T 2325/12 - Compatible not clear

Key points

• The term " compatible"  was held to cause a lack of clarity.

T 2325/12 - link

Fourth auxiliary request - clarity

6. Claim 1 of the fourth auxiliary request corresponds to claim 1 of the main request with the addition as a further ingredient of "(e) optionally an antitartar agent, wherein the antitartar agent is compatible with the antibacterial ester, or the antitartar agent is incompatible with the antibacterial ester and is included in one component of a dual component oral composition system in which a first component contains the antibacterial ester and a second component contains the antitartar agent".

6.1 There is no definition in the claim of what is meant by the terms "compatible" and "incompatible" with regard to the (in)compatibility of the antitartar agent with the antibacterial ester. The Board is not aware of any definition of the term commonly accepted in the field, nor any evidence in this respect has been provided by the appellant.

6.2 Even the description of the patent is not helpful in this respect, as individual examples are indicated (paragraphs [0032] and [0033]) without specifying which condition should be met by an antitartar agent to fall into one or the other category. Moreover, antitartar agents are indicated as being incompatible, such as pyrophosphate and polyphosphate salts, which are used in the compositions of D9 (see e.g. formulation example 1) without any apparent problem of compatibility.

6.3 Under such circumstances, it is not possible for the skilled person to discriminate between antitartar agents which or compatible or incompatible with the antibacterial ester, with the consequence that the skilled person is not able to delimit what falls and what does not fall under claim 1 of the fourth auxiliary request.

6.4 For these reasons, claim 1 of the fourth auxiliary requests does not meet the requirements of Article 84 EPC.

6.5 The additional feature of claim 1 of the fourth auxiliary request which results in a lack of clarity is taken from the description (paragraphs [0032] and [0033]) and was not present in any of the granted claims. There is no doubt, therefore, that the non compliance with Article 84 EPC has been introduced by the amendment, so that the examination of the requirements of Article 84 EPC is in the power of the Board in line with decision G 3/14 of 24 March 2015 (see catchword).