T 1964/12 - Broader in appeal

EPO T 1964/12
Link

Key points

• This decision provides examples of some aspects of current practice.
• Broader claims in appeal" In view of the objections of lack of novelty and/or lack of an inventive step raised by the opponents in their notices of opposition, the patent proprietor decided in the present case not to argue novelty and inventiveness of the process claims as granted, but intentionally limited their subject-matter. By doing so the patent proprietor deliberately chose not to obtain a decision from the opposition division on the process claims as granted. In the present case, allowing the patent proprietor to revert on appeal to the process claims as granted, as now proposed in the main request, would go against the need for procedural economy. Accordingly, the Board, having regard to the facts and arguments presented to it, decided to make use of its discretionary power under Article 12(4) RPBA not to admit the main request into the proceedings."
• Broader product claims, in response to Article 123(2) objections, were admitted.
• Shift of burden of proof of novelty of unusual parameters
  "Consequently, the meaning of the unusual parameters selected by the patent proprietor to define the copolymers of present claim 1, and the analysis of the experimental data of the patent proprietor [], establish a strong presumption that the values of these unusual parameters defined in operative claim 1 are inherently fulfilled by the copolymers described in examples 1-23 and 1-24 of D1. In these circumstances, the burden of establishing that the claimed copolymers lack novelty over D1, which primarily lay on the opponents, has been discharged." 
• Requirement for a pointer to combine features under Article 123(2)
• The application suggested that two parameters were linked, therefore basis for specifying ranges for both in the claim requires, according to the Board, a pointer linking the chosen limits of the ranges.

Reasons for the Decision

1. The appeals are admissible.

Admissibility of the main request and auxiliary requests 1 to 7

2. Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent that it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. Those requirements are undisputedly met by the present claim requests. The claim requests relate to the case under appeal and were submitted either with the statement of grounds of appeal of the patent proprietor or in reply to the opponents' statements of grounds of appeal within four months of their notifications. In addition, detailed reasons as to why the amended process claims contained in all requests are allowable under Article 123(2) EPC, i.e. as to why the decision of the opposition division should be amended, are given in the statement of grounds of appeal of the patent proprietor.

3. However, according to Article 12(4) RPBA, the Board has the discretion to hold inadmissible requests which could have been presented or were not admitted in the first-instance proceedings. In this context the question is not merely whether the present claim requests could have been presented before the first instance, but whether, taking into account all relevant circumstances of the case, the situation was such that these requests should have been filed already at that stage of the proceedings.

4. In view of the objections of lack of novelty and/or lack of an inventive step raised by the opponents in their notices of opposition, the patent proprietor decided in the present case not to argue novelty and inventiveness of the process claims as granted, but intentionally limited their subject-matter. By doing so the patent proprietor deliberately chose not to obtain a decision from the opposition division on the process claims as granted. In the present case, allowing the patent proprietor to revert on appeal to the process claims as granted, as now proposed in the main request, would go against the need for procedural economy. Accordingly, the Board, having regard to the facts and arguments presented to it, decided to make use of its discretionary power under Article 12(4) RPBA not to admit the main request into the proceedings.

5. As to auxiliary requests 1 to 6, the mere fact that they might be broader in scope that the claims submitted during the opposition proceedings does not necessarily mean that they should not be admitted into the proceedings. In the present case the sole reason for their non-compliance with the requirements of the EPC, as established by the opposition division, was not lack of novelty or lack of an inventive step as invoked by the opponents, but the fact that the combination of various features taken from the description and inserted into the process claims had no basis in the application as filed. Under those circumstances, restricting the amendments made to the original process claims to features that are meant to characterise embodiments of the original disclosure that are described as most preferred, as was done in the present case, constitutes a legitimate reaction by the appellant (patent proprietor) to the reasoning underlying the appealed decision. Although these requests could already have been submitted at the first instance, the Board does not identify in the patent proprietor's attitude any lack of diligence or fairness towards the other parties. Requiring the patent proprietor in the present situation to further restrict its claims in comparison with the claims submitted before the first instance while still meeting the requirements of Article 123(2) EPC would be unfair to the patent proprietor.

6. The same holds true for auxiliary request 7, submitted with the patent proprietor's rejoinder, which contains the same process claims as auxiliary request 6 but also modified claims 1 and 3 in order to overcome the clarity objection raised by opponent 2 in its statement of grounds of appeal.

7. Under the present circumstances, the Board has no reason to make use of its discretionary power under Article 12(4) RPBA to hold inadmissible auxiliary requests 1 to 7, which therefore are to be taken into consideration in these appeal proceedings.

Novelty over D1 - auxiliary request 1

[...]

9.4 Hence, the only express distinction between the definition of the copolymers now being claimed and those obtained in examples 1-23 and 1-24 of D1 relies on the two unusual parameters magnesium ion scavengeability and magnesium hydroxide scale inhibitability.

Magnesium ion scavengeability

10. According to paragraph 16 of the patent in suit magnesium ion scavengeability is an index showing how much magnesium ion the acrylic acid-maleic acid copolymer (or its salt) scavenges in water. It defines, as shown by the wording of claim 1, the amount of magnesium ion expressed in terms of magnesium hydroxide (Mg(OH)2) scavenged by 1 g of the copolymer (or its salt). It reflects the ability of that copolymer to chelate magnesium ions (paragraph 65 of the patent in suit, lines 14-17).

10.1 Having regard to structural similarities between the copolymers disclosed in D1 and those of operative claim 1, which both consist of maleic acid and acrylic acid repeating units, it is credible that the copolymers of D1, like those of the patent in suit, are able to chelate or scavenge magnesium ions. 

[...]

12.3 Consequently, the meaning of the unusual parameters selected by the patent proprietor to define the copolymers of present claim 1, and the analysis of the experimental data of the patent proprietor provided in Annexes C and D of D15, establish a strong presumption that the values of these unusual parameters defined in operative claim 1 are inherently fulfilled by the copolymers described in examples 1-23 and 1-24 of D1. In these circumstances, the burden of establishing that the claimed copolymers lack novelty over D1, which primarily lay on the opponents, has been discharged.

[...]

15. Accordingly, the counter-arguments of the patent proprietor cannot reverse the strong presumption established by the opponents that the copolymers produced in examples 1-23 and 1-24 of D1 inherently fulfil the parametric requirements of present claim 1 and therefore are structurally indistinguishable from them. That presumption has also not been overcome by measuring the magnesium ion scavengeability or magnesium hydroxide scale inhibitability of copolymers obtained with examples 1-23 and 1-24. Nor has the patent proprietor put forward considerations which are in line with the general state of the art and show that the unusual parametric definition of claim 1 cannot be met by the copolymers 1-23 and 1-24 of D1 or that said definition reflects a structural difference.

16. Therefore, in these circumstances, the presumption that the subject-matter of claim 1 is not novel having regard to the disclosure of D1 has not been rebutted. Accordingly, the subject-matter of claim 1 does not meet the requirements of Article 54 EPC.

17.1 Claim 1 of this request differs from claim 1 as filed in that the minimum value for the magnesium ion scavengeability of 210 mg has been amended to 230 mg and the weight-average molecular weight of the copolymer has been specified to be in the range of 5 000 to 100 000.

17.2 The minimum value of the magnesium ion scavengeability now defined in claim 1 is disclosed in the paragraph on page 6, lines 13-21 of the application as filed. It has been selected from other minimum values of the magnesium ion scavengeability listed there, namely 210 as in original claim 1, preferably 220, more preferably 230, and even more preferably 240 mg.

17.3 The limitation of the weight-average molecular weight of the copolymer represents a quantitative reduction of the range envisaged within the application as filed, merely excluding values below 5 000 which are disclosed as less preferred in the application as filed. Page 8, lines 17-22 discloses the weight-average molecular weight of the acrylic acid-maleic acid copolymer (or its salt) as being preferably in the range of 2 000-100 000, more preferably 3 000-50 000, and even more preferably 5 000-20 000, and most preferably 6 000-15 000. This amended feature taken in isolation is therefore disclosed in the application as filed.

17.4 However, it is stated in lines 20-22 of that passage that "in the case where the weight-average molecular weight is less than 2 000, the magnesium ion scavengeability tends to be so low as to deteriorate the detergency". It therefore follows that the magnesium ion scavengeability whose lower limit also has been amended cannot be held to be independent of the weight-average molecular weight, at least at the bottom of the range originally disclosed for the latter.

17.5 It results from the above that the subject-matter of claim 1 can only emerge from the disclosure of the application as filed if the skilled reader can find therein an unambiguous and direct pointer linking the choice of a lower limit for the weight-average molecular weight of 5 000 to the selection of a minimum value of the magnesium ion scavengeability of 230 mg/g. Such a pointer, however, was not indicated. Although it is clear to the Board that magnesium ion scavengeability depends not only on the molecular weight of the copolymer but also on its other characteristics, the application as filed has not been shown to provide an unambiguous and direct disclosure that a minimum magnesium ion scavengeability of 230 mg can be achieved with copolymers having molecular weights as low as 5 000. Such information is not apparent in particular from the description of the exemplified copolymers meant to be in accordance with the present invention, and which exhibit a magnesium ion scavengeability of at least 230 and have a molecular weight of at least 8 000 (see examples 1-1 to 1-5, Table 1-3, page 59, as well as examples 2-16 and 2-17, pages 69 and 70).

17.6 The Board therefore concludes that the subject-matter of claim 1 provides the skilled person with technical information not derivable from the content of the application as filed. The same holds true for claim 3, which also defines a copolymer characterised by the same ranges of weight-average molecular weight and magnesium ion scavengeability. Consequently, claims 1 and 3 extend beyond the content of the application as filed, and thus infringe Article 123(2) EPC.