T 0022/09 - After G 1/13 - Fairly based

Key points

• This decision concerns the further procedure after G 1/13 about admissibility.
• The Board confirms that a method claim as granted can be changed into a use claim under Article 123(3) EPC following established case law. 
• In connection with Article 123(2) EPC, the Board states that it "is satisfied that the claims at issue are fairly based on the application as filed". As a comment, this is quite liberal language compared to " directly and unambiguously" .
• Novelty and inventive step is based on the purpose of the use claim. 

T 0022/09 - link



Summary of Facts and Submissions

II. Claim 1 according to the Main Request was identical to Claim 1 as granted, and read as follows:

"1. A method of pre-treating a catalyst support to be used in a catalyst-forming process involving impregnation of the support in neutral or acidic aqueous conditions, characterized in that it comprises introducing onto and/or into an untreated particulate catalyst support [], a modifying component, [] and calcining the resultant modifying component containing modified catalyst support [], to obtain a protected modified catalyst support, which is less soluble or more inert in the aqueous acid solution and/or neutral aqueous solution than the untreated catalyst support []."

XI. In Decision G 1/13 (OJ EPO 2015, A42), on the questions referred to it by the Board, the Enlarged Board of Appeal indicated that the appeal must be treated as admissible (Point 2 of the order).

XV. The Main Request filed at the oral proceedings contains 6 claims, Claim 1 reading as follows:

"1. Use of a modifying component for suppressing the solubility of a catalyst support [] when present in and/or on the catalyst support, wherein the catalyst support is to be used in a catalyst-forming process involving impregnation of the support in neutral or acidic aqueous conditions [] and characterized in that the modifying component is introduced onto and/or into an untreated particulate catalyst support [], and afterwards the resultant modifying component-containing modified catalyst support is calcinated [], to obtain a protected modified catalyst support, [] ".

Reasons for the Decision

Admissibility of the new Main Request

1. The filing of the sole claim request maintained during the oral proceedings was in reaction to the debate between the parties.

In particular, it came as a reaction to the opinion of the Board that Claim 1 at issue did not comply with the requirements of Article 123(3) EPC, due to the deletion of the feature that the catalyst support was to be used in a catalyst-forming process involving impregnation in neutral or acidic aqueous conditions. The new claim request is late but addresses and overcomes the finding of the Board, without raising questions which could not have been dealt with during the oral proceedings. The Appellant did not raise any objections against its filing. The Board exercised its discretion (Articles 12(4) and 13(1)(3) RPBA) and decided to admit it into the proceedings, despite its late filing.

Amendments

2. Apart from the change of category (from a method of pre-treating a catalyst support to the use of a modifying component for achieving a particular effect on that support), the claims of the sole request are based on Claims 1-4 and 6-7 as granted, i.e. contain their features but rearranged to define the use.

2.1 Since Claim 1 as granted concerned a method of pre-treating a catalyst support, which by virtue of Article 64(2) EPC extended the protection conferred to the pre-treated catalyst support directly obtained by the claimed method, and since instead Claim 1 according to the new, sole claim request concerns the use of a modifying component for suppressing the solubility of a catalyst support, i.e. defines the use of a chemical compound to obtain a particular effect on the catalyst support, the protection conferred by the patent as granted has not been extended (Article 123(3) EPC; Case Law, II.E.2.4, e.g. T 420/86 of 12 January 1989 and T 276/96 of 17 June 1997).

2.2 The objections under Article 123(2) EPC raised by the Appellant concern the alleged suppression of the features of Claim 1 as granted "pre-treating" and "which is capable, when present in and/or on the catalyst support, of suppressing the solubility of the catalyst support in aqueous acid solutions and/or neutral aqueous solutions", which alleged suppression extended the content of the application as filed.

2.2.1 It is however apparent from the wording of Claim 1 at issue (Point XVII, supra) that:

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(c) Therefore, the objections of the Appellant against the alleged deletions are not convincing.

2.2.2 Indeed, the Board is satisfied that the claims at issue are fairly based on the application as filed, namely on Claims 1-5 and 7-8 as initially filed, as well as on the general disclosure in the description as filed, pages 5 (second paragraph) and 6 (second and third paragraphs).

2.3 The claims at issue are not objectionable under Article 123 EPC.

2.4 The Appellant also raised objections under Article 84 EPC (lack of clarity) against the features "suppressing the solubility" and "less soluble or more inert", which were contradictory and not clear ("more inert").

2.4.1 According to G 3/14 (order), the claims of a patent may be examined for compliance with the requirements of the Article 84 EPC only when, and then only to the extent that, the amendment introduces a non compliance with Article 84 EPC.

2.4.2 Such is evidently not the case here, as the features objected to were already present in Claim 1 as granted, i.e. do not arise out of the amendment carried out (the change of category), and could not have been objected to as such under Article 84 EPC in Claim 1 as granted.

2.4.3 Consequently, the claims at issue are not objectionable under Article 84 EPC.

2.5 Therefore, the claims at issue are formally allowable.

Alleged insufficient disclosure

3. As to the insufficiency raised during the opposition proceedings, and dealt with in the decision under appeal, the Board has no reason to take another stance.

3.1 In respect of the objections that Claim 1 at issue still includes modifications of the support where organic groups are not decomposed or spinels are not formed, the Board notes that the Appellant particularly relied to Experimental Report D27, in order to show that not all the defined operating conditions (time/temperature) for the calcination led to the (complete) decomposition of organic groups or to the formation of spinels.

3.2 The objection that Claim 1 defines operating conditions (e.g. 1 minute and 100°C) which do not lead to complete calcination, as shown by D27, is not convincing, already because Claim 1 requires that the calcination is for decomposing organic groups or for forming spinels. Also, Paragraph [0043] of the patent in suit gives guidance on how to assess the right calcination time for decomposing the organic groups. Example 2 of the patent in suit illustrates the formation of a spinel. The skilled person has no reason to envisage a calcination not leading to the stated effects, e.g. 1 minute at 100°C, inter alia because the use thereof would not fall under Claim 1 at issue.

3.3 During the discussion of inventive step, the Appellant inter alia contended that the purpose of the claimed use was not achieved across the whole breadth of Claim 1, as Figure 11 of the patent in suit showed that no (suppression-of-dissolution) effect could be achieved for alpha-Al2O3 alumina.

3.3.1 According to settled case law (G 1/03, OJ EPO 2004, 413, Reasons 2.5.2, third paragraph), for claims alleged to encompass non-working embodiments, any invoked lack of reproducibility may become relevant under the requirements of inventive step or sufficiency of disclosure, depending on where the effect objected to is expressed. If the effect objected to is expressed in the claim, then the attack is one of insufficient disclosure. Such is the case here, as the attacked purpose is expressed in Claim 1 at issue.

3.3.2 The argument based on Figure 11 of the patent in suit is not convincing already for the reasons given in paragraph [0082] of the patent in suit, namely:

- that alpha-Al2O3 has a lower dissolution profile than gamma- and delta-Al2O3 (hence, it still has one, albeit low. This is also apparent from Figure 11 itself, as the profile for alpha-Al2O3 is not completely flat on the axis); and,

- that the catalyst support mainly consists of gamma- and delta-Al2O3 (the dissolution profile of which can be lowered).

3.4 The alleged insufficiency has not been proven.

Late filed items of evidence

Still according to settled case law (G 7/93, OJ EPO 1994, 775, Reasons, 2.6), the discretionary power conferred by Article 114(2) EPC to disregard late filed items of evidence implies that the Opposition Division must have a certain degree of freedom in exercising its power. A Board may overrule the discretion exercised by the Opposition Division only if it is apparent that it has been done according to wrong principles, or without taking into account the right principles, or in an unreasonable way. In the present case, in respect of D11, it is apparent from the decision under appeal (Ground on page 4), that the Opposition Division has considered the lack of justification for the late filing as well as the lack of disclosure of relevant features, i.e. it has applied the right approach to admission of late filed documents. As the Board has no reason to overrule the discretion exercised by the Opposition Division, D11 remains non-admitted into the proceedings.

4.1 As to D20, filed with the statement setting out the grounds of appeal, the Board has decided that it should not be admitted into the proceedings, for the reasons already expressed in the Board's communication dated 27 July 2012 (see Point 12.6), namely: The examples of D20 do not mention which alumina (Al2O3?) is used; the calcination time in general is not disclosed, whilst the illustrated calcination times are of at least 16 hours; and the sought-for reduction of the solubility of the support is not mentioned. Thus, D20 cannot prejudice the novelty of the claimed use.

4.2 Concerning D23 and D24, the relevance of which became even more apparent during the oral proceedings (as the abandonment of Main Request was indisputably due to their relevance to novelty), the Board decided to admit them into the proceedings, in line with the provisional opinion expressed in its communication (Point 12.7).

4.3 Also Experimental Reports D26 and D27 were admitted, in so far they were relevant to back up the arguments of the parties on insufficiency and inventive step.

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11.2 D23 and D24 disclose the use of silicon as the modifying component of the surface of Al2O3 supports, however in order to increase their hydrothermal resistance for use in car mufflers or fluidised beds. Apart from the similarity of the treatment steps, neither D23 nor D24 hints at the purpose defined in Claim 1 at issue, which is a technical feature of the claimed use.