T 1311/15 - Technical effect and sufficiency

Key points

• The patent is directed to a refrigerant composition comprising two compounds. The OD had revoked the patent for insufficient disclosure because the patent would not explain how to obtain a non-flammable composition having further components besides the two components recited.
• However, the Board notes that claim 1 does not specify that the composition is non-flammable.
• " It is however well-established case law of the Boards of Appeal that an objection of insufficient disclosure cannot legitimately be based on an argument that the patent does not enable a skilled person to achieve a technical effect which is not defined in the claim".
• Therefore there is no insufficient disclosure. The case is remitted.

EPO T 1311/15 - link

Summary of Facts and Submissions

I. The appellant (patent proprietor) lodged an appeal against the decision of the opposition division to revoke European patent No. 2 324 092.

II. Three notices of opposition had been filed, on the grounds of insufficiency of disclosure (Article 100(b) EPC), and lack of novelty and inventive step (Article 100(a) EPC).

III. Claim 1 of the main request, which corresponds to the patent as granted, reads as follows:

"A refrigerant composition comprising 36 to 50 mass% of 1,1,1,2-tetrafluoroethane (HFC134a) and 50 to 64 mass% of 2,3,3,3-tetrafluoropropene (HFO1234yf)."

IV. The opposition division concluded inter alia that it was an essential feature of the claimed refrigerant composition to be non-flammable. The use of the term "comprising" implied that claim 1 of the patent as granted was not limited to a refrigerant containing only 1,1,1,2-tetrafluoroethane (HFC134a) and 2,3,3,3-tetrafluoropropene (HFO1234yf). As the patent in suit did not teach how to obtain a non-flammable ternary composition, and there was evidence on file that some ternary compositions could be flammable, the division concluded that the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Reasons for the Decision

5. Non-flammability as a feature of the invention

5.1 The parties did not dispute that claim 1 does not include any flammability requirement in its wording. Consequently, "non-flammability" is not a feature of the claims.

It is however also undisputed that the invention underlying the patent aims at providing non-flammable refrigerant compositions, see for example paragraphs [0006], [0008] and [0009] of the patent in suit.

5.2 The question arises whether when examining the ground of opposition under Article 100(b) EPC that "an European patent does not disclose the invention in a manner sufficiently clear for it to be carried out by a person skilled in the art", the intended effect of the claimed subject-matter should be taken into account.

It is however well-established case law of the Boards of Appeal that an objection of insufficient disclosure cannot legitimately be based on an argument that the patent does not enable a skilled person to achieve a technical effect which is not defined in the claim (Case Law of the Boards of Appeal, 8th Edition 2016, II.C.2, last two paragraphs)

Thus, notwithstanding the fact that the present invention aims at obtaining non-flammable compositions, since this effect is not a feature of the claims it cannot be taken into account when examining whether or not the refrigerant composition comprising defined relative amounts of HFC134a and HFO1234yf is sufficiently disclosed.

6. Sufficiency of disclosure

The question whether some compositions according to claim 1 could be flammable does not have any bearing on the sufficiency of the disclosure of the patent in suit (see above).

The respondents have not argued that the claimed compositions could not be obtained and there are sufficient examples of said compositions in the patent in suit.

The respondents have not argued, either, that a composition comprising the relative amounts of HFC134a and HFO1234yf defined in claim 1 would not be a refrigerant, which is a requirement of said claim. As HFC134a and HFO1234yf are known refrigerants and represent at least 86 mass% of the claimed composition, there is no apparent reason why said compositions would not have refrigerant properties.

The skilled person would thus not have any difficulty in obtaining the claimed refrigerant compositions comprising 36-50 mass% of HFC134a and 50-64 mass% of HFO1234yf.

For these reasons, the invention is sufficiently disclosed for it to be carried out by a person skilled in the art, with the consequence that the ground under Article 100(b) EPC does not preclude the maintenance of the patent as granted.

6.1 Respondent II has argued that the claimed refrigerant compositions lacked support insofar as they referred to flammable refrigerant compositions, and that the scope of claim 1 was too broad with respect to the data provided.

However, none of these arguments is relevant to sufficiency of disclosure. The requirement that the description provides support for the claims is laid down in Article 84 EPC, which is not a ground for opposition.

Remittal

7. Since the decision under appeal has not dealt with all the grounds for opposition, the board considers it appropriate to remit the case to the opposition division for further prosecution on the basis of the claims according to the main request (Article 111(1) EPC). None of the parties objected to such remittal.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution on the basis of the main request.