T 1360/11 - Restricting components and extending scope

T 1360/11

Publication date 06.07.2015 - [B] - for the decision, click here


EPO Headnote

Where a granted claim directed to a composition defined in an open manner and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range is later amended by limiting the definition of the class or list of compounds, a possible infringement of the requirements of Article 123(3) EPC may be avoided by including in the amended claim a quantitative condition on the limited class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list (point 3.11).

Key points

• If the claim as granted defines a composition comprising 1 - 10 wt.% of component X, and X is a group comprising A, B and C, then restricting X  to A contravenes Art. 123(3) because the claims would no longer limit the amount of B and C. For instance, when restricting from 1-10 wt.% alcohol to 1-10 wt.%, ethanol, the scope of the claim is broadened because suddenly also embodiments with 11 wt.% methanol would be covered. 
• The Board finds that in this case a double limitation is necessary, one for the amount of X and another for the amount of A. 
• The present Board suggest as appropriate wording in such case: "wherein the composition comprises 1 - 10 wt.% A, and the total amount of X is comprised in the range 1-10 wt.%" . 

Quote

[3.1] In such a case, in spite of the apparent limitation due to the explicit or implicit deletion of some members of the class or list of compounds, the wording of the granted and amended claims may be such that the deleted compounds are required to be present in an amount within a defined range according to the granted claim, while they may still be present, but with no limitation in quantity, according to the amended claim, therefore resulting in an extension of the protection conferred contrary to the requirements of Article 123(3) EPC. This gives rise to a situation in which a way out for the patentee is anything but easy.

Full decision after the jump
• including comments on T 0287/11 and T 0172/07

Reasons for the Decision

Auxiliary request 7 - compliance with Article 123(3) EPC

3. As the main purpose of the filing of auxiliary requests 6 to 12 was to overcome an objection under Article 123(3) EPC against claim 1 of auxiliary request 5A, it needs to be checked whether claim 1 of auxiliary request 7 meets the requirements of Article 123(3) EPC.

3.1 The objection against claim 1 of auxiliary request 5A arose from the limitation of the metal iron source to a specific list of zinc salts and to copper salts, whereas the metal ion source was defined in the open composition of granted claim 1 by a broader list of salts present in a quantity defined by a range (see point 1,2, above).
The problem is well known in the case law (see e.g. T 2017/07 of 26 November 2009, section 2 in the grounds; T 0832/08 of 24 March 2010, section 2 in the grounds; T 1312/08 of 30 April 2010, section 2 in the grounds; T 0172/07 of 22 March 2011, see sections 3 to 6 in the grounds; T 0869/10 of 25 May 2012, section 1 in the grounds; T 0287/11 of 1 April 2014, sections 2 to 5 in the grounds) and arises when a granted claim directed to a composition defined in an open manner, typically by means of the term "comprising", and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range is later amended by limiting the definition of the class or list of compounds.
 In such a case, in spite of the apparent limitation due to the explicit or implicit deletion of some members of the class or list of compounds, the wording of the granted and amended claims may be such that the deleted compounds are required to be present in an amount within a defined range according to the granted claim, while they may still be present, but with no limitation in quantity, according to the amended claim, therefore resulting in an extension of the protection conferred contrary to the requirements of Article 123(3) EPC. This gives rise to a situation in which a way out for the patentee is anything but easy.

3.2 In the present case, the respondents decided to specify the metal ion source defined in component b) of granted claim 1 through the "group consisting of zinc salts, copper salts, silver salts, nickel salts, cadmium salts, mercury salts, and mixtures thereof" by means of a list of zinc and copper salts.

3.3 This limitation was accomplished in claim 1 of auxiliary request 7 by incorporating the wording of granted claim 5 into granted claim 1, so that the claim contains for component (b) both the limitation in granted claim 1, namely that the composition comprises "b) from 0.001% to 10%, preferably from 0.1% to 2%, by weight of the composition, of a metal ion source selected from the group consisting of zinc salts, copper salts, silver salts, nickel salts, cadmium salts, mercury salts, and mixtures thereof, preferably selected from the group consisting of copper sulfate, zinc sulfate, and mixtures thereof" and the further specification that the composition comprises "as b) from 0.01% to 5%, preferably from 0.1% to 2%, by weight of the composition, of a metal ion source selected from the group consisting of zinc acetate, zinc carbonate, zinc hydroxide, zinc chloride, zinc sulfate, zinc citrate, zinc fluoride, zinc iodide, zinc lactate, zinc oleate, zinc oxalate, zinc phosphate, zinc propionate, zinc salicylate, zinc selenate, zinc silicate, zinc stearate, zinc sulfide, zinc tannate, zinc tartrate, zinc valerate, zinc gluconate, zinc undecylate, copper disodium citrate, copper triethanolamine, copper carbonate, cuprous ammonium carbonate,cupric hydroxide, copper chloride, cupric chloride, copper ethylenediamine complex, copper oxychloride, copper oxychloride sulfate, cuprous oxide, copper thiocyanate, and mixtures thereof". A similar double condition is present in claim 1 of auxiliary request 7 for components a) and c) and some further quantitative conditions are repeated twice.

3.4 The Board is aware that the wording of claim 1 of auxiliary request 7 is quite cumbersome, as far as the definition of the components is concerned, and that it contains repetitions which are at least in part unnecessary. However, no objection under Article 84 EPC was raised by the appellant and the Board does not see any non-compliance with Article 84 EPC which may have been introduced by the amendments. Indeed claim 1 of auxiliary request 7 simply results from the combination of granted claims 1 and 5 with minimal changes which have no bearing on the clarity and conciseness of the claim. On that basis claim 1 is not to be objected to under Article 84 EPC (in line with the case law, see e.g. T 0301/87, OJ EPO 1990, 335).

3.5 With regard to the effect of the amendment on component b), the Board considers that the wording of amended claim 1 (like that of granted claim 5) makes it clear that:

(a) By means of the maintenance of the condition on component b) with exactly the same wording as in granted claim 1 the protection conferred by the patent is not extended, in that both granted claim 1 and claim 1 of auxiliary request 7 require that zinc salts, copper salts, silver salts, nickel salts, cadmium salts, mercury salts, and mixtures thereof are comprised in a quantity from 0.001% to 10% by weight of the composition. A composition comprising any of these salts or mixtures thereof in a quantity outside the range is not covered by granted claim 1, but is also not covered by claim 1 of auxiliary request 7.

(b) The added condition according to granted claim 5 poses a further limitation on the claim in that the composition must contain from 0.01% to 5% by weight of the specific zinc and copper salts which are listed.

3.6 By means of the double condition the claim achieves the result of not extending the protection conferred by the patent while defining a condition on component b) referring to a more limited group of compounds than the one indicated in granted claim 1.

3.7 The amended wording has the same effect on component b) which would be achieved by an alternative wording specifying firstly that the composition comprises from 0.01% to 5% by weight of the specific zinc and copper salts which are listed and then adding the constraint that the total amount of zinc salts, copper salts, silver salts, nickel salts, cadmium salts, mercury salts, and mixtures thereof is comprised in the range 0.001% to 10% by weight. It is this additional constraint which ensures that the protection conferred is not extended.

3.8 Without deciding on the requirements of Article 84 EPC in the present case for the reasons set out above (point 3.4), the Board notes that such an alternative wording (not used in the present case) would be less cumbersome and more straightforward and therefore should be preferred as a means of overcoming the type of objection under Article 123(3) EPC which has arisen in the present case.

3.9 As it is concluded that the protection conferred is not extended, as far as component b) is concerned, and the same applies to the other components of the composition, the requirements of Article 123(3) EPC are met.

3.10 The conclusion is in line with the case law on the issue.

3.10.1 In decision T 0287/11 of 1 April 2014 granted claim 1 related to an aerosol hair styling composition comprising inter alia from 5% to 90% by weight of a water-soluble polyalkylene glycol defined by a relatively broad condition. In claim 1 of auxiliary request 1 the polyethylene glycol was specified to conform to a specific chemical formula, but the condition was added that the total amount of water-soluble polyalkylene glycol defined by the broad condition of granted claim 1 was in the range 5% to 90% by weight. The Board found that the amended claim required that a water-soluble polyalkylene glycol of the specific formula was present within the amount given, but also that the total amount of water-soluble polyalkylene glycols of the broader definition was in the range 5% to 90% by weight and that said wording rendered it unambiguous that no more and no less than the amount of a water-soluble polyalkylene glycol as defined in granted claim 1 might be present in the aerosol air styling composition, so that the requirement of Article 123(3) EPC was satisfied (points 5.1 to 5.4 of the grounds). This situation is analogous to the present one in which both a general condition as in granted claim 1 is maintained and a more specific condition on a restricted group of compounds is added.

3.10.2 A similar situation arose in T 0172/07 of 22 March 2011 in which granted claim 1 related to a composition comprising inter alia 0.01 to 5% by weight of one or more acids selected from alpha-hydroxy acid, beta-hydroxy acid, 1,2-dicarboxylic acid, 1,3-dicarboxylic acid and aromatic carboxylic acid and in claim 1 of auxiliary request 1 the condition was limited to 0.01 to 5% by weight of one or more acids selected from malic acid, succinic acid and maleic acid with the additional condition that the total amount of alpha-hydroxy acids, beta-hydroxy acids, 1,2-dicarboxylic acids, 1,3-dicarboxylic acids and aromatic carboxylic acids is in the range of 0.01 to 5% by weight. While for a claim not containing the additional condition the Board found that the requirements of Article 123(3) EPC were not met (points 3 to 6 in the grounds), neither the Board, nor the opposing party raised any objection under Article 123(3) EPC for claim 1 of auxiliary request 1 (points 8 to 8.2 in the grounds).

3.10.3 The Board is not aware of any decision in which an infringement of the requirements of Article 123(3) EPC has been found in the presence of a double condition including a quantitative condition on a specific class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list present in the corresponding claim as granted.

3.11 Therefore it is concluded that where, as in the present case, a granted claim directed to a composition defined in an open manner and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range is later amended by limiting the definition of the class or list of compounds, a possible infringement of the requirements of Article 123(3) EPC may be avoided by including in the amended claim a quantitative condition on the limited class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list.