T 1264/19 - Kalanchoe cut flowers (and plausibility)

 Key points

Claim 1 in this opposition appeal “ is a product claim directed to a "bouquet of flowers". The bouquet comprises - one or more cut flowers of the genus Kalanchoe having a stem length of at least 35 cm, and - one or more cut flowers belonging to a genus different from Kalanchoe”; the claim recites further functional features.
• Claim 1 of AR-1 is directed to “Use of one or more cut flowers belonging to the genus Kalanchoe having a stem length of at least 35 cm, for prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe.”
• Key questions include inventive step over D3, whether priority is valid so that D3 forms prior art, and sufficiency of disclosure.
• As to the validity of the priority, the point is illustrative as practice point: “The feature "stem length of 35 cm" is disclosed in the priority document on page 4, lines 12 to 15: "Especially varieties that have a mid-size or large stem, i.e. having a stem length of at least 20 cm, preferably at least 35 cm, more preferably at least 45 cm and up to 60 cm or even more, with sufficient stem strength are particularly suitable as cut flowers ...".” 
• The Board finds that the claim without the feature of “sufficient stem strength” is not supported by the cited paragraph of the priority document.
• As to priority, “The appellant  [patentee] further argued that stem strength was an intrinsic feature of a cut flower which was only required for the flowers to stand upright, i.e. for aesthetic reasons. This feature, therefore, was non-technical in relation to the invention, and did not solve the technical problem of longevity. Hence, it should not be considered when assessing the validity of the claimed priority.”
• The Board considers the feature to be technical and adds that “The issue of whether a technical feature contributes to achieving the technical effect of the invention is not relevant for assessing whether or not priority is validly claimed. Here, the relevant criterion is that the "subsequent application is filed in respect of the same subject-matter": such a criterion does not require considerations which belong to the realm of inventive step. The board concludes that the feature "at least 35 cm" is only disclosed in combination with the feature "sufficient stem strength" in the priority document.”
• The argument based on the sufficient stem strength being an intrinsic property, is dismissed for lack of evidence.
• Hence, priority is invalid.
• D3 therefore forms prior art and teaches cut Kalanchoe flowers of "selected ethylene-resistant varieties" having an "antiseptic effect [which] keeps the water clean"; the example varieties are the same as in the patent. Document D3 states that "the elegant flowering stems can be arranged in colourful bouquets" and proposes to "[u]se them also in mixed bouquets".
• The claimed subject-matter differs from the mixed bouquets of cut flowers disclosed in document D3 in that the stem length of the Kalanchoe cut flowers is at least 35 cm and in that cut flowers which are not of the genus Kalanchoe are present in the mixed bouquet.
• Patentee seems to have argued for inventive step mainly based on the feature specifying the stem length. “The only other evidence with regard to a specific effect of a stem length of at least 35 cm of a Kalanchoe was submitted by the appellant [patentee] in the form of document D32. The document, which is not comprised in the state of the art [i.e. post published evidence], discloses that: "having a stem length of up to 15 cm, no such [antifouling] effect was observed. For cut Kalanchoes with a stem of 35 cm we surprisingly observed such effect. This made us to check such effect on different lengths, and it was observed that below 35 cm, the effect was less pronounced, whereas above said length the effect even increased".”
• Turning to the plausibility issue (or closely related issue), the Board: “However, while the objective technical problem does not have to be explicitly disclosed in the application as filed, it must at least be foreshadowed therein (see also decision T 377/14, point 2.1.5, referring to decision T 344/89, point 5.3.1). [emphasis added] Since the patent itself does not disclose a particular effect for a stem length of at least 35 cm, it is not possible to rely on the latter to formulate the objective technical problem. Document D32 cannot influence this finding, not only because it is a post-published document, but also because the effect in question was not disclosed in the application as filed.”
• I recall that there is also some case law saying that the patent should indicate the effect, but not that a specific feature provides the effect.
• “Accordingly, the objective technical problem can be formulated as the provision of an alternative mixed bouquet of cut flowers including Kalanchoe.” The claim is found to lack inventive step.


• For use claim 1 of AR-1: “The opposition division held that the patent did not sufficiently disclose the claimed invention for two reasons. ... the opposition division concluded that "the patent does not make credible that all species of Kalanchoe are suitable to prolong longevity of flowers belonging to a genus different from Kalanchoe, let alone that they may achieve such an effect at any number of flowers in the bouquet and for any genus of the different flowers".
• In the appeal, the respondent [opponent] endorsed both objections of the opposition division, but they have not provided evidence and reasons in support of the objections either. Their arguments therefore do not go beyond unsubstantiated allegations.
• The Board: “ the opposition division formulated the requirement that the patent should disclose either clear and unambiguous proof that an effect (here: "prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe") was obtained or whether attaining this effect was "credible". In doing so, however, the opposition division has followed the wrong principles for assessing compliance with the requirements of Article 83 EPC. Indeed, for sufficiency of disclosure to be denied, serious doubts need to be identified which are substantiated by verifiable facts (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, II.C.7.1.4). The same conclusion applies to the second objection of the opposition division.”. [emphasis added]
• In the recent referral G 2/21, T116/18, the TBA wrote; “While the fact that an effect is part of the problem to be solved or expressed in the claim at issue dictates which provision of the EPC is applicable (G 1/03 [], it does not - at least not in the board's view - have an impact on the considerations applying to the above issue [i.e. plausibility and post-publshed evidence]. Therefore, not only decisions dealing with this issue under Article(s) 100(a) and/or 56 EPC but also those dealing with this issue under Article(s) 100(b) and/or 83 EPC are mentioned below.”
• The Board finds AR-1 to be sufficiently disclosed.
• “The opposition division did not formulate opinions on novelty and inventive step of the subject-matter of auxiliary request 1 (identical to auxiliary request 9 in the opposition proceedings). The board therefore finds that special reasons present themselves to remit the case to the opposition division for further prosecution (Article 11 RPBA).”
• The above appears to be the entire reasoning for departing from the main rule of Article 11 RPBA of no remittal.  The Board does not indicate that it would need to consider more than D3 already on file and studied in detail by it in the present decision.

source http://justpatentlaw.blogspot.com/2021/12/t-126419-kalanchoe-cut-flowers-and.html