T 2618/11 - Disclosed or undisclosed disclaimer

T 2618/11

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Key points

• In the application as filed, the peroxide compound ACSP was discussed in the application as filed in respect of the prior art. The application as filed mentions that this peroxide is not effective.
• The claim at issue included the feature: "using one more organic peroxides not including acetyl-cyclohexyl-sulfonyl-peroxide (ACSP)".
• The Board decides that this is a disclaimer and that it is not allowable: the disclaimer is not a disclosed disclaimer (G2/10) since the disclaimed compounds are not disclosed as part of the subject-matter of the invention, neither is it  allowable as undisclosed disclaimer (G1/03) because an undisclosed disclaimer can not be used to exclude non-working embodiments.

Summary of Facts and Submissions

II. The patent was granted with a set of 7 claims, claim 1 reading as follows:

"Process to polymerize vinyl chloride monomer and optional further monomers using one or more organic peroxides, with at least part of the peroxide being dosed in the polymerization mixture at the reaction temperature, characterized in that essentially all of the organic peroxide used in the polymerization process has a half-life of from 0.05 hour to 1.0 hour at the polymerization temperature, the vinylchloride based (co)polymer having less than 50 parts by weight of residual peroxide based on one million parts by weight of the (co)polymer, when measured immediately after polymerization and drying of the (co)polymer for 1 hour at 60°C".

[...]

Claim 1 of the [third] auxiliary request corresponded to the main request, but introduced the following wording after the phrase "organic peroxides":

"not including acetyl-cyclohexyl-sulfonyl-peroxide (ACSP),".

Claim 1 of the [fourth] auxiliary request corresponded to the main request but introduced the following wording after the phrase "organic peroxides": "not including acetyl-cyclohexyl-sulfonyl-peroxide (ACSP) and peroxydicarbonates,".

X. The arguments of the appellant/patent proprietor can be summarised as follows: [...]

c) Third and fourth auxiliary requests

The compounds excluded by disclaimer were discussed in the application as not being suitable, which statement had resulted in an objection pursuant to Art. 83 EPC during the opposition procedure. Said statement provided a basis for the exclusion of said compounds by "disclosed disclaimer".

Reasons for the Decision

4. Third and fourth auxiliary requests

4.1 The objections raised in respect of the main request also apply to the third and fourth auxiliary requests, since the corresponding parts of the claims do not differ.

4.2 Regarding the "disclaimer" type formulations, the compounds specified are discussed in the application as filed in respect of the prior art and it is said that said peroxides are not effective. Consequently it is apparent that the purpose of the disclaimer is not to exclude novelty destroying subject-matter but to exclude subject-matter that seemingly would not solve the technical problem, i.e. to address a potential defect pursuant to Art. 56 EPC. As held in G 1/03, in such a case a disclaimer is not admissible.

Since the disclaimed compounds are not disclosed as part of the subject-matter of the invention, the findings of decision G2/10 on so-called "disclosed disclaimers" is also not applicable. For this reason, too, the claims 1 of the third and fourth auxiliary requests do not meet the requirements of Art. 123(2) EPC.

4.3 The third and fourth auxiliary requests are therefore refused.