30 Jan 2018

T 0330/14 - A kind of inescapable priority trap

Key points

  • In this case, priority was claimed from US provisional, E10 which is identical to the application as filed. However, the applicant had filed a second US provisional E11, two day before E10, and forming the basis for Euro-PCT application E2. The content of the two priority documents is not exactly the same, but the applications are related. According to the opponent, either the present claims lack basis in the application as filed, or the claims have basis in the application as filed, and are then equally disclosed in E11, making E11 the "first application", the priority invalid and E2 a novelty destroying Article 54(3) prior right. 
  • The Board recalls that " the Enlarged Board has stressed the importance of applying this "gold standard" as a uniform concept of disclosure with reference to Articles 54, 87 and 123 EPC". 
  • The Board also states that it "has some sympathy with the [proprietor's] argument that a skilled person would not directly and unambiguously derive the subject-matter of claim 1 of the main request from E11 [because this involves a selection from three lists]. However, applying the gold standard to the disclosure of the application as filed the board comes to the conclusion that, as explained below, the subject-matter of claim 1 of the main request does not comply with Article 123(2) EPC" because it involves the selection of four features from the application as filed.


EPO T 0330/14 - link


III. The opposition division held that the subject-matter of claim 1 of the main request and the eleven auxiliary requests complied with Articles 123(2), 83 and 84 EPC.

Regarding Article 123(2) EPC, the opposition division found that the subject-matter of claim 1 of the main request and of all auxiliary requests was directly and unambiguously derivable from the application as filed, considered as a whole. Since the application as filed was identical to the priority document E10, the claimed subject-matter was directly and unambiguously derivable from E10 as well.
Reasons for the Decision
1. In the statement setting out the grounds of appeal, the appellant [patentee] argued that the method defined in claim 1 of the main request had been disclosed for the first time in E10 (the priority document of the patent in suit) and not in E11 (the priority document of E2). Therefore, the subject-matter of the claims of the main request could validly claim priority from E10, with the result that the relevant date for assessing novelty was 19 March 2004. Under those circumstances, E2 was not state of the art under Article 54 EPC.


More precisely, the appellant held that the skilled person would have to make selections from three lists in E11 in order to arrive at the method of claim 1 of the main request: firstly, he would have to select colloid-forming polymeric acid particles to be added to the mixture; secondly, he would have to select the colloid-forming fluorinated polymeric sulfonic acid particles; and thirdly he would have to choose to add such acids after polymerisation. Such a triple selection was not directly and unambiguously derivable from the disclosure of E11.
Of course, the appellant agreed with the reasoning of the opposition division that the claims of the main request fulfilled the requirements of Article 123(2) EPC.
2. The board agrees with the respondent [opponent] that the appellant does not seem to have applied the same standard to the questions
- whether the subject-matter of claim 1 of the main request is disclosed in the application as filed and thus complies with Article 123(2) EPC, and
- whether it is disclosed in E11, with the consequence that E11 - not E10 - is the first filing, by virtue of Article 87(1) EPC.
The appellant appears to use a "less strict" approach when answering the first question above, but a "more strict" one when it comes to what is disclosed in E11.
3. The board cannot accept this divergent approach to added matter and novelty.
The case law of the boards of appeal of the EPO has established a "gold standard" for assessing compliance with Article 123(2) EPC. According to this standard, any amendment to the parts of a European patent application or of a European patent relating to the disclosure is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and therefore - irrespective of the amendment's context - can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed (G 3/89, OJ 1993, 117; G 11/91, OJ 1993, 125; G 2/10, OJ 2012, 376).
At the same time the Enlarged Board has stressed the importance of applying this "gold standard" as a uniform concept of disclosure with reference to Articles 54, 87 and 123 EPC (G 2/10 OJ 2012,376, point 4.6 of the reasons, citing G 1/03, OJ 2004, 413, point 2.2.2 of the reasons).
4. The board has some sympathy with the appellant's argument that a skilled person would not directly and unambiguously derive the subject-matter of claim 1 of the main request from E11. However, applying the gold standard to the disclosure of the application as filed the board comes to the conclusion that, as explained below, the subject-matter of claim 1 of the main request does not comply with Article 123(2) EPC.
4.1 The said subject-matter concerns:
(a) a method of forming a buffer layer in an electronic device, said method comprising
(b) adding a plurality of nanoparticles to an aqueous dispersion of an electrically conductive organic polymer,
(c) adjusting the pH to a more basic level, and
(d) depositing a buffer layer from the aqueous dispersion onto a substrate,
(e) whereby the nanoparticles are colloid-forming fluorinated polymeric sulfonic acid particles,
(f) the electrically conductive organic polymer is selected from the group consisting of polythiophenes of Formula III, polypyrroles of Formula IV, and combinations thereof, and
(g) the electrically conductive organic polymer is doped with a polymeric acid.
4.2 The passage on page 5, lines 27-31, of the application as filed is taken as the basis for assessing the issue of amendments under Article 123(2) EPC, because it relates to a method for producing buffer layers which comprises the step of adding a plurality of nanoparticles to an aqueous dispersion of an already prepared electrically conductive organic polymer. This passage also discloses the step of depositing a buffer layer from said aqueous dispersion onto a substrate. These buffer layers are prepared with a view to their use in electronic devices (page 2, lines 22-24 and 26-29; page 3, lines 33-37). This passage thus discloses features (a), (b) and (d) in combination.
4.3 Feature (c) is disclosed as an optional step given the terminology used, namely "in accordance with another embodiment" (page 5, lines 14-17), and in view of various passages of the application as filed such as:
- page 17, lines 28-29, which discloses that "it is frequently desirable to have aqueous dispersions of conductive polymers with a higher pH";
- page 18, lines 1-4, which discloses that "adjusting the pH to higher, more neutral values, does not deleteriously affect the electrical properties and device performance of the conductive polymers ... and in most cases improves those properties";
- page 19, lines 2-4, which discloses that "In other cases the pH can be further reduced with acidic ion-exchange resins for the applications where high acidity is not an issue"; and
- examples 1-7 which do not involve pH adjustment.
On the basis of the above, feature (c) corresponds to a first selection from the disclosure of the application as filed.
4.4 The chemical nature of the nanoparticles, feature (e), is disclosed in the application as filed as being one among many alternatives (page 14, lines 14-15). Thus this feature corresponds to a second selection.
4.5 The chemical nature of the electrically conductive organic polymer, feature (f), derives from the list disclosed on page 6, lines 16-18 of the application as filed, namely polyanilines, polythiophenes, polypyrroles and combinations thereof, i.e. seven alternatives in total. Restriction to three of these alternatives corresponds to a third selection.
4.6 Lastly, the specific dopant to be added, feature (g), is selected from the water-soluble acids disclosed on page 11, lines 11-15 of the application as filed. This corresponds to a fourth selection.
4.7 In the absence of any pointer in the application as filed towards combining the features selected above,the subject-matter of claim 1 of the main request does not fulfil the requirements of Article 123(2) EPC. It may be added in this context that not a single example of the application as filed has the combination of features required by claim 1 of the main request.
5. Nor does claim 1 of any of auxiliary requests 1-5 overcome this objection, because the skilled person still has to select features (c), (e), (f) and (g) from the disclosure of the application as filed.
6. Regarding claim 1 of auxiliary requests 6-8, which is a "use" claim, the objections regarding the chemical nature of the nanoparticles (feature (e)), the chemical nature of the electrically conductive organic polymer (feature (f)), and the specific dopant (feature (g)) also apply. Therefore, the subject-matter of claim 1 of auxiliary requests 6-8 likewise does not fulfil the requirements of Article 123(2) EPC.
7. In view of the above, none of the appellant's requests complies with Article 123(2) EPC.
Order
For these reasons it is decided that:
The appeal is dismissed.

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