T 0107/14 - Comprising or consisting - Metal alloys

EPO T 107/14

For the decision, click here

Key points

• The present case concerns possible added matter by changing "comprising" into " consisting of" . The Opponent had proposed referring questions to the Enlarged Board.
• However, the claim is directed to an alloy and the application as filed mentioned that the balance was Ni. 
• The Board:  "claim 1 as originally filed stipulates also that Ni represents "the balance" of the composition. This wording clearly and unambiguously discloses that the rest of the composition consists of Ni, not allowing for the presence of further elements. In other words, claim 1 as originally filed did not relate to an open composition (of the type whose clarity is discussed in D14) but was already directed to a closed composition, i.e. an alloy which consists of the given elements." 
• More generally: "Whether a particular amendment extends beyond the content of the application as originally filed is neither a point of law nor a matter to be decided only on the basis of the amendment in isolation. Rather, it must be judged on the basis of the information clearly and unambiguously disclosed in the whole application as originally filed, i.e. on the merits of the specific case." . Hence, no questions are referred. 
• D14 is the article of Spiekermann (Mitt. 1993 - XP002152326) which describes still applicable EPO practice for claims directed to alloys. 

Summary of Facts and Submissions

I. By its decision posted on 9 December 2013 the opposition division rejected the opposition against European patent No. 1835041.

II. The appellant (opponent) lodged an appeal against that decision in the prescribed form and within the prescribed time limit.

III. Oral proceedings before the Board of Appeal were held on 22 September 2015.

IV. The appellant requested that the decision under appeal be set aside and that the patent be revoked. As an auxiliary request it requested that the following questions be referred to the Enlarged Board of Appeal:

1. Is the term "consisting of" considered directly and unambiguously derivable from the solely used term "comprising", such that no new subject-matter is introduced by an amendment of the term "comprising" to the term "consisting of"?

2. If the answer to question 1 is yes, is a compound "consisting of" essential elements and optional elements considered directly and unambiguously derivable from a disclosure of a first list of the essential elements to be "comprised" and a second list of optional elements to be comprised by the compound?

V. The respondent (patent proprietor) requested that the appeal be dismissed or, in the alternative, that the patent be maintained on the basis of one of auxiliary request 1 or 2 filed with letter of 29 July 2014.

VI. The independent claims of the main request (patent as granted) read as follows:

"1. A nickel alloy wire to be used in effecting repairs to nickel based superalloy components, said nickel based alloy being formed from a material consisting of from 4.75 to 5.25 wt% chromium, from about 5.5 to 5.8 wt% aluminum, from 5.6 to 6.2 wt% tungsten, from 8.0 to 8.3 wt% tantalum, from 1.7 to 2.1 wt% molybdenum, from 9.5 to 10.5 wt% cobalt, from 2.8 to 3.2 wt% rhenium, from 0.07 to 0.30 wt% carbon, from 0.02 to 0.04 wt% boron, from 0.08 to 0.12 wt% zirconium, from 0.08 to 0.12 wt% yttrium, from 1.0 to 1.5 wt% hafnium, up to 0.12 wt% manganese, up to 0.12 wt% silicon, up to 0.015 wt% phosphorous, up to 0.015 wt% sulfur, up to 0.20 wt% iron, up to 0.10 wt% copper and the balance nickel."

[...]

The auxiliary requests are not relevant for this decision.

VII. The following documents played a role for the present decision:

D5: WO -A- 95/35396;

D14: P. Spiekermann "Legierungen - ein besonderes patentrechtliches Problem?" Mitteilungen der deutschen Patentanwälte (1993), pages 178-190

[...]

Reasons for the Decision

1. Article 100(c) EPC and the request that two questions be referred to the Enlarged Board of Appeal

1.1 According to the appellant, claim 1 [of the patent as granted] extends beyond the content of the application as filed because it is directed to an alloy "consisting of" the given elements, whereas claim 1 as originally filed relates to an alloy "comprising" the given elements.

However, claim 1 as originally filed stipulates also that Ni represents "the balance" of the composition. This wording clearly and unambiguously discloses that the rest of the composition consists of Ni, not allowing for the presence of further elements. In other words, claim 1 as originally filed did not relate to an open composition (of the type whose clarity is discussed in D14) but was already directed to a closed composition, i.e. an alloy which consists of the given elements.

The fact that dependent claim 3 lists further alloying elements does not change this finding, since claim 3 is merely to be seen as a "false dependent claim" which relates to another composition consisting of the elements listed in both claims 1 and 3. Moreover, by its reference to claim 1, claim 3 incorporates the feature that the balance of the composition is Ni. Hence, it also does not allow further undisclosed alloying elements to be present in addition to those mentioned in these claims.

Since the originally filed claims are already directed to closed compositions, there is no doubt that the composition stipulated by present claim 1, "consisting of" the given elements, is already disclosed in the application as originally filed.

Decisions T 0725/08 and T 0759/10, cited by the appellant to support its view that the amendment is not allowable, fail to convince the Board to the contrary. Whether a particular amendment extends beyond the content of the application as originally filed is neither a point of law nor a matter to be decided only on the basis of the amendment in isolation. Rather, it must be judged on the basis of the information clearly and unambiguously disclosed in the whole application as originally filed, i.e. on the merits of the specific case. Therefore, the situation to be considered in the present case is not the same as those underlying T 0725/08 and T 0759/10, and the findings of those decisions cannot be transposed to the present case. In any event, although in these decisions the replacement of the word "comprising" by "consisting essentially of" was found to contravene Article 123(2) EPC, the replacement of the word "comprising" by "consisting of" was actually allowed (see T 0725/08, points 5.4 to 5.6 and T 0759/10, point 7.1).

Hence, the patent as granted (main request) does not comprise subject-matter which extends beyond the content of the application as originally filed.

1.2 The Board was able to come to these findings without referring to the Enlarged Board of Appeal the questions submitted by the appellant.

According to Article 112(1)(a) EPC, in order to ensure uniform application of the law, or if a point of law of fundamental importance arises, the Board of Appeal, either of its own motion or following a request from a party to the appeal, will refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes.

In the present case, the questions submitted by the appellant relate to the allowability of a particular amendment, namely the replacement of "comprising" by "consisting of". As explained above this is not a point of law but rather a matter of fact to be decided on the merits of the particular case. Accordingly, answering the questions submitted by the appellant would not serve to ensure a uniform application of the law. Therefore, the Board decided not to refer them to the Enlarged Board of Appeal.