T 0149/15 - Parameter and device manual

Key points

• Claim 1 is for a gel having a particular viscosity value. Viscosity measurements are rather sensitive to how they are carried out. According to the opponent, for a repeatable viscosity measurement, you need information about 9 settings like temperature, container size, test speed, and 'how the sample was prepared'. The patent does  not give all this information.
• However, the Board notes that the patent specifies the viscosimeter model. Therefore, " the skilled person would turn to its operating instructions for carrying out the measurements" . This manual give the further required information. Hence, the lack of information about the parameter in the patent, does not cause a problem of insufficient disclosure.

EPO T 0149/15 -  link

Claim 1 specifies a gel composition comprising a sufficient amount of a thickening agent to give the composition a viscosity in excess of 9000 cps;.

Reasons for the Decision

3.1 Claim 1

3.1.1 The respondent argued that the skilled person would not be able to prepare the composition in granted claim 1 without undue burden because the patent did not provide sufficient information on the method that should be used for reliably measuring viscosity and because there was only one example of a thickener, at a specific concentration, that would achieve the minimum viscosity defined in the claim. These two aspects are treated separately in points 3.1.2 and 3.1.3 below.

3.1.2 Regarding the issue of whether the patent contains sufficient information for measuring the viscosity of the composition in granted claim 1, the respondent [opponent] noted that a repeatable viscosity test should specify the nine parameters cited on page 55 of document (1) [Operating instructions of the programmable rheometer Brookfield DV-II+ Pro EXTRA. Manual No. M/09-166, Brookfield Engineering Laboratories, Inc., pages 1-79] , namely:

- Test temperature
- Sample container size
- Sample volume
- Viscosimeter model
- Spindle used
- Whether or not to attach the guard leg
- Test speed
- Length of time or number of spindle revolutions to record viscosity
- How sample was prepared and/or loaded into the container

In paragraph [0035], the patent specifies four of these parameters, namely the viscosimeter model (Brookfield RV DVII+), the spindle (RV6), the test speed (10 rpm) and the temperature (20°C). However, it does not give any explicit information on the other five (i.e. sample container size, sample volume, whether or not to attach the guard leg, length of time or number of spindle revolutions to record viscosity, and how the sample is prepared and/or loaded into the container). It therefore has to be investigated whether the skilled person could infer the necessary information on those five parameters from the patent disclosure or from his general knowledge.

It is evident that, once the viscosimeter model is specified in paragraph [0035], the skilled person would turn to its operating instructions for carrying out the measurements. The parties accepted document (1) as a representation of said operating instructions at the filing date, even though the document had no publication date.

Page 20 of document (1) depicts a general procedure for measuring viscosity. In particular, it starts by specifying that a 600 ml beaker is filled with the fluid up to the immersion groove on the spindle's shaft. [...]

In conclusion, the information given in paragraph [0035] of the patent in combination with the operating instructions of the viscosimeter specified therein is sufficient for the skilled person to carry out a reliable measurement of the viscosity of the composition in granted claim 1.

In this respect, the case underlying the decision T 808/09 cited by the respondent cannot be compared to the one in hand. In T 808/09 (see Reasons, points 2.4.1, 2.4.3 and 2.4.4), the only information given in the application in relation to the measurement of viscosity was the temperature (ambient temperature), while in the case in hand, as discussed above, all the relevant information is provided directly or indirectly.

[...]

4. Priority of claim 1 of the main request - novelty over document (2)

Document (2) is a divisional application of the patent in suit which discloses several formulations falling under the scope of granted claim 1, namely formulations 41, 48, 51, 53 and 55 in table 3, formulation 59 in table 11, and the formulation in table 22. As document (2) is potential prior art in the sense of Article 54(3) EPC, it needs to be investigated whether its relevant content belongs to the prior art of granted claim 1, i.e. whether the effective date of the formulations in document (2) is earlier than that of granted claim 1.

The appellants have not disputed the fact that granted claim 1 as a whole has no priority right. However, following the principle of partial priorities established in G 1/15, the claim could still benefit from partial priority for the subject-matter potentially anticipated by document (2).

Decision G 1/15 gives clear instructions regarding the assessment of partial priority in generic "OR" claims. The relevant passage (point 6.4 of the Reasons for the Decision) reads as follows:

"In assessing whether a subject-matter within a generic "OR" claim may enjoy partial priority, the first step is to determine the subject-matter disclosed in the priority document that is relevant, i.e. relevant in respect of prior art disclosed in the priority interval. This is to be done in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"-claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Article 88(3) EPC."

Applying this principle to the case in hand leads to the result that formulations 41, 48, 51, 53 and 59 and the formulation in table 3 of document (2), which are also disclosed in the priority document (see table 1 for formulations 41, 48, 51, 53 and 55, table 9 for formulation 59 and table 1.2.2:3 for the composition corresponding to the formulation according to table 22 of document (2)), form a first part of claim 1 of the main request for which the priority date of 12 October 2005 counts as the valid filing date. As a consequence, document (2) does not form prior art according to Article 54(3) EPC for these formulations.

In view of the fact that, according to the passage of G 1/15 cited above, the assessment of partial priority involves a comparison of the subject-matter disclosed in the priority document with the subject-matter of the generic "OR" claim, the respondent's reasoning that the assessment of priority and novelty are not governed by the same rules does not hold and is in contradiction of decision G 2/98 (OJ EPO 2001, 413), in which the concept of "the same invention" referred to in Article 87(1) EPC is equated with the concept of "the same subject-matter" referred to in Article 87(4) EPC (see point 2 of the Reasons for the Opinion). Moreover, G 1/15 (see point 5.1.2, second paragraph, of the Reasons for the Decision) concludes that the term "element" used in Article 88(3) EPC is to be understood as "subject-matter such as that ... disclosed in the form of an embodiment or example specified in the description" [emphasis by the board]. The formulations mentioned above undoubtedly constitute such elements according to Article 88(3) EPC for which partial priority may be claimed.

5. Remittal

It follows from the above that the objection leading to the revocation of the patent has been overcome and the decision under appeal is to be set aside. However, the opposition division has examined neither the novelty of the subject-matter of the granted claims vis-à-vis documents (3) to (5) nor its inventive step. In order for these and other potential issues to be examined, and taking into account that both parties requested remittal, the board considers it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the opposition division for further prosecution on the basis of the patent as granted (main request).

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.