T 1297/12 - Disclaimer and accidental anticipation

Key points

• The claim with proposed disclaimer filed during the appeal of this opposition appeal,  is not allowable, because it is made in view of a document D3 which is not a accidental anticipation (and none of the other grounds are applicable). 
• D3 relates to the same field, however  " the anticipatory disclosures are neither an example, nor a comparative example but three sieved fractions isolated from a composition obtained in the course of an [] example." 
• "Following the finding of T 14/01 these fractions are disclosed in a relevant document, D3 and so cannot be considered to represent an "accidental" disclosure. Thus based on this assessment alone a disclaimer in respect of these disclosures would not be allowable." 

T 1297/12 -  link

1. Main request

1.1 Art. 123(2) EPC - allowability of the disclaimer.

1.1.1 The patent in suit relates to polyolefin powders of a defined particle size distribution (paragraph [0001]. The powders have uses in the production of pipes or films (paragraph [0006]). In respect of these uses it is stated that it has been found that a high proportion of large polymer particles can lead to problems in the final products. According to paragraph [0008] it was found that the problems can be obviated by controlling not only the width of the particle size distribution but in particular by reducing the proportion of large particles, while maintaining a low content of fines.

Thus the patent is concerned with polyolefin powders of controlled - narrow - particle size distribution.

1.1.2 D3 also addresses the problem of the provision of controlled morphology polyolefin moulding powders in particular for the production of films ("Field of the Invention").

1.1.3 D3 is a document comprised in the prior art pursuant to Art. 54(2) EPC. Consequently a disclaimer in respect of the disclosure thereof is only permissible if the anticipation is "accidental", i.e "so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention" (G 1/03, reasons 2.2.2.)

1.1.4 The document D3 itself is not unrelated and remote since it relates to the same field as the patent in suit, namely polyethylene polymers in particulate form having defined morphology, in particular a narrow particle size distribution. The appellant/patent proprietor has acknowledged the relevance of D3.

However it was considered by the appellant/patent proprietor that the cited novelty destroying disclosures i.e. the three sieved fractions of example 1 were "unrelated and remote".

1.1.5 To understand what is meant by an "unrelated and remote" disclosure it is necessary to consider G 1/03, and some of the case law developed subsequently.

(a) According to point 2.2.2 of the reasons of G 1/03:

"What counts is that from a technical point of view, the disclosure in question must be so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention" and "In the case of an accidental anticipation, its definition (see above) makes clear that it has nothing to do with the teaching of the claimed invention, since it cannot be relevant for examining inventive step. Therefore, a mere disclaimer excluding the subject-matter of an accidental anticipation may be assumed not to change the technical information in the application as filed and, for this reason, also not to change the subject-matter of the application as filed, within the meaning of Article 123(2) EPC".

In the present case disclaiming certain polyolefin powders having specific particle size distributions cannot be held not to change the technical information of the application as filed, which information aims at defining in the first part of claim 1 itself the polyolefin powder by its particle size distribution.

(b) The question of what constitutes "unrelated and remote" disclosures was considered in more detail in decisions subsequent to G 1/03.

In T 14/01, it was held in section 1.5 of the reasons, with reference to section 2.2.2 of the reasons of G 1/03 that a disclosure can be considered to be accidental only when it appears from the outset to have nothing to do with the invention. In the subsequent section 1.6, T 14/01 held that an allegation that a teaching leading away from the invention would have been extracted from the prior document presupposed that the document would have in fact initially been taken into consideration. However for an anticipation to be accidental it was necessary that the disclosure in question would never have been taken into consideration (T 14/01, section 1.6 of the reasons, third paragraph).

T 1146/01 in sections 4.2.3 concludes, with reference to section 2.2.2 of G 1/03 that a comparative example of a document, although teaching what not to do nevertheless served to elucidate the teaching of the document as a whole and was closely related to the other experiments - inventive and comparative - disclosed therein. Although a comparative example has a "negative relevance" it is, according to T 1146/01 neither remote from nor unconnected with the disclosure in the document (section 4.2.3, second paragraph). Thus a comparative example cannot be considered as an accidental disclosure in the sense of G 1/03.

1.1.6 In the present case the anticipatory disclosures are neither an example, nor a comparative example but three sieved fractions isolated from a composition obtained in the course of an - in this case inventive - example.

Following the finding of T 14/01 these fractions are disclosed in a relevant document, D3 and so cannot be considered to represent an "accidental" disclosure. Thus based on this assessment alone a disclaimer in respect of these disclosures would not be allowable.

Even if one were, for the sake of argument, to follow the position of the appellant that although D3 in itself is relevant the particular fractions cited as novelty destroying did not constitute a relevant disclosure, the conclusion would be the same because, as will now be explained, the fractions in question cannot be considered to constitute remote or unrelated disclosures.

The purpose of producing the fractions was to demonstrate the particle size distribution of the product of D3, which, as noted is related to the technical problem common to the patent in suit and to D3.

Consequently, to apply the vocabulary of T 1146/01, the fractions of example 1 of D3 cited as novelty destroying serve to "elucidate" the teaching of D3 and as such cannot, by the standards of the case law discussed above, be seen as "unrelated and remote" from the invention of D3 or from the technical problem common to D3 and the patent in suit.

Consequently even following the differentiated approach of the appellant, a disclaimer in respect of the specific sieved fractions of D3 would, following G 1/03 not be allowable since the individual sieved fractions of D3 were not "unrelated and remote" with the consequence that the anticipation was not accidental.

1.1.7 One argument of the appellant/patent proprietor addressed the question of whether the skilled person would have considered these particular fractions as potentially pertinent prior art for arriving at the invention now claimed. However based on the foregoing assessment and conclusions relating to the meaning of "unrelated and remote" in the context of the case law developed in the light of G 1/03 this argument is no longer relevant. However, the board notes that, following the approach of the above-cited T 14/01 the very premise that the skilled person would even have considered a particular fraction as potentially constituting the closest prior art - even if then disregarded - presupposes that the teaching would, in the terminology of G 1/03, have been "taken into consideration". Thus also on this approach the conclusion would be that the disclosed fraction was not "unrelated and remote" from the invention of the patent in suit.

1.2 For the above reasons it is concluded that the cited disclosures of D3 do not constitute an "accidental" anticipation, with the result that a disclaimer in respect thereof is not allowable (G 1/03 reasons 2.2 and Order, paragraph 2.1, second bullet point).