T 1399/13 - Disclaimer that is broader but clear

Key points

• In this opposition-appeal, a disclaimer is added to claim 1 in order to make the claim novel over four examples that are given in D8 an Art. 54(3) document. 
• The Board first considers that " that disclaimer is not only concise, it is also specific, since it ultimately discloses polymerization processes performed at one temperature only (57°C), involving one monomer (VCM) and concerning specific organic peroxides." The opponent argues that the four examples in D8 include more features, such that the disclaimer excludes more than necessary.
• The Board finds the disclaimer to be acceptable: " there are situations in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims."

3. Disclaimer

3.1 Claim 1 of auxiliary request 1 is defined by a disclaimer referring to a step of radio frequency dielectric heating and a disclaimer meant to exclude four examples of D8. While the first disclaimer was present in claim 1 of the application as originally filed, the second disclaimer is intended to exclude the examples of D8, a document according to Article 54(3) EPC (see point 1. above).

3.2 The disclaimer made in view of the examples of D8 in claim 1 of auxiliary request 1 essentially defines the type of polymerization (suspension), its temperature (57°C), the presence of a specific protective colloid (1000 ppm of polyvinyl alcohol) and the metering of specific peroxides in the course of the polymerization process which contains two parts, a first part (i) intended to disclaim example 1 as well as its comparison example reported in Table 1 of D8 and a second part (ii) intended to disclaim example 2 and its comparison example as reported in Table 2 of the same document.

3.2.1 The disclaimer in claim 1 of auxiliary request 1 is crafted around the main features of the polymerization process according to D8, a polymerization process whereby an organic initiator and a protective colloid are metered at the polymerization temperature (claim 1 and paragraph 6). It is formulated so as to exclude the aspects shared by the examples first (polymerization type, monomer, reaction temperature, presence of polyvinyl alcohol), followed by the aspect relating to the metering of the specific peroxide initiators (parts (i) and (ii)) as disclosed in Tables 1 and 2. As such, that disclaimer is not only concise, it is also specific, since it ultimately discloses polymerization processes performed at one temperature only (57°C), involving one monomer (VCM) and concerning specific organic peroxides (diisobutanoyl peroxide and 1-(2-ethylhexanoylperoxy)-1,3-dimethylbutyl-1-peroxypivalate).

3.3 Respondent 1 considered that the disclaimer added to claim 1 in view of D8 did not fulfil the criteria set out in G 1/03 (OJ EPO 2004, 413) and was therefore not allowable under Article 123(2) EPC on the grounds that the formulation chosen excluded more than what was disclosed in the examples of D8 and therefore more than necessary to restore novelty. In that respect, D8 disclosed a number of parameters that had not been included in the disclaimer and that were found to be necessary to the definition of the disclaimer by respondent 1: the volume of the reactor disclosed in D8, the mixing equipment used in the reactor, the repeated purges with nitrogen, the volume of water used in the polymerization process, specifics regarding the polyvinyl alcohol and vinyl chloride used (pages 8 and 9 of the reply to the statement setting out the grounds of appeal of respondent 1). Moreover, claim 1 of auxiliary request 1 lacked clarity since the formulation of the disclaimer did not indicate the starting point of the metering of the organic peroxide that was disclaimed and the number of disclaimers in claim 1 rendered that claim unclear.

3.3.1 With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10. In particular, the difficulty for a patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention, not even with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence).

3.3.2 The consequence of this, as clearly set out in T 2130/11, is that there are situations in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims.

3.3.3 It is the view of the present Board that the formulation of the disclaimer with respect to D8 as present in claim 1 of auxiliary request 1 corresponds exactly to this situation in that even if the disclaimer in its present form may be seen as formally removing more than is strictly necessary to restore novelty over D8, it avoids clarity problems and cannot be held to be in contradiction with the spirit of G 1/03 as it does not lead to an arbitrary reshaping of the claims. In particular, a formulation of the disclaimer including all the data and process steps as disclosed in the experimental part of D8 (paragraph 23) would indeed deprive the claim of its conciseness and render its wording unclear (Article 84 EPC). Besides, while it is not disputed that the features of the process of the examples according to D8 that have not been included in the formulation of the disclaimer in claim 1 may ultimately have an effect on the course of the polymerization, it has not been shown how the absence of these features in claim 1 of auxiliary request 1 may lead to an arbitrary reshaping of the claims, nor has the Board any reason to consider that it is the case.

3.4 With respect to the presence of separate disclaimers in claim 1 of auxiliary request 1, the subject matter they concern, radio frequency dielectric heating and the examples of D8, was not shown to be related in any way or create any uncertainty as to what is disclaimed. The Board does therefore not find that their presence in claim 1 of auxiliary request 1 infringes the requirements of Article 84 EPC.

3.5 The Board concludes from the above that the disclaimers present in claim 1 of auxiliary request 1 do not contravene the requirements of Articles 123(2) and 84 EPC.