T 1532/16 - Undislosed disclaimer and 'restore novelty'

Key points

• Claim 1 as granted includes a disclaimer of two examples of D5, which is an Art.54(3) document. Hence, the negative features do not violate Article 123(2) EPC only if they meet the requirements of G2/03 for undisclosed disclaimers.
• " While the Board agrees with the decision under appeal in that it cannot be concluded that these examples [of D5] are novelty destroying for the subject-matter of claim 1 without the disclaimer, this does not necessarily mean that the requirements of Article 123(2) EPC are not met. " 
• " In particular, the objection of [the opponent[] that the disclaimer removes more than necessary to restore novelty cannot be followed. Indeed as the wording of the examples is carefully repeated nothing more than what these examples disclose is potentially removed from the claims, but to the extent that the examples are not novelty destroying, indeed nothing is in fact removed.
• " It is also the case that this formulation which as noted above, is bereft of function has not, e.g. as a result of amendments to the claim, become in effect an ex-disclaimer which is no more required but cannot be removed due to the provisions of Article 123(3) EPC."  underlining added.
• This decision makes the use of an undisclosed disclaimer a bit less risky. It seems that in G2/03, hn. 2.1 ("a disclaimer may be allowable in order to: - restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC") the term "restore novelty" does not mean that the claim must be not novel without the disclaimer, in the view of the present Board. 
• The present decision appears to deviate from T1224/14 but does not acknowledge that decision.

T 1532/16 - link

Reasons for the Decision

3. Main request (set of claims filed as auxiliary request 1 with the statement of grounds of appeal)

3.1 Allowability of the disclaimer

Claim 1 contains a disclaimer to two examples of WO-A-02/14430 (D5 in examination proceedings - a document comprised in the state of the art pursuant to Article 54(3) EPC).

[see the PDF file of the decision, https://www.epo.org/law-practice/case-law-appeals/pdf/t161532eu1.pdf] 

The disclaimer was held unallowable by the opposition division (section 2 of the reasons) on the grounds that it could not be concluded with certainty that D5 actually disclosed the stiff copolymer as defined by the positive features of the claim as a component of the blends.

Although the disclaimer faithfully and accurately repeated the wording of examples 7 and 23 of D5 it is apparent that the terms employed in these examples are ambiguous. Thus one component "PLA" is defined as being selected from a number of commercial products without stating which grade was used or specifying the properties of the material used. The lubricant is defined only generally as a "polyol ester". Similarly the definition of the two polyesters 1 and 2 is ambiguous and does not define specific products.

As a result of the ambiguity in respect of which components the examples of D5 actually employ and in particular whether the components fall within the scope of operative claim 1, these two examples cannot be seen as providing an unambiguous disclosure of compositions within the terms of the positive features of operative claim 1.

While the Board agrees with the decision under appeal in that it cannot be concluded that these examples are novelty destroying for the subject-matter of claim 1 without the disclaimer, this does not necessarily mean that the requirements of Article 123(2) EPC are not met. In particular the objection of appellant II that the disclaimer removes more than necessary to restore novelty cannot be followed. Indeed as the wording of the examples is carefully repeated nothing more than what these examples disclose is potentially removed from the claims, but to the extent that the examples are not novelty destroying, indeed nothing is in fact removed.

It is also the case that this formulation which as noted above, is bereft of function has not, e.g. as a result of amendments to the claim, become in effect an ex-disclaimer which is no more required but cannot be removed due to the provisions of Article 123(3) EPC.

The objection under Article 123(2) EPC of Appellant II against the disclaimer is therefore not successful.

The remaining issues concern clarity of the disclaimer which is a further and separate requirement that the disclaimer has to meet (G 1/03, consideration 2.4 of the Headnote), but is not open to objection in the present case because the disclaimer was present in granted claim 1 (G 3/14, Headnote).