T 1553/16 - Proprietary parameter

Key points

• In this opposition case, claim 1 is directed to a pipe comprising a polyethylene resin, the resin having a number of parameter features including "an F time in Jana Laboratories Procedure APTF-2 of at least 1000 hours, under the following conditions: ... (± 10 percent)".
• The Board finds the claim to be insufficiently disclosed.
• " in the absence of any information in the patent in suit on how to determine the F time feature, the skilled person has no idea which kind of installation should be used in order to carry out said test according to said procedure APTF-2, nor any knowledge of how the test is carried out and how a failure is identified. The mere indication of some parameters to be fulfilled (as indeed specified in claim 1 of the main request) is of no help if the skilled person does not know on which installation said parameters are to be set and how a failure is identified." 
• The patentee submitted that "the Jana Laboratories Procedure APTF-2 was an established procedure, which was publicly offered as a service by Jana Laboratories."
• The Board: "However, it is derivable from the fourth paragraph on page 1 of C9 that the testing methodology APTF-2 was kept secret (see wording "proprietary testing methodologies" and "proprietary analysis methodologies", whereby the emphasis is made by the Board), i.e. it was not available to the public." 
• "considering that the appellant has deliberately defined the subject-matter of operative claim 1 by the way of an - apparently - unusual parameter and using a method which was not shown to be commonly used in the art, it would have been its duty to provide full information how said method should be carried out. Since, as explained above, that requirement is in the present case not satisfied, there is a fundamental lack of technical information concerning the determination method of the F time feature according to the Jana Laboratories Procedure APTF-2 mentioned in operative claim 1, so that it is not possible to know what measures have to be taken to produce a pipe according to claim 1 as it is not possible to verify whether a product having the property as claimed is obtained. This amounts to a lack of sufficient disclosure." 
• The Patentee submitted that the issue was a matter of clarity. The Board "the issue at stake is not related to an alleged ambiguity in the determination of a parameter, which could indeed in some cases be a matter of clarity, but rather to a lack of essential information in order to run a specific procedure (namely the APTF-2 procedure), which was not shown to be usual in the art and which is necessary to determine an unusual feature (F time) mentioned in the operative claims. In other words the lack of information does not result in the claim being unduly broad or with unclear edges, but derives from the presence of a parameter which is in itself very specific, but whose method of measurement is kept secret. Therefore, the appellant's argument is rejected." 

EPO T 1553/16 - link

2. Sufficiency of disclosure

2.1 In order to meet the requirements of sufficient disclosure, an invention has to be disclosed in a manner sufficiently clear and complete for it to be carried out by the skilled person, without undue burden, on the basis of the information provided in the patent specification, if needed in combination with the skilled person's common general knowledge. This means in the present case that the skilled person should in particular be able to prepare a pipe according to claim 1, which is disputed by the respondents.

2.2 The pipe according to claim 1 is characterised by a combination of structural features related to the definition of a polyethylene resin and of antioxidants which have to be mandatorily present, with the additional functional feature "an F time in Jana Laboratories Procedure APTF-2 of at least 1000 hours, under the following conditions: ... (± 10 percent)".

2.3 The respondents argued that the patent failed to provide fundamental technical information on how to measure said feature "F time".

2.3.1 In that respect, it is noted that that issue was already addressed by the parties in the first instance proceedings, but that the opposition division reached its decision under the assumption that the patent proprietor's arguments could be adhered to (see section V above: last sentence).

2.3.2 In addition, the opposition division's conclusion according to which said functional feature was not mandatorily implicitly satisfied by all the pipes falling under the structural definition of claim 1 (reasons of the decision: page 9, second and third paragraphs), which was further adhered to by the respondents, was not contested by the appellant, in particular during the oral proceedings before the Board.

2.3.3 Furthermore, it was undisputed that the sole information provided by the patent in suit in relation to said F time feature and to the Jana Laboratories Procedure APTF-2 is the one which is indicated in operative claim 1.

2.3.4 The appellant argued that the determination of the F time according to said procedure APTF-2 was a simple test, which could be carried out on the basis of the information indicated in operative claim 1.

However, in the absence of any information in the patent in suit on how to determine the F time feature, the skilled person has no idea which kind of installation should be used in order to carry out said test according to said procedure APTF-2, nor any knowledge of how the test is carried out and how a failure is identified. The mere indication of some parameters to be fulfilled (as indeed specified in claim 1 of the main request) is of no help if the skilled person does not know on which installation said parameters are to be set and how a failure is identified.

In addition, it cannot be excluded that said procedure APTF-2 does not impose further limitations, in addition to the requirements indeed indicated in claim 1 of the main request, on the conduction of the experimental procedure, which would have to be respected in order to determine reliably the F time feature.

2.3.5 The appellant further argued that it was shown in C9 and D10 that the Jana Laboratories Procedure APTF-2 was an established procedure, which was publicly offered as a service by Jana Laboratories.

However, it is derivable from the fourth paragraph on page 1 of C9 that the testing methodology APTF-2 was kept secret (see wording "proprietary testing methodologies" and "proprietary analysis methodologies", whereby the emphasis is made by the Board), i.e. it was not available to the public. In that respect, no further information on the methodology is given on page 3 of C9 (see section "Oxidative Resistance: Advanced Pipe Testing Facility II APTF II)").

In addition, D10 contains no information regarding the methodology used to carry out the APTF-2 procedure and to determine the F time feature according to claim 1 of the main request. The fact that it is mentioned in D10 by an employee of Jana that "I can confirm that the public could request a chlorine resistance evaluation, including a failure time (F-time) evaluation, of pipes under Jana Laboratories Procedure APTF-2, prior to 4 December 2003" is merely a confirmation that the Jana Laboratories were prepared to conduct such a test on request before the priority date of the patent in suit, but does not constitute evidence that said test was publically available. It constitutes no evidence either that said procedure belonged to common general knowledge.

2.3.6 In the Board's view, the skilled person is also not provided with enough guidance in order to determine which criterion is to be used to determine the failure time when applying the Jana Laboratories Procedure APTF-2. Although it is indicated in paragraph 8 of the patent in suit, in respect of some prior art documents, that the failure time was the time needed until a leak was detected, there is no similar indication in the patent in suit that the same criterion is to be applied when determining the F time feature according to operative claim 1. In that respect, no evidence was provided by the appellant to show that this was the only sensible meaning for that feature, in particular in case of the "proprietary" method of the Jana Laboratories (see above section 2.3.5). To the contrary, the respondents explained that other types of failures could be considered in the present technical field, e.g. appearance of cracks, first leakage of water, unability of the pipe to maintain the pressure inside it or bursting of the pipe, which appears plausible and, for that reason, cannot be excluded by the Board. In that respect, the Board is convinced that using criteria as different as "first appearance of cracks" and "bursting of the pipe" can only lead to significantly different results in terms of F time and which do not allow the skilled person to know when the test is to be stopped.

2.3.7 Under those circumstances, it was not shown by the appellant that the Jana Laboratories Procedure APTF-2 required to determine the F time feature specified in operative claim 1 was a common procedure and/or that the skilled person could rely on common general knowledge in order to determine said parameter or to compensate the apparent lack of information of the patent in suit in that respect. In other words, essential technical information is missing in order for the skilled person to be able to determine reliably the F time feature indicated in operative claim 1. Further considering that the appellant has deliberately defined the subject-matter of operative claim 1 by the way of an - apparently - unusual parameter and using a method which was not shown to be commonly used in the art, it would have been its duty to provide full information how said method should be carried out. Since, as explained above, that requirement is in the present case not satisfied, there is a fundamental lack of technical information concerning the determination method of the F time feature according to the Jana Laboratories Procedure APTF-2 mentioned in operative claim 1, so that it is not possible to know what measures have to be taken to produce a pipe according to claim 1 as it is not possible to verify whether a product having the property as claimed is obtained. This amounts to a lack of sufficient disclosure.

2.3.8 During the oral proceedings before the Board, the appellant argued that the respondents' objections were related to an alleged ambiguity in the determination of the F time, which was rather a matter of clarity than sufficiency of disclosure.

However, it may be derived from the analysis according to sections 2.3.2 to 2.3.7 above that, in the present case, the issue at stake is not related to an alleged ambiguity in the determination of a parameter, which could indeed in some cases be a matter of clarity, but rather to a lack of essential information in order to run a specific procedure (namely the APTF-2 procedure), which was not shown to be usual in the art and which is necessary to determine an unusual feature (F time) mentioned in the operative claims. In other words the lack of information does not result in the claim being unduly broad or with unclear edges, but derives from the presence of a parameter which is in itself very specific, but whose method of measurement is kept secret. Therefore, the appellant's argument is rejected.

2.3.9 In view of the above, the ground of opposition under Article 100(b) EPC prejudices maintenance of the patent according to the main request.

Auxiliary requests (apart from the eighth auxiliary request)

3. No additional arguments were provided by the appellant in respect of Article 100(b) EPC concerning the determination of the F time feature according to the Jana Laboratories Procedure APTF-2 for any of the operative first to third auxiliary requests filed with letter of 1 April 2016, fourth to sixth auxiliary requests filed with letter of 8 February 2016, and sixth and seventh auxiliary requests filed with letter of 12 September 2017.

Therefore, the Board is bound to reach the same conclusion for each of these auxiliary requests (which all contain said F time feature), which can therefore only share the same fate as the main request. Under those circumstances, none of these auxiliary requests is allowable as a consequence of the grounds under Article 100(b) EPC.

4. In view of that conclusion regarding sufficiency of disclosure, there is no need for the Board to deal with any other issues in respect of these auxiliary requests, in particular regarding the admittance into the proceedings of the sixth and seventh auxiliary requests filed with letter of 12 September 2017, which was in dispute between the parties.