T 1172/11 () of 18.5.2016

Summary of Facts and Submissions

I. The appellant (applicant) lodged an appeal against the decision of the examining division refusing European patent application No. 08168316.1 (publication No. 2015052).

In its decision the examining division held that the sets of claims of the main and the auxiliary requests then on file did not comply with the requirements of Article 84 and 56 EPC. In particular, the examining division found that

- independent claims 1 and 6 of the main and the auxiliary requests contravened the requirements of Article 84 EPC, and

- the subject-matter of the independent claims of the main and the auxiliary requests did not involve an inventive step (Article 56 EPC) in view of the disclosure of the following documents:

D2: WO-A-0016067

D3: US-A-4681996

D6: US-A-4651285

D10: US-A-4753889

D20: WO-A-9940409

D30: "Versuche zur Bestimmung des Fett- und Wassergehaltes in Käse unter Verwendung eines Kernresonanzgerätes für die Fettbestimmung",

P. Kern et al., Schweiz. Milchw. Forsch., Vol. 3 (1974), pages 6 to 8.

II. With the statement setting out the grounds of appeal the appellant filed a main request and an auxiliary request and requested that the decision under appeal be set aside and that a patent be granted on the basis of one of these requests.

III. In its reply of 24 February 2016 to a communication annexed to the summons to oral proceedings and to a subsequent communication of the board, the appellant filed an amended set of claims 1 to 12 and amended description pages 1, 4, 5, 5A, 8, 9, 12, 16 and 18, which, together with pages 2, 3, 6, 7, 10, 11, 13 to 15 and 17 of the description and drawing sheets 1/7 to 7/7 as originally filed, constitutes its main request.

IV. Subsequently, the oral proceedings were cancelled.

V. Independent claims 1 and 6 of the main request read as follows:

"1. System for determining the fat and oil content of a sample, comprising:

a sample that contains moisture and at least a fat or an oil;

a pliable, porous, hydrophilic and lipophilic sample pad (63) formed of glass fibres or quartz fibres, said sample pad being substantially transparent to microwave radiation;

a source (20) of microwave radiation for drying the sample;

a cavity (24) in wave communication with said microwave source for receiving the sample and said sample pad;

a balance (28) with at least its pan in said cavity for weighing the sample and said sample pad;

an NMR analyser (36) with a sample field portion for receiving said pliable sample pad with the sample and for determining the NMR spectra of the sample and sample pad; and

a wrapper (62) of flexible sheet material around said sample and sample pad, said wrapper being non-porous to fats, oils and other liquids and free of atoms that would interfere with or mask the NMR response in said analyser of the protons in fats and oils, said wrapper being large enough to wrap said sample pad with the sample thereon but small enough to fit within the sample field portion of said analyser when the wrapper is wrapped around the sample and said sample pad."

"6. A method of determining the fat and oil content of a sample (39) that also contains moisture in amounts that would otherwise preclude NMR determination of the fat and oil content, the method comprising:

placing the sample on a sample pad (63) that is pliable, porous, hydrophilic, lipophilic and substantially transparent to microwave radiation and that is free of atoms that would interfere with or mask the NMR response of the protons in the fats and oils in the sample;

placing said sample pad on a flexible sheet material (62) that is also non-porous with respect to fats, oils and other liquids and is free of atoms that would interfere with or mask the NMR response of the protons in the fats and oils in the sample;

weighing the sample, sample pad and sheet;

drying the sample on the pad and sheet at a temperature sufficient to melt at least a portion of the fat in the sample by subjecting the sample, sample pad and sheet material to electromagnetic radiation in the microwave frequencies in a microwave cavity;

wrapping the dried sample and pad in said sheet material and transferring the wrapped sample and pad to an NMR analyser;

measuring the NMR response of protons of the dried sample associated with fats and oils; and

comparing the NMR response of the dried sample with the known NMR response of similar samples of known fat and oil content to determine the fat and oil content in the sample."

The main request further includes dependent claims 2 to 5 and dependent claims 7 to 12, all referring back to the system defined in claim 1 and to the method defined in independent claim 6, respectively.

Reasons for the Decision

1. The appeal is admissible.

2. Main request - Amendments

The board is satisfied that the amended application documents according to the main request meet the requirements of Article 123(2) EPC. In particular, independent claims 1 and 6 are based on independent claims 1 and 6 as originally filed, respectively, together with the disclosure of Figures 8 to 10 relating to the provision of a flexible sheet material, and dependent claims 2 to 5 and 7 to 12 essentially correspond to dependent claims 2 to 5 and 7 to 12 as originally filed, respectively. In addition, the examining division already acknowledged in its decision that the application as originally filed did not extend beyond the content of the earlier application as filed (parent patent application No. 01946484), and the board concurs with this finding as regards the application documents amended according to the present main request (Article 76(1) EPC).

As regards the description, its content has been brought into conformity with the claimed invention (Article 84 and Rule 42(1)(c) EPC), the pertinent prior art has been appropriately acknowledged in the introductory part of the description (Rule 42(1)(b) EPC), and the units expressing physical values have been amended in conformity with Rule 49(10) EPC.

3. Main request - Clarity

3.1 Claim 1 underlying the decision under appeal was directed to a system for determining the fat and oil content of a sample, and the examining division found that it was not clear whether the claimed system did include the sample. In particular, the examining division referred to the feature of claim 1 according to which the wrapper is "large enough to wrap [...] the sample" and objected that this feature would be unclear if the sample was not part of the claimed system (Article 84 EPC).

Present claim 1 has been amended so that the claimed system now includes the sample (cf. point V above, claim 1) and this amendment overcomes the objection under Article 84 EPC mentioned above.

3.2 In its decision the examining division noted that the system defined in claim 1 then on file included a balance with at least its pan in a cavity and that the method defined in claim 6 then on file did not mention the balance, and held that this discrepancy constituted an inconsistency as the reader was left in doubt as to what was considered as being the essential performance of the invention (Article 84 EPC).

The discrepancy noted by the examining division is also present in independent claims 1 and 6 of the present main request. However, in the board's view this discrepancy does not give rise in the present case to any inconsistency that would result in a lack of clarity within the meaning of Article 84 EPC. While claim 1 defines a system, claim 6 defines a method, i.e. the two claims relate to different categories, and not every essential feature of one of these claims necessarily constitutes an essential feature of the other one of these claims. In particular, independent claim 6 is directed to a method involving, among other features, weighing the sample, the sample pad and the flexible sheet, and this feature is already reflected in the system defined in claim 1 by the balance with a pan for weighing the sample and the sample pad. Thus, as submitted by the appellant, the formulation of the method claim is consistent with the claimed system. The mere fact that claim 1 specifies the provision of a balance for weighing the sample and the sample pad and this balance is not specified in the method of claim 6 does not constitute per se an inconsistency between the two claims, as long as the corresponding functional feature of the balance, i.e. its capability to weigh the sample and the sample pad, is already required in the method defined in claim 6. In addition, the examining division did not indicate any argument in support of its view that using a balance such as that defined in claim 1 would constitute an essential feature of the step of weighing the sample and the sample pad of the method defined in claim 6.

3.3 In its decision the examining division noted that according to paragraph [0038] of the publication of the application (corresponding to the central paragraph on page 11 of the description as originally filed) the step of weighing the sample had to be performed already before the drying operation, and it found that the amended independent claim 6 then on file was not consistent with the description in this respect (Article 84 EPC).

Independent claim 6 of the present main request has been amended so as to clarify that the sample is weighed before drying (cf. point V above, claim 6) as already defined in independent claim 6 as originally filed, and this amendment overcomes the objection raised by the examining division.

3.4 The examining division also referred in its decision to other inconsistencies between the claims and the description then on file, and these deficiencies have been overcome by way of amendment (see point 2 above, second paragraph).

4. Main request - Novelty

Apart from the amendments identified in points 3.1 and 3.3 above, the subject-matter of the claims of the main request presently on file is essentially the same as that of the claims of the main request underlying the decision under appeal. Novelty of the claimed subject-matter over the prior-art documents on file was not disputed by the examining division. The amendments referred to above have no incidence on this finding, and the board has no reason to depart from the examining division's view that the claimed invention is novel over the available prior art (Article 54(1) EPC).

5. Main request - Inventive step

5.1 In its decision the examining division held that the subject-matter of the independent claims then on file did not involve an inventive step (Article 56 EPC) over the closest state of the art represented by document D30. In its reasoning the examining division referred to the teaching of documents D2, D3, D6, D10 and D20.

Independent claim 6

5.2 Independent claim 6 is directed to a method of determining the fat and oil content of a sample that also contains moisture in amounts that would otherwise preclude NMR (nuclear magnetic resonance) determination of the fat and oil content in the sample. The method essentially comprises the following steps:

a) placing the sample on a sample pad having the characteristics defined in the claim,

b) placing the sample and the sample pad on a flexible sheet having the characteristics defined in the claim,

c) weighing the sample, sample pad and the flexible sheet and drying the sample following the process defined in the claim,

d) wrapping the dried sample and the sample pad in said sheet material, and

e) transferring the wrapped sample and sample pad to an NMR analyser, and determining the fat and oil content in the sample as specified in the claim.

Document D30 is also directed to the determination of the fat content in a sample containing water, and in particular in a sample of cheese, by means of an NMR apparatus (title, and paragraph "c 3)" on pages 6 and 7). The document discusses three alternative methods of preparation of the dried sample before the determination of the fat content in the sample is carried out (D30, section "2. Methoden" on pages 6 and 7, in particular paragraphs "b 1)", "b 2)" and "b 3)" together with paragraph "c 3)"), and in its decision the examining division referred to the third of the methods (the so-called "Folien-Methode", see paragraph "b 3)" on page 6) involving, among other features, placing the sample on a sheet. The appellant has agreed that document D30 represents the closest state of the art, and the board has no reason to deviate from this finding of the examining division. The appellant has, however, contested the examining division's assessment of the distinguishing features of the claimed method over the disclosure of document D30.

5.2.1 As regards step a) of the claimed method, the examining division first held in its decision that document D30 disclosed in connection with the third of the mentioned methods the feature "placing said sample pad on a flexible sheet material" ("Grounds for the decision", point 2.1.2.1, third paragraph), but subsequently acknowledged that in document D30 the sample was directly placed on a flexible sheet and that the document did not disclose the use of a sample pad ("Grounds for the decision", point 2.1.2.2, paragraph (i)).

The board concurs with this latter view of the examining division and concludes that the use of a sample pad as claimed is not anticipated by the disclosure of document D30.

5.2.2 As regards step b), the examining division found that document D30 disclosed in connection with the third of the aforementioned methods the use of a flexible sheet of polyethylene (page 6, section 2, paragraph "b 3)"), i.e. a material that was non-porous with respect to fats, oils and other liquids as claimed, and that the document also proposed the replacement of this sheet by a sheet of Teflon (page 8 of the document, left column, penultimate paragraph). The examining division found that a sheet of Teflon, i.e. of PTFE, was free of atoms that would interfere with or mask the NMR response of protons in fats and oils in a sample, and held that for this reason document D30 fully anticipated step b) of the claimed method.

However, as submitted by the appellant, the use of a flexible sheet is disclosed in document D30 only in connection with the third of the methods considered in the document (page 6, paragraph "b 3)"), and in the discussion of the advantages and disadvantages of the three methods the third method is said to give the worst results in the NMR-determination of the fat content (page 8, left column, second paragraph, lines 8 to 11, and right column, section "Zusammenfassung", penultimate sentence). In addition, the third method involves the use of a sheet of polyethylene that has hydrogen atoms that would interfere with or mask the NMR response in the analysis of protons in fats and oils, and this sheet of polyethylene is therefore excluded by the claimed method. The subsequent disclosure relies on a correction of the actual NMR measurements in order to compensate for the adverse effects of this material on the NMR measurements (section 2, subsection "c)", paragraph "c 3)", two last sentences). The document also states in the discussion of the results (section 3) that the aforementioned adverse effect could also be compensated for by replacing polyethylene by Teflon, but, as submitted by the appellant, the corresponding disclosure constitutes a mere suggestion of a rather speculative nature (page 8, left column, second paragraph, lines 12 to 14: "Diese Frage wäre z.B. durch Verwendung von Teflonfolie, die kein Signal ergeben sollte, abzuklären.").

In these circumstances, the board considers that, even assuming that the skilled person would have considered selecting from among the three methods disclosed in document D30 the third method considered in the document as providing the worst results, i.e. the method involving, among other features, the use of a sheet of polyethylene, contrary to the findings of the examining division there is no clear and unambiguous disclosure in document D30 of the use of a corresponding flexible sheet of a material free of atoms that would interfere with or mask the NMR response of the protons in fats and oils as required by claim 6. The evaluation of the proposal made in document D30 relating to the use of Teflon belongs, by the speculative nature of the corresponding disclosure, to the assessment of inventive step.

5.2.3 As regards step c), in the third method disclosed in document D30 the cheese sample is weighed and then dried at 110° C (page 6, paragraph "b 3)"), and, as held by the examining division, this temperature causes melting of at least a portion of the fat in the cheese sample. As also found by the examining division, in the third method of document D30 the sample is dried in a drying cabinet (page 6, paragraph "b 3)"), and there is no disclosure in document D30 that in this method the sample could alternatively be dried in a microwave cavity by exposing it to electromagnetic radiation in the microwave frequencies as claimed.

5.2.4 As regards steps d) and e), the examining division held that according to the third method disclosed in document D30

- the dried sample and the flexible sheet were brought into a glass cylinder having a usable volume of 40 ml (page 6, paragraph "c 3)"), and in view of the length of the sheets (12 cm, see page 6, paragraph "b 3)") it was implicit in the disclosure of document D30 that the sample had to be wrapped in the sheet to become arranged within the glass cylinder, and

- the glass cylinder containing the sample and the flexible sheet were transferred to an NMR analyser in which the NMR response of protons of the dried sample associated with fats and oils was measured, and the fat and oil content in the sample was then determined by a comparison of the NMR measurements with the NMR response of a reference sample (paragraph "c 3)" bridging pages 6 and 7).

The appellant has not disputed any of these findings.

5.2.5 It follows that the method defined in claim 6 differs from the third method disclosed in document D30 not only in the following distinguishing features identified by the examining division:

(i) placing the sample on a sample pad having the characteristics defined in claim 6,

(ii) carrying out the drying step by subjecting the sample, the sample pad and the flexible sheet to electromagnetic radiation in the microwave frequencies in a microwave cavity, and

(iii) weighing and wrapping with the flexible sheet not only the sample, but also the sample pad,

but also in the following distinguishing feature:

(iv) using as a flexible sheet a sheet of a material that is free of atoms that would interfere with or mask the NMR response of protons in the facts and oils in the sample.

5.3 In its decision, the examining division held that none of the distinguishing features (i) to (iii) listed in point 5.2.5 above involved an inventive step.

In particular, as regards distinguishing feature (i), the examining division held that this feature solved the problem of retaining any liquid in the sample, and that this problem was already addressed in document D6, where in a similar context a sample was applied to two filter papers or support pads, preferably on one pad and covered by the other, in order to minimize any spattering during heating (D6, column 11, lines 55 to 62). The examining division concluded that distinguishing feature (i) was rendered obvious by the teaching of document D6 and noted in support of this conclusion that

- paper material was a porous and pliable material based on either glass fibres or cellulose, and this material was therefore hydrophilic and lipophilic in the sense that water and fat were not repelled,

- paper material was substantially transparent to microwave radiation, and

- the use of glass fibre filter paper represented a common choice in the art, and the appellant already suggested in document D10 the use of glass fibre filter paper for drying samples on a balance (D10, column 5, lines 5 to 11).

The examining division further referred to an alternative line of argument based on the combination of document D30 with document D20 disclosing a microwave moisture analyser (D20, abstract).

As regards distinguishing feature (ii), the examining division essentially held that this feature enabled much faster heating and therefore much faster drying of the sample and also a more compact arrangement suitable for simultaneous heating and weighing of the sample, and that this feature was rendered obvious by document D6 disclosing a volatility analyser containing a microwave cavity and a balance for weighing the sample (D6, column 4, lines 5 to 11, and column 5, lines 20 to 27) and, alternatively, by any of documents D2 (abstract), D3 (abstract and Fig. 3) and D20 (abstract and page 10, lines 20 to 26) disclosing similar devices.

As regards distinguishing feature (iii), the examining division held that this feature would emerge in an obvious way from feature (i) since the skilled person would not consider removing the sample pad before the NMR analysis because this measure would inevitably lead to inaccurate and questionable results.

In the statement setting out the grounds of appeal the appellant disputed this reasoning of the examining division in several respects. In particular, the appellant contested the examining division's assessment of the different aspects of the invention as constituting independent aspects, the series of intermediate assumptions made by the examining division, and the number of documents underlying the reasoning of the examining division.

5.4 The board finds the appellant's arguments convincing for the following reasons.

The formulation by the examining division of the problem solved by feature (i) (see point 5.3 above, second paragraph), i.e. retaining any liquid in the sample, presupposes that some liquid, and in particular oils and melted fats, will drain off the sample when it is heated and dried in the drying cabinet. However, as also concluded by the examining division in its decision, in document D30 the sample is placed on a flexible sheet, dried and then brought together with the flexible sheet in the glass cylinder for the purposes of carrying out the NMR measurements, and during these method steps any liquid (oils, melted fats, etc.) draining off the sample will already be retained by the flexible sheet itself. That is, no loss of liquid would occur because, as held by the examining division (see point 5.2.2 above), the flexible sheet of document D30 is non-porous with respect to fats, oils and other liquids. Therefore, in the board's view, distinguishing feature (i) does not solve the problem of retaining any liquid from the sample because this problem appears to have already been solved in document D30 by the provision of the flexible sheet having, by virtue of the non-porous characteristics of its material, even better liquid retention characteristics than a porous pad. Accordingly, the objective technical problem solved by feature (i) can be seen as providing an alternative solution to the problem of retaining liquids draining off the sample.

In addition, the board considers that document D6 or document D10 would not render feature (i) obvious. Document D6 is directed to the weight measurement of a sample before and after evaporation of volatiles from it by heating for the purposes of determining the solids and volatiles content of the sample (abstract and column 4, lines 5 to 23), and the document discloses applying the sample to two filter papers or support pads, preferably on one pad and covered by the other pad, in order to minimize any spattering during heating of the sample (column 11, lines 55 to 62). In document D6, however, no flexible sheet is disclosed, and since the flexible sheet of document D30 already fulfils a liquid retaining function similar to that fulfilled by the pads of document D6 - and even has improved liquid retaining properties when compared with the pads in view of the mentioned non-porous characteristics of its material - the skilled person would see in the teaching of document D6 at most a suggestion to replace the flexible sheet of document D30 by the filter papers or support pads disclosed in document D6. The board sees no reason why the skilled person would have considered the simultaneous provision of the flexible sheet and the filter papers or support pads of document D6. On the contrary, in document D30 the amount of sample and the dimensions of the flexible sheet have been selected according to the space restrictions imposed by the use in the NMR apparatus of a glass cylinder having a relatively small volume (see point 5.2.4 above, first sub-paragraph). Without a clear indication to the contrary the skilled person would refrain from considering the simultaneous use of the flexible sheet and the pads disclosed in document D6 as this approach might impair the insertion of the assembly constituted by the sample, the flexible sheet and the sample pads into the glass cylinder. It is also noted that in its decision the examining division gave reasons why in its opinion the skilled person would not seriously contemplate dispensing with the flexible sheet once the sample was arranged between pads ("Grounds for the decision", point 2.1.2.6). However, this reasoning already makes the unsupported assumption that the skilled person would first have considered the use of the pads of document D6 in conjunction with the flexible sheet of document D30.

Analogous considerations apply to document D10 and to the alternative line of argument presented by the examining division and in reliance on document D20 (see point 5.3 above, second paragraph). Document D10 is directed to the determination of the volatiles, the solids and the solvent extractables present in a sample (abstract) and mentions that, when filter paper or a pad is used in the method, it is preferable to use glass fibre filter paper (column 5, lines 5 to 11).Document D20 discloses a microwave moisture analyser in which the sample to be analysed is placed "between two quartz (glass) pads and/or plastics pans which are both microwave transparent" (D20, page 10, lines 20 to 26). These documents would at most suggest the replacement of the flexible sheet of document D30 previously placed on nickel shells (D30, page 6, paragraph "b 3)") by the filter paper or pad disclosed in document D10 or by the quartz pads disclosed in document D20. However, for reasons analogous to those already given in the previous paragraph with regard to document D6, the board does not see any teaching in these documents that would prompt the skilled person to use in document D30 the filter paper or pad of document D10 or the quartz pads of document D20 in addition to the flexible sheet.

In view of these considerations, there is no need to address the further issue disputed by the appellant of whether - as maintained by the examining division - the skilled person would, in view of the disclosure of any of documents D6, D10 and D20, select pads of a material satisfying all the characteristics required in claim 6, i.e. a material being pliable, porous, hydrophilic, lipophilic, substantially transparent to microwave radiation, and free of atoms that would interfere with or mask the NMR response of the protons in the fats and oils in the sample.

5.5 The board concludes that, even assuming for the sake of argument that, as maintained by the examining division, the skilled person

- would have considered selecting, among the three alternative methods disclosed in document D30, the third of the methods disclosed as providing the worst results,

- would then have followed the suggestion in document D30 relating to the replacement of the sheet of polyethylene by a sheet of Teflon, and

- would then have replaced the drying cabinet of document D30 by a microwave cavity having the characteristics disclosed in document D6 or in any of documents D2, D3 and D20,

none of the documents on file, and in particular none of documents D6, D10 and D20, would have prompted the skilled person to use a sample pad having the claimed characteristics together with the claimed flexible sheet.

In view of all these considerations, the board concludes that the method defined in independent claim 6 of the main request involves an inventive step over the available prior art (Article 56 EPC).

Claim 1 and dependent claims 2 to 5 and 7 to 12

5.6 In its decision the examining decision held with regard to the claims then on file that the finding of lack of inventive step of the method of independent claim 6 applied mutatis mutandis to the system defined in claim 1.

Claim 1 is directed to a system for determining the fat and oil content of a sample. The system comprises a sample, a sample pad made of glass or quartz fibres having the same characteristics of the sample pad defined in method claim 6, and a wrapper of flexible sheet also having the same characteristics of the flexible sheet defined in method claim 6. In addition, the system comprises a source of microwave radiation, a cavity in wave communication with the microwave source, a balance with a pan in the cavity for weighing the sample, the pad sample and the flexible sheet, and an NMR analyser, the claim further specifying features that render all its constituents suitable for carrying out the method defined in independent claim 6.

In view of the structural and functional correspondence between the constituents of the system defined in claim 1 and the steps of the method defined in independent claim 6, the board concludes that the system defined in claim 1 is novel and involves an inventive step for reasons analogous to those given in points 5.2 to 5.5 above with regard to independent claim 6.

Dependent claims 2 to 5 and dependent claims 7 to 12 refer back to independent claims 1 and 6, respectively, and for this reason the same conclusion as reached above also applies to these claims.

6. The board is also satisfied that the application documents amended according to the present main request and the invention to which they relate meet the remaining requirements of the EPC within the meaning of Article 97(1) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to grant a patent in the following version:

- claims 1 to 12 of the main request filed with the letter dated 24 February 2016;

- description pages 1, 4, 5, 5A, 8, 9, 12, 16 and 18 filed with the letter dated 24 February 2016, and pages 2, 3, 6, 7, 10, 11, 13 to 15 and 17 as originally filed; and

- drawing sheets 1/7 to 7/7 as originally filed.