T 2103/22 - Interpreting 'is' in context

Key points

• "The respondent [opponent] adhered to the conclusion of the opposition division regarding Article 123(2) EPC which was in particular reached considering that: -The wording "is" in the sentence "characterised in that said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin at a weight ratio of 90:10 to 10:90" was to be read, in the context of claim 1 of the main request, as "comprises", which meant that any other component different from the ones specifically mentioned in said claim 1 could be present in the blended polyester resin;"
• The Board: "a) However, claim 1 of the main request does not merely defines that "said polyester resin" is a blend of "a lowly crystalline polyester resin" and "a highly crystalline polyester resin" but specifies that "said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin ...". In the Board's view, said wording imposes that "said polyester resin" is obtained by blending the lowly and highly crystalline resins as otherwise defined in the claim, and only these resins. In particular, the term "said polyester resin" defines that the resin so defined must be a polyester, which excludes e.g. that other resins may be present as a main component in the blend. In addition, the combination of the term "is a blended polyester resin" directly followed by the term "which is a blend of ... and ... " constitutes a product-by-process formulation that defines that "said polyester resin" should be obtainable by a blending operation and as the result of blending the lowly crystalline resin and the highly crystalline resin, and only these two resins. "
• Indeed, in the Board's view, the use of the word "is" in this context ("is a blended polyester resin which is a blend of ...") leaves no room for the presence of any other components different from the lowly and highly crystalline resins making up "said polyester resin" according to claim 1 of the main request."
•  "b) It is noted that the above conclusion is reached on the basis of the wording of claim 1 only but that conclusion is also congruent with the description of the patent in suit which does not disclose the presence of any other resin(s), in particular polyester resin(s), blended together with the lowly and highly crystalline resins. If the use of optional blending agents is indicated in paragraph 42 of the patent in suit (paragraph 18 of the application as originally filed), this takes place in a further, i.e. subsequent, blending step. Therefore, the above reading of claim 1 of the main request is fully in line with the description of the patent in suit."

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t222103eu1

2.6.1 At the oral proceedings before the Board, the respondent argued that, according to accepted practice, a blend of two components A (e.g. the highly crystalline polyester resin as defined in claim 1 of the main request) and B (e.g. the lowly crystalline polyester resin as defined in claim 1 of the main request) did not exclude the presence of a third component C, whereby the latter component could be present in any amount, even as a main component as compared to A and B. For that reason, they considered that the reading of claim 1 indicated in above section 2.6 was not correct.

a) However, claim 1 of the main request does not merely defines that "said polyester resin" is a blend of "a lowly crystalline polyester resin" and "a highly crystalline polyester resin" but specifies that "said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin ...". In the Board's view, said wording imposes that "said polyester resin" is obtained by blending the lowly and highly crystalline resins as otherwise defined in the claim, and only these resins. In particular, the term "said polyester resin" defines that the resin so defined must be a polyester, which excludes e.g. that other resins may be present as a main component in the blend. In addition, the combination of the term "is a blended polyester resin" directly followed by the term "which is a blend of ... and ... " constitutes a product-by-process formulation that defines that "said polyester resin" should be obtainable by a blending operation and as the result of blending the lowly crystalline resin and the highly crystalline resin, and only these two resins. Indeed, in the Board's view, the use of the word "is" in this context ("is a blended polyester resin which is a blend of ...") leaves no room for the presence of any other components different from the lowly and highly crystalline resins making up "said polyester resin" according to claim 1 of the main request.

b) It is noted that the above conclusion is reached on the basis of the wording of claim 1 only but that conclusion is also congruent with the description of the patent in suit which does not disclose the presence of any other resin(s), in particular polyester resin(s), blended together with the lowly and highly crystalline resins. If the use of optional blending agents is indicated in paragraph 42 of the patent in suit (paragraph 18 of the application as originally filed), this takes place in a further, i.e. subsequent, blending step. Therefore, the above reading of claim 1 of the main request is fully in line with the description of the patent in suit.

d) For these reasons, the reading of the passage of claim 1 "said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin at a weight ratio of 90:10 to 10:90" in an open manner contemplated by the respondent did not convince and was rejected by the Board.