T 2173/22: a product record of a dietary product as prior art

Background

In T 2173/22 the decision of the opposition division to maintain EP 3 307 290 in amended form was appealed by the proprietor. The opponents were a party as of right to the appeal proceedings. Auxiliary request 1 (AR-1) which had been rejected in opposition was at the center of the debate. Claim 1 of AR-1 concerned a maternal dietary supplement for use in amongst others iron deficiency. The supplement comprised probiotic bacteria and ferric pyrophosphate. The pyrophosphate was claimed to be microparticulate with a particle size distribution D90 of 200 microns or less.  

During opposition D30 was discussed. This document concerned a record of the Mintel GNDP database disclosing amongst others a record entry ‘date published’ of July 2014 (about one year before the priority date). The GNDP database logs consumer food products that are bought in the supermarket by Mintel. Each record comprises the location of purchase of such product, photos of the product, ingredient lists, nutritional data and nutritional claims. D30 concerned a vanilla mango flavored formulated milk (in powder form) for pregnant women comprising probiotic bacteria and ferric pyrophosphate. 

In opposition, the main request was deemed not novel amongst others over D30, and AR-1 was found not inventive over a different document. AR-2 was upheld.

The Appeal

In the appeal, the proprietor (P) argued that during opposition the opponents relied on D30 itself as being prior art, whilst during the appeal D30 was brought forward as evidence of prior use. Considering that the prior use was not brought up in the notice of opposition as it should have according to Rule 76(2)(c) EPC (when, what, how), the P argued that the inventive step attack based on D30 should not be admitted. 

In addition, P pointed out that it was unclear if the date of July 2014 of D30 is the publication date or the purchase date of the product. According to P the prior use should be proven up to the hilt (beyond reasonable doubt) and the date was not clear. Therefore, D30 failed to evidence prior use (III.G-4.3.2).  

The Board did not agree and pointed out that the Decision already relied on D30 being prior use evidence. Moreover, with regards to the disclosure of the date, according to the Board the result would have been the same no matter what the date stands for, as both the document and the product were publicly available before the priority date. No decision was needed on the standard of proof or to what event the date refers to. Consequently, the Board accepted the prior use evidence from D30 as closest prior art and addressed the undisclosed particle size as follows: 

‘The commercial product photographed and described in D30 can be regarded as the closest prior art. 

…

It was common ground between the parties that the maternal supplement of claim 1 differs from that of D30 in that claim 1 specifies that ferric pyrophosphate is present in the form of a microparticulate having a particle size distribution D90 of 200 microns or less. The form of ferric pyrophosphate in the product of D30 is unknown. 

…

The board agrees with the respondents that there are no comparative data showing that the maternal supplement of claim 1 is improved compared with the one of D30. However, finding the product purchased and described in D30 to provide comparative data may be difficult, if not impossible. Therefore, the board considered that in this particular situation and in the appellant’s favour, it could be assumed that ferric pyrophosphate was not micronised in the product of D30. Tn view of the outcome of the assessment of inventive step below (point 4.8), the respondents are not adversely affected by this assumption’.

Decision of the Board

The Board found there was sufficient evidence in the prior art on the improved effect of micronized particles (smaller particles have an improved bioavailability) but since all the evidence for this effect came from the prior art the technical effect was deemed obvious. 

Decision of the Board 
The Board found AR-1 not inventive, and the appeal was dismissed. The patent was maintained in amended form (according to AR-2).