T 0083/01 (Plastic reduced fat spread/UNILEVER) of 10.8.2004

Summary of Facts and Submissions

I. European patent No. 0 748 165 based on application No. 95 909 790.8 was granted with 8 claims.

Claim 1 as granted reads as follows:

"A plastic fat-continuous 30 - 50% fat spread comprising up to 0.3% lecithin, 0.1 - 1.0% saturated monoglyceride, 0.06 - 0.2% non-gelling protein, 0.2 - 8% thickening agent, up to 0.5% NaCl, the fat blend having N10 = 8 - 40% preferably <35% and in particular <30% and N20 = 5 - 20% preferably <18% and in particular <14% the aqueous phase having a pH value of 4.4. - 4.7 and a D3,3 =< 7 µm and e sigma =< 2.5."

II. Opposition was filed against the granted patent by the appellant. The patent was opposed under Article 100(a) EPC for lack of novelty and inventive step and under Article 100(b) EPC for insufficiency of disclosure.

The following documents were cited inter alia during the proceedings before the opposition division and the board of appeal:

(6) EP-A-0 422 713

(7) J. Madsen, "Emulsifiers used in margarine, low- calorie spread, shortening, bakery compound and filling", DGF and ISF congress, Münster, September 1986

(8) M. Alderliesten, "Mean particle diameters; Part II: Standardization of nomenclature", Part. Part. Syst. Charact. 8, 1991, 237-241

III. The opposition division rejected the opposition.

It held that the contested European patent met the requirements of "Articles 52(1), 54 and 56 EPC" and disclosed the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

As to Article 83 EPC, the opposition division expressed the view that a person skilled in the art was, at the priority date of the present invention, "aware of the meaning of volume mean particle diameter D3,3 and the mean value e sigma" and was able to measure and determine the said values whenever appropriate.

IV. The appellant (opponent) lodged an appeal against said decision.

V. On 10 August 2004, oral proceedings took place.

VI. The submissions of the appellant in written form and during the oral proceedings can be summarised as follows:

The subject-matter of the patent did not meet the provisions of Article 83 EPC, since the definitions of the claim 1 parameters D3,3 and "e sigma" were unclear in a way that made it impossible for the person skilled in the art to carry out the invention as claimed in a reproducible way.

Moreover, the wording "volume weighted mean particle diameter", mentioned in the description of the patent in suit with respect to D3,3, made it unclear whether this parameter in claim 1 really was meant. According to (8), a "volume weighted mean diameter" would have to be represented by the symbol D4,3, whereas D3,3 represented a "volume weighted geometric mean particle diameter".

VII. The respondent's arguments in written form and during the oral proceedings were as follows:

The claims of the patent as granted met the requirements of Article 83 EPC, since the person skilled in the art knew the parameters D3,3 and "e sigma" as was shown by document (8) as filed by the patentee and by claim 1 and figures 2 and 3 of document (6) (D3,3 there written in the form D 3,3).

The individual diameters of the globules of the aqueous phase could be derived from pictures such as figures 5 and 6 on page 5 of document (7) allowing the individual numbers ni of globules having the same diameter Di to be counted. This information was enough to use the mathematical formula for D3,3 set out in (8) at the top of the left-hand column on page 239.

In practice, machines were present in the laboratories and production halls of persons skilled in the art for producing emulsions like the subject-matter of the patent in suit that were able to measure D3,3.

As final request the appellant (opponent) requested that the decision under appeal be set aside and that the European patent No. 0 748 165 be revoked.

As final request the respondent (patentee) requested that the appeal be dismissed and that the patent be maintained.

Reasons for the Decision

1. The appeal is admissible.

2. The person skilled in the art, wanting to carry out the invention as defined by the claimed product, must be able to measure the so called D3,3 parameter. Either he has to be able to do this using his common knowledge, or there is enabling information in the description of the patent in suit.

In this respect, the skilled person in the field of producing emulsions, such as edible spreads, knows that D3,3 is a mean particle diameter. He is familiar with special literature about the importance of mean particle diameters and about their mathematical definition (eg (8), "Part. Part. Syst. Charact.").

Accordingly, in (6) the respondent itself (owner of the patent in suit and applicant for (6)) offers the information that "keepability (of an edible spread) is known to be influenced by the water droplet distribution and water phase contents" (see page 2, lines 11 to 15) and that the mean diameter of the water drop size is defined as D 3,3 (D3,3) having to be below 2.5µ (see claim 1 of (6)).

Additionally, the teaching of (7) is that low diameters of the water droplets in margarine contribute to stability contra micro-organisms (see page 4, right-hand column, paragraphs 2 to 4, with reference to figures 5 and 6).

Finally document (8) (especially at top of the left- hand column on page 239) shows that D3,3 represents a clear and unambiguous definition of a mean diameter.

In the light of these prior art documents, the skilled person has no reason to doubt whether there would be any other definition of a mean diameter to be applied in the patent under appeal. He knows D3,3 to be the volume-weighted geometric mean diameter (see (8), top of the left-hand column on page 239, line 3, below the formula) and will take this definition as the one to be applied, since it is the only definition to be found in the claims. In these circumstances, this will hold even if, in the description, lines 32 and 33 on page 2, in connection with the mean diameter parameter a wording such as "volume-weighted mean particle diameter" is to be found which, according to (8), refers to the symbol D4,3 (see table 2).

But none of this helps the skilled person to measure D3,3. First, there is no further information in the description and, second, not even (8), the only document which the respondent submitted as evidence of the state of the art with respect to mean particle diameters, shows how this measurement could be done.

While there are some vague hints about measuring D4,3 by sieving or sedimentation methods (see (8), page 239, right-hand column, point 4(i)), there is no information at all about D3,3, and sieving or sedimentation is not possible with aqueous globules in a plastic fat-continuous spread.

Accordingly, not knowing how to measure D3,3, the skilled person is unable to carry out the invention claimed in the patent in suit and the board can only conclude that the requirements of Article 83 EPC are not fulfilled.

3. The arguments of the respondent cannot hold:

Pictures of particles distributed in a matrix, as shown in (7), are well known to the person skilled in the art. But the method of analysing them for calculating mean particle diameters, as the respondent submitted during the oral proceedings, is not even mentioned in (8), the paper submitted by the respondent as special state of the art with respect to mean particle diameters. The skilled person does for instance not know how to prepare the claimed fat-continuous spread for to be able to take such pictures of it in a statistically relevant way and he does not know how to define the individual diameter of a globule, because most of the globules have no perfectly round shape.

If there is a machine capable of achieving the measurement of D3,3, the information on how to measure the diameter of a globule is represented by the algorithms as used, and in the absence of knowledge of the type of machine and the programs it uses, there is still no information on how to carry out the teaching of current claim 1.

On the other hand, the respondent submitted that the assessment of the patentability of the current claims did not depend on the skilled person's knowledge of how to measure D3,3, since the opposition division had defined document (6) as the closest prior art and since in (6) the parameter D3,3 was set out in claim 1 just as in the current claim of the patent in suit. Thus, there should be no problem comparing the teachings of these documents because this comparison was independent of the definition or measurement of D3,3.

This, however, is only true with respect to the assessment of novelty and inventive step. The requirement of sufficient disclosure must be met, regardless of whether the teaching of a patent is novel or inventive, and since in (6) likewise there is no information to be found about the measurement of D3,3, current claim 1 still does not fulfil this requirement.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.