T 2447/18 - The subclass trap revisited

 Key points

• The subclass trap is similar to the Article 123(2)/(3) trap and can trap patentees mostly in the chemical field. For instance, if a patent is granted with an independent claim specifying that a composition contains x to y % of a compound of class Z and patentee wishes to restrict to the particular compound Z1 in that class Z.
• T1360/11, headnote, frequently cited,  provides that “Where a granted claim directed to a composition defined in an open manner and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range is later amended by limiting the definition of the class or list of compounds, a possible infringement of the requirements of Article 123(3) EPC may be avoided by including in the amended claim a quantitative condition on the limited class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list” (further referring to older decisions).
• The present Board finds the “quantitative condition on the limited class or list of compounds” to lack basis in the application as filed. 
• In present claim 1 “ the claimed composition is defined as comprising "0.002% to 0.4%, by weight of the total composition, of a non-ionic [microbiocide] wherein the composition comprises 0.002% to 0.4% of [Diclosan]", Diclosan is a non-ionic microbiocide.
• The Board: “Even though the passage on page 8, lines 2-3 [of the application as filed], discloses that the non-ionic microbicide is [...] preferably contained at an amount of from 0.002% to 0.4% and the passage following at page 8, lines 6-7 identifies Diclosan as a suitable non-ionic microbicide, the entire application does not contain any direct and unambiguous disclosure of a mixture of non-ionic microbicides containing 0.002% of Diclosan as explicitly encompassed by the wording of claim 1 at issue.” 
• The patentee cited a number of case law decision to no avail.
• The Board found the following wording to have basis in the application as filed: “(b) from 0.002% to 0.4%, by weight of the total composition, of a non-ionic antimicrobial active, which is not a perfume component, wherein 4,4' dichloro-2-hydroxy diphenyl ether is present as the sole non-ionic antimicrobial active in the composition”. 

EPO T 2447/18 -  link

Reasons for the Decision

1. Main Request - Compliance with the requirements of Article 123(2) EPC

1.1 According to the wording of claim 1 of this request the claimed composition is defined as comprising "(b) 0.002% to 0.4%, by weight of the total composition, of a non-ionic antimicrobial active, which is not a perfume component, wherein the composition comprises 0.002% to 0.4% of 4,4'dichloro-2-hydroxy diphenyl ether" (emphasis added by the board).

1.2 According to one interpretation of this wording the claim requires that 4,4' dichloro-2-hydroxy diphenyl ether (in the following Diclosan) - which belongs to the class of components defined as "non-ionic antimicrobial active, which is not a perfume component" (in the following the non-ionic microbicide) - be comprised in the composition at a concentration range of 0.002% to 0.4% (all percentages referred to being by weight of the total composition), i.e. the same concentration range also specified for the generic class of non-ionic microbicides. Thus claim 1 relates to compositions which may comprise either Diclosan as the sole non-ionic microbicide or mixtures of non-ionic microbicides with Diclosan being in an amount of at least 0.002%.

1.2.1 Claim 6 of the application as filed (in its published version WO 2013/156371 A1) discloses - when read in combination with claim 1 - compositions comprising 0.001% to 2% of a non-ionic microbicide comprising Diclosan. It does not, however, disclose mixtures of non-ionic microbicides comprising Diclosan in an amount of 0.002%.

The passage on page 7, lines 26-27 of the original description discloses that Diclosan is a preferred non-ionic microbicide which can be used in admixture with (DBNPA), another non-ionic microbicide; this passage however does not specify at which concentration it might be contained in such a mixture. Also the examples relate to compositions not comprising mixtures of non-ionic microbicides, but comprising Diclosan as the only non-ionic microbicide.

Even though the passage on page 8, lines 2-3, discloses that the non-ionic microbicide is more preferably contained at an amount of from 0.002% to 0.4% and the passage following at page 8, lines 6-7 identifies Diclosan as a suitable non-ionic microbicide, the entire application does not contain any direct and unambiguous disclosure of a mixture of non-ionic microbicides containing 0.002% of Diclosan as explicitly encompassed by the wording of claim 1 at issue.

1.3 The respondent, referring to decisions T 0287/11,

T 0052/13 and T 0306/14, argued that the case law would support a wording as in present claim 1, which therefore does not contravene article 123(2) EPC.

1.3.1 The board notes that in case T 0287/11, claim 1 concerned a composition comprising a specific concentration range of a class of water-soluble polyalkylene glycol of defined formula. This claim was amended by additionally specifying that the concentration range of the generic class of water-soluble polyalkylene glycols, to which the one of defined formula belonged, was the same as that indicated for the restricted class of components of defined formula. The board notes that such a claim wording is similar to that of claim 1 at issue but it concerns a combination of a generic class of components with a subclass thereof, not a combination of a generic class of components with a single component of this class as in the present case.

The board decided in that case that amended claim 1 complied with the requirements of articles 123(2) and (3) EPC, noting however (point 4 of the reasons) that article 100(c) had not been raised as a ground for opposition. The board further specified that basis for amended claim 1 was claim 1 as granted (which recited only the amounts of the generic class of water-soluble polyalkylene glycol components (point 2.3 of the reasons) and that the specific formula of the restricted class of polyalkylene glycols was disclosed in the description of the application as filed. The board finally noted that the respondent (opponent) had not raised any objection under article 123(2) EPC against the amended claim ("The claims thus comply with the requirements of Article 123(2) EPC, the Respondent having no objections under this Article to the amended claims.").

Thus, as regards compliance with the requirements of article 123(2) EPC, the board in that case did not investigate (of its own motion) whether mixtures of polyalkylene glycols containing an amount of polyalkylene glycols of the defined formula corresponding to the lower limit of the claimed concentration range were directly and unambiguously disclosed in the application as filed.

This means that the issue at stake in the present decision was not considered in that prior decision.

1.3.2 Decision T 0052/13 concerned a claim directed to a composition comprising a specific concentration range of a defined class of hydrolysed reactive dyes, which was amended by adding a proviso that the composition did not contain a concentration of generic hydrolysed reactive dyes greater than the upper limit indicated for the defined class.

The board notes that such a claim wording is not similar to that of claim 1 at issue since it contains a proviso and not a specific concentration range of the more generic class of components and does not concern the combination of a generic class of components with a single component thereof.

Moreover, also in this case the board did not investigate by its own motion whether mixtures of hydrolysed reactive dyes containing an amount of the defined subclass corresponding to the lower limit of the specified concentration range were directly and unambiguously disclosed in the application as filed.

In fact, the board merely considered the issue under article 123(2) EPC raised by the appellant (opponent) that the application as filed referred only to "one hydrolysed dye being present" and not to mixtures (point 7.1.1 of the reasons), and it observed that the appellant's line of argument contradicted the latter's understanding of the terms of claim 1 of the main request (point 7.1.2), finding that there was no justification for the appellant's change of view on the objection to be discussed and that the insertion of a "cap" for the total amount of hydrolysed reactive dyes had per se no bearing on the nature and number of such dyes that may be present (point 7.1.3), and eventually it decided that the addition of the proviso did not amount to adding subject-matter undisclosed in the application as filed (point 7.1.4).

Therefore, also this case concerns a different issue as the one at stake in the present decision.

1.3.3 Decision T 0306/14 concerns the compliance of an amended claim with article 123(3) EPC (points 1.2 and 3 of the reasons) and not with article 123(2) EPC. Therefore, it is not relevant for the present case, which concerns article 123(2) EPC.

1.3.4 Thus, in the board's view, the cited decisions concern different issues and wordings and cannot support the respondent's case.

1.4 The board thus concludes - for the reasons exposed above - that claim 1 of the main request contravenes the requirements of article 123(2) EPC.

1.5 The board further notes, as discussed during oral proceedings, that the wording of claim 1 at issue could also be interpreted to include compositions comprising two different components, namely 0.002% to 0.4% of a non-ionic microbicide and additionally 0.002% to 0.4% of Diclosan.

Such compositions containing two different components in the specified amounts being indeed not disclosed in the original application, claim 1 would contravene the requirements of article 123(2) EPC also if interpreted in this way.