T 1533/15 - Lateness alone can be sufficient

Key points

• In this opposition appeal, Board 3.3.02 applies the RPBA 2007 to hold inadmissible two test reports filed by Patentee, as well a large number of auxiliary requests.
• However, the Board first discusses admissibility of the appeal of the patentee. The OD gave a very short statement in its decision why the feature that the composition is "for use in coating a food or beverage can" did not make the claimed subject-matter novel over D2.
• The Board: “the patentee's statement [in its Statement of grounds] made it clear why it thought the opposition division's reasoning was wrong. This is all the more true since in view of the extremely short statement given by the opposition division to explain its conclusion about lack of novelty of claim 20 as granted (2.2 supra), the patentee could have only speculated what the reasoning behind this conclusion was. The reasons provided by the patentee in its statement of grounds of appeal were therefore considered sufficient by the board to meet the requirements of Rule 99(2) EPC.”
• The Board considers that the feature does not make the claim novel over D5. In particular, the composition does not need to be suitable as coating for a can; the patent itself indicates that the coating may contain additional components besides the claimed composition.
  
  Test reports filed one month before oral proceedings Board
• The Board decided to not admit D23. “D32a-c were filed on 10 December 2019, i.e. only one month prior to oral proceedings. On the basis of these new items of evidence, the patentee alleged a new fact [], namely, that the surfactant AOT-75 as contained in the latex polymer of D5's example 18, would render this latex polymer unsuitable for coating food and beverage cans. Therefore, the patentee's submission amounted to a new allegation of fact, based on new evidence, late-filed in appeal proceedings. It thus represented an amendment of the patentee's case, which can only be admitted at the board's discretion pursuant to Article 13(1) and (3) RPBA 2007. [....] Moreover, the patentee did not dispute that D32a-c were already known to it on 9 August 2019. The patentee could give no reasons why it waited until one month prior to oral proceedings to file these documents.
• As a comment, for the admissibility of new evidence (as D23 is), it does not matter if this is a new allegation of fact (although evidence is of course used to support factual allegations). Article 114(2) EPC expressly states that that the EPO ‘may disregard [late-filed] facts or evidence’. The new allegation of fact is the argument based on the surfactant AOT-75. It seems useful to distinguish between the evidence and the alleged fact: factual allegations and supporting evidence are not always introduced simultaneously. 
• The Board also did not admit another test report D33. “The board considered that D33 did not represent a timely reaction to test report D23 filed by the opponent. In fact, D23 had been filed on 14 March 2016 with the opponent's response to the patentee's statement of grounds of appeal. The patentee thus waited almost four years before submitting D33 only one month prior to oral proceedings.”
  
  Cancelling independent granted claim one month before oral proceedings Board
• The Board had found that independent product claim 20 as granted was not novel. The patent as granted had also method claims 1 and 14. The Board does not admit the auxiliary requests wherein claim 20 is deleted, under ARt. 13(1) RPBA 2007.
• “As stated by the Enlarged Board of Appeal (R 16/09, reasons, 2.2.4), lateness alone can outbalance the further criteria mentioned in Article 13(1) RPBA 2007 and become decisive when exercising the discretion to admit or not, inter alia, late-filed claim requests (R 16/09, reasons, 2.2.12; see also T 0253/10, reasons, 2.3). Hence, the very fact that auxiliary requests 1, 1A, 2A, 2C and 3A to 14A have been filed extremely late in the present appeal proceedings was sufficient reason alone not to admit these requests.”
• Before the OD and with the SoG, patentee had filed AR's wherein claims 1 and 14 were amended. “This led the opponent and the board to believe that those requests contained all the amendments the patentee considered to be necessary”
• “This belief was reinforced by the fact that until one month prior to oral proceedings before the board, the patentee never manifested any intention to go in a different direction, namely, to delete granted claim 20 while leaving claims 1 and/or 14 unamended”
• “This change of direction was further aggravated by the fact that the newly filed auxiliary requests were not convergent.”
• “The opponent (and the board) was thus confronted with a target that was moved almost at the end of the appeal proceedings. This implied high complexity both in procedural and technical terms which was a further reason for not admitting auxiliary requests 1, 1A, 2A, 2C and 3A to 14A into the proceedings.”
• “Moreover, the notice of opposition (page 11, point 2.16.2) already contained the opponent's novelty objection against granted claim 20 in view of D5's example 18. This objection was accepted by the opposition division, which also found the subject-matter of claim 20 to be not novel over said example 18. Consequently, the patentee could and should have filed auxiliary requests 1 and 1A already before the department of first instance. This was even more true when considering that during oral proceedings before the opposition division, the patentee was informed (minutes of oral proceedings before the opposition division, page 1, point 2, last paragraph) that remaining independent claims, i.e. inter alia claims 1 and 14, were found to be novel by the opposition division. At that point in time, the patentee could and should have filed requests not containing claim 20 anymore.”

EPO T 1533/15 - link

Reasons for the Decision

Applicable Rules of Procedure of the Boards of appeal

1. On 1 January 2020, the previously applicable Rules of Procedure of the Boards of appeal were replaced by new Rules of Procedure. The present decision has been issued after the new Rules of Procedure entered into force.

1.1 Hereinafter, the requirement that the statement of grounds of appeal and the reply thereto should contain the party's complete case will be addressed. This requirement is present in Article 12(2) of the previous Rules of Procedure (hereinafter Article 12(2) RPBA 2007) and Article 12(3) of the new Rules of Procedure (hereinafter Article 12(3) RPBA 2020) and is expressed with a substantially identical wording. According to Article 25(1) of the transitional provisions of the new Rules of Procedure, for any appeal pending on the date of entry into force like the present one, the new Rules of Procedure shall apply subject to certain exceptions dealt with in paragraph 25(2) and (3) RPBA 2020. Article 12(3) RPBA 2020 is not among those exceptions. Hence, Article 12(3) RPBA 2020 rather than Article 12(2) RPBA 2007 applies and will be referred to in the following.

1.2 In subsequent sections of the present decision, admittance of several submissions under the Rules of Procedure will be discussed, with these submissions having been filed after the summons to oral proceedings had been issued and before the entry into force of the new Rules of Procedure. For such a situation, Article 25(3) of the transitional provisions of the new Rules of Procedure applies. According to this provision, Article 13(2) of the new Rules of Procedure shall not apply and instead Article 13 of the previous Rules of Procedure shall continue to apply. This means that at least Article 13(1) and (3) of the previous Rules of Procedure (hereinafter Article 13(1) and (3) RPBA 2007) applies and will be relied upon by the board in the following sections addressing admittance.




Admissibility of the appeal by the patentee

2. The opponent (XI supra) objected to the admissibility of the patentee's appeal.

The board disagrees for the following reasons.

2.1 Under Rule 101(1) EPC, the board shall reject an appeal as inadmissible, if it does not comply inter alia with Rule 99(2) EPC. This rule stipulates inter alia that in the statement of grounds of appeal, "the appellant shall indicate the reasons for setting aside the decision impugned".

2.2 In the present case, the opposition division came to, inter alia, the conclusion that the subject-matter of claim 20 as granted lacked novelty over documents D1 and D5 (impugned decision, page 10, points 2.5 to 2.7).

The reasons for this conclusion are given in point 2.6 of the impugned decision, which recites: "The wording "for use in coating a food or beverage can" in the composition claim 20 has no limiting effect, said wording merely meaning that the composition claimed is in fact suitable for the stated use. The compositions known from D1 and D5 are in a form of latex which renders them also suitable for said use" (emphasis added by the board).

This very short statement of the opposition division is more in the form of an assertion than of a reasoning. No explanation is given as to why the arguments submitted by the patentee had not been accepted.

2.3 The patentee's statement of grounds of appeal contains on page 2, second paragraph, the statement that documents D1 and D5 were "not concerned with the coating of food or beverage cans", so that it could not "be unambiguously taken from these documents that the coating compositions described therein are suitable for coating food or beverage cans. Thus, novelty of claim 20 should be acknowledged".

Moreover, in the third paragraph on page 2, the patentee made reference to the reproduction of D5's example 18, giving reasons why, presumably due to the high Tg, the compositions produced according to this example were not suitable for coating food or beverage cans.

2.4 The board did not share the patentee's view that the coating compositions of D1 and D5 could be considered unsuitable for coating food or beverage cans merely on the ground that the two documents were not concerned with that purpose. Nevertheless, the patentee's statement made it clear why it thought the opposition division's reasoning was wrong. This is all the more true since in view of the extremely short statement given by the opposition division to explain its conclusion about lack of novelty of claim 20 as granted (2.2 supra), the patentee could have only speculated what the reasoning behind this conclusion was. The reasons provided by the patentee in its statement of grounds of appeal were therefore considered sufficient by the board to meet the requirements of Rule 99(2) EPC.

2.5 Since it was not disputed that the patentee's appeal also met the requirements of Articles 106 to 108 EPC as well as of Rule 99(1), sub-paragraphs (a) to (c), the board decided that the appeal by the patentee was admissible.

Main request - patent as granted - reading of claim 20

3. Claim 20 as granted defines (complete wording under II supra) a "composition for use in coating a food or beverage can" (emphasis added by the board).

3.1 Contrary to a formulation like "composition for use as a coating of a food or beverage can", the wording of claim 20 does not mean that the composition defined must be as such suitable for coating food and beverage cans. Rather, the composition of claim 20 can be rendered suitable for coating food and beverage cans by adding any further component.

3.2 This reading of claim 20 is confirmed by the contested patent itself, which in paragraphs [0038] and [0099] to [0113] teaches that a number of additional components may be added to the latex polymer defined in claim 20 to prepare a coating composition for food and beverage cans.

Main request - patent as granted - novelty of claim 20 under Article 54 EPC

4. The opponent objected to the novelty of the subject-matter of claim 20 as granted, inter alia, in view of example 18 of document D5.

4.1 Example 18 of D5 discloses (column 10, bottom) an emulsion polymerised latex polymer prepared as described in examples 5, 6 and 13 of D5. This emulsion polymerized latex polymer is prepared from acrylic acid functional polymer and dimethylethanolamine, which is a tertiary amine, a mixture of monomers including 0.97 wt-% glycidyl methacrylate, an oxirane-group-containing alpha, beta-ethylenically unsaturated monomer, based on the weight of the monomer mixture, and water (D5: column 8, table in example 6).

As not disputed by the patentee, this latex polymer of example 18 comprises all components defined in claim 20 as granted.

4.2 However, according to the patentee (X supra), this latex polymer of D5's example 18 was not suitable for coating food and beverage cans and therefore it did not anticipate the subject-matter of claim 20.

4.3 The board disagrees for the following reasons.

4.3.1 As mentioned under 3.1 and 3.2 above, claim 20 does not require that the latex polymer defined be suitable as such for coating food and beverage cans. In the same way, to anticipate the subject-matter of claim 20, the latex polymer of D5's example 18 does not have to be suitable as such for coating food and beverage cans. It suffices that it is demonstrated that it can be formulated into a suitable coating composition by adding any kind of component.

4.3.2 The opponent demonstrated by means of test report D23 that by adding a sufficient amount of the crosslinking agent Cymel 303 to the latex polymer of said example 18, a coating can be obtained showing optimal performances in a reverse impact test. In fact, D23 reports that already for a Cymel 303 concentration of 7.5 wt-%, the resulting coating showed no craze. The same result was obtained for Cymel 303 concentrations of 10, 20 and 30 wt-%.

4.3.3 Cymel 303 is also the crosslinking agent used in D5 itself to formulate, inter alia, the latex polymer of example 18 in a coating composition applied to aluminium panels (D5: column 11, lines 4 to 47). Cymel 303 is also a preferred crosslinking agent according to the contested patent, to be added to the latex polymer in an amount up to 50 wt-% (paragraphs [0103] and [0105]).

4.3.4 The reverse impact test used in D23 is the same test used in the contested patent (paragraph [0135]) to assess crazing of the coating. The coatings according to examples 29 to 33 of the contested patent (table 10 on page 28) showed crazing when subjected to said reverse impact test. Nevertheless, they represent coatings according to the invention. Therefore even coatings not meeting the reverse impact test are suitable for coating food and beverage cans.

4.3.5 This must be all the more true for the latex polymer of D5's example 18, which can be formulated into a coating composition showing optimal performances in terms of crazing in a reverse impact test. The board thus concludes that the latex polymer of said example 18 not only fulfils all compositional requirements of claim 20 but it is also suitable for use in coating food and beverage cans within the meaning of claim 20 at issue (3.1 and 3.2 supra). The latex polymer of D5's example 18 thus anticipates the subject-matter of claim 20.

4.4 The patentee argued (X supra), that food and beverage can coatings had to fulfil very stringent requirements. However, no such requirement is mentioned in claim 20 for the composition it defines or any coating resulting from it. No limitation is present in claim 20 in this respect. In fact, as set out above, in the opposed patent compositions are considered suitable in coating food or beverage cans even though the resulting coatings show crazing.

4.5 The patentee's arguments (X supra) that D5 did not mention that the disclosed compositions might be used for coating food and beverage cans and that D5's compositions focused on different goals are totally irrelevant to the question of novelty of claim 20 as granted and could only play a role for the issue of inventive step. What counts for novelty is that the latex polymer of D5's example 18 meets the compositional requirements of claim 20 and that suitability for use in coating food and beverage cans was demonstrated.

4.6 For the same reasons, also the arguments (X supra) that the tests used in D5 to assess coating performances were not specific to food and beverage can coatings and that example 18 was not among the preferred embodiments of D5 are totally irrelevant to the question of novelty.

4.7 Furthermore, the patentee's argument (X supra) that in D15 the opponent stated that acrylics were too rigid for a food and beverage can coating is not relevant. On the one hand, D15 in the passage cited by the patentee (column 1, lines 62 to 64) refers to acrylic copolymers in general and not to the specific latex polymer of D5's example 18. On the other hand, the suitability of the latex polymer of D5's example 18 has been proven as set out above.

4.8 The argument (X supra) that the Tg of the latex polymer of D5's example 18 and the brittleness resulting from it was too high for a food and beverage can coating can also not be accepted. As set out under 3.1 and 3.2 above, the latex polymer of example 18 does not have to be suitable as such for coating food and beverage cans. During oral proceedings, the patentee did not contest that different agents could be added to the latex polymer of example 18 to increase its flexibility. The Tg of the latex polymer as such is not necessarily decisive for the brittleness of a coating deriving from such latex polymer by inclusion of additional substances, e.g. crosslinkers. Furthermore, no flexibility or Tg requirement is mentioned in claim 20 to be met by the composition defined or by any coating resulting from it.

4.9 The patentee (X supra) also referred to test report D9 showing that coatings obtained by adding 0%, 2.5% and 5% Cymel 303 to the latex polymer of D5's example 18 did not withstand the 4T bend test. However, this argument can also not change the above conclusion of lack of novelty. On the one hand, no resistance to said 4T bend test is required in claim 20, nor is this test mentioned in the contested patent. On the other hand, as set out above, test report D23 demonstrated that higher amounts of Cymel 303 resulted in coatings showing no crazing when subjected to the reversed impact test described in the contested patent.

4.10 The patentee (X supra) also pointed to a lack of precise information about the coating formulation disclosed in column 11, lines 4 to 17 of D5 to be prepared from the latex polymer of example 18 of this document. Due to this lack of precise information, it could not be argued that the coating formulation of D5 was suitable as coating for food or beverage cans. However, this lack of information, if any, is irrelevant since the latex polymer of example 18 as such has been shown to be suitable for use in coating food or beverage cans and thus anticipates the subject-matter of claim 20.

4.11 The further submissions of the patentee based on documents D32a-c and D33 do not need to be considered for the question of novelty over D5's example 18 since these were not admitted into the proceedings (see the section below).

4.12 Therefore, the board concludes that the subject-matter of claim 20 lacks novelty over example 18 of D5 (Articles 52(1) and 54 EPC). The ground for opposition under Article 100(a) EPC prejudices the maintenance of the patent as granted. As a consequence, the main request of the patentee is not allowable.

Admittance of D32a-c and D33 and the related submissions contained in the patentee's brief dated 10 December 2019

5. The patentee requested to admit the items of evidence D32a-c and D33 into the proceedings. The opponent requested that these items of evidence not to be admitted.

The board rejected the patentee's request for the following reasons.

Documents D32a-c

5.1 D32a-c were filed on 10 December 2019, i.e. only one month prior to oral proceedings. On the basis of these new items of evidence, the patentee alleged a new fact (X supra), namely, that the surfactant AOT-75 as contained in the latex polymer of D5's example 18, would render this latex polymer unsuitable for coating food and beverage cans.

5.2 Therefore, the patentee's submission amounted to a new allegation of fact, based on new evidence, late-filed in appeal proceedings. It thus represented an amendment of the patentee's case, which can only be admitted at the board's discretion pursuant to Article 13(1) and (3) RPBA 2007.

Under Article 13(1) RPBA 2007, the board exercises its discretion in view of, inter alia, the complexity of the new subject-matter submitted, the state of the proceedings and the need for procedural economy.

Under Article 13(3) RPBA 2007, late-filed amendments of a party's case shall not be admitted if they raise issues which the board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings.

5.3 Contrary to the patentee's view (X supra), the board considered that the new submission raised complex issues at a very late stage of the proceedings. In fact, admitting this new submission and related documents D32a-c would have required to assess what influence, if any, the presence of the surfactant AOT-75 in the latex polymer of D5's example 18 might have on the suitability of such latex polymer for use in coating food and beverage cans. Furthermore, D32b was a declaration filed by the opponent under the legislation of the United States. The implications that such a declaration could have under the EPC, the circumstances under which this declaration had been filed and the relevance to the present case would also have needed to be assessed. This completely new assessment at such a late stage of the proceedings would also have been contrary to procedural economy.

5.4 Moreover, the patentee did not dispute that D32a-c were already known to it on 9 August 2019. The patentee could give no reasons why it waited until one month prior to oral proceedings to file these documents.

5.5 The opponent could also not reasonably be expected to deal with D32a-c and the related patentee's submission without adjournment of the oral proceedings. The opponent would have needed time to check the issue of the presence of AOT-75 in the latex polymer of example 18 of D5 with its technical experts and possibly provide counter-evidence. The board regards one month as not sufficient time to appropriately respond to these complex issues raised by the patentee.

5.6 In exercising its discretion under Article 13(1) and (3) RPBA 2007, the board thus decided not to admit D32a-c and the related submission of the patentee into the proceedings.

Test report D33

6. Like D32a-c, also D33 was also filed with the letter dated 10 December 2019. On the basis of the data contained in this document, the patentee argued that the opponent's data filed with D23 were not correct. This document had to be admitted since it was a reaction to the opponent's filing of D23.

6.1 The board did not agree. The board considered that D33 did not represent a timely reaction to test report D23 filed by the opponent. In fact, D23 had been filed on 14 March 2016 with the opponent's response to the patentee's statement of grounds of appeal. The patentee thus waited almost four years before submitting D33 only one month prior to oral proceedings.

6.2 In addition to this extremely late-filing, for which no justification was provided, D33 raised complex issues at a very late stage of the proceedings. In fact, admitting this test report would have required assessing what the term "failed" had meant in the following sentence of D33: "the coating containing 15% Cymel 303 crosslinker showed a lack of flexibility and failed the 4T bend testing" (emphasis added by the board). In fact, no numerical values or photographs of the coating were included in D33. An assessment would also have had to be made of what influence such a failing of the 4T bend testing might have on the suitability of the tested composition for use in coating food and beverage cans, especially in view of the positive results showed by the opponent (D23) by the crazing reverse impact test. Furthermore, while the crazing reverse impact test was used in the contested patent (paragraph [0135]) to assess coating performance, the 4T bend test used in D33 was not mentioned in the contested patent. These completely new assessments at such a late stage of the proceedings would also have been contrary to procedural economy.

6.3 Moreover, the opponent could also not reasonably be expected to deal with D33 and the related patentee's submission without adjournment of the oral proceedings. The opponent would have needed time to check the statements made in D33 with its technical experts and possibly provide experimental counter-evidence. The board regards one month as a not sufficient time to appropriately respond to these complex issues raised by the patentee.

6.4 In exercising its discretion under Article 13(1) and (3) RPBA 2007, the board thus decided not to admit D33 and the related patentee's submissions into the proceedings.

Auxiliary requests 1, 1A, 2A, 2C and 3A to 14A - admittance into the proceedings

7. Auxiliary requests 1, 1A, 2A, 2C and 3A to 14A were filed by the patentee on 10 December 2019, i.e. one month prior to oral proceedings before the board. The set of claims of auxiliary request 1 differs from the claims as granted in that granted claim 20 was deleted. The set of claims of auxiliary request 1A differs from the claims as granted in that granted claims 1 to 13, 16, 17, 19 and 20 were deleted. Auxiliary requests 2A, 2C and 3A to 14A contain various restrictions of independent claim 14 as granted. Moreover, all claims corresponding to granted claims 1 to 13 have been deleted.

The patentee requested that these auxiliary requests be admitted into the proceedings. The opponent requested that these auxiliary requests not be admitted.

The board rejected the patentee's request for the following reasons.

7.1 It was undisputed that the filing of auxiliary requests 1, 1A, 2A, 2C and 3A to 14A represented an amendment of the patentee's case presented only one month prior to oral proceedings before the board. In the same way as for D32a-c and D33, inter alia Article 13(1) RPBA 2007 applied. Under Article 13(1) RPBA 2007, such an amendment might only be admitted and considered at the board's discretion. This discretion should be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

7.2 As stated by the Enlarged Board of Appeal (R 16/09, reasons, 2.2.4), lateness alone can outbalance the further criteria mentioned in Article 13(1) RPBA 2007 and become decisive when exercising the discretion to admit or not, inter alia, late-filed claim requests (R 16/09, reasons, 2.2.12; see also T 0253/10, reasons, 2.3). Hence, the very fact that auxiliary requests 1, 1A, 2A, 2C and 3A to 14A have been filed extremely late in the present appeal proceedings was sufficient reason alone not to admit these requests.

7.3 Moreover, during opposition proceedings, the patentee had filed 14 claim requests before the opposition division that were re-filed with its statement of grounds of appeal. All these requests contained a restriction of both independent claims 1 and 14. This led the opponent and the board to believe that those requests contained all the amendments the patentee considered to be necessary (T 0248/13, reasons, 4.3).

This belief was reinforced by the fact that until one month prior to oral proceedings before the board, the patentee never manifested any intention to go in a different direction, namely, to delete granted claim 20 while leaving claims 1 and/or 14 unamended (auxiliary requests 1 and 1A) or to delete all claims corresponding to granted claims 1 to 13 and focus only on the restrictions of granted claim 14 (auxiliary requests 2A, 2C and 3A to 14A). This direction was chosen only one month before the oral proceedings by filing auxiliary requests 1, 1A, 2A, 2C and 3A to 14A.

This change of direction was further aggravated by the fact that the newly filed auxiliary requests were not convergent. For example auxiliary requests 1, 1A, 3A, 4A, 7A, 8A and 11A to 14A did not contain any composition claim whereas the latter was reinserted into auxiliary requests 2A, 2C, 5A, 6A, 9A and 10A. Moreover, while auxiliary requests 2C, 4A, 6A, 8A, 10A and 12A to 14A were restricted to the coating of an inside surface of a food and beverage can, this restriction was not present in auxiliary requests 1, 1A, 2A, 3A, 5A, 7A, 9A and 11A.

The opponent (and the board) was thus confronted with a target that was moved almost at the end of the appeal proceedings. This implied high complexity both in procedural and technical terms which was a further reason for not admitting auxiliary requests 1, 1A, 2A, 2C and 3A to 14A into the proceedings.

7.4 The patentee has not argued, and the board did not see any reason to assume, that the high number of differently amended requests was occasioned by a high number of objections from the opponent. On the contrary the number of objections was relatively small and the high number of requests and related amended independent claims not commensurate with that number of objections.

7.5 The patentee argued (X supra) that the independent claims of auxiliary requests 1 and 1A corresponded to granted independent claims and that the opposition division had decided that these claims were novel. Therefore, the opponent should have been prepared to discuss these claims. Moreover, the board would have had to deal with these claims in respect of the main request, if granted claim 20 had been found novel.

This argument is not convincing. It is not the task of the opponent (or the board) to speculate about what amendments the patentee might make at a very late stage of the proceedings and to prepare pre-emptively for all of them (T 0248/13, reasons, 4.5).

7.6 Moreover, the notice of opposition (page 11, point 2.16.2) already contained the opponent's novelty objection against granted claim 20 in view of D5's example 18. This objection was accepted by the opposition division, which also found the subject-matter of claim 20 to be not novel over said example 18. Consequently, the patentee could and should have filed auxiliary requests 1 and 1A already before the department of first instance. This was even more true when considering that during oral proceedings before the opposition division, the patentee was informed (minutes of oral proceedings before the opposition division, page 1, point 2, last paragraph) that remaining independent claims, i.e. inter alia claims 1 and 14, were found to be novel by the opposition division. At that point in time, the patentee could and should have filed requests not containing claim 20 anymore.

7.7 Furthermore, the patentee appealed the opposition division's decision, and it would thus have been on it to show that this decision was wrong and to present its complete case - including present auxiliary requests 1 and 1A - with its statement of grounds of appeal at the latest (Article 12(3) RPBA 2020). Instead, the patentee waited until one month prior to oral proceedings before the board to file auxiliary requests 1 and 1A.

7.8 The patentee also argued (X supra) that auxiliary requests 1 and 1A were filed to overcome inter alia the novelty objection raised by the board in its preliminary opinion. However, as mentioned above, this objection was already contained in the notice of opposition and was furthermore reiterated by the opponent in its response to the patentee's statement of grounds of appeal. The board did not raise any new novelty issue in its preliminary opinion. The mere fact that the board tended to concur with the opponent's objection and with the decision of the opposition division resided in the very nature of inter-partes proceedings and could not justify the filing of auxiliary requests at an extremely late stage of the proceedings.

7.9 In a similar way as for auxiliary requests 1 and 1A, the patentee also argued (X supra) that auxiliary requests 2A, 2C and 3A to 14A were filed to overcome the objection under Article 123(2) EPC as raised by the board in its preliminary opinion against the subject-matter of auxiliary requests 2, 2B and 3 to 14. However, this objection was already contained in the opponent's statement of grounds of appeal (section 4 on pages 2 to 4). The board did not raise any new added matter issue in its preliminary opinion. The mere fact that the board tended to concur with the opponent's objection resided in the very nature of inter-partes proceedings and could not justify the filing of auxiliary requests at an extremely late stage of the proceedings. Consequently, the patentee could and should have filed its complete case, namely auxiliary requests aiming at overcoming such an objection with its reply to the opponent's statement of grounds of appeal at the latest (Article 12(3) RPBA 2020). Instead, the patentee waited until one month prior to oral proceedings before the board to file auxiliary requests 2A, 2C and 3A to 14A.

7.10 At the oral proceedings before the board, the patentee also argued (X supra) that the admittance of auxiliary requests 2A, 2C and 3A to 14A would not lead to a modification of the opponent's case. The patentee referred to the minutes of oral proceedings before the opposition division (page 3, point 5, first paragraph), according to which the opponent refrained from presenting objections under Article 123(2) EPC against claim 1 of the then pending third auxiliary request, which was now deleted in auxiliary requests 2A, 2C and 3A to 14A.

The board could not accept this argument, either. The passage of the minutes referred to by the patentee recited that the "Opponents were of the opinion that the claims of the Third Auxiliary Request would not satisfy the requirements of Articles 84 and 123(2) EPC" (emphasis added by the board). However, since the opposition division had already concluded as regards the then pending first auxiliary request, that the requirements of Article 123(2) EPC had been met and that the same reasoning also applied to said pending third auxiliary request (impugned decision, page 12, points 6.1 and 6.2), the opponent did not repeat its arguments. However, the above passage of the minutes clearly showed that the objection under Article 123(2) EPC was maintained by the opponent.

7.11 The patentee also argued (X supra) that claim 1 of e.g. auxiliary request 2A had been fully examined by the opposition division because it was identical to claim 13 of the then pending third auxiliary request found allowable by the opposition division. The situation was thus totally different to that with auxiliary requests 1 and 1A. The opponent should have been prepared to discuss this claimed subject-matter.

However, as set out above, for both auxiliary requests 1 and 1A on the one hand, and inter alia auxiliary request 2A on the other hand, the lateness of their filing and the complexity linked with them spoke against admittance. There was thus no fundamental difference justifying the admittance of e.g. auxiliary request 2A.

7.12 In exercising its discretion under Article 13(1) RPBA 2007, the board thus decided not to admit auxiliary requests 1, 1A, 2A, 2C and 3A-14A into the proceedings.

Auxiliary requests 2, 2B and 3 to 14 - compliance with Article 123(2) EPC

8. Claim 1 of auxiliary request 2 recites as follows, whereby the amendments as compared to claim 1 as granted are highlighted by the board:

"1. A method of coating a food or beverage can, the method comprising:

forming a composition comprising an emulsion polymerized latex polymer and being substantially free of bound bisphenol A and aromatic glycidyl ether compounds, comprising:

forming a salt of an acid- or anhydride-functional polymer and an amine in a carrier comprising water to form an aqueous dispersion;

combining an ethylenically unsaturated monomer component with the aqueous dispersion; and

polymerizing the ethylenically unsaturated monomer component in the presence of the aqueous dispersion to form an emulsion polymerized latex polymer, wherein the ethylenically unsaturated monomer component comprises a mixture of monomers comprising at least one oxirane functional group-containing monomer, wherein at least 40 wt-% of the ethylenically unsaturated monomer component are selected from alkyl acrylates and methacrylates, and

applying the composition comprising the emulsion polymerized latex polymer to a metal substrate prior to or after forming the metal substrate into a food or beverage can or portion thereof."

8.1 Claim 1 was amended when compared to claim 1 as filed, by adding the following features:

(a) The composition is substantially free of BPA and aromatic glycidyl ether compounds.

(b) The ethylenically unsaturated monomer component comprises a mixture of monomers.

(c) The mixture of monomers comprises at least one oxirane functional group-containing monomer.

(d) At least 40 wt-% of the ethylenically unsaturated monomer component are selected from alkyl acrylates and methacrylates.

The combination of all these features was not included in claim 1 as granted. Thus, the board has to examine whether or not the claimed combination has a basis in the application as filed (Article 123(2) EPC).

8.2 Contrary to the patentee's view (X supra), the board considers that the above combination of features extends beyond the content of the application as filed, and this for the following reasons.

8.2.1 Feature (a) is disclosed in the application as filed in the second sentence of the passage on page 4, lines 13 to 15. This passage reading as follows:

"In certain embodiments, the composition is substantially free of mobile BPA and aromatic glycidyl ether compounds. Preferably, the composition is substantially free of bound BPA and aromatic glycidyl ether compounds".

Contrary to the patentee's opinion, the board regards the second sentence in the above-quoted passage to be linked to the previous one, reciting that "In certain embodiments, the composition is substantially free of mobile BPA and aromatic glycidyl ether compounds" (emphasis added by the board). In other words, the whole paragraph on page 4, lines 13 to 15, requires that the composition not only be free of bound BPA but also of mobile BPA. This reading is confirmed by the fact that the preceding and subsequent paragraphs all have the same structure as the above-quoted paragraph, i.e. they all start with "In certain embodiments" and all contain in their second sentence (if present) preferred forms of these certain embodiments. Moreover, the application as filed on page 10, lines 3 to 11, states that "Preferred compositions are substantially free of mobile bisphenol A (BPA) and aromatic glycidyl ether compounds [...]. The coating composition is also preferably substantially free of bound BPA and aromatic glycidyl ether compounds" (emphasis and square brackets added by the board), which also confirms the above reading. The same is further confirmed by claims 16 and 17 as filed, which also require that the composition be free of mobile and bound BPA and aromatic glycidyl ether compounds. Consequently, the application as filed cannot provide a basis for feature (a) as recited in claim 1 at issue. Even assuming that the application as filed disclosed feature (a), a selection from the application as filed would still be required to include feature (a) in claim 1 of auxiliary request 2. Such a selection would definitely not be preferred since the presence of mobile BPA is not excluded from claim 1 at issue contrary to the preferred embodiments disclosed in the passages referred to above and to the general statement on page 1, lines 26 to 32, of the application as filed, which expresses the strong desire to eliminate inter alia mobile BPA from food contact coatings.

The patentee also referred to D21, point 8, to argue that feature (a) was disclosed in the application as filed. D21 is a declaration filed by the opponent, which, at point 8 referred to by the patentee, recites that "one of ordinary skill would understand that the way to ensure that the latex polymer is substantially free of the undesired compounds is not to use materials containing them in the first place". The board acknowledges that this is in line with what is disclosed in the application as filed, namely that both mobile and bound BPA must be absent. However, such a statement does not support the patentee's allegation that there was basis for the absence of bound BPA only, i.e. without the contemporary exclusion of mobile BPA.

8.2.2 As regards features (b) and (c), the patentee invoked claim 10 as filed as the basis in the application as filed. Indeed, claim 10, in combination with claim 9, recites the inclusion of features (b) and (c). However, as claim 10 is a dependent claim, its subject-matter represents a second selection to be made within the application as filed in order to arrive at claim 1 of auxiliary request 2.

8.2.3 As regards feature (d), the patentee referred to page 11, lines 21 to 25, and page 12, line 30, to page 13, line 1, of the application as filed.

The type of monomer component included in feature (d) is disclosed on page 11, lines 21 to 25, of the application as filed. More specifically, page 11 recites that the "oxirane-functional monomer is preferably reacted with suitable other monomers within the monomer mixture. These can be ethylenically unsaturated monomer and hydroxy-functional monomers". Among the ethylenically unsaturated monomers, alkyl (meth)acrylates are then mentioned within a list of several other possible monomers. However, the concentration (second part of feature (d)) is not stated, nor is a preference for alkyl (meth)acrylates over the other listed ethylenically unsaturated monomers and hydroxy-functional monomers expressed. Therefore, the inclusion alone of alkyl acrylates and methacrylates as such represents a further selection to be made within the application as filed for which no preference is expressed.

As regards the concentration of at least 40 wt-% included in feature (d), the passage from page 12, line 25, to page 13, line 2, recites that the "oxirane group-containing monomer preferably constitutes 0.1 wt-% to 30 wt-% [...] of the ethylenically unsaturated monomer component. The other monomer or monomers in the mixture constitute the remainder of the monomer component, that is, 70 wt-% to 99.9 wt-% [...] based on total weight of the monomer mixture. Preferably, at least 40 wt-% of the ethylenically unsaturated monomer component, more preferably at least 50 wt-%, will be selected from alkyl acrylates and methacrylates. Preferably, at least 20 wt-%, more preferably at least 30 wt-%, will be selected from vinyl aromatic compounds" (emphasis and square brackets added by the board).

From the above passage, it can be concluded that the concentration of at least 40 wt-% alkyl acrylates and methacrylates is not directly and unambiguously disclosed in the application as filed separately from a concentration of the oxirane group-containing monomer of 0.1 wt-% to 30 wt-%. This also in view of the amounts of alkyl acrylates and methacrylates and vinyl aromatic compounds, which, according to the cited passage, add up to at least 70 wt-%, corresponding to the maximum value of 30 wt-% of the oxirane group-containing monomer as disclosed in the cited passage on page 12.

However, this amount of the oxirane group-containing monomer from 0.1 wt-% to 30 wt-% was not included in feature (d). Therefore, the concentration included in feature (d) as such represents an intermediate generalisation of the above embodiment disclosed from page 12, line 25, to page 13, line 2, of the application as filed, for which no direct and unambiguous disclosure exists in the application as filed.

8.2.4 The patentee's observation (X supra) that all examples of the contested patent fall under claim 1 of auxiliary request 2 can also not constitute a reason why the subject-matter of claim 1 of auxiliary request 2 would have basis in the application as filed. In fact, the examples disclose compositions that are much more specific than the one defined in claim 1 at issue, which must have a basis as such, i.e. in its broadest form, in the application as filed.

8.3 In view of the above, the board concludes that the combination of above mentioned features (a) to (d) included in claim 1 of auxiliary request 2 is not directly and unambiguously disclosed in the application as filed. Consequently, auxiliary request 2 does not meet the requirements of Article 123(2) EPC and is not allowable.

8.4 Since the combination of above features (a) to (d) is contained at least in claim 1 according to all auxiliary requests 2B and 3 to 14, the above considerations under Article 123(2) EPC made for auxiliary request 2 apply mutatis mutandis also to all these auxiliary requests.

The board thus concludes that none of auxiliary requests 2B and 3 to 14 complies with Article 123(2) EPC. These auxiliary requests are also not allowable.

Conclusions

9. None of the patentee's requests is both admissible and allowable.

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

2. The patent is revoked.