T 0486/14 - Trademark metal alloy in claim

Key points

• In this opposition appeal, claim 1 of the auxiliary request differs from claim 1 of the main request in that the nickel-based superalloy is defined as being "Waspaloy".
• " WASPALOY is a registered trademark that refers to a nickel-based superalloy. The reliance on a trademark in claim 1 introduces a lack of clarity, since it cannot be guaranteed that the alloy referred to with the trademark WASPALOY has a single, established composition, nor that such composition stays constant over time." 
• " If alloys carrying the designation WASPALOY in 2018 would still contain Nb [as they did according to a 2006 document], it would be expected that the latter element would necessarily appear in the elements listed in the chemistry table of D16 ["a copy of a Wikipedia article relating to WASPALOY dated 17 May 2018"]. The trademark WASPALOY thus does not have such a well known meaning that would imply a constant and defined chemical composition belonging to common general knowledge of the skilled person. The introduction of the trademark WASPALOY in claim 1 thus renders the claim prima facie unclear." 
• Therefore, the AR filed during the oral proceedings is not admitted and the patent is revoked.

EPO T 0486/14 - link

2. Auxiliary request - admittance

2.1 Claim 1 of the auxiliary request differs from claim 1 of the main request in that the nickel-based superalloy is defined as being "Waspaloy".

2.2 The request was filed during the oral proceedings, hence at the latest possible stage in the proceedings, and the Board needed to exercise its discretion as to whether the request should have been admitted into proceedings in accordance with Article 13(1) RPBA. In order to be admitted, inter alia the aspect of procedural economy given in Article 13(1) RPBA should be considered, which implies at least that the request should be prima facie allowable in the sense that it overcomes the objections raised without giving rise to new objections. This is however not the case for claim 1 of this request, for the following reasons.

2.3 As confirmed in D16, the Wikipedia article relating to WASPALOY filed by the respondent during the oral proceedings, WASPALOY is a registered trademark that refers to a nickel-based superalloy. The reliance on a trademark in claim 1 introduces a lack of clarity, since it cannot be guaranteed that the alloy referred to with the trademark WASPALOY has a single, established composition, nor that such composition stays constant over time.

2.4 The respondent [patentee] argued that WASPALOY corresponded to a well defined known range of alloy compositions belonging to common general knowledge as demonstrated by D16 and disclosed a chemistry table with the minimum and maximum wt% values that each non-residual component of the alloy could have. The Board cannot accept this argument however, since, as shown e.g. in table 1 of D7, the chemical composition analysis of two WASPALOY samples in 2006 contained 0.05 and 0.07 wt% values of Niobium (Nb), respectively. The chemistry table of D16 does not even comprise Niobium, which is thus not part of the composition of WASPALOY in May 2018.

2.5 Contrary to the respondent's [patentee's]  argument, the wt% values of Niobium cannot be considered as residual values such that the WASPALOY samples analysed in D7 also fall within the composition shown in D16. In this regard. the chemistry table of D16 discloses even smaller wt% values of other elements, such as Zirconium (Zr), Boron (B), Phosphorus (P) and Sulphur (S). If alloys carrying the designation WASPALOY in 2018 would still contain Nb, it would be expected that the latter element would necessarily appear in the elements listed in the chemistry table of D16. The trademark WASPALOY thus does not have such a well known meaning that would imply a constant and defined chemical composition belonging to common general knowledge of the skilled person. The introduction of the trademark WASPALOY in claim 1 thus renders the claim prima facie unclear.

2.6 As claim 1 of the auxiliary request prima facie does not meet the requirement of Article 84 EPC and is thus at least prima facie not allowable, the Board exercised its discretion not to admit this request into the proceedings (Article 13(1) RPBA).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.