T 1886/19 - Commerical product and Art.83

Key points

•  This case is about commercially available products and Art.83. 
•  "The respondent [opponent] submitted that the subject-matter of claim 1 of the main request was not sufficiently disclosed. In particular, the respondent argued that there were no examples in the patent/application as filed and no common general knowledge which taught the skilled person how to prepare the bis-azo dye referred to in claim 1 of the main request." 
• " The board agrees with the respondent. The application as filed does not give the skilled person any guidance on how to prepare the bis-azo dyes defined in claim 1 of the main request. In particular, example 1 of the application as filed refers to "Dye inventive" [this is compound BA1].  [ a structural formula is shown].
• " the application as filed does not disclose any synthesis for compound BA1, which is a bis-azo dye according to claim 1 of the main request. Nor does the application as filed include any reference to how compound BA1 can be prepared or supplied." 
• " no common general knowledge available to supplement the information contained in the application as filed so as to give the skilled person guidance on how to prepare compound BA1 or any bis-azo dye as defined in claim 1 of the main request. Therefore, the skilled person cannot prepare these dyes without undue burden." 
• " The appellant [patentee] submitted that compound BA1 was a product available from a manufacturer, namely Colour Synthesis Solutions Ltd. The skilled person could have purchased compound BA1 in order to prepare the claimed compositions. The claimed invention was thus sufficiently disclosed." 
• " The board does not agree. First, as submitted by the respondent, the application as filed does not identify compound BA1 as a product available from a specific manufacturer. The manufacturer referred to by the appellant, i.e. Colour Synthesis Solutions Ltd., is not identified in the application as filed either. Lastly, it has not been established that BA1 was a commercial product that the skilled person could have purchased."
• The Board considers a number of further documents in technical detail.
• The claim is held to be insufficiently disclosed. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t191886eu1

Main request - patent as granted - claim 1 - ground for opposition under Article 100(b) EPC - sufficiency of disclosure

9. As set out above, the composition of claim 1 of the main request requires 0.0001 to 1.0 wt% of an alkoxylated bis-azo dye having the following formula:

FORMULA/TABLE/GRAPHIC

10. The respondent submitted that the subject-matter of claim 1 of the main request was not sufficiently disclosed. In particular, the respondent argued that there were no examples in the patent/application as filed and no common general knowledge which taught the skilled person how to prepare the bis-azo dye referred to in claim 1 of the main request.

11. The board agrees with the respondent. The application as filed does not give the skilled person any guidance on how to prepare the bis-azo dyes defined in claim 1 of the main request. In particular, example 1 of the application as filed refers to "Dye inventive". "Dye inventive" is compound BA1 having the following formula:

FORMULA/TABLE/GRAPHIC

However, the application as filed does not disclose any synthesis for compound BA1, which is a bis-azo dye according to claim 1 of the main request. Nor does the application as filed include any reference to how compound BA1 can be prepared or supplied.

The prior art documents cited in the application as filed on page 1, lines 11 to 17, disclose "alkoxylated mono-azo for the shading of textiles from domestic laundry detergent products" and "alkoxylated bis-azo dyes that have sulphonate groups directly attached to the aromatic rings of the dye". They do not disclose either compound BA1 or a bis-azo dye according to claim 1 of the main request.

It is established case law that the claimed invention must be sufficiently disclosed as from the effective date of filing of the application. This disclosure is aimed at the person skilled in the art, who may rely on the common general knowledge to supplement the information contained in the application as filed.

There is, however, no common general knowledge available to supplement the information contained in the application as filed so as to give the skilled person guidance on how to prepare compound BA1 or any bis-azo dye as defined in claim 1 of the main request. Therefore, the skilled person cannot prepare these dyes without undue burden.

12. The appellant submitted that compound BA1 was a product available from a manufacturer, namely Colour Synthesis Solutions Ltd. The skilled person could have purchased compound BA1 in order to prepare the claimed compositions. The claimed invention was thus sufficiently disclosed.

The board does not agree. First, as submitted by the respondent, the application as filed does not identify compound BA1 as a product available from a specific manufacturer. The manufacturer referred to by the appellant, i.e. Colour Synthesis Solutions Ltd., is not identified in the application as filed either. Lastly, it has not been established that BA1 was a commercial product that the skilled person could have purchased.