T 2184/13 - Parameter and future technologies

Key points

• In this opposition appeal case with claim 1 directed to a resin characterized by parameters, one parameter was the molecular weight measured "by GPC". The opponent raised the issue that the scope of the claim could become broader with future improvements of GPC technology.
• The Board finds that this argument " fails on a pure legal reason, since the terms of a claim, including in the present case "measured by [GPC])" are to be read as they would be by the skilled person at the relevant date (filing or priority) of the application, i.e. in the present case excluding meanings of GPC which would result from further developments of [GPC technology] after said relevant date.
• The Board refuses, under Article 13 RPBA, a novelty attack based on public prior use, which was included the Notice of opposition, but was not elaborated during the oral proceedings before the opposition division, and which also not pursued with the statement of grounds of appeal. Picking up the novelty attack later in appeal was not admissible. 

II. Claims 1 and 6 of that request read as follows:

"1. A methacrylic resin characterized in that the methacrylic resin
- comprises 80 to 98.5 wt% of methyl methacrylate monomer unit and 1.5 to 20 wt% of at least one different vinyl monomer unit copolymerizable with methyl methacrylate,
- has a weight average molecular weight measured by gel permeation chromatography (GPC) of 60,000 to 230,000
- and comprises 7 to 30% of a component having a weight average molecular weight of 1/5 or less of a peak weight average molecular weight (Mp) obtained from a GPC elution curve, based on the methacrylic resin component. (indentations added).

Reasons for the Decision

Main request

Admittance of new objections

1. After the communication of the Board setting out its preliminary view of the case had been received, the appellant submitted one month before the oral proceedings with letter of 18 April 2017 an objection of lack of novelty over the public prior use of the polymer Sumipex MG SS and an objection of inventive step based on document D4. This represents a change to the appellant's complete case as defined in Article 12(2) RPBA and its admittance may thus be considered at the Board's discretion under Article 13(1) RPBA, such discretion being exercised inter alia in view of the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA adds that amendments to a party's case sought to be made after oral proceedings have been arranged may not be admitted "if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

1.1 The objection of lack of novelty based on the alleged public prior use of the polymer Sumipex MG SS and already invoked in the notice of opposition was not elaborated during the oral proceedings before the opposition division, a reference being made to the opponent's written submission (see section 3 of the minutes) and also not pursued with the statement of grounds of appeal. The appellant was aware from the impugned decision that it was questionable whether the alleged public prior use had been proven beyond any reasonable doubt, because it had not been shown that Sumipex MG SS had been sold before the priority date, but also because evidence was missing that a GPC analysis of that polymer carried out before that date would show that it contained the amount of "1/5 component" specified in claim 1 of the patent in suit. Therefore the board considers that there was no justification for the appellant to wait until one month before the oral proceedings to provide additional evidence D1c, D1d, D1e and D1f in order to prove the alleged prior use of the polymer Sumipex MG SS. This is even more the case as both documents D1e and D1f, which are meant among others to show a GPC analysis of a product alleged to be Sumipex MG SS, are dated 26 November 2001 and 11 October 2001 and bear the same reference to a laboratory book as experimental evidence D2 concerning measurements made around the same period. Accordingly, there was no reason for the Board to consider that additional documents D1e and D1f were not readily accessible to the appellant when filing the statement of grounds of appeal, when document D2 had been already submitted before the opposition division.

[...]

Sufficiency of disclosure

[...] 2.1.6 The further argument that the scope of the protection of the patent in suit would become broader with new developments in the GPC technic [sic, read: technique], since non soluble (meth)acryl resins might become then analysable, also fails on a pure legal reason, since the terms of a claim, including in the present case "measured by gel permeation chromatography (GPC)" are to be read as they would be by the skilled person at the relevant date (filing or priority) of the application, i.e. in the present case excluding meanings of GPC which would result from further developments of that analytical technic after said relevant date.