraphs [0008], [0009], [0010] and [0012] of D1 taught that a variety of emulsifiers could be used to prepare clear emulsions, and Table 1, which listed them, mentioned nOSA starch."

• "The board is not persuaded by the appellant's arguments."

• "It is undisputed that, as noted by the appellant, D1 mentions the possibility of using other emulsifiers and adjusting the oil-to-emulsifier ratio. However: - as stated in paragraphs [0002] to [0010] of the patent, at the filing date, the production of clear beverages comprising emulsified essential oils was still challenging and required complex washing procedures to remove insoluble terpenes; 

  - the technical information presented in D1 on the use of surfactants other than sucrose monopalmitate is very limited

  - D1 consistently refers to a 2:1 essential-oil-to-emulsifier ratio, and this is the only ratio mentioned in this document

  Thus, the board is of the opinion that even if the skilled person had decided to replace sucrose monopalmitate with nOSA starch, they would not have considered significantly increasing the surfactant-to-oil ratio and deviating considerably from the ratio disclosed in the examples of D1, which are the starting point for assessing inventive step "

• The claims are held to be inventive. 

• The case shows that the provision of an alternative solution can be ambitious or not, depending on the facts of the case, and the more ambitious the problem, the stronger the required incentive in the prior art (see also T939/92, r.2.4.2: "the answer to the question what a skilled person would have done in the light of the state of the art depends in large measure on the technical result he had set out to achieve")

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t222029eu1