Novelty
4. The appellant submits that the method of operative claim 1 lacks novelty over the polymerization method described in document D32 when using the catalysts under the trade names COMCAT Nd-FC (NH), COMCAT Nd-FC/20 (NH) and COMCAT Nd-FC/SF of COMAR CHEMICALS (Pty) Ltd, whose commercial availability at the relevant date of the patent in suit is mentioned in paragraph [0075] of the patent in suit and in the priority documents.
Document D32 was allegedly conjointly delivered to customers of said catalysts. Accordingly, the prior use invoked by the appellant concerns the use of the catalysts under the trade names COMCAT Nd-FC (NH), COMCAT Nd-FC/20 (NH) and COMCAT Nd-FC/SF of COMAR CHEMICALS (Pty) Ltd in the method described in D32.
4.1 D32 describes a method for the polymerization of butadiene using a Neodymium pre-formed catalyst "(Finished Catalyst)" (D32, page 1, Method Summary). According to this method, diisobutyl aluminum hydride (DIBAH) which is described to be used as scavenger is added to the reactor in step D of that method (D32, page 7, last line and page 8) before butadiene is added to the reactor in step E (page 8, last line and page 9). The "Finished Catalyst" is first added to the reactor in a subsequent step G (page 11, point 9), following the pre-heating of the reactor in a step F (bottom of page 9 and page 10).
4.2 The respondent submits that the appellant has not met the burden of proof regarding the alleged prior use, which would require to demonstrate what was made public, when was it made public, who made it public, where was it made public and how was it made public (rejoinder, paragraph bridging pages 7 and 8).
The opposition division was of the opinion that the subject matter of claim 1 was novel over the alleged prior use. The only reason provided concerns steps (i), (ii) and (iii), none of which is in the opposition division's opinion unambiguously disclosed in D32, and additionally the absence of proof that "significant amounts of D32 (sic) are left when the catalyst is added", which the Board understands as the absence of proof that significant amounts of DIBAH are left when the catalyst is added (decision, page 8, second to fifth full paragraph).
4.3 The opposition division, however, only took position on what document D32 would describe, but not on all elements alleged to be constitutive of the prior use invoked. Whereas it seems that the appellant's submissions concerning step (iii), i.e. the way to add the alkylating agent are only based on D32, the appellant's submissions concerning steps (i) and (ii) relied on other documents, in particular documents D20 to D23 and D31, as well as information provided in paragraph [0075] of the specification. Those submissions were not analysed in the contested decision. Moreover, it cannot be taken from the written submissions and the minutes of the oral proceedings before the opposition division that the absence or presence of a significant amount of DIBAH at the time of the catalyst's addition was addressed before issuance of the written decision.
Step (i)
4.3.1 It does not seem to be disputed that COMCAT Nd-FC (NH), COMCAT Nd-FC/20 (NH) and COMCAT Nd-FC/SF of COMAR CHEMICALS (Pty) are catalyst systems in accordance with step (i) of operative claim 1. According to paragraph [0075] of the patent in suit, COMCAT Nd-FC (NH), COMCAT Nd-FC/20 (NH) and COMCAT Nd-FC/SF of COMAR CHEMICALS (Pty) were commercially available.
The appellant's submissions concerning the public availability of COMCAT Nd-FC (NH), COMCAT Nd-FC/20 (NH) and COMCAT Nd-FC/SF of COMAR CHEMICALS (Pty), which was addressed in point 5.2 of the notice of opposition, were not dealt with in the reasons for the contested decision. The opposition division only considered document D32, but not all submissions and evidence relative to the alleged prior use, namely the sale and delivery of these catalysts to which a document D32 describing their use in a polymerization procedure was allegedly attached. It was in particular made reference in the opponent's submissions to declaration D31 according to which D32 would have been delivered to customers with the sold catalysts.
Step (ii)
4.3.2 Concerning step (ii), it is the position of the appellant in view of point 6 of declaration D31 that due to storage and shipment the catalysts mentioned in paragraph [0075] are necessarily aged for more than 5 days. This argument was not dealt with in the contested decision, although this was not only addressed in D31, but stressed in the notice of opposition (page 9, fourth paragraph).
Step (iii)
4.3.3 According to the appellant the literal meaning of feature (iii) would imply "a direction of supply where the aged catalyst is present already and the alkylating agent is added thereto, e.g. dropwise" (point 3.2 on page 3 of the statement of grounds of appeal). It is, however, the appellant's contention that in the method of D32 the addition of DIBAH and the addition of the "Finished Catalyst" as described in steps D and G, respectively, correspond to process step (iii) of operative claim 1 when interpreted beyond its literal meaning. Having regard to paragraph [0076] of the specification and the examples it is the appellant's contention that the wording defining step (iii) of operative claim 1 "adding an alkylating agent to the aged catalyst" would include situations in which the alkylating agent would be present in the reactor before the aged catalyst would be added thereto. The appellant had already indicated in section 2.2.2 of the notice of opposition that the word "adding" in granted claim 1 should be interpreted as "bringing together", "mixing", "combining" or the like (which is repeated in the statement of grounds, point 3.2, page 3, last paragraph). Based on that interpretation step (iii) would not represent a distinguishing feature over the alleged prior art.
The opposition division held that D32 disclosed the addition of an alkylating agent (DIBAH) before adding any catalyst, while step (iii) would require that the alkylating agent is added to the aged catalyst. This would indicate that the opposition division had an opinion concerning the meaning of feature (iii) which differed from that of the appellant. It is also not apparent from the contested decision that the appellant's considerations on the meaning of feature (iii) were taken into account. And if it was so, there are no reasons provided in the contested decision why the opposition division did not share the appellant's opinion.
Presence of significant amounts of DIBAH when the catalyst is added
4.3.4 Although that argument appears to be at odds with the interpretation of feature (iii) by the opposition division, as it appears to be relevant only if feature (iii) is considered to allow addition of the alkylating agent before introduction of the catalyst, it is not apparent from the written submissions and the minutes of the oral proceedings that the presence of significant amounts of DIBAH was discussed with the parties. That argument seems to imply a particular meaning of the molar ratio defined in step (iii), namely at the time of addition of the catalyst. In any event, the contested decision does not comprise any reason as to why feature (iii) should be interpreted in a particular manner.
4.4 On that basis, the failure of the opposition division to give due consideration to facts, evidence and arguments, which from the appellant's submissions are central to the alleged lack of novelty of claim 1 over the invoked prior use, constitutes a violation of the right to be heard in contravention of Article 113(1) EPC.
4.5 Moreover, there is causal link between the violation of the right to be heard and the final decision reached by the opposition division, given that the patent was maintained on the basis of a finding which did not take into account all the pertinent submissions of the appellant (Case Law of the Boards of Appeal of the EPO, 10th edition 2022, III.B.2.2.1).
4.6 The above fundamental deficiency justifies that the decision under appeal be set aside, a reimbursement of the appeal fee in accordance with Rule 103(1)(a) EPC be ordered and the case be remitted to the opposition division, in accordance with the provisions of Article 11 RPBA and the requests of both parties, for further examination.
Of course we now have the preliminary opinion in G 1/23 with quite a bombshell development in para 32: the enablement requirement of novelty would be also satisfied by a non-reproducible commercially available product.
ReplyDeleteEnablement in the sense that a prior art disclosure is only novelty-destroying if it provides an enabling teaching of the relevant embodiment.
DeleteNote that the answer may be different for novelty and for inventive step asessment. Whether a non-enabling disclosure must be excluded from the prior art applicable to novelty is debatable, but there is no reason to exclude a disclosure from the prior art applicable to inventive step because it is not enabling. The prior art applicable to inventive step must include all information available to the person skilled in the art. This is the position submitted by the German Patentanwaltskammer in an amicus curiae submitted on 14 December 2023.
ReplyDeleteYour analysis seems correct, but the Enlarged Board intends to totally moot that point by concluding that the prior art polymer at issue was, in fact, enabled.
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