29 May 2018

T 1409/16 - Novelty and extrinsic characteristics

Key points

  • The Board decides that the phrase " either ... or"  in the claim means an inclusive or (both also being allowed). "The Board holds that the "either ... or" wording could only be considered as expressing an exclusive or in cases where the two situations referred to are, due to their very nature, mutually exclusive, i.e. incompatible with each other." 
  • About novelty based on a prior use: the opponent submitted that claim 1 was not novel becuase D1 to D3 described compositions containing the polymer Finnfix® BDA, and the opponent had fractionated the polymer to show that it included a polymer fraction having a degree of substitution and degree of blockiness as specified in claim 1. 
  • " The Board does not find these arguments convincing for the following reasons. Polymeric components (here: substituted celluloses), usually comprise individual molecules differing in terms of e.g. chain length and molar mass. A physical property measured and expressed as a single discrete value attributed to a polymeric component is thus often an average value determined over the totality of the individual polymeric molecules present. Therefore, the Board holds that when a polymer (CMC in Finnfix® BDA) is known to be a component of a prior art composition, intellectually splitting said polymeric component into fractions and attributing to one of these fractions (necessarily composed of individual molecules differing in terms of e.g. chain length and molar mass) a physical property (discrete numerical value) distinguishing this fraction from other such fractions, is an artificial approach based on hindsight." 
  • " In the present case, the Board regards the fractionation of Finnfix® BDA as carried out by the Appellant as a kind of reverse engineering based on hindsight and revealing a particular ("extrinsic" within the meaning of G 1/92) property of the Finnfix® BDA containing compositions: In the knowledge of the invention, "deliberate choices" were made "with specifically chosen outside conditions" in order to obtain "a particular result" in terms of DS and DB values. Information revealed by following this procedure does, however, not correspond to what can be considered to having been made available to the public by an analysis of the chemical composition of Finnfix® BDA in the sense of G 1/92." 
  • As a comment, fractionating polymers is usually not an intellectual exercise but a laboratory procedure.


EPO T 1409/16  - link

Reasons for the Decision
Main request - the meaning of "either ... or" in claim 1 as granted
1. The parties disagreed as regards the meaning to be given to the feature of claim 1 at issue expressed by the sentence "either DS+DB is of at least 1.00 or DB+2DS-DS**(2) is of at least 1.20" (emphasis added by the Board; complete wording of the claim under II, supra).
[...]
1.3 For the following reasons, the Board holds that in the context of claim 1 at issue the "either ... or" wording expresses an inclusive or.
1.3.1 Document D19 clearly shows, by means of example sentences taken from everyday language that both "exclusive disjunctions" and "inclusive disjunctions" may be expressed by the "either ... or" wording.
Claim 1 is, therefore, ambiguous and needs to be construed in this respect, taking into account the entire patent in suit.


1.3.2 For the Board, the fact that in another claim of the contested patent (claim 10) another expression ("and/or") is used (in the sense of an inclusive or) to refer to possible alternatives not concerning the substituted cellulose component (but the amount and type of builder in the composition) is not, as such, a compelling reason for concluding that the "either ... or" wording used in claim 1 must have a different meaning, i.e. that it expresses an exclusive or. There is no absolute obligation to use a fully coherent terminology for expressing given features if the latter can be expressed in different ways.
1.3.3 Moreover, in the description of the patent in suit, particularly in the examples, highly blocky CMC (HB CMC) is expressly qualified as a substituted cellulose "in accordance with the invention" (see paragraphs [0111] and [0116] to [0118]). The specific HB CMC referred to is characterized by a pair of (DS,DB) values (DS: 0.76, DB: 0.50, see paragraph [0110]) which are such that both the additive and the quadratic inequality of claim 1 at issue are met.
For the Board, the person skilled in the art reading the patent would certainly not conclude that the "either ... or" wording of claim 1 expresses an exclusive or, since this would mean that the exemplified (hence particularly preferred) embodiments would be excluded from the ambit of claim 1.
1.3.4 Paragraphs [0034] to [0037] of the patent in suit, invoked by the Appellant [opponent], do not contradict this interpretation. These paragraphs merely define ranges of possible DS values permitting to satisfy the additive inequality of claim 1 (see e.g. paragraph [0035], first line).
It is acknowledged that, as pointed out by the Appellant, paragraph [0037] of the patent indicates that "the substituted cellulose [...] may have a DS+DB of at least 0.85", i.e. less than 1.00 as prescribed by claim 1.
This possibility, presumably still mentioned due to a lack of adaption of the description before grant, is, however, clearly excluded from the scope of claim 1 at issue. Moreover, for the Board, the presence of the quoted statement in the description has no apparent bearing on the proper interpretation of the "either ... or" wording in claim 1 at issue.
1.3.5 Finally, the Board holds that the "either ... or" wording could only be considered as expressing an exclusive or in cases where the two situations referred to are, due to their very nature, mutually exclusive, i.e. incompatible with each other.
An example would be "a tree bearing either apples or walnuts". It is evident (excluding biotechnological manipulations) that if the tree bears apples it does not bear walnuts, and vice versa. In the present case, however, the mathematical analysis of the two inequalities mentioned in claim 1 reveals that they are not mutually exclusive. This is not in dispute. As a matter of fact, the graphs in D20 show that in the DS range prescribed by claim 1 at issue (from 0.01 to 0.99), the vast majority of the possible (DS,DB) pairs of values fulfils either both (cf. D20, plot 5, white area) or none of the two inequalities (cf. D20, plot 5, grey area). Only a (very small) subset of (DS,DB) pairs exists, for which one inequality is met but not the other (cf. D20, plot 6, white areas).
1.3.6 The Board therefore concludes that the sentence "either DS+DB is of at least 1.00 or DB+2DS-DS**(2) is of at least 1.20" of claim 1 at issue has to be read in the sense that the (DS,DB) values have to be such as to satisfy at least one of the two mentioned inequalities (i.e. in the sense of an inclusive or).
[...]
5. The Appellant [opponent] raised novelty objections against claim 1 as granted in view of each of D1 to D3, considering that each of these documents disclosed examples of laundry compositions including various laundry adjunct ingredients and the commercially available CMC "Finnfix® BDA".
By fractionation of said Finnfix® BDA, the Appellant obtained a fraction F1 which was characterised by
a DS of 0.9 and a DB of 0.14, so that DS + DB = 1.04, i.e. meeting the additive first inequality of claim 1.
The Appellant went on to argue that since claim 1 was formulated in an open manner ("comprising"), all the compositions of D1 to D3 containing Finnfix® BDA also comprised said fraction F1 and were, thus, novelty-destroying for the subject-matter of claim 1.
6. The Board does not find these arguments convincing for the following reasons.
6.1 Polymeric components (here: substituted celluloses), usually comprise individual molecules differing in terms of e.g. chain length and molar mass. A physical property measured and expressed as a single discrete value attributed to a polymeric component is thus often an average value determined over the totality of the individual polymeric molecules present.
6.2 Therefore, the Board holds that when a polymer (CMC in Finnfix® BDA) is known to be a component of a prior art composition (cf. D1: page 40, line 2; D2: Table A, pages 25 to 26, penultimate entry; D3: page 17, line 15), intellectually splitting said polymeric component into fractions and attributing to one of these fractions (necessarily composed of individual molecules differing in terms of e.g. chain length and molar mass) a physical property (discrete numerical value) distinguishing this fraction from other such fractions, is an artificial approach based on hindsight.
6.3 The DS and DB values (properties) of the substituted cellulose (polymer) may be obtained using the methods respectively described in paragraphs [0029] and [0044] of the contested patent. The same disclosure is also found in D4 (cf. pages 707 to 708) referred to in paragraph [0051] of the contested patent. These analyses produce single, discrete values for DS and DB, respectively.
6.3.1 It was common ground between the parties that the discrete values that are obtained when analysing DS and DB of the overall CMC component of Finnfix® BDA do not fulfill any of the inequalities of claim 1 at issue (see the values for Finnfix® BDA indicated in the patent in suit, paragraphs [0108] and [0110]).
6.3.2 What would be thus made available to the public by an analysis of the compositions described in the examples of D1 to D3 (cf. D1: examples on pages 35 to 40; D2: Table A on pages 25-26; D3: examples 1 to 12 on pages 13 to 17) are the DS and DB values of the overall CMC component of Finnfix® BDA and not the DS and DB values of some fractions of this component obtained by arbitrarily splitting up the latter.
6.4 This conclusion is in accordance with G 1/92 (OJ 1993, 277, Conclusion) which stipulates that "the chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person".
6.5 More particularly, according to G 1/92 (Reasons, 3), "a commercially available product per se does not implicitly disclose anything beyond its composition or internal structure. Extrinsic characteristics, which are only revealed when the product is exposed to interaction with specifically chosen outside conditions, e.g., reactants or the like, in order to provide a particular effect or result or to discover potential results or capabilities, therefore point beyond the product per se as they are dependent on deliberate choices being made" (emphasis by the Board).
6.6 In the present case, the Board regards the fractionation of Finnfix® BDA as carried out by the Appellant as a kind of reverse engineering based on hindsight and revealing a particular ("extrinsic" within the meaning of G 1/92) property of the Finnfix® BDA containing compositions: In the knowledge of the invention, "deliberate choices" were made "with specifically chosen outside conditions" in order to obtain "a particular result" in terms of DS and DB values.
Information revealed by following this procedure does, however, not correspond to what can be considered to having been made available to the public by an analysis of the chemical composition of Finnfix® BDA in the sense of G 1/92.
6.7 Hence, the Board concludes that none of D1 to D3 makes available to the public (Article 54(2) EPC) a composition according to claim 1 as granted.
6.8 Therefore, in the Board's judgement, the subject-matter of claim 1 and, consequently, the subject-matter of claims 2 to 10 dependent thereon, are not objectionable for lack of novelty either (Articles 100(a), 52(1) and 54(1),(2) EPC).

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