T 1914/15 - Facts and evidence

 Key points

• The Board applies the ‘new rule’ about the novelty of compounds based on (low levels of) impurities as given in T 1085/13.
• The Board also holds an argument of patentee about the technical effect in the context of inventive step inadmissible. 
• “ During the oral proceedings, the respondent [patentee] described a hypothetical "truly" comparative production example to corroborate the presence of [the technical effect of] a reduced metal corrosion ”
• “The assertion [of patentee] that metal corrosion could be reduced by starting from a composition in which the amounts of compounds of formulae (I) and (V) were both outside the scope of claim 1 and by reducing either of the two amounts to a value within the claimed range is an allegation of fact that can be proven or disproved by evidence.”
• As a comment, I think that this remark is quite important. In particular, there appears to be a fundamental relation between facts and evidence in legal proceedings: assertions that  “can be proven or disproved by evidence” are factual assertions; at the same time an asserted fact, if disputed by the other party, needs to be proven with evidence. See e.g. also the dissertation of R.H. De Bock, page 11 (in Dutch, "biedt een handvat voor..." on p.11).
• “The allegation of fact submitted by the respondent thus raised complex new issues which had not previously been addressed during the written proceedings and occurred at the latest possible state of the proceedings, namely at the oral proceedings. The discussion of these new issues at such a late stage of the proceedings would have been contrary to procedural economy.”

EPO T 1914/15 - link

4.3.3 The board accepts that the content of compounds of formulae (I) and (V) may be interpreted as amounts of impurities. However, it still disagrees with the appellant's conclusion. The board in this respect follows the rationale of decision T 1085/13 which states the following (point 3.7 of the reasons): "A claim defining a compound as having a certain purity ... lacks novelty over a prior-art disclosure describing the same compound only if the prior art discloses the claimed purity at least implicitly, for example by way of a method for preparing said compound, the method inevitably resulting in the purity as claimed. Such a claim, however, does not lack novelty if the disclosure of the prior art needs to be supplemented, for example by suitable (further) purification methods allowing the skilled person to arrive at the claimed purity."

D1 does not contain any explicit disclosure on the amounts of compounds (I) and (V) as defined in claim 1 of the main request, remaining silent in that respect. Furthermore, it does not contain any implicit disclosure leading to the conclusion that amounts as claimed are the inevitable outcome, and in particular does not disclose a method for preparing said compound in which the purity as claimed is the inevitable result. Since D1 neither explicitly nor implicitly discloses the content of compounds of formulae (I) and (V), the specified content represents, in accordance with the considerations in decision T 1085/13, a distinguishing feature of the subject-matter of claim 1 of the main request in view of the disclosure of D1.

[...]

5.1.3 Distinguishing features

As set out above in the context of novelty (point 4.4), the subject-matter of claim 1 of the main request differs from D20 on account of the content of compounds of formulae (I) and (V).

5.1.4 Formulation of the technical problem

[...]

 In view of the high chlorine ion concentration in comparative production examples 1 and 2 (237 and 150 ppm), claim 1 of the main request is considered to encompass embodiments that do not exhibit reduced metal corrosion. Thus, no technical effect is associated with the distinguishing features of claim 1 of the main request in view of D20.

The objective technical problem in view of D20 is thus the provision of an alternative method of storing TAIC.

5.1.5 Obviousness of the solution

The solution to the above problem involves the arbitrary variation of the contents of compounds of formula (I) or (V), which would have been within the skilled person's routine abilities. Reducing the impurities of products comes within the routine work of the skilled person and cannot contribute to inventive step. This was not contested by the respondent. Hence, the subject-matter of claim 1 lacks an inventive step in view of D20 alone.

[...]

5.1.6 The board therefore concludes that the subject-matter of claim 1 does not involve an inventive step.

5.2 Admittance of the respondent's submission concerning a hypothetical comparative example for claim 1 of the main request

5.2.1 During the oral proceedings, the respondent [patentee] described a hypothetical "truly" comparative production example to corroborate the presence of a reduced metal corrosion of the examples and comparative examples according to the invention as defined in the main request. This hypothetical comparative production example involved a TAIC in which amounts of compounds of both formulae (I) and (V) were outside the scope of claim 1. According to the respondent, it could be assumed that reducing either of the two amounts to a value within the claimed range would reduce metal corrosion. This assumption was corroborated by the production examples and the comparative production examples described in table 4 of the patent, where reducing the amount of the compound of formula (I) or (V) from that in the comparative production example to that in the corresponding example resulted in reduced metal corrosion.

5.2.2 The appellant objected to the admittance of the respondent's submission concerning this hypothetical comparative example.

5.2.3 The board notes that the hypothetical comparative example was submitted by the respondent for the first time at the oral proceedings before the board. The assertion that metal corrosion could be reduced by starting from a composition in which the amounts of compounds of formulae (I) and (V) were both outside the scope of claim 1 and by reducing either of the two amounts to a value within the claimed range is an allegation of fact that can be proven or disproved by evidence.

This allegation of fact had not been submitted at a previous stage of the appeal proceedings and thus represented an amendment to the respondent's case, the admittance of which was at the board's discretion in view of Article 13(1) and (3) RPBA 2007.

Under Article 13(1) RPBA 2007, the board exercises its discretion in view of in particular 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, amendments to a party's case submitted after the oral proceedings have been arranged are not 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.

The new allegation of fact was a new line of defence and deviated completely from the respondent's submissions before the point in time at which it was raised at the oral proceedings. More specifically, leading up to the oral proceedings the respondent did not challenge the appellant's position that comparative production examples 1 and 2 of the patent fell within the scope of claim 1 of the main request and that no technical effect was associated with the distinguishing features of claim 1. The respondent used this new allegation of fact as the basis to argue - for the first time - that the technical effect of reduced metal corrosion was obtained even though comparative production examples 1 and 2 of the patent fell within the scope of claim 1 of the main request.

Admitting this new allegation of fact would have necessitated a discussion, for the first time at the oral proceedings, as to whether the hypothetical comparative example demonstrated reduced metal corrosion in the compositions according to claim 1 and could be taken into account for formulating a more ambitious objective technical problem than that set out in the communication under Article 15(1) RPBA 2020. It would then have had to be discussed whether the solution proposed by the claims of the main request was obvious in view of this more ambitious technical problem.

The allegation of fact submitted by the respondent thus raised complex new issues which had not previously been addressed during the written proceedings and occurred at the latest possible state of the proceedings, namely at the oral proceedings. The discussion of these new issues at such a late stage of the proceedings would have been contrary to procedural economy.

Lastly, the appellant underlined that it was not able to challenge the respondent's allegation of fact within the short time available during the oral proceedings. It would, for instance, have had to be given time to file counter-evidence in an attempt to disprove the respondent's assertion that the hypothetical comparative example demonstrated reduced metal corrosion. Oral proceedings would thus have had to be postponed, in contravention of Article 13(3) RPBA 2007.

The board therefore decided not to admit the allegation of fact based on the hypothetical example into the proceedings (Article 13(1) and (3) RPBA 2007).