T 0250/15 - Parameter feature

Key points

• In this opposition appeal, claim 1 is for a manufacturing process and uses a polyamide having a molecular weight Mn greater than 8000. This is a parameter feature. "This parameter is widely used and clearly defined." "[U]nlike T 593/09, the parameter claimed in this case is not obscure".
• "For these reasons, and contrary to the decision of the Opposition Division, the disputed patent discloses this aspect of the invention in a sufficiently clear and complete manner for the skilled person to perform." 
• The opponent had asked for a referral to the Enlarged Board on the issue.
• The Board notes that in T 1811/13, it had held that "there is today a clear predominant opinion among the Chambers that the definition of the" forbidden domain "of a claim should not be considered as a matter related to Article 83 EPC". The opponent had not cited any decisions contesting T 1811/13.
• "This board is of the view that there is a predominant view that an imprecise definition of the scope of the protection of a claim falls first and foremost under Article 84 EPC 1973." 
• The Board notes furthermore that in "T 626/14 (link) insufficient disclosure could be found, since the claimed parameter of the thickness of a soft fibrous material was not clearly defined in the sense that a significant measure of was not possible without specifying the measurement conditions." "This Board notes that T 626/14, like T 464/05 [which are both decisions of Board 3.2.06], concerns a particular constellation in a certain technical field." "Consequently, decision T 626/14 can not call into question the conclusions set out above with regard to the sufficiency of the disclosure of the invention and the request for referral to the Enlarged Board of Appeal made orally by the respondent I must be dismissed."  
• As a comment, the Board 3.2.06 (competent for hygiene absorbent articles) is clearly not going to change its mind about Article 83 and parameters and even can find a feature such as a thickness of less than 3 mm to be insufficiently disclosed (T2096/12) and as indicated by the present board, a feature of a thickness of 1-2 mm (T 626/14) or the relative size of a liquid storage area (T2004/14). We now know that according to Board 3.2.05, that is because those decisions are about "a certain technical field". 

EPO T  0250/15 -  link


Machine translation from the French original

Reasons for the decision

1. Sufficiency of the disclosure of the invention

1.1 Claim 1 of the disputed patent relates to a manufacturing process comprising at least

"a step of impregnating a reinforcing fabric with a polyamide composition in the molten state, having a melt viscosity of between 1 and 50 Pa.s, the polyamide having a molecular weight Mn greater than 8000; .]. "

1.2 It is not disputed that number average molecular weight is a common quantity for characterizing a polymer such as polyamide. Indeed, it is the average of the molar masses weighted by the number of chains of each length. It is therefore a value inherent in each polymer sample. This parameter is widely used and clearly defined. In addition, it is not disputed that one skilled in the art knows at least two methods generally used to determine this parameter, namely permeate gel chromatography (GPC) and end group analysis. In this respect, the parameter of the number average molecular weight greater than 8000, which, as such, is neither vague nor imprecise, does not preclude the execution of the invention by the human being. job. The possible uncertainties concerning possible deviations of the measurement results obtained by the various known methods do not affect the ability of those skilled in the art to choose an appropriate polyamide on the basis of his knowledge and the information given in the patent.

1.3 The board adds that this conclusion is in line with the current case law of the Boards of Appeal (see Case Law of the Boards of Appeal of the European Patent Office, Eighth Edition, 2016, II.C.7.2., And in particular T 1811 / 13, point 5.1 of the reasons). For the sake of completeness, it is noted that, unlike T 593/09, the parameter claimed in this case is not obscure. In addition, and in a different manner from T 466/05, the claim in question clearly defines what molecular weight it is, namely the number-average molecular weight Mn. In the light of decision T 225/93, it is clear that finding a polyamide with an average molecular weight in excess of 8000 does not require excessive efforts or an inventive step for the skilled person.

1.4 For these reasons, and contrary to the decision of the Opposition Division, the disputed patent discloses this aspect of the invention in a sufficiently clear and complete manner for the skilled person to perform. The contested decision must therefore be annulled.

2. Request for referral to the Enlarged Board of Appeal lodged orally by respondent I

2.1 The respondent I has asked for a referral to the Enlarged Board of Appeal essentially to determine whether the difficulty that a person skilled in the art may have in determining whether an object falls within the scope of the protection covered by the claim relates to the clarity of the the claim or rather the sufficiency of the disclosure of the invention.

2.2 According to Article 112 (1) (a) EPC 1973, a Board of Appeal may refer to the Enlarged Board of Appeal, ex officio or at the request of a party to the appeal, when it considers that a decision is necessary to ensure uniform application of the law or if a question of law of fundamental importance arises.

2.3 In T 1811/13 of 8 November 2016 (see 5.1 of the grounds), this board, in a different composition, examined the case law of the Boards of Appeal on the question of whether the impossibility for of the trade to determine if it worked in the field prohibited by the claim entailed the impossibility of realizing the invention. It concluded that "there is today a clear predominant opinion among the Chambers that the definition of the" forbidden domain "of a claim should not be considered as a matter related to Article 83 EPC ". The board added that "[t] his does not mean that a lack of clarity can not lead to insufficient disclosure of the invention, but in such a case it is not sufficient to establish that a claim lack of clarity, but it is necessary to establish that the application or the patent, as the case may be, does not disclose the invention in a manner sufficiently clear and complete for the skilled person to be able to carry it out. In other words, it is not sufficient to establish a lack of clarity of the claims to establish the non-respect of Article 83 EPC 1973, it must be shown that this lack of clarity affects the patent as a whole (ie that is, not just the claims) and that it is such that a person skilled in the art - who can use the description and his general common knowledge - can not realize the invention. "

Respondent I did not cite any case law in support of his request for referral which could call into question the conclusions set out in T 1811/13.

2.4 In view of the foregoing, this board is of the view that there is a predominant view that an imprecise definition of the scope of the protection of a claim falls first and foremost under Article 84 EPC 1973. In the present case, the characteristic relating to the number-average molecular weight Mn was contained in claim 1 as issued and thus does not result from a modification of the claims. In this respect, according to G 3/14 (OJ EPO 2015, A102), the challenged characteristic can not be considered in the opposition appeal proceedings in light of the requirements of clarity. The question of whether it satisfies the requirements of Article 84 EPC 1973 does not therefore arise.

2.5 For these reasons, the board considers that a decision of the Enlarged Board of Appeal is not necessary to rule on the present case. The application for referral to the Enlarged Board of Appeal lodged orally by Respondent I must therefore be dismissed in accordance with Article 112 (1) (a) EPC 1973.

2.6 For the sake of completeness and superfluity, the board refers to the more recent decision T 626/14 (points 1.1 to 1.4.1 of the reasons). That decision does not call into question, in the light of Decision T 1811/13, that a lack of clarity as to the extent of the protection does not constitute a failure to state the invention. However, in that case T 626/14 insufficient disclosure could be found, since the claimed parameter of the thickness of a soft fibrous material was not clearly defined in the sense that a significant measure of was not possible without specifying the measurement conditions. Due to the absence of any information in the patent allowing the skilled person to reliably measure the thickness claimed and therefore excessive efforts were required, the board concluded that the invention was not disclosed in a manner sufficiently clear and complete to enable a person skilled in the art to perform it. If, in such circumstances, a person skilled in the art did not know whether he had actually realized the invention, there could be a violation of the provisions of Article 83 EPC 1973.

This Board notes that T 626/14, like T 464/05, concerns a particular constellation in a certain technical field. The case here, however, is different in that the number-molecular-mass parameter Mn aims for a clearly defined and inherent property of the material. In addition, it has not been disputed that a person skilled in the art has a limited number of appropriate and generally known methods of measurement. Consequently, decision T 626/14 can not call into question the conclusions set out above with regard to the sufficiency of the disclosure of the invention and the request for referral to the Enlarged Board of Appeal made orally by the respondent I must be dismissed.

3. Admission of applications to the Enlarged Board of Appeal filed in writing by the respondents

3.1 During the oral proceedings and at the end of the debates on the issues, both the sufficiency of the disclosure and the clarity as well as the question of the referral to the Enlarged Board of Appeal lodged orally by the Respondent I, respondent II, too, immediately requested, but in writing, that the Enlarged Board of Appeal be seized of questions on the same subject.

This motion constitutes a modification of the grounds invoked by respondent II, whose admission under section 13 (1) and (3) RPCR is left to the discretion of the board. In particular, paragraph 3 of Article 13 provides that amendments requested after the date of the oral proceedings have been fixed shall not be admitted if they raise questions which the board or the other parties can not reasonably entertain without the oral procedure be returned.

3.2 In this respect, the board notes that the impugned decision alone deals only with the question of the clarity of the claims or the sufficiency of the patent disclosure, namely whether the measurement methods used to measure the parameter of the number-average molecular mass Mn give different results must be treated from the point of view of the clarity or insufficiency of the description of the invention (see point 2.1 of the grounds). In the course of the appeal proceedings, the applicant had addressed this issue in its letter of 11 May 2018 (see point II, 1.1). In the preliminary opinion for the oral procedure (see paragraph 6.5), the rapporteur discussed decision T 1811/13 and considered that the possible uncertainties concerning possible deviations of the measurement results obtained by the various known methods appeared to affect the clarity of the definition of the scope of protection rather than the ability of those skilled in the art to choose an appropriate polyamide on the basis of their knowledge and information. data in the patent.

3.3 On the basis of these facts, it is clear that the distinction between clarity and sufficiency of disclosure has not only become relevant for the first time in the oral proceedings, but was an essential aspect of the whole appeal procedure. In these circumstances, respondent II had sufficient grounds to submit her request for referral, if she considered it necessary, in good time, namely well before the oral proceedings, or, at any rate, at the latest at the time the President established the motions at the beginning of the hearing, not at the end of the proceedings. The reasons given by the respondent II that a translation of the notice should be prepared and that the principal domiciled in the United States and the partners of the firm should be consulted cannot in any way justify the submission of the motion for referral to the oral proceedings, let alone to the end of the debates. This conclusion also applies to Respondent II's argument that she did not find the necessary motion at the beginning of the hearing because another request for referral on the same subject was announced. and presented orally by respondent I.Respondent II's argument that she did not find the necessary motion at the beginning of the hearing because another request for referral on the same subject had been announced and presented orally by Respondent I.Respondent II's argument that she did not find the necessary motion at the beginning of the hearing because another request for referral on the same subject had been announced and presented orally by Respondent I.

3.4 With regard to the questions themselves, the request for referral, among others, refers to a number of decisions that had not been previously mentioned in the appeal proceedings. The complainant was therefore faced with a central issue of the appeal procedure which she was unable to adequately prepare and for which the hearing should therefore have been postponed for reasons of fairness. Moreover, in those circumstances, it would not have been possible to have a detailed discussion of the questions submitted by the reference and of the case-law cited.

In such a situation, Article 13 (3) RPCR precludes the admission of the motion for referral to Respondent II. This applies a fortiori to the motion for referral, having a content identical to that of respondent II and filed in writing by respondent I at a later time and at the end of the oral proceedings shortly before closure of debates.

3.5 The Chamber adds, superficially, that, for the reasons set out in paragraphs 2.3 to 2.6 above, it does not see sufficient reasons to bring the Enlarged Board of Appeal on its own motion in the context of this procedure.

4. Objection under Rule 106 EPC

4.1 Respondent II considers that the Board's decision not to admit his late application for referral to the Enlarged Board of Appeal amounts to a violation of the right to be heard under Article 113 EPC 1973.

4.2 The Board does not share this point of view. It appears from the minutes of 20 July 2018 and served on the parties on 3 August 2018 that the question of the admissibility of the motion for referral filed by Respondent II was discussed during the oral proceedings and that the Respondent II was not denied the opportunity to comment on this issue. Moreover, the Boardr's decision not to admit the application in the appeal proceedings was neither arbitrary nor based on irrelevant criteria. The Board's considerations fall within the discretion of the Board as provided for in Article 13 (3) RPBA. The Board's decision not to allow the late referral to the Enlarged Board of Appeal is in accordance with the principles set out in R 9/11 of 7 December 2012 and the subsequent case-law.

It can not therefore be concluded that the Board unfairly deprived Respondent II of his right to be heard under Article 113 (1) EPC 1973.

5. Remittal to first instance

5.1 The complainant asks that, in this case, the case be referred back to the Opposition Division for examination of novelty and inventive step. The respondents did not oppose this request.

5.2 Under Article 111 (1) EPC 1973, the Board of Appeal may either decide the appeal itself or refer the case to the body responsible for the annulled decision. Although there is no absolute right to have each issue decided by two bodies, the primary function of an appeal is to give the losing party the opportunity for judicial review of the first instance decision. Other criteria that may also be taken into account in deciding upon a referral are the requests of the parties, the general interest in having the proceedings closed within an appropriate period of time, and whether or not there has been a a full assessment of the case during the proceedings at first instance.

5.3 In the present case, the Opposition Division dealt only with the question of the sufficiency of the statement of the invention without examining novelty and inventive step.

In the light of the foregoing, the Board decides to remit the case to the department of first instance to rule on the grounds of opposition under Article 100 (a) EPC 1973.

Device

For these reasons, it is decided as follows

1. The contested decision is annulled.

2. The case is referred back to the first instance for further action.

3. Requests for referral to the Enlarged Board of Appeal are rejected.